Ex Parte Johnson

Patent Trial and Appeal Board

Sep 27, 2017

13481591 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/481,591 05/25/2012 Charles Johnson 557860-0001-01 7320
24187 7590 09/29/2017
MILLER NASH GRAHAM & DUNN LLP
Pier 70, 2801 Alaskan Way, Suite 300
Seattle, WA 98121
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/29/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent @ millernash. com
liz. miller @ millernash .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES JOHNSON
Appeal 2016-001155
Application 13/481,591
Technology Center 3700
Before LINDA E. HORNER, STEFAN STAICOVICI, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant, Charles Johnson, appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 9—11 and 15—18 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-001155
Application 13/481,591
CLAIMED SUBJECT MATTER
The claims are directed to “a board game for two players that is an
improvement to the traditional game of Western chess and Shogi.” Spec.
17. Claim 16 is the sole independent claim. Claim 16 reproduced below, is
illustrative of the claimed subject matter:
16. A method of playing a two-dimensional board game,
the game having a single tier playing space and multiple playing
pieces positioned on the single tier playing space, the playing
pieces having roles defined by advancing, capturing, and
converting capabilities, the method comprising:
providing a plurality of playing pieces for two players,
each of the playing pieces being capable of advancing, capturing,
and conversion; one of each player’s playing pieces being an
ultimate piece; the remaining playing pieces for both players
being role-altering playing pieces;
each said role-altering playing piece being configured with
a base portion that confronts the playing space, and a removable
and convertible top member having a universal post configured
to be seated into an upper portion of the base portion of each
playing piece; wherein all of the playing pieces are further
defined by two distinct visual characteristics with one half of the
playing pieces having one visual characteristic denoting
ownership to a first of the two players and other half having a
second visual characteristic denoting ownership to a second of
the two players; and further wherein each role-altering playing
piece has its base portion and convertible top member of the
same visual characteristic in a first role and the convertible top
member is configured to be replaced with another convertible top
member of the other visual characteristic in a second role to form
a hybrid characteristic and denote a change of ownership from
one player to the other yet still having the same advancing,
capturing, and converting capabilities as the playing piece had
prior to conversion; and
altering between the first and second roles whenever the
role-altering playing pieces participate in capture and conversion
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Application 13/481,591
and wherein role altering takes place when one player’s playing
piece captures and converts the other player’s playing piece;
wherein the playing space further comprises a board
arranged with 64 bi-tonal squares arranged into one large square
having eight rows and eight columns with one tone adjacent
another tone forming a uniformly arranged bi-tonal grid, and
wherein advancement, capturing, and conversion takes place on
the squares of the playing space; and
wherein each player is given 16 playing pieces and each
player’s playing pieces occupy only one original square on an
original column and an original row prior to advancement and
advancement takes place when a playing piece is moved to
another square; and wherein capturing and converting takes place
where an advancing playing piece advances to a square that is
already occupied with the other player’s playing piece.
App. Br. 19-21. (Claims App.)
OPINION
ANALYSIS
The Examiner considered factors from the Interim Guidance for
Determining Subject Matter Eligibility for Process Claims in View of Bilski
v. Kappos (Fed. Reg. Vol. 75, No. 143/Tuesday, July 27, 2010/Notices)
(“2010 Interim Guidance”), determined that “the factors in this case
weighing against patent eligibility far outweigh the factors weighing toward
patent eligibility,” and concluded that claims 9—11 and 15—18 are directed to
a patent-ineligible abstract idea. Final Act. 3—10. The Examiner also
analyzed the claims with regards to the two step test of Alice Corp. Pty. Ltd.
v. CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014). Id. at 10-11.
The 2010 Interim Guidance applied by the Examiner was developed
before the Supreme Court issued its decisions in Mayo Collaborative Servs.
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Appeal 2016-001155
Application 13/481,591
v. Prometheus Labs, Inc., 566 U.S. 66 (2012) and Alice, further explaining
the law in this area. We are bound by and apply the framework as set forth
by the Court in Mayo and reaffirmed by the Court in Alice for determining
whether the claims are directed to patent-eligible subject matter.
In making the rejection of the claims, the Examiner finds that the
“[cjlaimed method steps are abstract ideas because they simply instruct how
business should be conducted.” Final Act. 2, Ans. 2. Additionally, the
Examiner finds that “[i]n playing a board game the steps do not demonstrate
transformation of a particular article, in that the game pieces remain as game
pieces and the game surface remains a game surface.” Final Act. 3; id. at 10
(Examiner stating that under Alice step 2A, “the claims are directed to [an]
abstract idea because the method is being imposed on the apparatus and the
method is not sufficiently tied to the apparatus”).
Furthermore, the Examiner elaborates that “the steps do not
demonstrate transformation of a particular article . . . there is no real world
result at the end of the game.” Ans. 3; see also Final Act. 10-11 (Examiner
stating that under Alice step 2B, “the claims are not directed to additional
elements that amount to significantly more than the judicial exception . . .
because at the end of the method the game pieces remain game pieces and
the game surface remains [the] game surface”). The Examiner concludes
that
[s]ince the claimed method requires no machine implementation,
requires no transformation of a particular article and is seen as an
attempt to receive patent protection for an abstract idea in the
form of a new set of rules, the examiner takes the position that
the claimed method is not patent eligible.
Final Act. 3, Ans. 3.
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Application 13/481,591
Appellant responds that because the “method of [the] claims must be
played with a specific type of structural playing pieces . . . Here, there is a
transformation of a particular (mechanical-like) article in the process of
playing the claimed game that makes the present claims patent eligible.”
App. Br. 5; id. at 10 (highlighting the language of claim 16 relating to the
playing piece that recites “something more” that makes the claim patent
eligible). Appellant underscores the argument stating that the claim
language reciting that “the convertible top member is configured to be
replaced with another convertible top member ...” “is indeed
transformation: a transformation of the apparatus that the invention is tied to
(i.e., the visual appearance of the specific playing piece) and a
transformation of the role that playing piece has upon conversion.” Id. at 11.
In explaining the argument regarding transformation, Appellant adds that
“[e]ach role-altering playing piece has a structural removable and
convertible top member.” Id. at 14.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice,
134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72—73). According to the
Supreme Court’s framework, we must first determine whether the claims at
issue are directed to one of those concepts (i.e., laws of nature, natural
phenomena, and abstract ideas). Id. If so, we must secondly “consider the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at
72—73). The Supreme Court characterizes the second step of the analysis as
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Application 13/481,591
“a search for an ‘inventive concept’ — i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
(quoting Mayo, 566 U.S. at 73).
Following Alice, the USPTO provided updated Subject Matter
Eligibility Guidance to provide guidance for determining whether an
invention claims ineligible subject matter. Also, several decisions by the
Federal Circuit have since applied Alice. One such decision determined that
claims directed to a “method of conducting a wagering game” using a deck
of “physical playing card[s]” were drawn to an abstract idea. See In re
Smith, 815 F.3d 816, 819 (Fed. Cir. 2016). There, the court held that
“shuffling and dealing a standard deck of cards are ‘purely conventionaF
activities,” and that “the rejected claims do not have an ‘inventive concept’
sufficient to ‘transform’ the claimed subject matter into a patent-eligible
application of the abstract idea.” Id. at 819 (quoting Alice, 134 S. Ct. at
2358-59). However, the court further stated that not “all inventions in the
gaming arts would be foreclosed from patent protection under § 101,” and
that it was possible for “claims directed to conducting a game using a new or
original deck of cards potentially surviving step two of Alice.” Id.
The Examiner determined, and we agree, that the steps of independent
claim 16 “are abstract ideas because they simply instruct how business [(i.e.,
the game)] should be conducted.” Final Act. 2. Following the framework
set forth in Alice, we determine that independent claim 16 is directed to
instructions to players to apply the abstract rules of playing a type of board
game. Abstract intellectual concepts are not patentable. Parker v. Flook,
437 U.S. 584, 589 (1978); Gottschalkv. Benson, 409 U.S. 63, 67-68 (1972).
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Application 13/481,591
Having determined that claim 16 is directed to a patent-ineligible concept,
we must secondly consider the elements of claim 16 individually and as an
ordered combination to determine whether the additional elements of the
claim transform the nature of the claim into a patent-eligible application.
Method claim 16 includes two steps for playing a board game. The
steps include: (1) “providing a plurality of playing pieces . . . [including] an
ultimate piece [and]. . . role-altering playing pieces” and (2) “altering
between the first and second roles whenever the role-altering playing pieces
participate in capture and conversion and wherein role altering takes place
when one player’s playing piece captures and converts the other player’s
playing piece.” See App. Br. 19-20, Claims App. In this case, even though
the “step” limitations of claim 16 describe an abstract idea, i.e., rules, the
claim calls for a specific type of structural pieces, as recited in claim 16
[T]wo distinct visual characteristics with one half of the
playing pieces having one visual characteristic denoting
ownership to a first of the two players and other half having a
second visual characteristic denoting ownership to a second of
the two players;. . . [and] each role-altering playing piece has its
base portion and convertible top member of the same visual
characteristic in a first role and the convertible top member is
configured to be replaced with another convertible top member
of the other visual characteristic in a second role to form a hybrid
characteristic and denote a change of ownership.
App. Br. 20 Claims App.
These specific type of structural pieces distinguish the claimed
method, such as to “‘transform’ the claimed abstract idea into [] patent-
eligible [subject matter].” Alice, 134 S. Ct. at 2357 (quoting Mayo at 79). In
other words, the “role-altering playing pieces” “‘transform the nature of the
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Application 13/481,591
claim’ into [] patent-eligible [subject matter].” See id. at 2355. Claim 16
thus includes ‘“additional features,’” i.e., role-altering playing pieces, that
ensure the claim is “[‘]more than a drafting effort designed to monopolize
the [abstract idea].”’ See id. at 2357.
Furthermore, while it is true that the method steps are carried out by a
human being, they are done so involving the game board and the specific
type of structural pieces as set forth in the claims. The Examiner’s position
that the claims are directed to nothing more than an abstract idea, in effect, is
inappropriately reading limitations out of the claims.
DECISION
For these reasons, we do not sustain the Examiner’s decision rejecting
claims 9-11 and 15—18 under 35 U.S.C. § 101 as being directed to patent
ineligible subject matter.
REVERSED
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