Ex Parte KARN

Patent Trial and Appeal Board

Aug 6, 2014

12845514 (P.T.A.B. Aug. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY D. KARN
____________

Appeal 2012-003731
Application 12/845,514
Technology Center 3700
____________

Before NEAL E. ABRAMS, CHARLES N. GREENHUT,
and LYNNE H. BROWNE, Administrative Patent Judges.

Judge ABRAMS delivered the opinion of the majority.

Judge GREENHUT filed a dissenting opinion.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Jeffrey D. Karn (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-12. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
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THE INVENTION
The claimed invention is directed to a touchscreen game for allowing
simultaneous movement of a plurality of game objects in multiple rows
and/or columns.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An electronic game playable in an amusement device
having a display, the display including a touchscreen
configured to simultaneously receive a plurality of touch inputs,
the game comprising:
(a) a playing area within the display, the playing
area including a plurality of rows and a plurality of
columns which form a grid having a plurality of gaming
spaces;
(b) a plurality of game objects, each of the
plurality of game objects having a first identifier selected
from a predetermined set of first identifiers, one of the
plurality of game objects being disposed within each of
the gaming spaces; and
(c) a set of rules dictating playing of the electronic
game, the rules including:
(i) selecting at least one of the plurality of
game objects and moving the selected game object
from a first gaming space to a second gaming
space within the same row or column as the first
gaming space, unselected game objects disposed in
gaming spaces in the same row or column being
automatically moved a corresponding number of
spaces within the same row or column as the
selected game object, a player being permitted to
select and move a plurality of game objects
disposed within the plurality of gaming spaces in
different rows or columns simultaneously, and a
match being achieved when a predefined number
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of game objects having the same first identifier are
disposed in adjacent spaces within a common row
or column; and
(ii) automatically clearing the game objects
disposed in the adjacent spaces and replacing the
cleared game objects with new game objects, each
new game object having a first identifier selected
from the predetermined set of first identifiers.

THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Thomas US 2009/0191946 A1 July 30, 20091
“iPhone Application – Chuzzle”. YouTube – Broadcast Yourself. [dated
2008-03-10], [online], http://www.youtube.com/watch?v=rH5CaA3h7Ec
(last visited on January 26, 2011). 2 Pages. (Hereinafter “Chuzzle.”)
“iPhone (original)”. From Wikipedia, The Free Encyclopedia [online],
http://en.wikipedia.org/wiki/IPhone_(original) (last visited on January 26,
2011). 7 Pages. (Hereinafter “iPhone.”)2
THE REJECTION
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chuzzle, iPhone, and Thomas.
OPINION
The Examiner finds that all of the subject matter recited in
independent claim 1 is disclosed in Chuzzle, except for the limitation of “a

1 Now U.S. Patent No. 8,062,115 B2, issued Nov. 22, 2011.
2 The Examiner’s explanation of the acquisition and use of these two
references is explained on page 5 of the Examiner’s Answer.
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player being permitted to select and move a plurality of game objects
disposed within the plurality of gaming spaces in different rows or columns
simultaneously.” Ans. 5-7. However, it is the Examiner’s view that “the
iPhone is equipped with a display including a touch screen configured to
simultaneously receive a plurality of touch inputs.” Id. at 7.
[Given] that such multi-touch based technology was readily
available within the amusement devices that the Chuzzle game
was played on (i.e. the iPhone), it appears straightforward
obvious [sic] to a skilled artisan to utilize the technology and
allow multiple inputs within Chuzzle to slide or shift two rows
or two columns simultaneously.
Id. at 7-8. The Examiner adds that this conclusion is confirmed by Thomas,
which “discloses multi-touch touch screen gestures within an amusement
device” to enter a plurality of simultaneous inputs and thus “provides clear
motivation” for modifying Chuzzle. Id. at 8. Thus, the Examiner explains,
Thomas establishes that “there exists a need, and thereby the motivation,” to
modify Chuzzle in the manner proposed, to allow simultaneous movement
of at least two rows and two columns in the Chuzzle game would increase
the speed and challenge of the game. Id.
Appellant argues that Chuzzle does not disclose “any type” of multi-
touch technology utilized in playing the game, nor is there even any
suggestion for doing so,” and that Thomas relates to the use of multi-point
technology for selecting multiple numbers or cards for playing a wagering
game, and for placing a wager in that game, but not for moving a plurality of
game objects simultaneously. Appeal Br. 5. Appellant further argues that
“[iPhone] is silent as to the use of multi-touch technology in a game and,
more particularly, to the concept [of] moving a plurality of game objects
simultaneously.” Id. at 6. Thus, Appellant concludes that even if the
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proposed combination of references were proper, neither Thomas nor iPhone
would overcome the deficiency in Chuzzle, and a prima facie case of
obviousness is not present. Id. Appellant asserts that the Examiner has
failed to provide “‘some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’ KSR Int’l. Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007)( emphasis added),” but “has
employed impermissible hindsight reasoning.” Id. at 7. With reference to
MPEP 2143.01, Section IV, Appellant also asserts that the proposed
modification is improper for it “would change the principle of operation of
the Chuzzle game and would require a substantial reconstruction and
redesign of the game code and rules of play . . .,” for Chuzzle allows
movement of only a single row or column at a time. Id. at 9. With regard to
the Examiner’s motivation to combine the references in the manner
proposed, Appellant argues that the stated advantages “can only be found in
the specification of the present application, particularly at paragraphs [0003]
and [0020] which discuss how a game configuration according to the
claimed invention achieves ‘[f]aster gameplay and more complex
scenarios.’” Reply Br. 6.
We have carefully considered the positions set forth by the Examiner.
However, for the reasons expressed by Appellant in the Appeal Brief and the
Reply Brief, noted supra, the portions of the references cited by the
Examiner fail to support the conclusion that it would have been obvious to
one of ordinary skill in the art to modify the Chuzzle game such that a player
is permitted to select a plurality of game objects and move them
simultaneously, in the manner recited in Appellant’s claim 1.
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Therefore, the Examiner has not established a prima facie case of
obviousness with regard to the subject matter recited in independent claim 1,
and the rejection of claim 1 is not sustained. Claims 2-12 depend from claim
1, and it follows that the like rejection of these claims also is not sustained.

DECISION
The Examiner’s decision rejecting claims 1-12 under 35 U.S.C.
§ 103(a) as being unpatentable over Chuzzle, iPhone, and Thomas is
reversed.

REVERSED

GREENHUT, dissenting.

For the following reasons, I respectfully dissent from the decision of
the majority.

I.
Regarding independent claim 1, the Examiner correctly identifies the
only aspect of the claimed subject matter not expressly disclosed by Chuzzle
relates to the game’s multi-select capabilities:
the display including a touchscreen configured to
simultaneously receive a plurality of touch inputs
. . .
the rules including:
. . .a player being permitted to select and move a
plurality of game objects disposed within the plurality of
gaming spaces in different rows or columns simultaneously.
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Ans. 6–7. The Examiner also correctly found that multi-touch hardware
(iPhone) and multi-select and multi-drag software (Thomas) were well
known in the art at the time of Appellant’s invention. Ans. 7–8 (citing
iPhone at 3 and Thomas, Figs. 7A–11 and paras. 69–86). Thus, the claimed
subject matter involves nothing more than applying the known techniques of
Thomas and iPhone to the known game of Chuzzle. This combination yields
the predictable result of allowing what would typically be done sequentially
to be done simultaneously. Ans. 8.
The cited portion of Thomas (Fig. 11, para. 86) expressly describes
this result of being able to perform more dragging action with two fingers
acting simultaneously than can be achieved with one finger:
The player can also use more than one finger to scratch off a
symbol. By using, for example, two or three fingers, the player
can “scratch off” more of the treasure chest 1102, 1104 than
with one finger.
The desire to “speed[] up game play” is also expressly disclosed in the cited
portions of Thomas. See Para. 75; contra App. Br. 8. Thus, I cannot agree
with the majority that the Examiner resorted to hindsight by citing these
goals as a motivation to combine the references. App. Br. 7–9. Appellant
correctly points out that Thomas does not appear to expressly disclose that
using two fingers at once, as compared to one, increases challenge,
complexity and therefore “amusement.” App. Br. 8. However, I cannot
agree that a disclosure that “doing two things at once is more complex and
challenging than doing a single thing” must be expressly stated in the record
in order to demonstrate the absence of hindsight reasoning by the Examiner.
An obviousness analysis under 35 U.S.C. § 103(a) is not bounded by the
particular motivation expressly described by the prior art. KSR Int'l Co. v.
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Teleflex Inc., 550 U.S. 398, 420 (2007). “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id. at 421.
Appellant’s argument that Chuzzle does not disclose “any type” of
multi-touch technology (App. Br. 4) is not inconsistent with the Examiner’s
position, as the rejection is predicated on the combination of Chuzzle with
other references and not Chuzzle alone. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant also argues that
Thomas’s use of multi-touch technology is not for moving a plurality of
game objects simultaneously. However, “[c]ombining the teachings of
references does not involve an ability to combine their specific structures.”
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements. In re Mouttet,
686 F. 3d 1322, 1332 (Fed. Cir. 2012). Chuzzle already teaches the use of a
dragging action to move an object displayed on a touchscreen. Thomas need
not reteach the use of a dragging action for that exact same purpose to
support a rejection under 35 U.S.C. § 103(a). The test for obviousness is not
whether the claimed invention is expressly suggested in any one or all of the
references, but whether the claimed subject matter would have been obvious
to those of ordinary skill in the art in light of the combined teachings of
those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Furthermore, the cited embodiments of Thomas, particularly those depicted
in Figures 9A-10B, do expressly teach using multiple fingers to move
multiple objects such as the hands (at points 902, 904) of a man (Figs. 9A–
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B), or the base (at point 1002) and pocket 1004 of a slingshot 1000 (Figs.
10A–B).
I also cannot agree with the majority that the Examiner’s
proposed modification “would change the principle of operation of the
Chuzzle game and would require a substantial reconstruction and
redesign of the game code and rules of play . . . .” App. Br. 9. I do
not see how Appellant can, on the one hand, argue that the principle
of operation would change and substantial reconstruction would be
required, while on the other hand, set forth a claim that covers subject
matter in which every aspect of Chuzzle’s game is maintained. The
principle of operation of Chuzzle is to move rows and columns to
create matches, not to restrict movement to only a single row or
column. Contra App. Br. 9. Matches could still be made by doing
simultaneously what had previously been done sequentially. Thus, I
cannot agree with the majority that the proposed modification to
Chuzzle changes the game’s principle of operation and requires a
substantial reconstruction and redesign.
For these reasons, I respectfully dissent from the decision of the
majority to reverse the Examiner’s rejection.

II.
I additionally note that the Examiner, Appellant, and the majority
seem to presume a very narrow construction of claim 1, giving patentable
weight to the so-called “set of rules dictating playing of the electronic
game.” This limitation could arguably be interpreted to cover software
embodied in a tangible medium, but it could also be read to cover
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instruction-like textual information for playing the game. If it covers only
the former, as the Examiner, Appellant, and the majority seem to presume, I
would agree that it could serve to patentably distinguish over the prior art.
See, e.g., Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108,
1117–18 (Fed.Cir. 2002) (“[to meet the claim] the software underlying a
computer program that [performs a particular function] must be written in
such a way as to enable the computer to carry out the functions defined by
[the claim limitations]”). Nevertheless, for the reasons discussed above, I
would still conclude that it does not.
If limitation (c) is interpreted to include instruction-like textual
information, then it would describe the electronic equivalent to printed
matter. This limitation would present “neither a new physical structure nor a
new relation of printed matter to physical structure” because games typically
come with rules dictating play, i.e., “permitted” actions. See In re Bryan,
323 Fed.Appx. 898, 902 (Fed. Cir. 2009)(unpublished). Construed this way,
the claimed “game” would comprise the elements set forth in limitations (a)
and (b), with limitation (c) describing only rules for gameplay. A person
cannot continue patenting a game indefinitely provided they attach a new set
of rules. Id. (citing In re Ngai, 367 F.3d 1336, 1339 (Fed.Cir.2004)); see
also Ex parte Gwinn, 112 USPQ 439, 446–47 (Bd. Pat. App. & Int. 1955)
and MPEP § 2111.05.
Claim construction is a question of law. Markman v. Westview
Instruments, Inc., 517 US 370, 390 (1996). We are not bound to adopt or
accept a particular construction because it is the only one offered. See
Bancorp Services v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1274
(Fed. Cir. 2012)(noting, albeit in the context of a litigation, that appellate
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judges have an independent obligation to construe the claims and need not
accept the constructions proposed by either party)(citations omitted). I see
no reason, based on the language of the claims themselves or the remainder
of the Specification to construe the claims as narrowly as the Examiner,
Appellant, and the majority. Thus, I would also affirm the Examiner’s
rejection because including rules dictating game play that do not have some
functional relationship with the game’s structure, does not affect the
structure of the claimed game.3 See In re Bryan, 323 Fed.Appx. at 901–2.

llw

3 I understand “playable” on a device to require the game to be installed on a
device since the body of the claim positively requires game aspects to be
“within the display.” Thus, I understand this claim to be directed to the
combination of the game embodied in a device having a multi-touch display.
See, e.g., Fantasy Sports Props., Inc. v. Sportsline.com, Inc., supra; In re
Beauregard, 53 F.3d 1583 (Fed.Cir.1995); cf e.g., IPXL Holdings, LLC v.
Amazon. com, Inc., 430 F. 3d 1377, 1383-4 (Fed. Cir. 2005) (holding that a
claim involving both structure and steps did not provide the public with
adequate notice as to who would be liable for infringement and/or
contributory infringement).