Ex Parte Kim

Board of Patent Appeals and Interferences

Nov 25, 2008

11059597 (B.P.A.I. Nov. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STANLEY A. KIM
__________

Appeal 2008-5041
Application 11/059,597
Technology Center 3700
__________

Decided: November 25, 2008
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a test
preparation product, which the Examiner has rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant’s Specification discloses “test preparation devices including
a set of problem cards adapted for use in a board game” (Spec. 1). “In
addition to containing a question in an academic subject or test area, each
problem card of the invention can be marked with at least one discernible
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Application 11/059,597

identifier that corresponds to one or more discrete game token spaces on a
game board” (id.). The discernible identifier can be, for example, “a shape,
color, symbol/icon, or alphanumeric character or string of characters” (id. at
2). “[T]he problem cards can be designed for use with game boards that a
student/test taker might already own and have previously played for
recreational purposes” (id. at 2).
Claims 10-21 are pending and on appeal. The claims subject to each
rejection have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 10 is representative and reads
as follows:
10. A test preparation device compatible for use with a game board
comprising at least a first game token space and a second game space, the
device comprising a plurality of problem cards each having thereon at least
one question in a test area consisting of subject matter from a standardized
test, the plurality of problem cards comprising at least (a) a first card
comprising (i) a first discernible identifier corresponding to the first game
token space and a first subset of the test area and (ii) a first test preparation
question relating to the first subset of the test area and (b) a second card
comprising (i) a second discernible identifier corresponding to the second
game token space and a second subset of the test area and (ii) a second test
preparation question relating to the second subset of the test area, wherein
the first discernible identifier differs from the second discernible marking,
the first test preparation question differs from the second test preparation
question, and the first subset differs from the second subset.

The claims stand rejected as follows:
• Claims 10-17 under 35 U.S.C. § 103(a) as obvious in view of
Olutunfese1 and Zelmer;2

1 Olutunfese, U.S. Patent 6,547,245 B1, issued April 15, 2003.
2 Zelmer, U.S. Patent 5,645,280, issued July 8, 1997.
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Application 11/059,597

• Claims 18 and 19 under 35 U.S.C. § 103(a) as obvious in view of
Olutunfese, Zelmer, and Charouhas;3 and
• Claims 20 and 21 under 35 U.S.C. § 103(a) as obvious in view of
Olutunfese, Zelmer, and Britton.4
OBVIOUSNESS
Issue
The Examiner finds that Olutunfese discloses cards having discernible
identifiers associated with game spaces and questions, and that Zelmer
discloses questions relating to subject matter from a standardized test. The
Examiner concludes that it would have been obvious to combine the
questions taught by Zelmer with the game cards taught by Olutunfese, and
therefore the product of claim 10 would have been obvious (Office action
mailed Aug. 27, 2007, at 2).
Appellant contends that the Examiner’s rejection relies on the present
Specification as a basis for combining the elements found in the prior art
(App. Br. 8-9).
The issue to be decided is: Did the Examiner err in concluding that
the claimed product would have been obvious in view of Olutunfese and
Zelmer?
Findings of Fact
1. Zelmer discloses a board game to increase players’ vocabularies
(Zelmer, col. 1, ll. 29-31).

3 Charouhas, U.S. Patent 5,273,431, issued Dec. 28, 1993.
4 Britton, U.S. Patent 1,327,019, issued Jan. 6, 1920.
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Application 11/059,597

2. Zelmer states that, as a result of playing the game, players’
“readiness for standardized tests, such as the Scholastic Aptitude Test and
Graduate Record Examination, will be enhanced” (id. at col. 1, ll. 32-33).
3. Zelmer’s Figure 1 is reproduced below:

The figure shows a square game board with game spaces around its
perimeter. Some of the game spaces are marked with a letter (or group of
letters) of the alphabet and others have game-events indicated on them.
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Application 11/059,597

4. Zelmer’s Figures 9 and 10 are reproduced below:

Figure 9 shows a card holder containing a set of game cards; Figure
10 shows an example of a game card (id. at col. 2, ll. 31-35).
5. Zelmer discloses that “[i]f a player’s place marker lands on a space
designated by a letter or letter group . . . , that player must correctly
pronounce and define a vocabulary word on a word definition card 59
chosen from a card deck 91 with the appropriate letter designation stored in
card holder 92” (id. at col. 4, ll. 23-28).
6. The card 59 “bear[s] the word on one side 61 and the
pronunciation and definition on the other [side] 62” (id. at col. 4, ll. 30-32).
Zelmer’s Figure 10 shows that each card bears the “LETTER” category of
the word to be defined, as well as the word itself.
Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
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“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987).
“[A]nticipation is the epitome of obviousness.” Connell v. Sears,
Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).
Analysis
Claim 10 is directed to a product that comprises two cards, each of
which includes (1) a discernible identifier that corresponds to a game token
space and a subset of a test area, and (2) a question relating to that subset of
the test area. The two cards include different identifiers and questions, and
relate to different subsets of the test area.
Zelmer discloses a game that includes cards that have a letter on them
corresponding to a game token space of Zelmer’s game board. A
“discernible identifier” can be a letter. A “test area” is reasonably
interpreted to encompass vocabulary words, and the limitation requiring
different “subsets” of the test area encompasses vocabulary words beginning
with different letters of the alphabet. Thus, Zelmer’s discernible identifier (a
letter of the alphabet) corresponds to a subset of the test area (vocabulary
words with that letter) and Zelmer’s cards contain a question relating to that
subset. Zelmer’s game includes cards relating to different subsets of the test
area (i.e., vocabulary questions beginning with different letters of the
alphabet).
Zelmer discloses that use of the game (including the game cards)
enhances players’ readiness for standardized tests such as the SAT or GRE.
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The cards disclosed by Zelmer therefore meet all of the limitations of claim
10. Since anticipation is the epitome of obviousness, Zelmer (alone or with
Olutunfese) also would have made obvious the product of claim 10.
The Examiner also rejected claims 18 and 19 as obvious in view of
Olutunfese, Zelmer, and Charouhas, and rejected claims 20 and 21 as
obvious in view of Olutunfese, Zelmer, and Britton (Ans. 3). With respect
to these rejections, Appellant relies on his argument that Olutunfese and
Zelmer would not have made obvious the product of claim 10 (App. Br. 8-
9). We disagree with that position for the reasons discussed above.
Appellant has not disputed the Examiner’s conclusion that Charouhas or
Britton would have suggested the additional limitations of claims 18-21.

CONCLUSION OF LAW
The Examiner did not err in concluding that the claimed product
would have been obvious in view of Olutunfese and Zelmer.

SUMMARY
We affirm the rejection of claims 10-17 under 35 U.S.C. § 103(a)
based on Olutunfese and Zelmer; the rejection of claims 18 and 19 under 35
U.S.C. § 103(a) based on Olutunfese, Zelmer, and Charouhas; and the
rejection of claims 20 and 21 under 35 U.S.C. § 103(a) based on Olutunfese,
Zelmer, and Britton.
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Application 11/059,597

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Ssc:

STANLEY A. KIM
12697 HEADWATER CIRCLE
WELLINGTON, FL 33414
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