Ex Parte Kim

Patent Trial and Appeal Board

Oct 29, 2014

12137349 (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STANLEY A. KIM
____________________

Appeal 2012-009323
Application 12/137,349
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1–
17. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a test preparation method. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1 A method for a standardized school admissions test, the
method comprising the steps of providing a test preparation
device compatible for use with a game board comprising at
least a first game token space and a second game token space,
the device comprising a plurality of problem cards each having
thereon at least one question in a first test area consisting of
subject matter from the standardized school admissions test, the
plurality of problem cards comprising at least (a) a first card
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comprising (i) a first discernible identifier corresponding to the
first game token space and a first subset of the first test area, (ii)
a first multiple choice test preparation question relating to the
first subset of the first test area, (iii) a correct answer to the first
test preparation question; and
(b) a second card comprising (i) a second discernible
identifier corresponding to the second game token space and a
second subset of the first test area and (ii) a second multiple
choice test preparation question relating to the second subset of
the first test area, and (iii) a correct answer to the second test
preparation question;
wherein the first discernible identifier differs from the
second discernible identifier, the first test preparation question
differs from the second test preparation question, and the first
subset of the first test area is geometry and the second subset of
the first test area is algebra;
providing the game board;
having the first person read the first test preparation
question on the first card to the second person;
allowing the second person to provide an answer to the
first test preparation question;
having the first person determine whether the second
person's answer is the same as the correct answer to the first test
preparation question;
having the second person read the second test preparation
question on the second card to the first person;
allowing the first person to provide an answer the second
test preparation question; and
having the second person determine whether the first
person's answer is the same as the correct answer to the second
test preparation question.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

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Zelmer
Keneller
Mullen
US 5,645,280
US 2005/0194740 A1
US 2008/0128988 A1
July 8, 1997
Sept 8, 2005
June 5, 2008

REJECTIONS
Claims 1–15 are rejected under 35 U.S.C. § 101. Final Rej. 21
Claims 1, 9, 10, 11, 16 and 17 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Zelmer and Keneller. Final Rej. 3.
Claims 12–15 are rejected under 35 U.S.C. 103(a) as being
unpatentable over of Zelmer, Keneller, and Mullen. Final Rej. 5.

OPINION
The Examiner’s rejection under 35 U.S.C. § 101 is affirmed.
The Examiner determined the subject matter of claims 1–15 does not
pass the machine-or-transformation test and concluded that this weighs
against the claims being directed to statutory subject matter. Final Rej. 2.
The Examiner considers the recited physical elements of cards and a game
board “tangential to the performance of the essential elements of the
method.” Id. The Examiner considers the transformation, learning, one that
takes place only in the human mind and therefore, not the type of
transformation that would satisfy the machine-or-transformation test. Id.
Thus, the Examiner concludes that the claims are directed to a patent-
ineligible abstract idea. Id.
Appellant argues the claims as a group and we select claim 1 as
representative. Appellant contends that the claimed method “results in a
person being better prepared to take a standardized test—which is a useful,

1 Mailed September 7, 2011.
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tangible (real world) and concrete (repeatable) result.” App. Br. 12. As
mental processes are not patentable (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)) the Examiner correctly determined that a purely mental, as opposed
to a physical transformation, would not satisfy that prong of the machine-or-
transformation test.2 Written information or printed matter per se has long
been held outside the scope of the statutorily defined categories of patent-
eligible subject matter. See, e.g., In re Reeves, 62 F.2d 199 (CCPA 1932).
Written information, rejected as non-statutory, is directed to the same result,
learning, as Appellant’s claimed method. Thus, we must agree with the
Examiner that any conveyance of knowledge or information that may be
caused by the questions and answers involved in Appellant’s method is not
the type of “transformation” that would tend to demonstrate that a claim is
directed to statutory subject matter. We therefore agree with the Examiner
that the claim is directed to an unpatentable abstract idea.
Appellant also contends that the Examiner has improperly read
elements out of the claims. App. Br. 12. Appellant takes issue with the
Examiner’s methodology without directing our attention to any specific
claim language that serves to “‘transform’ the claimed abstract idea into a
patent-eligible application.” See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S.Ct. 2347 (2014)(citing Mayo Collaborative v. Prometheus Labs.,
132 S. Ct. at 1297). The Supreme Court and the Court of Appeals for the
Federal Circuit have warned “against interpreting patent statutes in ways that

2 While the machine-or-transformation test should not be regarded as the
sole test for patent subject matter eligibility, it is an important and useful
clue in making that determination. Mayo Collaborative v. Prometheus
Labs., 132 S. Ct. 1289, 1296 (2012) (citing Bilski v. Kappos, 130 S. Ct.
3218, 3226 (2010)).
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make patent eligibility ‘depend simply on the draftsman’s art.’” See, e.g.,
Mayo Collaborative v. Prometheus Labs., 132 S. Ct. at 1294 (citations
omitted). “[C]laim drafting strategies that attempt to circumvent the basic
exceptions to § 101 using, for example, highly stylized language, hollow
field-of-use limitations, or the recitation of token post-solution activity
should not be credited.” CLS Bank Int’l v. Alice, 717 F.3d 1269 (Fed. Cir.
2013)(Aff’d at Alice Corp, supra). In light of the entirety of the claim and
the Specification, we must conclude that the underlying invention here is
directed to a method of teaching or learning by providing a card or game
board having printed matter used to communicate information. See, e.g.,
CyberSource v. Retail Decisions, 654 F.3d 1366, 1374 (Fed. Cir. 2011) (“we
look to the underlying invention for patent-eligibility purposes.”). That
method is what solves the stated problem of educating students in a less
tedious way than using flash cards. See Spec. p. 1. The use of flash cards
themselves is recognized as “routine” and “conventional.” Spec. p. 1; see
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. at 2359. Organizing how
those cards are selected by using a game board is the type of token “[pre]-
solution activity” that is not normally sufficient to transform unpatentable
subject matter into patent-eligible subject matter. See, Mayo Collaborative
v. Prometheus Labs., 132 S. Ct. at 1298.
Accordingly, we affirm the Examiner’s rejection under § 101.

The Examiner’s rejections under 35 U.S.C. § 103(a) are affirmed.
Appellant argues all claims rejected under § 103(a) as a group. App.
Br. 13. Claim 1 is representative of the rejection based on Zelmer and
Keneller and Appellant has waived the right to independent consideration of
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the rejection based on Zelmer, Keneller, and Mullen.
37 C.F.R. § 41.37(c)(1)(vii); Hyatt v. Dudas, 551 F. 3d 1307, 1314 (Fed.
Cir. 2008).
Appellant contends that the rejections under § 103(a) are improper
because the Examiner did not give weight to the content of the questions on
the problem cards employed in the claimed method. App. Br. 15 (pointing
out that Zelmer’s cards relate to vocabulary and do not contain questions on
the test areas recited, such as “algebra” or “reading comprehension”). The
topics recited are the only features Appellant asserts distinguishes the
claimed subject matter from the prior art. The Examiner determined that the
recitation of a particular topic, or “test area,” constituted a distinction that
related only to printed matter not having any new and nonobvious functional
relationship with its substrate. Final Rej. 3–4.
The Examiner correctly determined that the recitation of a particular
test area to which the questions on the problem cards relate, involves only
printed matter that lacks the requisite functional relationship to its substrate
to be entitled patentable weight. See In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (“Where the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability.[ ] Although the printed matter must be
considered, in that situation it may not be entitled to patentable weight.”)
The printed matter, the question, in no way depends on the substrate card,
and the substrate does not depend on the printed matter. See In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004). That is, the communicative function of
the printed questions, to convey information about a particular test area to a
student, can be performed without being on “problem cards.” Even
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assuming, arguendo, there is some functional relationship between the cards
and the questions, it is clearly not a new and non-obvious one (Final Rej. 3)
because “students have long used flash cards to prepare for examinations.”
Spec. p. 1.
We cannot agree with Appellant that the holding of Ngai should be
limited to only sets of instructions. See App. Br. 14. The point made in
Ngai was that merely communicating information about a product on an
ordinary substrate was not the type of printed-matter-substrate relationship
that could be relied upon to distinguish over the prior art product.
Appellant’s questions perform a similar function in that they communicate
information to a student. The questions are not even related to the substrate
or the attached product like the instructions in Ngai, making the applicability
of the printed-matter doctrine even less questionable than in Ngai.
We also cannot agree with Appellant that Ngai was wrongly decided.
See App. Br.14. We do not agree that the court overlooked the fact that a
new patent would be directed, not to the product itself, but the combination
of the product and the instructions, as the court stated “ . . . provided that
they add a new instruction sheet to the product.” In re Ngai, 367 F.3d at
1339. The conditions for patentability set forth in 35 U.S.C. §§ 102 and 103
require an invention to be new and nonobvious, not merely the way of
describing it. Allowing a patent based on ways of describing the invention,
or describing a use of the invention, as in Ngai, would effectively erode the
rights of the patentee, or the public after the expiration of the patent, by
merely including literature, which may be new and nonobvious, but is itself
not patent eligible. This, we believe, was the court’s concern in Ngai. See,
e.g., In re Huai-Hung Kao, 639 F. 3d 1057, 1073 (Fed. Cir. 2011).
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Courts have recognized that all printed matter is not created equal, and
have drawn a distinction between printed matter functionally related to its
substrate, and therefore acting like any other functioning part of a process,
machine, manufacture or composition of matter, and printed matter whose
primary purpose is the conveying of intelligence or information to a reader,
on a substrate commonly used for that purpose. See, e.g., In re Jones, 373
F.2d 1007, 1012 (CCPA 1967). The content of Appellant’s questions,
serving to convey information upon which the user will be tested, is the
latter. The questions, and the knowledge they impart, are “useful and
intelligible only to the human mind.” See In re Bernhart, 417 F.2d 1395,
1399 (CCPA 1969). If we were to adopt Appellant’s position, anyone could
continue patenting card games indefinitely provided that they add new and
nonobvious questions or other text to the cards. See In re Ngai, supra.
Patentable distinctions premised only on literary content were not envisioned
by Gulack. Id. Absent the requisite functional relationship between the
printed matter and the substrate, the substance of printed matter will not
patentably distinguish one method from another. King Pharms., Inc. v. Eon
Labs, 616 F.3d 1267, 1279 (Fed. Cir. 2010).
Accordingly, we sustain the Examiner’s rejections under 35 U.S.C.
§ 103(a).

DECISION
The Examiner’s rejections are affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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