Ex Parte Kingsley

Patent Trial and Appeal Board

Sep 9, 2016

13665259 (P.T.A.B. Sep. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/665,259
58076 7590
REED SMITH LLP
101 Second Street
Suite 1800
FILING DATE
10/31/2012
09/13/2016
SAN FRANCISCO, CA 94105
FIRST NAMED INVENTOR
Mimi Kingsley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
362162.00310 4920
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/13/2016 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):
ipdocket-chi@reedsmith.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIMI KINGSLEY
Appeal 2015-000821 1,2
Application 13/665,259
Technology Center 3700
Before PHILIP J. HOFFMANN, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 12-17 and 21-29. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the invention relates "to a tile-based multi-
player board game that may be implemented as a physical board game or an
electronic game." Spec. 1, 11. 5---6. Claims 12, 22, and 23 are the only
1 Our decision references Appellant's Specification ("Spec.," filed Oct. 31,
2012) and Appeal Brief ("Br.," filed May 19, 2014), as well as the
Examiner's Answer ("Answer," mailed June 30, 2014).
2 According to Appellant, Warifu LLC is the real party in interest. Br. 1.
Appeal2015-000821
Application 13/665,259
independent claims under appeal. See Br., Claims App. Below, we
reproduce claim 12, as representative of the appealed claims.
12. A method of playing a board game, the game board
comprising M rows and N columns, the method comprising:
placing a Comer Tile at each of four comers of the game
board;
placing a Frame Tile, the Frame Tile having an indicia of
a numeral, on a first end of each of the second through M-1 rows;
placing a Frame Tile on a second end of each of the second
through M-1 rows, wherein the indicia of a numeral on the Frame
Tile for each second end of each row matches the indicia of a
numeral on each of the respective Frame Tiles on the first end of
each of the second through M-1 rows;
placing a Frame Tile, the Frame Tile having an indicia of
a numeral, on a first end of each of the second through N-1
columns;
placing a Frame Tile on a second end of each of the second
through sixth rows, wherein the indicia of a numeral on the
Frame Tile for each second end of each row matches the indicia
of a numeral on each of the respective Frame Tiles on the first
end of each of the second through N-1 columns;
assigning a unique set of Game Tiles to each player or
team;
each player or team in tum placing a Game Tile from the
unique set on a playing square, each playing square comprising
a space in rows two through M-1 and columns two through N-1,
each Game Tile having an indicia of a numeral; and
each player or team continuing in tum to place Games
Tiles on playing squares until one player or team has placed its
respective Game Tiles completely filing the playing squares on
any row or column, such that a sum of the indicia of the numbers
on the Game tiles in the playing squares matches the indicia of a
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Appeal2015-000821
Application 13/665,259
Id.
numeral on the Frame Tiles located at either end of the row or
column.
REJECTION
The Examiner rejects claims 12-17 and 21-29 under 35 U.S.C. § 101
as directed to non-statutory subject matter. See, e.g., Answer 2-3.
ANALYSIS
The Examiner rejects claims 12-17 and 21-29 under 35 U.S.C. § 101
as directed to non-statutory subject matter. See, e.g., Answer 2-3. In the
rejection, the Examiner indicates that the rejection is "based upon [the
USPTO's] ... 'Interim Guidance for Determining Subject Matter Eligibility
for Process Claims in View of Bilski v. Kappos"' (75 Fed. Reg. 43,922
(July 27, 2010)). Id. at 3. The Examiner sets forth the following rationale to
' '1 • ' • suppon me reJecuon:
Claimed steps in playing a board game are abstract ideas because
they simply instruct how business should be conducted, for
example rules that may be applied for placing game pieces on a
game surface selected from infinite number of possible
hypothetical ways game pieces may be placed. In playing this
board game there is no repeatable result or real world result. The
claim is an effort to patent abstract rules. Accordingly claims are
abstract ideas.
Id. at 2-3. The Examiner further determines that
[t]he claimed invention does not recite a sufficient tie to a
machine or apparatus. The machine or apparatus should
implement the process (method steps), and not merely be an
object upon which the process operates. The claims should be
clear as to how the machine or apparatus implements the process.
The claimed apparatus of "a plurality of game tiles", "game
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Appeal2015-000821
Application 13/665,259
board with frame tiles and comer tiles" are merely objects upon
which the process (method steps) operates, and do not by itself
implement the process (method steps). The claimed steps of
"placing a frame tile, placing a comer tile", "assigning a set of
game tiles", "filling the player squares" do not inherently require
the use of a specific machine to perform the steps. The machine
or apparatus limitations should make clear that the use of the
machine or apparatus in the claimed process imposes a
meaningful limit on the claim's scope, and does use a machine
involving more than insignificant extra-solution activity.
Also, there is no transformation in these method claims.
The claimed steps of "placing a frame tile, placing a comer tile",
"assigning a set of game tiles", "filling the player squares" do not
inherently require the use of a specific machine to perform the
steps do not transform the "plurality of game tiles" or "game
surface with frame tiles or comer tiles" into a different state or
thing. The step of "placing a game tile on a surface" only seems
to produce a visual situation (making a game piece visible). The
game pieces remains a game pieces and the playing surface
remains a playing surface from beginning to end of the process
and do not transform into a different state.
Answer 6-7 (emphasis omitted). Further, the Examiner determines that
several factors weighing toward and against patent eligibility
have been analyzed by the Examiner, including but not limited
to the machine and transformation factors and the abstract idea
or general concept factors discussed above. See the ... Federal
Register notice . . . for a complete list of factors that were
considered by the Examiner in the above analysis. Specifically,
the lack of implementation by a particular machine or the
transformation of a particular article, and the apparent attempt to
claim an abstract idea in the form of a new set of rules are all
factors that weigh against eligibility. The fact the claim may be
more than a mere statement of a concept in that an actual method
of playing the game is claimed versus just a new set of rules may
be a factor weighing towards patent eligibility. However, in this
case that factor weighing towards eligibility is not given much
weight since the use of the concept, as expressed in the method,
would effectively grant a monopoly over the concept. It is this
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Appeal2015-000821
Application 13/665,259
Examiner's opm10n that the factors in this case weighing against
patent eligibility far outweigh the factors weighing toward patent
eligibility.
Answer 8-9 (emphasis omitted).
Although the Examiner discusses whether the claimed game is
directed to an abstract idea (see, e.g., Answer 7-9), the Examiner's analysis
appears to be largely based on the machine-or-transformation test, which
was displaced by the Court's decision in Bilski v. Kappas, 561 U.S. 593
(2010). As such, it is not clear that the Examiner's reasoning is consistent
with the "Interim Guidance for Determining Subject Matter Eligibility for
Process Claims in View of Bilski v. Kappos," which was in place at the time
of the Final Office Action. In any event, we proceed to analyze the question
of whether the claimed invention is directed to unpatentable subject matter
under the framework of the Court in Alice Corp. v. CLS Bank Int 'l, 134
S.Ct. 2347 (2014) which followed the two-part test set forth in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1293 (2012).
First, as to whether the claim is directed to an abstract idea, law of
nature, or natural phenomenon, see Alice, 134 S.Ct. at 2355, the Examiner
does not establish that the claimed board game is directed to an abstract idea.
To the extent that the Examiner states that the abstract idea is "abstract
rules" (Ans. 3), the Examiner fails to demonstrate sufficiently that the
combination of the claimed rules with the claimed game board and claimed
tiles is abstract.
Because we resolve this issue after consideration of the first step of
the Alice test, we need not reach the second step of the Alice test, e.g., as to
whether there are further claim limitations that contain an "inventive
concept" sufficient to "transform" an abstract idea into a patent-eligible
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application. See Alice, 134 S.Ct. at 2357; USPTO 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618, 74,621 (Dec. 16,
2014). For these reasons, we do not sustain the Examiner's rejection under
35 U.S.C. § 101 of claims and its dependent claims.
DECISION
We REVERSE the Examiner's rejection of claims 12-17 and 21-29.
REVERSED
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