Ex Parte Kuester et al

Patent Trial and Appeal Board

May 6, 2015

12033611 (P.T.A.B. May. 6, 2015)

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.
12/033,611 02/19/2008 Deitra A. Kuester 157811-3 6622
97242 7590 05/06/2015
Kutak Rock LLP
2300 Main Street, Suite 800
Kansas City, MO 64108
EXAMINER
BALDORI, JOSEPH B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
05/06/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEITRA A. KUESTER and ERIC J. KUESTER
____________

Appeal 2013-001127
Application 12/033,611
Technology Center 3700
____________________

Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Deitra A. Kuester and Eric J. Kuester (Appellants) appeal under
35 U.S.C. § 134(a) from the rejection of claims 12–17, 24, and 25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 12, reproduced below, illustrates the subject matter on appeal:
12. A method of teaching comprising:
arranging a plurality of cards on a base to indicate a path
of movement, wherein said base comprises a plurality of
compartments, sized and shaped to receive and retain each card
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in place for the duration of a game after said cards have been
arranged in one of a plurality of different configurations;
playing a game on said base in accordance with
predetermined rules; and
retaining each card in place for the duration of a game;
wherein a game piece is advanced along said path of
movement from one of said plurality of cards arranged on said
base to another of said plurality of cards arranged on said base.
Reply Br. 8, Claims App.
1

PRIOR ART
The Examiner relies on the following evidence in rejecting the claims
that are the subject of this appeal:
Eaton
Bellizzi
LaCivita
Cuss

US 4,854,594
US 5,657,992
US 5,836,585
US 6,349,941 B1

Aug. 8, 1989
Aug. 19, 1997
Nov. 17, 1998
Feb. 26, 2002

GROUNDS OF REJECTION
Claims 12–17, 24, and 25 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Final Act. 2.

1
The Claims Appendix in the Appeal Brief reflects amendments to Claim 12
that Appellants sought to introduce at the time of the Appeal Brief. See
Appeal Br. 20, Claims App. The Examiner declined to enter these
amendments. See Ans. 3. Appellants contend that the proposed
amendments put the rejected claims in a better form for consideration on
appeal. See Reply Br. 2. But the Examiner’s refusal to enter the amendment
after final is a petitionable matter and not within the Board’s jurisdiction. 37
C.F.R. § 1.127; In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002). In any
event, Appellants have agreed to proceed with this appeal based on the
claims filed on September 22, 2011, which are the claims that were rejected
in the Final Office Action mailed October 6, 2011 (hereinafter, the “Final
Action”). See Reply Br. 2.
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Claims 12–15, 17, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Eaton and LaCivita. Id. at 3.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eaton, LaCivita, and Bellizzi. Id. at 5.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eaton, LaCivita, and Cuss. Id.

OPINION
Non-Statutory Subject Matter Rejection
The Examiner determines that the subject matter of claims 12–17, 24,
and 25 is directed to a patent-ineligible abstract idea. See Final Act. 2. In
particular, the Examiner states that claim 12 “is a clear attempt to claim an
abstract idea in the form of a new set of rules for playing a game.” Id. at 7.
In support of this determination, the Examiner explains that “no particular
machine is required to perform the claimed method steps, nor do the steps
result in any transformation of a particular article.” Id. at 6.
In reaching the determination of patent-ineligibility, the Examiner
applied 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) (hereinafter “2010 Interim Guidance”).
See Final Act. 8. The 2010 Interim Guidance applied by the Examiner was
developed before the Supreme Court issued decisions further explaining
patent-eligibility under § 101 in Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289 (2012) and Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). We apply the framework set forth by the
Supreme Court “for distinguishing patents that claim laws of nature, natural
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phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355 (2014) (citing
Mayo, 132 S. Ct. at 1294 (2012)).
According to that framework, we must first determine whether the
claims at issue are directed to a patent-ineligible concept. 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.
The second step of the analysis is “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.
With respect to the first step of the Alice framework, we agree with
the Examiner that claim 12 is directed to an abstract idea. See Final Act. 7.
Claim 12, which recites “[a] method of teaching,” includes steps for
arranging cards on a base to indicate a path of movement, playing a game on
the base, and retaining each card in place for the duration of the game.
Reply Br. 8, Claims App. We agree with the Examiner that this claim is
directed to the rules for playing a type of game, and that rules for playing a
game constitute an abstract idea. See Final Act. 7. We view a method of
playing a game as being akin to the “method of organizing human activity” that
was at issue in Alice. 134 S. Ct. at 2356. We also note that the Manual of
Patent Examining Procedure identifies “a game defined as a set of rules” as
an example of a claim not directed to one of the statutory categories of
patent-eligible subject matter. See MPEP § 2106 (9th ed., Mar. 2014).
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Having determined that claim 12 is directed to a patent-ineligible
concept, we must secondly consider the elements of claim 12 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. The Examiner’s analysis under the machine-or-transformation
test is germane to this second step of the Alice framework. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. Nov. 14, 2014) (holding that
although the machine-or-transformation test is not the sole test governing § 101
analyses, it “can provide a ‘useful clue’ in the second step of the Alice
framework”).
The Examiner notes that claim 12 recites cards and a base, but
determines that because the cards and base
do not actually perform the step of arranging a plurality of
cards, or of playing the game, and since the method could be
performed with common game playing items (e.g. a deck of
cards and a table) this is not considered the use of a particular
machine to perform any step of the claimed method, nor is it a
meaningful tie to a machine or apparatus.
Ans. 10. Appellants argue that the claimed method is tied to a particular
apparatus insofar as it recites a base having compartments sized and shaped
to receive and retain cards. See App. Br. 12–13. Appellants assert that the
base cannot be any ordinary table, as the Examiner contends, because
playing a game on a table would not satisfy these express limitations in
claim 12. See id. at 13; see also Reply Br. 5 (“The method claims literally
cannot occur without the physical articles described in the claims.”).
We agree with Appellants that the Examiner’s analysis, in effect,
inappropriately reads limitations out of claim 12. We note that the claim
recites that the base includes compartments “sized and shaped to receive and
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retain each card in place for the duration of a game after said cards have
been arranged in one of a plurality of different configurations.” Reply Br. 8,
Claims App (emphasis added). The claim further recites “retaining each
card in place for the duration of a game.” Id. Thus, contrary to the
Examiner’s position, the method could not be performed with a generic deck
of cards and a table because playing a game on an ordinary table would not
satisfy these limitations. These limitations tie the method to a base having
specific structural characteristics that allow it to perform a specified function
in the claimed method. Accordingly, these limitations add a degree of
particularity so as to “‘transform’ the claimed abstract idea into [] patent-
eligible [subject matter].” Alice at 2357 (quoting Mayo at 1298).
For these reasons, we do not sustain the Examiner’s decision rejecting
claims 12–17, 24, and 25 under 35 U.S.C. § 101 as being directed to patent
ineligible subject matter.

Obviousness Rejections
Appellants argue claims 12–15, 17, and 24 as a group. App. Br. 16.
We select claim 12 as representative. See 37 C.F.R. § 41.37(c)(1)(iv)
(2012). Claims 13–15, 17, and 24 stand or fall with claim 12.
The Examiner finds that Eaton teaches a method as recited in claim
12, except that Eaton does not teach “retaining each card in its place for the
duration of the game.” Final Act. 3–4. The Examiner finds that LaCivita
teaches a board game in which cards are placed and retained in place for the
duration of a game. Id. at 4 (citing LaCivita, col. 2, ll. 46–49). The
Examiner determines that it would be obvious to add to Eaton’s board game
the feature of retaining the cards in place for the duration of the game as
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taught by LaCivita “for the purpose of adding the feature of being able to
win the cards on the board, adding a ‘trading card’ feature to the game as
taught by LaCivita (background), making the game more entertaining, and
more attractive to the users.” Id. Additionally, the Examiner determines
that it would have been an obvious matter of design choice to have retained
the cards in place because it is known in the art of board games to associate
a space with a question card. Id. (referencing “Trivial Pursuit” prior art
game discussed in Background section of Eaton). The Examiner reasons
that retaining board cards in place and associating them with a separate
question card is not functionally different than the prior art approach. Id.;
see also Ans. 12.
Appellants argue that the Examiner’s stated reasons for the proposed
combination are contradictory. See App. Br. 17. Specifically, Appellants
argue that the Examiner has set forth specific purposes for adding LaCivita’s
card retention feature into Eaton, which contradicts the Examiner’s position
that the card retention feature is merely a design choice that does not serve
any special purpose. See id. We do not find a contradiction between the
Examiner’s determination that it would be obvious to add LaCivita’s card
retention feature into Eaton for certain, specified purposes and the
Examiner’s separate, alternative determination that the card retention feature
is an obvious matter of design choice. Appellants’ argument does not
apprise us of error in either of the Examiner’s articulated reasons for
combining the references.
Appellants also argue that the proposed combination would render
Eaton unfit for its intended purpose. See id. at 17–18. Appellants assert that
Eaton’s intended purpose is to eliminate luck from gameplay, and modifying
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it to include LaCivita’s fixed path feature would reinject luck-based play.
See id.; Reply Br. 6. This argument is not responsive to the rejection the
Examiner presented. The proposed combination incorporates from LaCivita
the feature of retaining each card in its place for the duration of a game.
Final Act. 3–4. The rejection says nothing about incorporating from
LaCivita a fixed path feature. See id. Appellants do not explain why
incorporating LaCivita’s card retention feature, as the Examiner proposes,
would be contrary to the skill-based play that Eaton seeks to achieve. Thus,
this argument is also unpersuasive.
For the foregoing reasons, we sustain the Examiner’s obviousness
rejection of claims 12–15, 17, and 24. Appellants do not present any
argument against the obviousness rejections of claims 16 and 25 separate
from their arguments regarding claim 12, from which claims 16 and 25
depend. App. Br. 16. Thus, we also sustain the obviousness rejections of
claims 16 and 25.
2

DECISION
We reverse the rejection of claims 12–17, 24, and 25 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
We affirm the rejection of claims 12–15, 17, and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Eaton and LaCivita.

2
Appellants also argue that the Final Action was made final prematurely.
See Appeal Br. 18–19. But as the Examiner correctly notes, a premature
final rejection is a petitionable matter, and is not properly raised in an appeal
to the Board. See Ans. 12; 37 C.F.R. 1.181; MPEP § 1002.02(c).
Accordingly, we do not address Appellants’ arguments regarding improper
finality.
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We affirm the rejection of claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Eaton, LaCivita, and Bellizi.
We affirm the rejection of claim 25 under 35 U.S.C. § 103(a) as being
unpatentable over Eaton, LaCivita, and Cuss.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
JRG