Ex Parte Lando

Patent Trial and Appeal Board

Apr 18, 2016

12514829 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/514,829
93043 7590
Dr, Mordechai Lando
79 Shomron
Beer-Sheva, 84814
ISRAEL
05/14/2009
04/20/2016
FIRST NAMED INVENTOR
Mordechai Lando
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.
429111 4310
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
04/20/2016 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):
mlando@bezeqint.net
yafall23@hotmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MORDECHAI LANDO
Appeal 2014-003183 1,2
Application 12/514,829
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, 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 Examiner's
rejection of claims 47--49 and 56-61. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
According to Appellant, "[t]he invention is ... related to puzzle
games, jigsaw games[,] and mathematical recreation quizzes, and may be
1 Our decision references Appellant's Specification ("Spec.," filed May 14,
2009) and Appeal Brief ("Br.," filed Aug. 6, 2013), as well as the
Examiner's Answer ("Answer," mailed Sept. 30, 2013).
2 According to Appellant, the real part in interest is Mordechai Lando.
Br. 2.
Appeal2014-003183
Application 12/514,829
used in various kinds of computerized systems." Spec. 1. We reproduce
below claim 4 7, which is the only independent claim under appeal, as
representative of the appealed claims.
4 7. A puzzle game comprising:
a) a background defining a graph having a plurality of
nodes connected by a plurality of lines;
b) three or more patterns of nodes of said graph, each
pattern:
(i) having a first number of nodes; and
(ii) consisting a continuous and closed series of
adjacent nodes of that pattern, whereas a line connects
each pair of adjacent nodes of that pattern;
and
c) a plurality of numerically indexed elements of a number
of index kinds of respective distinct numerical indices, said
number equaling said first number, each index kind having at
least three numerically identical elements, the numerically
indexed elements being disposable on the graph nodes; and
( d) said three or more patterns and said numerically
indexed elements enabling:
(A) a first arrangement of at least major portion of
said plurality of numerically indexed elements on said
graph nodes, the sum of the elements disposed on the
nodes of each pattern of said three or more patterns
consisting a continuous and closed series of adjacent
nodes being a first same sum for each pattern; and
(B) a second different arrangement of at least major
portion of said plurality of numerically indexed elements
on said graph nodes, the sum of the elements disposed on
the nodes of each pattern of said three or more patterns
consisting a continuous and closed series of adjacent
nodes being a second same sum for each pattern, said
second same sum being different from said first same sum,
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Application 12/514,829
wherein a player obtains one arrangement with a certain
same sum, and then rearranges elements to get a different
arrangement having another and different same sum.
Br., Claims App.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 47--49, 56, 57, 59, and 61under35 U.S.C. § 103(a) as
unpatentable over Meehan (US 1,561,098, iss. Nov. 10, 1925);
claim 58 under 35 U.S.C. § 103(a) as unpatentable over Meehan and
Appellant's description of the prior art; and
claim 60 under 35 U.S.C. § 103(a) as unpatentable over Meehan and
Taylor (US 1,550,230, iss. Aug. 18, 1925);
See Answer 2---6.
ANALYSIS
Independent claim 4 7, as set forth above, recites a puzzle game
compnsmg:
a) a background defining a graph having a plurality of
nodes connected by a plurality of lines;
b) three or more patterns of nodes of said graph, each
pattern:
(i) having a first number of nodes; and
(ii) consisting a continuous and closed series of
adjacent nodes of that pattern, whereas a line connects
each pair of adjacent nodes of that pattern;
and
c) a plurality of numerically indexed elements of a number
of index kinds of respective distinct numerical indices, said
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Application 12/514,829
number equaling said first number, each index kind having at
least three numerically identical elements, the numerically
indexed elements being disposable on the graph nodes; and
( d) said three or more patterns and said numerically
indexed elements enabling:
(A) a first arrangement of at least major portion of
said plurality of numerically indexed elements on said
graph nodes, the sum of the elements disposed on the
nodes of each pattern of said three or more patterns
consisting a continuous and closed series of adjacent
nodes being a first same sum for each pattern; and
(B) a second different arrangement of at least major
portion of said plurality of numerically indexed elements
on said graph nodes, the sum of the elements disposed on
the nodes of each pattern of said three or more patterns
consisting a continuous and closed series of adjacent
nodes being a second same sum for each pattern, said
second same sum being different from said first same sum,
wherein a player obtains one arrangement with a certain
same sum, and then rearranges elements to get a different
arrangement having another and different same sum.
Br., Claims App. (emphases added). The Examiner does not find that
Meehan discloses or suggests either limitation (A) or (B). See Answer 2--4.
Nonetheless, the Examiner determines that
[ s ]uch a modification is not patentable as it relates to the
information and meaning conveyed by the printed matter and
does not define a new and unobvious function[al] relationship
with the substrate. Meehan teaches that it is known in the art of
puzzles to provide a pattern on a substrate, the pattern having
nodes and connecting lines thereon. Meehan also provides a
plurality of numerically indexed elements which are arranged on
the nodes to define a certain sum arrangement. The [A ]ppellant' s
limitation for the number of nodes to equal the number of distinct
numerical indices is an obvious modification on the teachings of
Meehan and fails to define a new and unobvious functional
relationship. See Jn re Lowry, 32 F.3d 1579, 1583[-]84 ... (Fed.
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Application 12/514,829
Cir. 1994); In re 1Vgai, 367 F.3d 1336 (Fed. Cir. 2004).
Further, the product merely serves as a support for printed matter
and thus, no functional relationship exists. Here, there is no new
feature of physical structure and no new relation of printed matter
to physical structure. This situation is merely an instance of
where the claim as a whole is directed towards conveying a
message or meaning to a human reader independent of the
supporting product. Because the printed matter and product do
not depend upon each other, no function[al] relationship exists.
In re Ngai, 367 F.3d at 1339. Note MPEP 2111.05.
Answer 6-7. We disagree with the Examiner's determinations, however.
In Ngai, the Federal Circuit determined that there was no functional
relationship between the new, claimed step of including an instruction sheet
(i.e., the printed matter) and the other claimed steps of amplifying and
normalizing ribonucleic acids ("RNA") which were shown in the prior art,
and, thus, the claim was not patentable because of the inclusion of the new
instruction sheet. Ngai, 367 F.3d at 1338. Ngai discusses another Federal
Circuit case, In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983). In Gulack, the
Federal Circuit determined that there was a functional relationship between
the new arrangement of a plurality of individual digits imprinted on a band
(i.e., the printed matter) and the band itself. Gulack, 703 F.2d at 1387.
Based on our review, we determine that the present case is more like Gulack,
in which the Federal Circuit reversed the Board's sustaining of anticipation
and obviousness rejections, than Ngai, in which the Federal Circuit affirmed
the Board's sustaining of an anticipation rejection. Thus, we do not sustain
the Examiner's rejections.
For example, unlike in Ngai, Appellant does not claim a method
wherein the distinguishing step is the inclusion of an instruction sheet.
Rather, Appellant's claim is directed to the puzzle itself, which includes the
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claimed numerically indexed elements, and the claimed first and second
arrangements of the numerically indexed elements can only result by
providing specific values on the elements, and by providing specific
quantities of the elements having those particular values. Further, it does not
appear that Meehan's game can be played in such a way as to enable the
claimed first and second arrangements. Thus, similar to the Federal
Circuit's treatment of the claim in Gulack directed to "[a]n educational and
recreational mathematical device" (Gulack, 703 F.3d at 1383), we determine
that there is a functional relationship between the arrangement of
numerically indexed elements and the remainder of the claim, such that the
claimed arrangements must be shown or rendered obvious by the prior art.
Notwithstanding the above discussion, the Examiner further states that
"[t]he particular recitation for the numbers on the elements is an obvious
modification on the teachings of Meehan." Answer 6. The Examiner's
statement is not supported by any evidence, however.
For the above reasons, the Examiner does not establish that Meehan
discloses or renders obvious features (A) and (B) of claim 47. Thus, we do
not sustain the rejection of claim 47. Further, inasmuch as the Examiner
does not show how any other reference, for example, remedies the above-
deficiency in the rejection of claim 47, we do not sustain the rejections of
any of the dependent claims.
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DECISION
We REVERSE the Examiner's rejection of claims 47--49 and 56---61.
REVERSED
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