Ex Parte LouieDownload PDFPatent Trial and Appeal BoardMay 11, 201613414681 (P.T.A.B. May. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/414,681 7590 James M Smedley 50 Christy Drive Warren, NJ 07059 FILING DATE FIRST NAMED INVENTOR 03/07/2012 Rick Steven Louie 05/11/2016 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. 13068-3 5376 EXAMINER HARPER, TRAMAR YONG ART UNIT PAPER NUMBER 3717 MAILDATE DELIVERY MODE 05/11/2016 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 RICK STEVEN LOUIE Appeal2014-003585 Application 13/414,681 Technology Center 3700 Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Rick Steven Louie (Appellant) seeks review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-3, 5-7, 14, and 15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). BACKGROUND The disclosed subject matter "relates generally to games and methods of playing games, and in particular to a system and method for playing a chess-like game having more game pieces than traditional chess." Spec. i-f 1. Appeal2014-003585 Application 13/414,681 Claim 1, the sole independent claim, is reproduced below, with emphasis added: 1. An extended chess game, comprising: a game board comprising spaces arranged in rows and columns; two sets of game pieces, each set of game pieces compnsmg: ten pawns; two rooks; two knights; two wizards, wherein said two wizards have an exchange movement ability, wherein said exchange movement ability is exchanging one wizard of said two wizards with any other game piece located at a position on said game board that is three or more spaces away from said one vvizard's citrrent position and belonging to the same set of game pieces as said one wizard; two bishops; one queen; and one king. REJECTIONS ON APPEAL 1. Claim 14 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-3, 14, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Spurgeon (US 2010/0327528 Al, published Dec. 30, 2010) and Brown (US 6,719,289 Bl, issued Apr. 13, 2004). 2 Appeal2014-003585 Application 13/414,681 3. Claims 5-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Spurgeon, Brown, and Crozier (US 6,446,966 B 1, issued Sept. 10, 2002). DISCUSSION Rejection 1 - The rejection of claim 14 under 35 U.S.C. § 112, first paragraph The Examiner rejects claim 14 as failing to comply with the written description requirement. Final Act. 2 (dated July 31, 2013). The Examiner states that "[t]he claim language suggests that the wizard game piece may exchange position with any other game piece of the same set that is less than three spaces away from the wizard" but that "the specification is silent to such requirements." Id. The test for compliance with the written description requirement is "whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). On the record here, we agree with Appellant (Appeal Br. 3; Reply Br. 2) that paragraph 28 of the Specification discloses that the wizard could exchange positions with an allied piece anywhere on the game board, and thus, demonstrates possession of the claimed subject matter of exchanging positions with an allied piece "less than three spaces away" from a wizard. See Spec. i-f 28 ("The exchange movement can alternately allow a wizard 3 Appeal2014-003585 Application 13/414,681 game piece 112 belonging to one set to be exchanged with any other game piece 104 remaining on the game board 102 that belongs to the same set."). 1 Although the Examiner is correct that the Specification does not explicitly disclose "an instance wherein a wizard game piece can be exchange with another piece of the same set less than three spaces away" (Ans. 6), this is not enough. See In re Wertheim, 541 F .2d 257, 265 (CCP A 197 6) ("If lack of literal support alone were enough to support a rejection under§ 112, then the statement ... that 'the invention claimed does not have to be described in ipsis verbis in order to satisfy the description requirement of§ 112,' is empty verbiage.") (quoting In re Lukach, 442 F.2d 967, 969 (CCPA 1971)). Moreover, as noted by the Examiner, Figure 4 of the Specification provides "an example of exchange, wherein the wizard is exchange with another piece of a like set more than three spaces away as supported by the specification, but not less than three spaces away." Ans. 6. On the facts here, however, that does not compel the conclusion that the written description precludes claims reciting exchanging pieces separated by distances not shown in the drawings. See Lampi Corp. v. Am. Power Prods., Inc., 228 F.3d 1365, 1378 (Fed. Cir. 2000). For these reasons, we do not sustain the rejection of claim 14 based on 35 U.S.C. § 112, first paragraph. 1 Although Appellant cites paragraph 29, Appellant quotes the above sentence from paragraph 28. See Appeal Br. 3. 4 Appeal2014-003585 Application 13/414,681 NEW GROUND OF REJECTION We enter a new ground of rejection: dependent claim 14 is rejected under 35 U.S.C. § 112, fourth paragraph, for failure to specify a further limitation of the subject matter claimed. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006). Independent claim 1 recites, in relevant part, wherein said two wizards have an exchange movement ability, wherein said exchange movement ability is exchanging one wizard of said two wizards with any other game piece located at a position on said game board that is three or more spaces away from said one wizard's current position and belonging to the same set of game pieces as said one wizard. (emphasis added). Dependent claim 14, in tum, recites [t]he extended chess game of claim 1, wherein said exchange movement ability further comprises exchanging said one wizard of said two wizards with any other game piece located at a position on said game board that is less than three spaces away from said one wizard's current position and belonging to the same set of game pieces as said one wizard. (emphasis added). We find that the language of claim 14 does not further limit the scope of claim 1 because these claims-based on the language shown in emphasis in the prior paragraphs-recite non-overlapping subject matter. See Pfizer, 457 F.3d at 1291 ("In other words, claim 6 does not narrow the scope of claim 2; instead, the two claims deal with non-overlapping subject matter."). Thus, we reject claim 14 as invalid under§ 112, fourth paragraph. 5 Appeal2014-003585 Application 13/414,681 Rejection 2 - The rejection of claims 1-3, 14, and 15 under 35 U.S.C. § 103(a) For this Rejection, Appellant argues the patentability of independent claim 1 and does not separately argue the dependent claims. Appeal Br. 4-- 5. Thus, we address only claim 1, with claims 2, 3, 14, and 15 standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv). The Examiner relied on Spurgeon for several of the limitations recited, but stated that Spurgeon does not teach the two "wherein" clauses shown with emphasis in the Background section above. Final Act. 3--4. The Examiner found, however, that Brown teaches a type of modified chess game that includes game pieces are capable of standard movements, but additionally have powers and limitations not present in conventional chess that includes allowing a game piece to exchange positions on a game board with any like-colored piece e.g. piece of the same set that is located anywhere on the game board including three or more spaces away or three or less spaces a\vay (Col. 4:30-35, Fig. 19 and description thereof). Final Act. 4. In addition, the Examiner provided certain reasoning to modify Spurgeon based on Brown. Id. at 4--5. First, Appellant argues that Appellant's "game ... differs from Brown in at least two important respects: (1) Brown requires a 'swap card' in order for a player to initiate a swap of two pieces on the board; and (2) Brown lacks a designated piece with the ability to exchange places with another piece." Appeal Br. 4--5. Appellant argues that "none of the pieces in Brown have the ability to exchange places with another piece on their own" and that "an exchange of positions can only be accomplished if a swap card is dealt to a player." Id. at 5. According to Appellant, "[i]n contrast, claim 1 recites that a wizard piece has 'an exchange movement ability', without any 6 Appeal2014-003585 Application 13/414,681 conditions such as being dealt a special card, and is therefore distinguishable over Brown." Id.; see also Reply Br. 6 ("[T]he Examiner bears the burden of identifying a reference that teaches a predesignated piece (e.g. a wizard) having an exchange move capability, without need for a swap card, as provided in [Appellant's] claims."). We are not apprised of error based on this argument because it is not commensurate in scope with the claim language. In re Self, 671 F .2d 1344, 1348 (CCP A 1982) (rejecting arguments "not based on limitations appearing in the claims"). As the Examiner notes, claim 1 "does not exclude the use of swap cards to give game pieces such as the wizard piece of Spurgeon the ability to exchange with any other game piece of a like set." Ans. 8. Moreover, claim 1 uses the transition term "comprising," which, as the Examiner states, "does not exclude additional, unrecited elements or method steps." Id.; see Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009) ("The claim uses the term 'comprising,' which is well understood in patent law to mean 'including but not limited to."'). Appellant responds that (1) "[t]he absence of precondition need not be expressly provided in claim 1, since it is implicit in the claim" (Reply Br. 6); (2) "[t]he claims speak for themselves, i.e. they provide an exchange movement ability that does not necessitate drawing a swap card" (id. at 3); (3) "there is no need to expressly exclude use of a swap card in claim 1 in order to distinguish over Brown" (id. at 5-6); (4) "the lack of need for a swap card need not be explicitly recited in the claims, since it is implicit" (id. at 4); and (5) "[t]he fact that the exchange movement is assigned to a particular piece impliedly excludes the need for a swap card" (id. at 6). 7 Appeal2014-003585 Application 13/414,681 Appellant has not, however, persuasively shown support for viewing the argued limitations as "implicit" in claim 1. We also agree with the Examiner's statement that "Brown's swap card gives a designated piece at that instance a swap or exchange capability." Ans. 8. Although Appellant responds by arguing that "the wizard of claim 1 is predesignated to have this capability" and "is distinguished among all pieces to have this capability" (Reply Br. 5), claim 1 does not recite such limitations. Moreover, Appellant has not persuasively shown that receiving an "exchange movement ability" at a particular point in the game does not satisfy the limitations at issue. Second, Appellant argues that "if the ... Board accepts the Examiner's position that the swap card of Brown gives a game piece the ability to exchange positions with any like-colored piece, one can imagine a scenario in which a player wins a game without a swap card ever being dealt." Appeal Br. 5 (citation omitted). According to Appellant, "[ t ]his would mean that in some games no piece will ever have the ability exchange places with another piece." Id. Appellant also notes that "Brown expressly states that ' [ m Jost game piece movements are made without the use of the cards and in fact an entire game can be played without the use of the cards."' Reply Br. 3--4 (quoting Brown, col. 4, 11. 36-38). According to Appellant, "[t]here is therefore no guarantee that a swap will be allowed in any given game." Id. at 4. Although Appellant is correct that a swap card may not necessarily be dealt in any particular game (and that cards need not be used at all) in Brown, Appellant has not shown error in the Examiner's reliance on the embodiment in which a swap card is used and is dealt. See Ans. 8 ("Even 8 Appeal2014-003585 Application 13/414,681 though there may be a scenario where no[] swap card is use[d], in the situation []where there is a swap card []used[,] the combination of Spurgeon in view of Brown meets the limitations with the respect to the claimed language."). Third, Appellant argues that "[t]he fact that the exchange movement is assigned to a particular piece impliedly excludes the need for a swap card (i.e. why would you need a swap card if a piece already has a swap ability)" and that "Brown should therefore be considered a teaching away from [Appellant's] claimed invention, since a swap card would be redundant and unnecessary." Reply Br. 6. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution, not merely disclose an alternative. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of the[] [disclosed] alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .... "). As an initial matter, for the reasons above, claim 1 does not preclude the use of a swap card to initiate the recited "exchange movement ability." Moreover, that Brown teaches exchanging pieces based on a swap card (Ans. 8 (citing Brown, col. 4, 11. 30-35)), rather than without a swap card, does not, on the record here, amount to a teaching away from the recited "exchange movement ability." See Fulton, 391 F.3d at 1201 (Fed. Cir. 2004) ("[M]ere disclosure of alternative designs does not teach away."). For the reasons above, we sustain the rejection of claim 1 as unpatentable over the combined teachings relied upon by the Examiner. Claims 2, 3, 14, and 15 fall with claim I. 9 Appeal2014-003585 Application 13/414,681 Rejection 3-The rejection of claim 5-7 under 35 U.S.C. § 103(a) Appellant does not separately argue claims 5-7 (Appeal Br. 5---6), which depend from claim 1. Thus, for the reasons discussed above (see supra Rejection 2), we sustain the rejection of claims 5-7. DECISION We REVERSE the decision to reject claim 14 under 35 U.S.C. § 112, first paragraph, and AFFIRM the decision to reject claims 1-3, 5-7, 14, and 15 under 35 U.S.C. § 103(a).2 We enter a NEW GROUND OF REJECTION of claim 14 under 35 U.S.C. § 112, fourth paragraph, for failure to specify a further limitation of the subject matter claimed. FINALITY OF DECISION Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(l) provides that, "[A ]ppellant may file a single request for rehearing within two months from the date of the original decision of the Board." In addition to affirming the Examiner's rejection(s) of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides "new ground[s] of rejection pursuant to this paragraph shall not be considered final for judicial review." 2 See 37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed."). 10 Appeal2014-003585 Application 13/414,681 That section also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. ... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record .... 37 C.F.R. § 41.50(b). Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejections, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejections are overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED; 37 C.F.R. § 41.50(b) 11 Copy with citationCopy as parenthetical citation