Ex Parte Louie

Patent Trial and Appeal Board

May 11, 2016

13414681 (P.T.A.B. May. 11, 2016)

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).
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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
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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.
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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.
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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
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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).
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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
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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.
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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.").
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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)
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