Ex Parte Mackey

Board of Patent Appeals and Interferences

Jun 24, 2004

09479531 (B.P.A.I. Jun. 24, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS J. MACKEY
____________
Appeal No. 2004-0190
Application No. 09/479,531
____________
ON BRIEF
____________
Before COHEN, ABRAMS, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 14-17,
24 and 26-28. Claims 1-8 and 10-13 have been allowed, claims 9 and 18-23 have been
canceled, and claim 25 has been indicated as containing allowable subject matter.
We AFFIRM-IN-PART.
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Application No. 09/479,531
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BACKGROUND
The appellant's invention relates to a board game having buildable structures.
An understanding of the invention can be derived from a reading of exemplary claim 1,
which appears in the appendix to the appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Staples et al. (Staples) 2,557,481 Jun. 19, 1951
Burkhart 3,651,574 Mar. 28, 1972
Bergstrom 4,434,984 Mar. 6, 1984
Owen 4,896,888 Jan. 30, 1990
Katerba 5,052,687 Oct. 1, 1991
Whitehurst 5,407,201 Apr. 18, 1995
Stevens 5,615,883 Apr. 1, 1997
Sihra 5,685,120 Nov. 11, 1997
Claim 26 stands rejected under 35 U.S.C. § 102(b) as being anticipated by
Whitehurst.
Claim 28 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Sihra.
Claims 14-16 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Katerba in view of Staples.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Owen in view of Berstrom and Burkart.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Whitehurst in view of Stevens.
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1Anticipation is established only when a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of the claimed invention. See, for example, RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). A
reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its
teachings in combination with his own knowledge of the particular art and be in possession of the
invention. In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995), cert. denied,
116 S.Ct. 1362 (1996), quoting from In re LeGrice, 301 F.2d 929, 936, 133 USPQ 365, 372 (CCPA 1962).
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 18) for the examiner's reasoning in support of the rejections, and to the Brief
(Paper No. 17) and Reply Brief (Paper No. 19) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The Rejections Under Section 102(a)
The first of these rejections is that claim 26 is anticipated1 by Whitehurst. Claim
26 recites a structural guide system for building a toy multi-layer simulated structure
formed of stacked layers of units. The system comprises a “plurality of structural unit
guides,” each associated with one layer of the structure, with each guide including a
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guide indicia. The structural units forming the layer are placed adjacent the structural
guide associated with that layer, and the structural guides are incorporated into the
simulated structure.
Whitehurst discloses an educational puzzle comprising, as best illustrated in
Figure 2D, a plurality of pyramid-shaped elements which are assembled together in a
cavity defined in the upper surface of a “base 8" (column 5, line 13) to form an enlarged
structure of pyramid shape. Guidance for assembling the structure is provided by
indicia 7a and 7b, which direct the player to orient the units in a particular manner. The
examiner has taken the position that the base and each of the pyramids that constitute
the structural units are “guides.” The appellant argues that such is not the case, and
that the only guide disclosed in the reference is base 8.
Claim 26 recites a plurality of structural units and a plurality of structural unit
guides, and requires that the guides be placed adjacent to the structural units. While
we would concede that base 8 of Whitehurst is a structural unit guide, we agree with the
appellant that additional “guides” are lacking in Whitehurst, that is, there are a number
of structural units each having indicia thereon, but there are no additional guides that
are placed adjacent to the structural units. This being the case, Whitehurst does not
disclose or teach all of the structure recited in claim 26, and therefore is not anticipatory
of the claimed subject matter. The Section 102 rejection of claim 26 is not sustained.
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Claim 28 stands rejected as being anticipated by Sihra. Claim 28 sets forth a
guide system for building a toy three-dimensional structure of stacked layers of
structural units, and includes “a single three dimensional structural unit guide wherein
said structural units are positioned in hollow cavities of the structural unit guide that
correspond to an outer peripheral shape of the specific structural unit, wherein the guide
is incorporated into the assembled structure.” The examiner has taken the position that
this language reads on element 554 of Sihra’s Figures 20 and 21, which comprises a
plurality of three-sided rectangular cavities within which portions of the vertical structural
units are received and connected to one another (column 4, line 61 et seq.). The
appellant argues in rebuttal that elements 554 are not guides or part of a guide system,
that they are not three dimensional unit guides, and that they do not include “hollow
cavities” that “correspond to the outer peripheral shape of the engaging block 554"
(Brief, page 13).
It is our view that each element 554 is, in fact, a guide, inasmuch as it locates the
vertical structural elements with respect to one another, and that as shown in Figures 20
and 21 is part of a guide system. It also is our view that the claim does not require that
the cavities in the guides completely surround the structural elements, but only that they
“correspond to” the outer peripheral shape. Since three of the four sides of each
vertical element fit within the cavity in element 554, the cavity corresponds to “an” outer
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2The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
peripheral shape of the structural unit. It therefore is our conclusion that the subject
matter of claim 28 reads on elements 554 of Sihra, and the claim is anticipated.
The Section 102 rejection of claim 28 is sustained.
The Rejections Under Section 103
The first of these is that claims 14-16 and 24 would have been obvious2 to one of
ordinary skill in the art in view of the combined teachings of Katerba and Staples.
Among the structure recited in independent claim 14 is “a plurality of distinct movable
game pieces, each . . . having defined range values that define movement parameters
for said movable game piece,” and a movement measuring device with a continuous
surface having body indicia positioned thereon and constructed to roll along a playing
surface to measure the range values of the movable game pieces. The examiner has
found all of the structure in claim 14 to be disclosed by Katerba except for the
continuous surface on the measuring device, considering that “[v]ery little weight is
given to the feature of each game piece having range values since this is an apparatus
claim and not a method claim” (Answer, page 7). As for the measuring device, the
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examiner is of the view that it would have been obvious in view of Staples to modify the
measuring device of Katerba to have a continuous surface having indicia “in order to
allow a player to watch and evaluate a range being measured as the player is
performing the measurement” (Answer, page 7). The appellant takes issue with both of
these conclusions.
As explained on pages 8 and 9 of the appellant’s specification, the “defined range
values” are indicia, that is, printed matter, placed on each movable piece which indicate
the maximum amount of movement that each movable piece can make when moved in
the course of the game. As such, we agree with the appellant that the range values
cannot simply be ignored by the examiner. In this regard, differences between an
invention and the prior art cannot be ignored merely because those differences reside in
the content of printed matter. In re Lowry, 32 F.3d 1579, 1583, 32 USPQ2d 1031, 1034
(Fed. Cir. 1994) and In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403 (Fed. Cir.
1983). Where the printed matter is not functionally related to the substrate, it will not
distinguish the invention from the prior art in terms of patentability. Thus, in that
situation while the printed matter must be considered, it may not be entitled to
patentable weight. What is required is the existence of differences between the claims
and the prior art sufficient to establish patentability. The bare presence or absence of a
specific functional relationship, without further analysis, is not dispositive of the issue of
obviousness. Rather, the critical question is whether there exists any new and
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unobvious functional relationship between the printed matter and the substrate. In re
Gulack, supra, 703 F.2d at 1385, 217 USPQ at 404.
From our perspective, there is a functional relationship between the defined
range values and the movable game pieces inasmuch as they indicate the movement
capability of each piece and thus are indispensable to the playing of the game. Since
the examiner has not provided evidence that such a relationship would have been
obvious to one of ordinary skill in the art, the rejection is fatally defective at this point for
failing to establish a prima facie case of obviousness with regard to the claimed subject
matter.
Another deficiency also exists in the rejection. Katerba discloses a measuring
device which is attached to a golf flag stick to allow the distance to the hole of each ball
hit to the green to easily be measured to facilitate the measurement in a “closest to the
hole” competition (column 1). The examiner has taken the position that the golf balls hit
to the hole in this game constitute the claimed “movable game pieces,” a conclusion
which the appellant challenges. We find ourselves in agreement with the appellant that
the Katerba golf balls are not “movable game pieces having defined range values that
define movement parameters for the said movable game piece,” in that their movement
in the game disclosed by this reference is not in accordance with defined movement
parameters but is based upon such unpredictable factors as player skill and the effect of
the irregularities of the playing surface upon the ball once it contacts the ground.
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The Section 103 rejection of independent claim 14 and dependent claims 15, 16
and 24 is not sustained.
Claim 17 stands rejected as being unpatentable over Owen in view of Berstrom
and Burkart. The examiner finds all of the subject matter in claim 17 to be disclosed in
Owen, except for the game pieces for each player, a movement measuring device
having a retractable extendable measuring line, a semi-circular member positioned
adjacent a base, and a semi-circular member having indicia positioned thereon and able
to measure in three dimensions (Answer, pages 7 and 8).
Owen discloses a boat racing game in which the course of each boat is plotted
on the surface of a chart board; there are no game pieces. The examiner takes the
position that it would have been obvious to add a plurality of game pieces for each
player in the Owen game in view of Berstrom’s disclosure of a sailboat race game in
which game pieces are placed on a chart board “in order to make it easier for players to
have a better three dimension view of the location of all the players during the game”
(Answer, page 8). However, it is basic to the Owen game that courses of the boats be
plotted on the chart with marker pens (columns 1 and 2), and that the charts be used as
overlays with weather maps in order to add more realism to an “advanced game”
(column 6, line 47 et seq.). The adding of game pieces would seem to interfere with the
operation of the Owen game, as disclosed, and the rationale upon which the examiner
bases the proposed modification is not supported by any evidence.
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The examiner further proposes to add to the Owen game, in view of the
teachings of Burkart, a device for measuring distances which comprises a base having
a retractable measuring line and a semi-circular base having indicia thereon, with the
line measuring values in three dimensions. Owen discloses a protractor for plotting
courses and distances (Figures 7 and 8), which does not include the capability of
measuring in three dimensions, for that is not necessary in the Owen game. Burkart
discloses an apparatus for plotting and measuring courses on maps, but the examiner
has not explained how this device meets the terms of claim 17, how it is to be integrated
into the Owens game, or what purpose it would serve with its three dimensional
capability. Also not present is support for the examiner’s conclusion that it would have
been obvious to modify Owens by replacing the disclosed protractor with that of Burkart
“in order [to have the players] gain proficiency in using a protractor which is used by
navigators or ships” (Answer, page 8).
For the foregoing reasons, it is our conclusion that the combined teachings of
Owen, Berstrom and Burkart fail to establish a prima facie case of obviousness with
regard to the subject matter of claim 17, and we will not sustain this rejection.
We reach the same conclusion with regard to the rejection of claim 27 on the
basis of Whitehurst and Stevens. Claim 27 adds to claim 26 the requirement that each
guide be formed of a planar material, which the examiner admits is lacking in
Whitehurst, upon which the Section 102 rejection of claim 26 was predicated. However,
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Stevens is cited for such a teaching, with the examiner concluding that it would have
been obvious to modify Whitehurst “to have a guide being planar . . . in order to
minimize the cost of forming the guide by not having any in depth penetration portion”
(Answer, page 8).
We refused above to sustain the rejection of claim 26 because Whitehurst lacks
the plurality of guides required by this parent claim. Considering Whitehurst in the light
of Section 103 does not cause us to alter that position. The examiner appears to be
designating base 10 as the planar guide in the Stevens figurine puzzle. Be that as it
may, Stevens also does not appear to disclose a plurality of guides, and therefore fails
to alleviate the deficiency in Whitehurst.
CONCLUSION
The rejection of claim 28 as being anticipated by Sihra is sustained.
None of the other rejections is sustained.
The decision of the examiner is affirmed-in-part.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NEA/lbg
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