Ex Parte Mattie

Board of Patent Appeals and Interferences

Sep 15, 2008

10783939 (B.P.A.I. Sep. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BLAISE MATTIE
__________

Appeal 2008-1421
Application 10/783,939
Technology Center 3700
__________

Decided: September 15, 2008
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-1421
Application 10/783,939

The following claims are representative.
1. A board game comprising:
a plurality of player markers;
a game board having an outer circle, an inner circle, and a center
region, wherein said outer circle and inner circle include a plurality of spaces
thereon for movement of player markers, and wherein said center region
includes a map and district spots that are separate from said plurality of
spaces and correlate to locations on said map, said plurality of spaces
including:
a plurality of equipment spaces, whereby a player obtains an
equipment card indicated by a landed-on equipment space;
a plurality of task spaces, whereby a player takes a task card at
random from a collection thereof upon landing on a task space and attempts
to complete a task which is indicated on the task card by turning in a least
one equipment card in their possession;
random number generating means for determining movement of the
player markers about the board; and
rank badges which may be obtained by at least one of a player landing
on a promotion space of the board and as a result of instructions indicated on
a duty card.

3. A board game according to claim 1, wherein the game board further
comprises a plurality of district markers, which are separate from said
plurality of player markers, for placement on an obtained district to indicate
ownership thereof, regardless of whether the district spot was previously
owned or not.

Cited Reference
Andrew et al. US 4,136,879 Jan. 30, 1979

Grounds of Rejection
1. Claims 1 and 3-22 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Andrew.
2
Appeal 2008-1421
Application 10/783,939

DISCUSSION
Background
“The present invention relates to a board game and more particularly
to a firefighter themed board game.” (Spec. 1.)

1. Claims 1 and 3-22 are rejected under 35 U.S.C. 103(a) as being
unpatentable for obviousness over Andrew.
In its most basic form, Claim 1 requires
1. a plurality of markers,
2. a game board,
3. a random number generator, and
4. rank badges.
We find that the plurality of spaces on the game board is considered
printed matter on the game board. See In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (“Where the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability”.)
The Examiner finds that:
Andrew teaches a game board (Fig. 1), a plurality of markers
(Fig.4), a plurality of spaces (A1-A7 etc), start space (11), a
plurality of cards (Fig.7-12), random number generator (Fig.3),
and badges (Fig. 5). Applicant may note that method steps/rules
for playing the game do not further limit the apparatus in the
claim.
For example Andrew [sic] game pieces can be used for moving
on spaces (rule) as well as for marking obtainable spaces (rule).
Applicant might argue that references spaces and cards are not
the same as compared to applicant's spaces and cards.
The only difference between applicant's game and the
applied reference resides in meaning and information

3

Appeal 2008-1421
Application 10/783,939

conveyed by the printed matter and not considered
patentable EX. Parte [sic] Breslow 192 USPQ 431. . . .
In order to change the theme of the game, it would have been
obvious to change the information on spaces/cards to match the
theme of the game. One of ordinary skill in art at the time the
invention was made would have suggested modifying the
indicia on spaces/cards to promote a game.

(Ans. 3-4.)
We find no error in the Examiner’s prima facie case of obviousness.
When determining whether a claim is obvious, an Examiner must make “a
searching comparison of the claimed invention – including all its limitations
– with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed.
Cir. 1995) (emphasis added). Thus, “obviousness requires a suggestion of
all limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d
1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA
1974)).
Appellant contends that Andrew does not teach the rank badges of
claim 1 (App. Br. 7-10) or the district markers of claim 3 (App. Br. 11).
As to the claimed rank badges, Appellant argues:
The Examiner alleges that Andrew teaches of rank
badges and refers to the personnel cards 69 shown in Figure 5
as evidence to support his allegation. It is with due respect
submitted that the personnel cards 69 taught by Andrew are
quite dissimilar in both structure and function from the rank
badges taught by the Appellant. For example, a rank badge is
an emblem worn as an insignia of rank in an organization.
Twenty-eight personnel cards, seven for each of the four
specialities are provided in the game taught by Andrew. See
Andrew, column 5, lines 8-10. There is nothing to teach or
suggest that the personnel cards of Andrew are insignia's to be
worn as would a badge.

4

Appeal 2008-1421
Application 10/783,939

(Id. at 8.)

We are not persuaded by Appellant’s argument. According to the
American Heritage® Dictionary of the English Language, Fourth Edition,
2000, a “badge” is defined as either, “1a. A device or emblem worn as an
insignia of rank, office, or membership in an organization. b. An emblem
given as an award or honor. 2. A characteristic mark.” Thus the definition of
badge not only encompasses an emblem which is worn, but also
encompasses an emblem given as an award or honor, such as a professional
title, and characteristic mark. In view of the above, we agree with the
Examiner that the personnel cards of Andrew include different ranks or
professional titles, and can be considered rank badges as claimed. Put
another way, the claimed rank badges read on Andrew’s personnel cards.
Appellant further argues that Andrew’s personal cards are neither
obtained nor discarded. (App. Br. 9.) Appellant argues that the rank of the
player materially affects how the game is played. (Id.) The Examiner takes
the position that these arguments are related to the method of use of the
game and not limiting of the apparatus, and further argues that how an item
is used in the game is not a structural limitation towards an apparatus. (Ans.
4.) The Examiner argues that “the only difference between applicant's cards
and Andrew's cards reside in meaning and information conveyed by the
printed matter and not considered patentable differences” (Ans. 5). We
agree with the Examiner that the fact that Andrew’s personnel cards are
neither obtained nor discarded is of no consequence because such arguments
are related to a method of using (e.g., playing) the game and are not
structural differences between the claimed components of the game and
those of Andrew.

5

Appeal 2008-1421
Application 10/783,939

Appellant contends that Andrew does not teach the district markers of
claim 3 (App. Br. 11). The “Examiner takes the position that Andrew
clearly teaches district markers, see Fig. 4.” (Ans. 4.) We agree with the
Examiner’s finding that Andrew discloses as many as eight different types of
markers in Fig. 4, for use in the game. Because the district markers claimed
are one of a plurality of markers claimed in the present application, and
disclosed in Andrew, we are not persuaded by Appellant’s argument.
Appellant has provided no indication of a structural difference
between the claimed board game and the board game of Andrew. The
obviousness rejection is affirmed.

SUMMARY
The obviousness rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM NY 12110

6