Ex Parte Mumaw

Board of Patent Appeals and Interferences

Jun 7, 2011

11136157 (B.P.A.I. Jun. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES W. MUMAW
____________

Appeal 2009-012003
Application 11/136,157
Technology Center 3700
____________

Before WILLIAM F. PATE III, MICHAEL W. O’NEILL, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James W. Mumaw (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-3 and 7-14. Appellant cancelled
claims 4-6. We have jurisdiction under 35 U.S.C. § 6(b).
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The Invention
The claims on appeal relate to a card game to be played in conjunction
with a game of golf and a method for incorporating a golf card game into a
game of golf.
Claims 1 and 8, reproduced below, with emphasis added, are
illustrative of the subject matter on appeal.
1. A card game to be played in conjunction
with a game of golf comprising:
an actual golf course;
two or more golfers;
a set of golf game cards, the game cards
including instructions that differ from those of the
game of golf, including card-borne instructions for
only a first golfer and card-borne instructions for
only a second golfer in the game of golf, the card-
borne instructions including at least one card
having instructions for only the first golfer, at least
one card having instructions for only the second
golfer, and at least one card having instructions
for the first golfer to penalize the second golfer in
a specific fashion; and
an information sheet including information
on combining the card game with the game of golf.

8. A method for incorporating a golf card
game into a game of golf, comprising the steps of:
(a) dealing a golf game card to a first golfer
of a group of two or more golfers, wherein the golf
game card includes a golf-game oriented
instruction, wherein the card includes instructions
that differ from those of the game of golf;
(b) while playing an actual game of golf on
a golf course, performing the instruction from the
card, wherein:
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a plurality of instructions from a
plurality of cards includes penalties and
advantages;
the plurality of instructions include
instructions for the first golfer only and
instructions for a second golfer to be
penalized by the first golfer; and
(c) applying any penalties and advantages to
the game of golf to determine a winner.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1 and 7 are rejected under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Germain
(U.S. Patent No. Re. 36,346, issued Oct. 19, 1999).
Claims 2, 3, and 8-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Germain and Horowitz (U.S. Patent No. 1,557,284, issued
Oct. 13, 1925).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Issues
The determinative issues in this appeal are:
(1) Whether there is a new or unobvious functional relationship
between the instructions and the claimed subject matter in claims 1 and 7.
(2) Whether it would have been obvious to a person of ordinary skill
in the art to modify the golf game cards of Germain to have suits and
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hierarchical markings as recited in claim 2 and indicia of a deck of poker
cards as recited in claim 3 by the teachings of Horowitz in order to add
excitement to game play.
(3) Whether it would have been obvious to a person of ordinary skill
in the art to modify Germain by the teachings of Horowitz in order to render
claim 8 unpatentable.
Analysis
Issue (1)
First, Appellant appears to contend that the Examiner has not set forth
a prima facie case of anticipation because the Examiner’s rejection fails to
address all of the elements in claims 1 and 7. Br. 15 and 22.
The Examiner finds that Germain anticipates claims 1 and 7 because
“Germain teaches a golf game played on an actual golf course that uses
game cards, with instructions and lessons (information) (see abstract,
figure[s] 4-5 & col.2, lines 31-51).” Ans. 4. The Examiner also finds that
the instructions for one golfer to penalize another golfer in a specific fashion
constitute printed matter. Ans. 4-5.
The United States Patent and Trademark Office carries its procedural
burden of establishing a prima facie case when its rejection satisfies 35
U.S.C. § 132, in “notify[ing] the applicant . . . [by] stating the reasons for
[its] rejection, or objection or requirement, together with such information
and references as may be useful in judging of the propriety of continuing the
prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated
when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.” See In re
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Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) citing Chester v. Miller, 906
F.2d 1574, 1578 (Fed. Cir. 1990).
We disagree with Appellant that the Examiner has failed to set forth a
prima facie case of anticipation. Claim 1 recites the structure of a golf
course, at least two golfers, a set of golf game cards including instructions,
and an information sheet. Claim 7 recites the structure of a set of golf game
cards including instructions and an information sheet. The Examiner’s final
rejection specifically notes that Germain teaches a golf course and golf game
cards. The Examiner’s final rejection specifically cites to Figures 4 and 5
which show a golf game card and an instruction or information sheet,
respectively. The game card shown in Figure 4 specifically lists the game
card golfer by name and players 1-3 so that there is more than one golfer.
The Examiner supplemented the final rejection by explaining in the
Examiner’s Answer that the instructions are considered to constitute printed
matter that do not patentably distinguish the invention from Germain.
Although the printed matter was not discussed in the final rejection,
Appellant could have filed a Reply Brief to respond to the Examiner’s
supplemented explanation with respect to the printed matter, but chose not to
do so. Thus, any argument with respect to the printed matter not made by
Appellant is considered to be waived. Based on the foregoing, we conclude
that the Examiner adequately established a prima facie case of anticipation.
Second, Appellant contends that claims 1 and 7 are not anticipated by
Germain because Germain fails to disclose a card having instructions for one
golfer to penalize another golfer in a specific fashion. Br. 15 and 21.
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The Examiner finds that the instructions for one golfer to penalize
another golfer in a specific fashion constitute printed matter which does not
patentably distinguish the invention from Germain. Ans. 4-5.
The content or meaning of printed matter recited in a claim does not
structurally distinguish the subject matter of the claim from prior art unless
there is a new or nonobvious functional relationship between the printed
matter and the remainder of the claimed subject matter. See In re Ngai, 367
F.3d 1336, 1338-39 (Fed. Cir. 2004).
Here, we agree with the Examiner that claims 1 and 7 are anticipated
by Germain. Regardless of the specifics of the instructions on Germain’s
card, the content or meaning of the instructions does not structurally
distinguish the subject matter of claims 1 and 7 from Germain because there
is no new and unobvious functional relationship between the instructions
and the claimed subject matter of claims 1 and 7, respectively. With respect
to claim 1, there is no new or unobvious functional relationship between the
“instructions for the first golfer to penalize the second golfer in a specific
fashion” and any of the golf course, golfers, set of golf game cards, and
information sheet (i.e., the “instructions for the first golfer to penalize the
second golfer in a specific fashion” in no way depend upon the golf course,
the golfers, the set of golf game cards, and the information sheet, and none
of the golf course, the golfers, the set of golf game cards, and the
information sheet depend in any way upon the “instructions for the first
golfer to penalize the second golfer in a specific fashion”). Similarly, with
respect to claim 7, there is no new or unobvious functional relationship
between the instructions, which comprise “actions by a second golfer to
penalize the first golfer in a specific fashion”, and any of the set of golf
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game cards and the information sheet (i.e., the instructions, which comprise
“actions by a second golfer to penalize the first golfer in a specific fashion”,
in no way depend upon the set of golf game cards and the information sheet,
and neither the set of golf game cards nor the instruction sheet depend in any
way upon the instructions, which comprise “actions by a second golfer to
penalize the first golfer in a specific fashion”).
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1 and 7 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as unpatentable over Germain.
Issue (2)
The Examiner alleges, and Appellant refutes, that it would have been
obvious to a person of ordinary skill in the art to modify the golf game cards
of Germain by including the suits and hierarchical markings of Horowitz in
order to add excitement to game play. Ans. 4 and Br. 17-20.
The Federal Circuit has stated that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). It is improper to base a conclusion of obviousness upon facts
gleaned only through hindsight. “To draw on hindsight knowledge of the
patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction—
an illogical and inappropriate process by which to determine patentability.”
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
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(citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983)).
We agree with Appellant that it would not have been obvious to a
person of ordinary skill in the art to modify the golf game cards of Germain
to have suits and hierarchical markings as recited in claim 2 and indicia of a
deck of poker cards as recited in claim 3 by the teachings of Horowitz. The
Examiner’s articulated reasoning of “add[ing] excitement to game play”
does not rest upon a rational underpinning in order to support the
Examiner’s legal conclusion of obviousness. We see no reason why a
person of ordinary skill in the art would consider adding any of suits,
hierarchical markings, and indicia of a deck of poker cards as taught by
Horowitz to the golf game cards of Germain, or how the addition of the
suits, hierarchical markings, and indicia of a deck of poker cards of
Horowitz would add excitement to the game play of Germain.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over Germain
and Horowitz.
Issue (3)
Appellant contends that Horowitz “fails to overcome the shortcomings
of the Germain reference in . . . rendering obvious each element of Claim 8.”
Br. 25.
The Examiner finds that Germain discloses the invention of claim 8
substantially as claimed, except that Germain fails to teach “cards being
dealt.”1 Ans. 5. The Examiner also finds that Horowitz discloses “cards

1 Although the Examiner discusses the fact that Germain fails to teach cards
being dealt in the paragraph beginning “Regarding claims 2 & 3, . . .,” we
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being dealt and played using casino game rules (see page 2, lines 53-89).”
Id. The Examiner concludes that it would have been obvious to modify the
cards of Germain in view of Horowitz’s cards in order to add excitement to
game play. Id.
Although we agree with the Examiner’s above-noted findings that
Germain does not disclose cards being dealt and Horowitz does disclose
cards being dealt, we do not sustain the Examiner’s rejection of claims 8-14
under 35 U.S.C. § 103(a) as unpatentable over Germain and Horowitz
because the Examiner has failed to articulate a reasonable basis with rational
underpinnings as to how the two references of Germain and Horowitz could
be combined to render the claimed subject matter obvious. Horowitz’s cards
have suits and hierarchical markings thereon in order for users of the cards
to be able to play known card games in addition to playing a simulated game
of baseball using the baseball indicia on the cards. We see no reason why a
person of ordinary skill in the art would want to deal one of Germain’s golf
game cards to a first golfer of a group of two or more golfers, particularly
since the golf game cards do not have the suits and hierarchical markings of
Horowitz’s cards so as to be useable to play a known card game, or how
dealing one of Germain’s golf game cards to a first golfer would add
excitement to game play.
Thus, we are constrained to reverse the Examiner’s rejection of claims
8-14 under 35 U.S.C. § 103(a) as unpatentable over Germain and Horowitz.

note that the step of “dealing a golf game card . . .” is actually recited in
claims 8-14 and therefore, the findings that Germain doesn’t disclose cards
being dealt and that Horowitz does disclose cards being dealt along with the
obviousness conclusion therefrom apply to claims 8-14.
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CONCLUSIONS
There is no new or unobvious functional relationship between the
instructions and the claimed subject matter in claims 1 and 7.
It would not have been obvious to a person of ordinary skill in the art
to modify the game cards of German to have suits and hierarchical markings
as recited in claim 2 and indicia of a deck of poker cards as recited in claim
3 by the teachings of Horowitz in order to add excitement to game play.
It would not have been obvious to a person of ordinary skill in the art
to modify Germain by the teachings of Horowitz in order to render claim 8
unpatentable.

DECISION
We affirm the Examiner’s rejection of claims 1 and 7 under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Germain.
We reverse the Examiner’s rejection of claims 2, 3, and 8-14 under 35
U.S.C. § 103(a) as obvious over Germain and Horowitz.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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