Ex Parte Nelson

Board of Patent Appeals and Interferences

Aug 18, 2011

11337098 (B.P.A.I. Aug. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/337,098 01/20/2006 Jeffrey A. Nelson 247-10 1632
7590 08/19/2011
Jonathan A. Bay
Ste. 410
1736 E. Sunshine
Springfield, MO 65804
EXAMINER
ARYANPOUR, MITRA
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/19/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEFFREY A. NELSON
____________________

Appeal 2009-012427
Application 11/337,098
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/337,098
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STATEMENT OF CASE
Jeffrey A. Nelson (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-19 under 35 U.S.C. § 103(a) as being
unpatentable over Rules of the Game: The Complete Illustrated
Encyclopedia of All the Major Sports of the World 160-63 (Sylvia Worth
ed., Diagram Visual Information Ltd. 1990) (hereinafter “Rules”), Sports :
The Complete Visual Reference 242-47 (Francois Fortin ed., Firefly Books
Ltd. 2000) (hereinafter “Sports”), and Joe Luxbacher, Soccer Practice
Games 9, 63, 76, 96, 124, 133 (2d ed. 2003) (hereinafter “Practice”). We
have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The claims are directed to a method of playing a soccer (or association
football) goalkeeping game. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of playing a soccer (or association football)
goalkeeping game on a playing area between a first and
second player wherein said first player defends a first goal
and goal area as said second player defends a second goal
and goal area, comprising the steps of:
providing a multiplicity of balls, only one of which is
qualified at a time for possession or attempts on goal;
bounding the playing area by spaced sidelines that extend
between opposite goal lines;
placing the then-qualified ball in play in said playing
area;
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attempting goals by kicking or heading the ball or else by
throwing, rolling, punting, or drop kicking the ball from the
opposite goal area;
scoring points for goals;
defending attempts on goal by caught-and-held saves or
else otherwise stopping or deflecting the ball;
rewarding the player who defends an attempt on goal but
causes the ball to go out of bounds over that player's goal
line with a reward comprising possession of the ball;
providing each player with one or more out-of-bounds
teammates who are restricted from crossing into the playing
area but permitted to surround parts thereof;
wherein the qualified ball becomes out-of-play whenever
scored or otherwise crosses a sideline or goal line, and
authorizing the player entitled to next possession to
acquire any ball which thereafter becomes the qualified ball
by any of:
-- that player personally retrieving the most recent scored
ball (if any),
-- that player personally retrieving any left-over ball idle
in his or her goal,
-- that player receiving feed of one spare ball of any of
the multiplicity of balls from any one of his or her off-field
teammates; and
tallying points wherein the player with the most points at
the end of desired regulation play of one or more periods
wins said game.

OPINION
Claims 1-3, 5, 7, 9-11, and 13-17
The Examiner found that each of the aspects of the game called for in
Appellant’s claims either is a known aspect of the traditional game of soccer,
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as evidenced by Rules or Sports, or is a known aspect of well-known soccer
practice games or drills, as evidenced by Practice. Ans. 3-8. The Examiner
reasoned that it would have been obvious to one of ordinary skill in the art at
the time of Appellant’s invention “to have combined various soccer drills
when training players, the motivation being so the players can develop better
mobility, agility, and to develop better ball control and handling.” Ans. 8.
Appellant argues that claim 1 calls for continuance of play
immediately, preferably while catching the opponent out of position, without
any lull in the action, and that none of the cited references discloses or
suggests “anything comparable,” “whether considered individually or in
routine combinations.” App. Br. 17, 18. Appellant’s argument is not
convincing, because the claim language alluded to by Appellant does not
specify whether or not there is any lull in the action before the player
entitled to possession puts the ball back in play.
Appellant next argues that none of the applied references teaches
rewarding with possession of the ball the player who defends an attempt on
goal but causes the ball to go out of bounds over that player’s goal line, as
required in claim 1. App. Br. 19. This is not correct. As pointed out by the
Examiner on page 7 of the Answer, in the soccer practice game “Goalie
Wars,” the defending goalie takes possession of the ball after either a save or
a goal scored. Practice, p. 124 (stating “[a]fter the save, or goal scored,
keeper B tries to score against A”). Thus, after a save in which the ball goes
out of bounds over keeper B’s goal line, keeper B would gain possession of
the ball.
Appellant further argues that to award a player who causes the ball to
go out of bounds (as opposed to a catch and hold) would be contrary to the
commonly-accepted notions of good goalkeeping play, and thus would not
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have been obvious. App. Br. 20. We do not agree. The player could be
encouraged to catch and hold rather than deflect out of bounds by assessing
more points for a catch and hold than for a deflection wide or over the goal
line. The practice game “Goalie Wars” does just that. Practice, p. 124
(indicating that 2 points are awarded for a catch and save and 1 point for a
save by deflecting the ball wide or over the goal line).
Appellant additionally argues that a game wherein the player entitled
to the next possession is authorized “to acquire any ball which thereafter
becomes the qualified ball by . . . that player receiving feed of one spare ball
of any of the multiplicity of balls from any one of his or her off-field
teammates” would not have been obvious because Rules and Sports show
that in the conventional game of soccer teammates restricted from entering
the field of play never serve a ball back in play, and Practice does not cure
that deficiency. App. Br. 22-23. This argument is not persuasive, because it
does not consider the combination proposed by the Examiner. The
Examiner’s rejection relies in part on the Examiner’s finding that
at any given time whether in a soccer game or in a soccer
practice drill, there are always other players on and off the
playing field which naturally aid in collecting out of bounds
balls or aiding the players in training. It is not uncommon for
players to retrieve their own balls or have a teammate assist in
collecting out of bounds ball(s).
Ans. 5. Appellant has not disputed the Examiner’s statement that the
practice of having teammates off the playing field assist in collecting out of
bounds balls, at least in soccer training drills, was known in the art at the
time of Appellant’s invention, or cogently pointed to any flaw in the
Examiner’s reasoning as to why it would have been obvious to incorporate
such a known aspect into a soccer goalkeeping game.
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Rejections on obviousness grounds must be supported by “some
articulated reasoning with some rational underpinning” to combine the
known elements in the manner required in the claim at issue. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). However, “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
“[T]he mere existence of differences between the prior art and an invention
does not establish the invention's nonobviousness.” Dann v. Johnston, 425
US 219, 230 (1976). Where the gap between the prior art and the claimed
invention is not so great as to render the claimed invention nonobvious to
one reasonably skilled in the art, the claimed invention is not patentable over
the prior art. Id. There is no absolute requirement that each claim limitation
be disclosed in a prior art reference. See, e.g., Tegal Corp. v. Tokyo Electron
Am., Inc., 257 F.3d 1331, 1349 (Fed. Cir. 2001) (acknowledging that a claim
could be obvious over a single prior art reference that does not disclose one
of the limitations in the claim).
Thus, to the extent that Appellant is arguing that the Examiner’s
rejection is flawed solely because the Examiner has not pointed to precise
teachings in the three applied references directed to the specific subject
matter of claim 1, this line of argument is not persuasive. The Examiner has
articulated an apparent reason to combine known aspects of soccer games
and training drills to train soccer players (i.e., “so the players can develop
better mobility, agility, and to develop better ball control and handling”).
See Ans. 8. Appellant has not specifically identified any flaw in the
Examiner’s reasoning. To the extent that Appellant may be arguing that
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common sense (or any other rationale) cannot serve as a reason to combine
references without the Examiner identifying record evidence of a motivation
to combine the references, this is incorrect. Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1328-30 (Fed. Cir. 2009).
For the above reasons, we sustain the rejection of claim 1 and claims
2, 3, 5, 7, 9-11, and 13-17, for which Appellant has not presented any
separate arguments, and which thus fall with claim 1.
Claim 18
Appellant argues that “[n]one of the procedures recited in the cited
references disclose or suggest anything comparable” to the limitation in
claim 18 “further rewarding the player who defends an attempt but causes
the ball to go out of bounds over the sidelines on that player’s half of the
field with … possession of the ball.” App. Br. 31. This is not correct. As
pointed out by the Examiner on page 7 of the Answer, in the soccer practice
game “Goalie Wars,” the defending goalie takes possession of the ball after
either a save or a goal scored. Practice, p. 124 (stating “[a]fter the save, or
goal scored, keeper B tries to score against A”). Thus, after a save in which
the ball crosses over the sidelines on the defending keeper’s half of the field,
the defending keeper would gain possession of the ball to try to score against
the other keeper.
Thus, we sustain the rejection of claim 18.
Claim 8
Claim 8 calls for “designating respective offside zones on the playing
area.” Appellant argues that “for the game of soccer there is nothing
applicable to an offside zone designated on the playing area.” App. Br. 33.
That is not factually accurate. According to the rules of soccer, there are
two designated offside zones, each occupying a respective half of the pitch.
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Rules, p. 163. Specifically, a player is offside if, when the ball is played, he
is nearer to the opposing goal than two opponents and the ball, unless he is
in his own half of the pitch. Id. In other words, each player’s offside zone
(i.e., the zone in which the player runs a risk of being offside) is his
opponent’s half of the pitch. Appellant argues that according to the rules of
soccer, as set forth in Rules, “the offside zone is a moving zone” and
“[o]ffsides is not committed merely by entering a permanently-marked
zone.” App. Br. 33 (emphasis added). However, claim 8 does not require
designation of a permanently-marked zone, much less a permanently-marked
zone which gives rise to an offsides violation merely by entering the
permanently-marked zone. Thus, the argument is not convincing.
We sustain the rejection of claim 8.
Claim 12
Claim 12 requires designating a mid-field neutral area on the playing
area, exclusive of the offside zones or goal areas. The Examiner found that
the field of play in the game of soccer comprises a mid-field neutral area
exclusive of the offside zones and goal areas. Ans. 6. The Examiner cited
to “the comments under the heading Midfielders on page 243 of ‘Sports’”
for this finding. Id. The Examiner has not explained, and it is not apparent
to us, how that portion of the Sports disclosure relates to the claim limitation
in question. We reverse the rejection of claim 12.
Claims 4 and 6
Claim 4, from which claim 6 depends, requires initiating play by
placing the ball in the center of the playing area and starting the players in a
race from their respective goals. The Examiner’s rejection does not
explicitly address this limitation, and it is not apparent how the Examiner
accounts for it. Thus, the rejection fails to establish a prima facie case that
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the subject matter of claims 4 and 6 would have been obvious. We cannot
sustain the rejection.
Claim 19
Claim 19 establishes a time of possession time-limit after which a
player is signaled and obligated to turn over possession of the ball. The
Examiner found that placement of a time limit on a pair of players involved
in a drill was well known in the art at the time of Appellant’s invention, as
evidenced by the discussion of the rules of “Hounds and Hares” on page 9 of
Practice. Ans. 8. In the Appeal Brief, Appellant merely recites the
additional limitations in claim 19, refers to certain unclaimed characteristics
of the game, and baldly alleges that “these features are not found in the prior
art of record.” App. Br. 37-38. This vague statement does not constitute a
separate argument for the patentability of claim 19 pursuant to 37 C.F.R. §
41.37(c)(1)(vii). See In re Lovin, 99 USPQ2d 1373, 1379 (Fed. Cir. 2011)
(holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”). On pages 11
and 12 of the Reply Brief, Appellant appears to assert that the subject matter
of claim 19 is not rendered obvious by the applied references because the
Hounds and Hares game is essentially just a game of tag, which results in the
two players going back to their places on the circle, not a forfeiture in
possession “(and continuing onslaught of play).” This argument is not
persuasive, because it is not commensurate with the scope of claim 19,
which specifies neither to whom the player exceeding the time limit is to
turn over the ball, nor that the player is faced with a continuing onslaught of
play.
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We sustain the rejection of claim 19.

DECISION
For the above reasons, the Examiner’s decision is affirmed as to
claims 1-3, 5, and 7-11, and 13-19, and reversed as to claims 4, 6, and 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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