Ex Parte Ogilvie et al

Patent Trial and Appeal Board

Mar 13, 2017

14324967 (P.T.A.B. Mar. 13, 2017)

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.
14/324,967 07/07/2014 John W. Ogilvie 6071.2.3 9460
23484 7590
John Ogilvie
2148 E. 11270 S.
Sandy, UT 84092
03/15/2017 EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/15/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
j ohn @ Ogil vieLawFirm .com
j ohnw ogilvie @ gmail .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN W. OGILVIE and KRISTY L. OGILVIE
Appeal 2015-004728
Application 14/324,967
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John W. Ogilvie and Kristy L. Ogilvie (“Appellants”) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—20.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants submit the real party in interest is Smiling Pines LLC. Appeal
Br. 1.
Appeal 2015-004728
Application 14/324,967
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. Game modification equipment for modifying how
preexisting games are played by modifying aspects of play
which are shared by various games, the game modification
equipment comprising:
at least one game modification instruction presentation
apparatus, said instruction presentation apparatus embodying at
least one game modification instruction which is functional to
provide a modified game play experience by modifying game
play of any of a plurality of games that include an original game
or a prior modification of an original game;
wherein the plurality of original games includes a game
having a bank, a game having event cards, and a game having
play money;
wherein each said original game is also playable in an
unmodified form with respective original game equipment which
lacks said at least one game modification instruction and which
has functionality defined according to original game rules;
wherein the game modification equipment includes a plurality
of game modification instructions which modify functionality of
the original game equipment of at least one of the original games
by adding at least three of the following game play mechanisms
which are not present in the unmodified form of the original
game:
the bank taking at least one event card out of play;
returning out-of-play event cards back into play;
the bank taking back half of a player’s money on the basis of the
game modification instruction;
the bank doubling a player’s money on the basis of the game
modification instruction;
the bank taking back a player’s house or hotel on the basis of the
game modification instruction;
limiting game play to a final round prior to determination of a
winner in the original game;
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Application 14/324,967
letting one player take a turn in the original game in place of
another player’s turn;
doubling a player’s dice roll for a turn;
tripling a player’s dice roll for a turn;
taking a property card from another player on the basis of the
game modification instruction, as opposed to on the basis of a
deal or purchase;
giving a property card to another player on the basis of the game
modification instruction, as opposed to on the basis of a deal or
purchase;
taking at least one extra card from a pile of event cards;
a bankrupted player coming back into the game with startup cash
from the bank;
a bankrupted player coming back into the game with a property
they choose to take from a non-bankrupted player;
one player gives another player half their money on the basis of
the game modification instruction, as opposed to on the basis of
a deal or purchase;
one player moving another player to a jail space on a game board;
one player moving another player to a free parking space on a
game board;
allowing a player to move to any property the player chooses and
then buy it, on the basis of the game modification instruction as
opposed to based on a dice roll;
letting one player view and use items of original game equipment
of another player for one turn during game play;
letting one player view and use items of original game equipment
of another player for one turn during game play without making
any deals for the other player;
allowing or prohibiting deal-making between players, according
to a game modification instruction card;
during game play returning an item of original game equipment
to a location and a status which the item had at the beginning of
game play.
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Appeal 2015-004728
Application 14/324,967
REJECTIONS
1) Claims 1—20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
2) Claims 1—20 are rejected under 35 U.S.C. § 103 as unpatentable
over Wilkins (US 5,810,359, issued Sept. 22, 1998).
DISCUSSION
Rejection 1: Claims 1—20: 35 U.S.C. § 101
Appellants argue the rejection of claims 1—20 under 35 U.S.C. § 101
as a group. Appeal Br. 9. We select claim 1 as representative and claims 2—
20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(iv).
The Examiner finds that claim 1 is directed to the abstract idea of
rules for playing a board game. Final Act. 3; Ans. 15—16 (providing further
analysis for the 35 U.S.C. § 101 rejection stated in the Final Action). The
Examiner next finds that “any elements or combination of elements in the
claims other than the abstract idea per se amounts to no more than mere
instructions to implement the idea on a location structure, [or] game pieces.”
Ans. 16—17. The Examiner concludes that the claims constitute a patent-
ineligible abstract idea because “[v]iewed as a whole any claimed elements
of “modification equipment/cards/dice” does not provide meaningful
limitations to transform the abstract idea into a patent eligible application of
the abstract idea such that the claims amount to significantly more than the
abstract idea itself. Id. at 17.
Appellants contend that the claims are not directed to an abstract idea
for three reasons. Reply Br. 1. Particularly, Appellants argue the claims are
“limited to very specific rule modifications,” “limited to modifying game
play of any of a plurality of games,” and “claim 1 is limited to modifying
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Application 14/324,967
game play of only certain games.” Id. For the following reasons,
Appellants’ contentions are not persuasive and we sustain the rejection of
claim 1 under 35 U.S.C. § 101.
In order to determine whether a patent claim is drawn to patent-
eligible subject matter, we follow the two-step test set forth in Alice Corp.
Party, Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2350 (2014) and
Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 88
(2012). For the first step, “we determine whether the claims at issue are
directed to a patent-ineligible concept such as an abstract idea.” In re Smith,
815 F.3d 816, 818 (Fed. Cir. 2016). Appellants dispute the Examiner’s
finding that claim 1 is directed to an abstract idea, stating that “there is an
abstract idea in this application,” but that “[t]he claims are much narrower”
than this abstract idea. Reply Br. 1. For the purpose of determining whether
claim 1 is directed to an abstract idea, however, we discern no meaningful
distinction between modifying rules for a game and rules for playing a board
game. Therefore, Appellants do not apprise us of error in the Examiner’s
finding that claim 1 is directed to the abstract idea of the rules for playing a
board game. See In re Smith, 815 F.3d at 819 (“claims, describing a set of
rules for a game, are drawn to an abstract idea.”).
The second step of the Mayo/Alice test requires us to determine if
claim 1 “contains an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. The Federal
Circuit explained that it “could envisage, for example, claims directed to
conducting a game using a new or original deck of cards potentially
surviving step two of Alice. ” Id.
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Application 14/324,967
The structures in claim 1, however, are all conventional existing board
game items; namely, for example, “a bank,” “event cards,” and “play
money.” Appeal Br. 26—27 (Claims App.). Claim 1 does not recite any
specific structure for the “game modification equipment,” but merely recites
that it “includes a plurality of game modification instructions.” Id. The
“game modification instructions” are conventional uses of conventional
game board game items. For example, claim 1 recites that the bank takes
“back half of a player’s money on the basis of the game modification
instruction.” Id. Appellants’ reasons in support of their contention that
claim 1 contains patent eligible subject matter are all directed to limitations
on the scope of claim 1. These reasons fail to direct us to any express claim
limitations which either alone, or as part of the claimed ordered combination
of limitations, contain an “inventive concept” that transforms the abstract
idea of rules for playing a board game into patent eligible subject matter.
Reply Br. 1—2. As Appellants have not apprised us of error in the
Examiner’s analysis for either step of the Mayo/Alice test, we sustain the
rejection, under 35 U.S.C. § 101, of claim 1. Claims 2—20 fall with claim 1.
Rejection 2: Claims 1—20: 35 U.S.C. § 103(a)
The rejection of claims 1—20 under 35 U.S.C. § 101 is affirmed as
stated above. Therefore, we do not reach the rejection of claims 1—20 under
35 U.S.C. § 103(a). 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.”).
DECISION
The Examiner’s decision rejecting claims 1—20 is affirmed.
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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)(l)(iv).
AFFIRMED
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