Ex Parte Roemer et al

Board of Patent Appeals and Interferences

Mar 24, 2009

10662605 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICKEY ROEMER and DAVID B. SCHULTZ
__________

Appeal 2009-0448
Application 10/662,605
Technology Center 3700
__________

Decided:1March 24, 2009
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for playing a game. The Examiner has rejected the claims as indefinite,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0448
Application 10/662,605

anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm the rejection for indefiniteness but reverse the rejections based on the
prior art.
STATEMENT OF THE CASE
Claims 31-61 are on appeal.2 Claim 31 is representative and reads as
follows:
Claim 31: A method for playing a game, the method comprising:
displaying a plurality of indicia-bearing game pieces on a gaming
grid;
receiving player input selecting game pieces that are adjacent to one
another and that have matching indicia;
removing from the grid the matching adjacent game pieces that are
selected;
after all matching adjacent game pieces that are perceived by a player
are selected and removed, shuffling any remaining game pieces and
presenting a new grouping of the remaining game pieces, the shuffling
causing the remaining game pieces to be in a new random order, and the new
grouping of the remaining pieces being in the new random order; and
repeating the selection and removal of any matching adjacent game
pieces.

The claims stand rejected as follows:
• claims 33 and 46 under 35 U.S.C. § 112, second paragraph, as being
indefinite;
• claims 31, 32, 34, 45, and 60 under 35 U.S.C. § 102(b) as being
anticipated by Monte Carlo;3 and

2 Claims 62-97 are also pending but have been withdrawn from
consideration as being drawn to a non-elected invention (Reply Br. 2).
3 Walter B. Gibson, Hoyle’s Modern Encyclopedia of Card Games, 1974,
Doubleday & Co., New York, New York, pgs. 343-344 (Monte Carlo game).
2
Appeal 2009-0448
Application 10/662,605

• claims 33, 35-44, 46-59, and 61 under 35 U.S.C. § 103(a) as being
obvious in view of Monte Carlo, Kelly,4 and Same Game.5
INDEFINITENESS
The Examiner has rejected claims 33 and 46 under 35 U.S.C. § 112,
second paragraph, as being indefinite, on the basis that, in claim 33, the term
“‘the prizes associated therewith’ lacks a proper antecedent” and that claim
46 depends from cancelled claim 30 and “its scope cannot be determined”
(Ans. 6).
Appellants do not dispute the Examiner’s rejection and state that they
intend “to amend claim 33 to provide proper antecedent basis for the claim
element when prosecution is re-opened” and “to amend claim 46 to properly
reflect its dependency” (Reply Br. 4).
Given that Appellants do not dispute the rejection of claims 33 and 46
as being indefinite, we summarily affirm the rejection.
ANTICIPATION
Issue
The Examiner has rejected claims 31, 32, 34, 45, and 60 under 35
U.S.C. § 102(b) as being anticipated by Monte Carlo.
The Examiner’s position is that Monte Carlo discloses a “grid of game
pieces …, player input selecting adjacent game pieces that have matching
indicia …, removing the game pieces … and shuffling remaining game

4 Kelly et al., US 5,882,258, Mar. 16, 1999.
5 Heins Palm Page, SAMEGAME, http://www.geocities.com/
ResearchTriangle/System/2771/Pilot/palmpage.html?20067 (downloaded
July 7, 2006).
3
Appeal 2009-0448
Application 10/662,605

pieces after all matching adjacent game pieces have been selected,” and
repeating the selection/removal process (Ans. 6). The Examiner reasons that
the “action in the play of Monte Carlo of moving up the cards to fill in the
empty spaces from the matching cards that were removed is considered to be
a ‘shuffling’ process that causes ‘the remaining game pieces to be in a new
random order’” (id.).
Appellants contend that the Examiner erred in finding that the
disclosure in Monte Carlo of moving up cards to fill in the empty spaces
meets the “shuffling” limitation because claim 31 requires the shuffling
process to result in a new random order, and the shifted Monte Carlo pieces
are in the same order (App. Br. 6).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Monte Carlo discloses a shuffling
process that results in the remaining pieces being in a new random order?
Findings of Fact
1. Monte Carlo discloses a solitaire card game having an initial array,
with exemplified cards, as shown below:

(Monte Carlo 343.) The array has four rows with five cards in each row.
2. Monte Carlo discloses that adjacent pairs, touching horizontally,
vertically, or diagonally, are removed from the initial array (id. at 344). The
circled cards (shown below) would be removed from Monte Carlo’s
exemplary array:
4
Appeal 2009-0448
Application 10/662,605

3. Monte Carlo discloses that after adjacent pairs are removed, the
remaining cards are moved up so that the initial array exemplified above
becomes:

(Id. at 344). The array has two rows with five cards in each row, and shows
that each of the remaining cards was moved, in order, toward the top-left
corner of the array.
4. Monte Carlo discloses that more cards are dealt to fill in the array
to the required total of twenty and the pair removal procedure is repeated
(id.).
5. Appellants’ Specification discloses that the gaming method
includes “shuffling any non-selected game pieces remaining within the game
grid into a consolidated grouping” (Spec. 4: 12-14). Appellants’ Figures 3
and 4 are reproduced below:

5
Appeal 2009-0448
Application 10/662,605

FIG. 3 is an exemplary display of one embodiment,
according to the present invention, showing a gaming grid
wherein matching adjacent game pieces are selected in a first
selection period;
FIG. 4 is an exemplary display of one embodiment in a
second selection period, according to the present invention,
after the selection and removal of matching adjacent game
pieces in Fig. 3, and after the shuffling and consolidating of the
non-selected game pieces from the first selection period.
(Spec. 7: 9-15 (emphasis added).)
Principles of Law
Analysis of whether a claim is patentable over the prior art under 35
U.S.C. § 102 begins with a determination of the scope of the claim. We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art. “To anticipate a claim, a reference must
disclose every element of the challenged claim.” PPG Indus. Inc. v.
Guardian Indus. Corp, 75 F.3d 1558, 1566 (Fed. Cir. 1996).
Analysis
Claim 31 is directed to a method for playing a game that comprises,
among other steps, removing matching game pieces that are adjacent to one
another and shuffling any remaining game pieces to present a new grouping
of the pieces in a new random order.
6
Appeal 2009-0448
Application 10/662,605

Appellants do not dispute that Monte Carlo discloses a game that
comprises presenting indicia-bearing pieces on a grid and removing
matching adjacent pairs, but Appellants contend that the Monte Carlo game
does not disclose shuffling the remaining game pieces into a new random
order.
The Examiner reasons that, after the pairs are removed, Monte Carlo
discloses that the remaining pieces are moved up on the grid and that, “since
the pieces are in a new location with respect to one another, this is
considered to meet the recitation of ‘shuffling’ to create a ‘new random
order’” (Ans. 6). We appreciate the Examiner’s position. Nevertheless,
claim language must be interpreted in light of Appellants’ Specification.
Appellants draw a distinction between “shuffling” and Monte Carlo’s
“consolidation.” As illustrated in Appellants’ Figures 3 and 4, the
“shuffling” of game pieces requires a rearrangement in the order of the
pieces (i.e., the creation of a new random order), not merely the
consolidation of non-selected pieces that may remain after the first selection
step (FF 5).
Therefore, Appellants’ arguments are persuasive. Monte Carlo
discloses that the game pieces are moved up (i.e., consolidated), in the order
in which they were originally displayed, to fill gaps left by removed cards.
The new position of the pieces is therefore not based on shuffling that
creates a new random order. The Examiner has not adequately explained
how Monte Carlo discloses shuffling of the remaining game pieces to
achieve a new random order.
7
Appeal 2009-0448
Application 10/662,605

The claimed game also differs from Monte Carlo in that it requires
“repeating the selection and removal of any matching adjacent game pieces”
(claim 31). Thus, even if the original array has no matching adjacent pieces,
the method defined by claim 31 requires shuffling the remaining game
pieces (including all of the original game pieces), presenting them in a new
order, and allowing a second round of selection and removal of matching
adjacent game pieces (see claim 31).
The rules of Monte Carlo, by contrast, do not provide for any
shuffling and re-dealing of the cards if there are no matches in the original
array. It is apparent from the rules of Monte Carlo that if the original array
has no matching adjacent cards to remove, the game is over and the player
loses; Monte Carlo therefore differs from the method of claim 31 in that it
does not require repeating the selection and removal steps recited in the
claim.
The anticipation rejection of claim 31 by Monte Carlo is reversed.
Claims 32, 34, and 45 depend from claim 31. The rejection of these claims
is reversed for the reasons discussed above.
Claim 60 is an independent claim and also requires that remaining
pieces (i.e. “non-deactivated pieces”) are shuffled and presented in a “new
random order.” The rejection of claim 60 is reversed for the reasons
discussed above.
OBVIOUSNESS
The Examiner has rejected claims 33, 35-44, 46-59, and 61 under 35
U.S.C. § 103(a) as being obvious in view of Monte Carlo, Kelly, and
SameGame.
8
Appeal 2009-0448
Application 10/662,605

Claims 33, 35-44, and 46-59 depend directly or indirectly from claim
31. Claim 61 is an independent claim and also requires that remaining
pieces are shuffled and presented in a new random order. The Examiner
relies on Monte Carlo, as discussed above, to meet the “new random order”
limitation and provides Kelly and SameGame only to supply the additional
limitations of the rejected claims. Thus, as discussed above, the Examiner
has not adequately explained how the cited references show shuffling of the
remaining game pieces to achieve a new random order, as required by all of
the claims on appeal. The rejection of claims 33, 35-44, 46-59, and 61 in
view of Monte Carlo, Kelly, and SameGame is reversed.
CONCLUSIONS OF LAW
The evidence of record does not support the Examiner’s conclusion
that Monte Carlo discloses a shuffling process that results in the remaining
pieces being in a new random order.
SUMMARY
We affirm the rejection of claims 33 and 46 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
We reverse the rejection of claims 31, 32, 34, 45, and 60 under 35
U.S.C. § 102(b) as being anticipated by Monte Carlo and the rejection of
claims 33, 35-44, 46-59, and 61 under 35 U.S.C. § 103(a) as being obvious
in view of Monte Carlo, Kelly, and Same Game.
9
Appeal 2009-0448
Application 10/662,605

TIME PERIOD FOR RESPONSE
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-IN-PART

Ssc:

STEPTOE & JOHNSON, LLP
2121 AVENUE OF THE STARS
SUITE 2800
LOS ANGELES, CA 90067
10