Ex Parte Shanahan

Board of Patent Appeals and Interferences

Nov 19, 2004

09888145 (B.P.A.I. Nov. 19, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN M. SHANAHAN
____________
Appeal No. 2004-2334
Application No. 09/888,145
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 14, all of the claims pending in
this application.
As noted in appellant's specification, the present invention
relates generally to card games, and more particularly to card
games wherein the games are played using predetermined hands of
cards that are each printed on a strip of paper and embedded in a
fortune cookie. Figures 1 and 2 of the application depict a
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fortune cookie (10) used in the play of such card games wherein
at least one strip of paper (12) having one hand unit of cards
represented thereon is embedded in a fortune cookie in the
conventional manner that traditional fortunes are currently
embedded into fortune cookies. Independent claims 1, 6 and 11
are representative of the subject matter on appeal and a copy of
those claims can be found in Appendix A of appellant's brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103(a) are:
Reynolds 3,768,813 Oct. 30, 1973
Mueller 3,770,278 Nov. 6, 1973
Claims 1, 3 through 6, 8, 10, 11, 13 and 14 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Mueller.
Claims 2, 7, 9 and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mueller in view of Reynolds.
Rather than reiterate the examiner's statement of the above-
noted rejections and the conflicting viewpoints advanced by
appellant and the examiner regarding those rejections, we refer
to the answer (Paper No. 12, mailed October 1, 2003) for the
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examiner's reasoning in support of the rejections and to the
brief (Paper No. 11, filed July 14, 2003) and reply brief (Paper
No. 14, filed May 5, 2004) for appellant's views to the contrary.
OPINION
Our evaluation of the obviousness issues raised in this
appeal has included a careful assessment of appellant's
specification and claims, the applied prior art references, and
the respective positions advanced by appellant and the examiner.
As a consequence of our review, we have made the determinations
which follow.
Before addressing the prior art rejections, we note that in
the paragraph bridging pages 4 and 5 of the brief appellant has
set forth several groupings of the claims to be considered on
appeal. However, in the ensuing pages of the brief, appellant
has presented arguments directed to both the independent claims
on appeal and certain of the dependent claims contained in the
various claim groupings mentioned above. See, e.g., arguments on
pages 5-7 of the brief. Notwithstanding the inconsistency of
appellant's actions in the brief, we are compelled to review the
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claims as argued by appellant and thus direct our attention to
all of the claims on appeal that have been separately argued.
Looking to the prior art Mueller patent relied upon by the
examiner in the rejection of claims 1, 3 through 6, 8, 10, 11, 13
and 14 under 35 U.S.C. § 103(a), we note that Mueller discloses a
cookie game including a plurality of cookies (11) packaged
together as a set with a fortune-like strip of paper (12) baked
inside each cookie. Each strip of paper contains a segment of a
written composition which is interrelated with segments found on
the other fortune-like paper strips associated with other cookies
in the package. When all the paper strips in the various fortune
cookies in the package are properly arranged in a predetermined
sequence they recreate the written composition. Each of the
paper strips bears a randomly selected letter of the alphabet as
an identifying mark and the package contains a separate key
(Fig. 4) showing the correct arrangement of the paper strips to
recreate the written composition.
Claim 11 on appeal is directed to a "novelty item"
comprising,
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at least one strip of paper displaying one hand unit of
cards, with each said hand unit comprising one or more
cards with each said card bearing the indicia of one
suit and one denomination to define a card game hand;
and
a fortune cookie containing said strip so that indicia
are not visible without breaking said fortune cookie.
Like the examiner, it is apparent to us that the only
difference between the novelty item set forth in appellant's
claim 11 and one of the fortune cookies shown in the cookie game
of Mueller resides in the content of the printed matter carried
by the strip of paper in each cookie and the meaning and
information conveyed by such printed matter. The appropriate
test for determining whether printed matter is entitled to
patentable weight is set forth in In re Gulack, 703 F.2d 1381,
1385, 217 USPQ 401, 403 (Fed. Cir. 1983), which states at 217
USPQ 404
[w]here 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. Although the printed matter must be
considered, in that situation it may not be entitled to
patentable weight . . .
* * *
[w]hat is required is the existence of differences
between the appealed claims and the prior art
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sufficient to establish patentability. The bare
presence or absence of a specific functional
relationship, without further analysis, is not
dispositive of obviousness. Rather, the critical
question is whether there exists any new and unobvious
functional relationship between the printed matter and
the substrate (emphasis added).
In the present case, the mere arrangement of printed matter
(i.e., one hand unit of cards) on a strip of paper to be
incorporated into a fortune cookie does not appear to provide any
new and unobvious functional relationship between the printed
matter and the strip of paper. The only functional relationship
that we discern between the above-noted printed matter and the
strip of paper in appellant's claimed novelty item is that the
paper strip acts to support or carry the printed matter. This,
of course, is the exact same relationship that exists between the
printed matter and the paper strips in the cookie game of
Mueller. The fact that the content or meaning of information
conveyed by the printed matter placed on the paper strips in
Mueller may be different than that of the printed matter placed
on appellant's paper strips does not alter the fact that in each
instance the substrate or paper strip merely supports the printed
matter thereon. Since we discern no new and unobvious functional
relationship between the printed matter and the paper strip of
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appellant's claimed novelty item, we are led to the conclusion
that such printed matter is not entitled to patentable weight.
Since, for the reasons stated above, we decline to accord
the printed matter of appellant's novelty item any patentable
weight, it follows that we will sustain the examiner's rejection
of appealed claim 11 under 35 U.S.C. § 103(a). We do so, not
because we agree with the examiner's misguided opinion that it
would have been obvious at the time the invention was made to
print card suit and denomination indicia on the paper strips of
Mueller (answer, page 3), a conclusion for which the examiner has
no factual basis, but because we find that appellant's item
defined in claim 11 lacks novelty with regard to the fortune
cookies found in Mueller. As has been made clear by our
reviewing Courts on numerous occasions, anticipation or lack of
novelty is the ultimate or epitome of obviousness. See, in this
regard, In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571
(CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641,
644 (CCPA 1974).
We next look to the examiner's rejection of independent
claims 1 and 6 under 35 U.S.C. § 103(a) based on Mueller. These
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claims are directed to a "pre-dealt card game" (claim 1) and a
"pre-dealt poker game" (claim 6) comprising at least two separate
hand units of cards, wherein each hand unit of cards is displayed
on a paper strip at least partially contained inside a fortune
cookie. Thus, appellant's game, like the cookie game of Mueller,
requires a plurality of fortune cookies, with each cookie
containing a strip of paper having game specific indicia printed
thereon, i.e., a hand unit of cards in appellant's game and lines
of text from a larger written composition in Mueller's game. In
this instance, we find that the differences between the game
defined in appellant's claims 1 and 6 on appeal and the cookie
game of Mueller reside in the content of the printed matter
carried by the strip of paper in each fortune cookie and the
meaning and information conveyed to a user/player by such printed
matter.
As with claim 11 discussed above, we find no new and
unobvious functional relationship between the printed matter and
the paper strips of appellant's claimed "card game" of claim 1 or
"poker game" of claim 6, and thus conclude that the differences
engendered by such printed matter are not entitled to patentable
weight. Furthermore, like the examiner, we view the differences
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in this case to be akin to those in Ex parte Breslow, 192 USPQ
431 (BPAI 1975), wherein a merits panel of this Board determined
that any differences between Breslow's game and the game of the
Mitchel reference applied thereagainst resided in the meaning and
information conveyed by the printed matter involved and not in
any structure per se, such that the noted differences in printed
matter were not entitled to patentable weight.
Contrary to appellant's views set forth in the brief and
reply brief, we do not see that the invention as defined in
claims 1 and 6 on appeal provides "a completely different game
structure" (reply brief, page 4) than that disclosed in Mueller.
Both appellant's game and that of Mueller require a plurality of
fortune cookies with each of the cookies containing a strip of
paper with game specific information printed thereon. Thus,
appellant's game structure is essentially the same as that in
Mueller, with the only distinction being provided by the
different content of the printed matter carried on the paper
strips in appellant's and Mueller's games and by the meaning and
information conveyed to a user/player by such printed matter.
However, under the test set forth in Gulack, supra, we have
determined that such differences in the printed matter are not
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entitled to patentable weight. Accordingly, we sustain the
examiner's rejection of claims 1 and 6 under 35 U.S.C. § 103(a)
based on Mueller, again noting that lack of novelty is the
ultimate or epitome of obviousness.
Concerning dependent claims 3 through 5, 8, 10, 13 and 14,
we agree with the examiner's rejection of dependent claims 3, 4,
8, 10, 13 and 14 on the same basis as discussed above, but do not
agree with the examiner's rejection of claim 5. Claim 5 adds to
the structure of the game defined in independent claim 1 that
"each fortune cookie includes more than one strip of paper." We
do not see that the examiner has specifically dealt with this
limitation and we find nothing in Mueller which would have been
suggestive to one of ordinary skill in the art of more than one
strip of paper in each fortune cookie. Thus, we will sustain the
examiner's rejection of claims 3, 4, 8, 10, 13 and 14, but not
that of claim 5.
The next rejection for our review is that of claims 2, 7, 9
and 12 under 35 U.S.C. § 103(a) as being unpatentable over
Mueller in view of Reynolds. As noted on pages 3-4 of the
answer, it is the examiner's view that
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Mueller teaches all limitations of these claims except
that it does not teach perforation on strips for
separation of cards. Reynolds teaches perforation on
strips for card separation. In order to detach cards
from the strip, it would have been obvious to use
perforation. One of ordinary skill in the art at the
time the invention was made would have used perforation
for easy separation of cards from the strip.
Like appellant (brief, pages 9-10), we find no teaching,
suggestion or incentive for combining the applied references in
the manner urged by the examiner; that is, no reason or
motivation for attempting to provide perforations of the type
claimed by appellant in the paper strips of Mueller's cookie game
wherein a segment of a written composition is contained on each
of the paper strips. Except for hindsight afforded by first
having read appellant's application, the examiner has no factual
basis whatsoever for providing the paper strips in Mueller with a
hand unit of cards, where each of the cards bears one
predetermined suit and denomination, and then further providing a
perforation between each of the cards on the paper strip to allow
selective separation of each of the cards from the strip. For
these reasons, we will not sustain the examiner's rejection of
claims 2, 7, 9 and 12.
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To summarize, we have sustained the examiner's rejection of
claims 1, 3, 4, 6, 8, 10, 11, 13 and 14 under 35 U.S.C. § 103(a),
but not the rejection of claims 2, 5, 7, 9 and 12. Thus, the
decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF/lbg
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