Ex Parte Starr

Patent Trial and Appeal Board

May 24, 2018

13888519 (P.T.A.B. May. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/888,519 05/07/2013 Carder Starr
133139 7590 05/29/2018
Adler Pollock & Sheehan P.C.
One Citizens Plaza
8th floor
Providence, RI 02903
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
405573-501001US 6821
EXAMINER
JOSEPH, SHAWN S
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
05/29/2018 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):
IPDocketing@apslaw.com
mlopresti@apslaw.com
patents@apslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARDER STARR
Appeal2018-000586
Application 13/888,519
Technology Center 2100
Before BRUCE WINSOR, BETH Z. SHAW, and
MICHAEL J. ENGLE, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant seeks our review under 35 U.S.C. § 134(a) of the Final
Rejection of claims 7-11 and 17-21. Claims 1, 3---6, and 12-16 are
withdrawn. Final Act. 1. Claim 2 is cancelled. App. Br. 23. We have
jurisdiction under 35 U.S.C. § 6(b).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 7-11 and
1 Throughout this Decision we have considered the Appeal Brief filed April
24, 2017 ("App. Br."), Reply Br. filed October 24, 2017, the Examiner's
Answer mailed August 24, 2017 ("Ans."), and the Final Office Action
mailed October 28, 2016 ("Final Act.").
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Application 13/888,519
17-21 is affirmed. See 37 C.F.R. § 4I.50(a)(l). We also enter a new ground
of rejection under 37 C.F.R. § 4I.50(b).
INVENTION
Appellant's invention is directed to a word building game. Spec. ,r 2.
Claims 7 and 21 are illustrative and reproduced below:
7. A method of playing a word building game, comprising:
receiving, by a first player, tiles depicting characters comprising at
least a first language and a second or different language, the tiles with
characters of the first language and the tiles with characters of the second or
different language being used non-simultaneously;
forming, by the first player, a word from the characters using the first
language within a playing environment having a plurality of character areas,
the plurality of character areas including one or more change language areas;
and counting a point value for the word based on the numeric value of
the characters used in the word,
whereby if the tiles selected by the first player depicting the first
language engage the one or more change language areas, the tiles depicting
the second or different language are subsequently used by a second player to
build a word.
21. A method of playing a word building game with at least first and
second players using specialized digital computing apparatus having a
storage medium, comprising the steps of:
displaying for the players a digital grid forming a playing
environment, the digital grid having an array of rows and columns, each of
the rows and columns forming a plurality of 4-sided polygons,
wherein a first set of the 4-sided polygons includes score enhancing-
related indicia for enhancing an assigned value of a formed word, and a
second set of said 4-sided polygons including second indicia instructing the
players to change a language used in the word building game;
storing in the storage medium acceptable words in a first language and
a second language;
distributing to the first player, by the specialized digital computing
apparatus, a plurality of digital tiles that may be placed on the digital grid
and combined during game play to form words in the first and second
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languages, each digital tile including a representation of a single character
having an associated point value;
detecting, by said digital computing apparatus, when the players form
a word across one of said second set of 4-sided polygons that include the
second indicia instructing the players to change to the language;
assigning a score by said digital computing apparatus to words
submitted for play by the players based in part on a value assigned to the
characters in the words; and
verifying, by said digital computing apparatus, acceptability of the
words played by accessing the storage medium to determine that the words
being played are in a correct language based upon a determination that the
immediately prior word was played across one of said second set of
polygons that include said indicia instructing a player to change the language
used in the word building game.
REJECTIONS
The Examiner rejected claim 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 3--4.
The Examiner rejected claims 7-11 and 17-21 under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 5-11.
The Examiner rejected claims 8-11 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Final Act. 12-13.
The Examiner rejected claims 7-11 and 17-21 under 35 U.S.C.
§ I03(a) as being unpatentable over Ogilvie, US 2011/0133405 Al (June 9,
2011 ); Mattel Games, "How to Play Scrabble" (2003) ("Scrabble"); Miller,
"Tower of Scrabble" (Sept. 16, 2007) ("Miller"), available at
http://www. washingtonpost. com/wp-dyn/ content/ article/2007 /09/ 14/
AR2007091401974.html; and Rajat et al., "Scrabble for the Apple iPad"
(Apr. 3, 2010) ("Rajat"), available at
https://www.youtube.com/watch?v=VdUznE15L30. Final Act. 13-34.
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CONTENTIONS AND ANALYSIS
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to Appellant's
arguments.
Written Description Rejection
The Examiner finds the Specification does not support "verifying, by
said digital computing apparatus, acceptability of the words played by
accessing the storage medium to determine that the words being played are
in a correct language based upon a determination that the immediately prior
word was played across one of said second set of polygons that include said
indicia instructing a player to change the language used in the word building
game," as recited in claim 21. Final Act. 4. The Examiner finds that
"verifying" is described in paragraph 25 of the Specification, but that the
verifying is not done based on the claimed determination. Id.
We disagree. There is no requirement that the claimed invention be
described in the identical wording that was used in the Specification;
however, there must be sufficient disclosure to show one of skill in the art
that the inventor "invented what is claimed." Union Oil Co. of Cal. v. Atl.
Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (quoting In re Gosteli, 872
F.2d 1008, 1012 (Fed. Cir. 1989)). As Appellant argues, the Specification,
including paragraphs 18, 19, 28, and 30, supports the claimed verification is
done "based upon a determination that the immediately prior word was
played across one of said second set of polygons that include said indicia
instructing a player to change the language used in the word building game."
More particularly, one of ordinary skill in the art would have understood that
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the "verifying" of the acceptability of words described at paragraphs 25 and
28 is based on the dictionary of the language of play, and that the language
of play is based on the last change in the language of play by playing a word
across a polygon that indicates a change of language, as described in
paragraphs 28 and 30. It follows that the acceptability of the very next word
played after a change in language will be verified "based upon a
determination that the immediately prior word was played across [ a change
language area]," as recited in claim 21 (emphasis added). E.g., Spec. ,r 30
("When a word is played across a Change Language square that player must
select a new language for the next play(s)") (emphasis added).
Accordingly, we do not sustain the rejection of claim 21 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Indefiniteness Rejection
The Examiner rejected claims 7-11, and 17-21 under 35 U.S.C.
§ 112, second paragraph for: (i) conditional limitations (Final Act. 8-11) and
(ii) being unclear and having elements lacking antecedent basis (Final Act.
5-8). With respect to the unclear elements, the Examiner provides some
suggested corrections. Id. at 8.
First, Appellant argues the claimed words pointed out by the
Examiner in claims 7, 8, 10, and 21 are not "conditional limitations." App.
Br. 15. With regard to the use of the word "may" in claim 21, we agree with
Appellant that the specified limitation is not a conditional limitation because
it limits the functionality of distributed digital tiles rather than setting forth
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optional or alternative steps or functions.
With regard to the limitations using the word "if' in claims 7, 8, and
10 and the word "when" in claim 21, we agree with the Examiner that these
limitations set forth a condition. See Ex parte Schulhauser, No. 2013-
007847, 2016 WL 6277792, at *3-5 (PTAB Apr. 28, 2016) (precedential)
( addressing a conditional step in a method); id. at *7 ( addressing an "if'
condition in a system claim); see also MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2 l l l .04(II) (9th ed. Rev. 08.2017, Jan. 2018) ( citing
Schulhauser). We do not, however, agree that they render the claims
indefinite, as they recite functional limitations (App. Br. 15), the metes and
bounds of which can be ascertained by one of ordinary skill in the art. See
MPEP § 2173 ("It is of utmost importance that patents issue with definite
claims that clearly and precisely inform persons skilled in the art of the
boundaries of protected subject matter.").
Accordingly, we do not sustain this aspect of the rejection, i.e., the
"conditional claims environment," as a reason to reject claims 7, 8, 10, and
21.
However, with respect to the "unclear/lack of antecedent basis"
portion of the Examiner's rejection, Appellant generally states, without
additional explanation, that the words of the claims are not unclear and do
not lack antecedent basis. App. Br. 16. As the Examiner points out,
Appellant does not explain why there is any error regarding this aspect of the
rejection. Ans. 7. As such, Appellant's arguments have not demonstrated
error in this rejection. Specifically, we agree with the Examiner that at least
the following limitations are unclear or lack antecedent basis: "the tiles
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selected by the first player" in claim 7; 2 "the tiles depicting the first
language," "the tiles depicting the second or different language," and
"receiving the tiles from the players" in claim 8; 3 "receiving the characters"
in claim 1 O; and "based upon a determination that the immediately prior
word was played across [ a change language area]" in claim 21. See Final
Act. 5-8; Ans. 8. Dependent claims 9, 11, and 17-20 do not resolve the
deficiencies of the independent claims. See Final Act. 5. We therefore
sustain the Examiner's rejection of claims 7-11 and 17-21 under 35 U.S.C.
§ 112, second paragraph.
Section 101 Rejection
Appellant does not argue the § 101 rejection is in error. Rather,
Appellant states that "when the Board reverses the Examiner on all other
issues in this Brief, the Appellant will amend the preambles of claims 8-11
to a 'non-transitory computer-readable carrier,' where the words 'non-
transitory' are added." App. Br. 16. Consequently, we sustain the§ 101
rejection of claims 8-11. We note that we can only render a decision as to
claims as they are currently presented before us on appeal, and cannot
speculate as to the scope of any potentially amended claims.
2 In the event of further prosecution, the Examiner may wish to consider
whether claim 7 lacks written description under§ 112, first paragraph based
on claim 7 requiring "the 'second' player uses [the tiles with characters of
the second or different language] belonging to the 'first' player." Ans. 8-9.
3 In the event of further prosecution, the Examiner also may wish to consider
whether "the numeric value" in claims 7 and 8 lack antecedent basis.
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Section 103 Rejection
Claim 21 recites, in part, "displaying . . . a second set of said 4-sided
polygons including second indicia instructing the players to change a
language used in the word building game." In other words, claim 21
visually differentiates the set of polygons that are the change language areas
from the other polygons that comprise the playing environment. Based on
this record, we agree with Appellant that the Examiner has not shown or
explained sufficiently how Miller or the other cited references teach this
limitation. Therefore, we do not sustain the § 103 rejection of claim 21.
Although Appellants also argue the rejection of claims 7-11 and 17-
20 under§ 103, these claims are indefinite for the reasons discussed below.
Because we are unable to determine the scope and meaning of claims 7-11
and 17-20, we cannot conduct the necessary inquiry for determining
obviousness with respect to these claims, such as ascertaining differences
between the claimed subject matter and the prior art. See Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966); see also In re Aoyama, 656 F.3d 1293,
1298 (Fed. Cir. 2011) (quoting Enzo Biochem, Inc. v. Applera Corp., 599
F.3d 1325, 1332 (Fed. Cir. 2010)) ("[A] claim cannot be both indefinite and
anticipated."); In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (reversing
the Board's decision of obviousness because it relied on "what at best are
speculative assumptions as to the meaning of the claims"). Accordingly, we
reverse the Examiner's rejection of claims 7-11 and 17-20 under§ 103
proforma. The Examiner is free to consider § 103 again if the claims are
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amended to overcome the indefiniteness issues discussed below.
REJECTION UNDER 37 C.F.R. § 4I.50(b)
As a new ground of rejection using our authority under 37 C.F.R.
§ 41.50(b ), claims 7-11 and 17-20 are rejected as indefinite under 35 U.S.C.
§ 112, second paragraph.
Independent claim 7 recites "receiving, by a first player, tiles
depicting characters comprising at least a first language and a second or
different language, the tiles with characters of the first language and the tiles
with characters of the second or different language being used non-
simultaneously." Independent claims 8 and 10 recite commensurate
limitations.
Figures 4 and 5 of the Specification depict "the playing grid ...
during game play ... changing the language from English to Spanish."
Spec. ,r,r 15, 17, 13, 19. In Figure 4, the English word "HAPPY" is placed
over a change language area, thereby changing the language from English to
Spanish. In Figure 5, the 'A' in the English word "HAPPY" is used for the
Spanish word "GRACIAS". Thus, the character 'A' is simultaneously both
an English character and a Spanish character, and the character 'A' is
simultaneously used in both an English word and a Spanish word. Applying
Figure 5 to claim 7, the character 'A' falls within claim 7's recitation of "the
tiles with characters of the first language" because 'A' is a character of
English, yet the character 'A' also falls within claim 7's recitation of "the
tiles with characters of the second or different language" because 'A' is a
character of Spanish. In this example, every character in English is also a
character in Spanish. Thus, in this example, any time a player uses a tile
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with an English character on it, the player is simultaneously using a tile with
a Spanish character on it.
During prosecution of an application, a rejection for indefiniteness is
well-grounded if "language in a claim is ambiguous, vague, incoherent,
opaque, or otherwise unclear in describing and defining the claimed
invention." In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014); Exparte
McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *2 n.3 (PTAB
Aug. 25, 2017) (precedential). Here, as presently written, it is unclear how
"the tiles with characters of the first language" can be used "non-
simultaneously" from "the tiles with characters of the second or different
language" when all of the characters of the first language (English) also are
characters of the second language (Spanish).
The Specification does disclose that a language's "special characters
... (such as the 'fi' in Spanish) can only be used when the language-of-play
is in that particular language." Spec. ,r 32. As presently written, however,
claim 7 's "characters of the [ first / second] language" are not limited to just
"special" characters not found in the other language.
Dependent claims 9, 11, and 17-20 do not remedy the deficiencies in
their respective independent claims and are indefinite for the same reasons.
CONCLUSION
We reverse the rejection of claim 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
We affirm the Examiner's rejection of claims 7-11 and 17-21 under
35 U.S.C. § 112, second paragraph, as being indefinite for being unclear or
lacking antecedent basis.
We affirm the rejection of claims 8-11 under 35 U.S.C. § 101.
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We reverse proforma the rejection of claims 7-11 and 17-20 under
35 U.S.C. § 103.
We reverse the rejection of claim 21 under 35 U.S.C. § 103.
In a new ground of rejection, we reject claims 7-11 and 17-20 under
35 U.S.C. § 112, second paragraph.
DECISION
We affirm the Examiner's decision to reject claims 7-11 and 17-21.
We enter a new ground of rejection of claims 7-11 and 17-20.
Because we affirm at least one ground of rejection with respect to each claim
on appeal, the Examiner's decision rejecting claims 7-11 and 17-21 is
affirmed. See 37 C.F.R. § 41.50(a)(l ).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
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(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
37 C.F.R. § 4I.50(b)
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