Ex Parte Svatovic

Board of Patent Appeals and Interferences

Jun 6, 2011

11397977 (B.P.A.I. Jun. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ZARKO SVATOVIC
____________________

Appeal 2009-012060
Application 11/397,977
Technology Center 3700
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012060
Application 11/397,977

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STATEMENT OF THE CASE
Zarko Svatovic (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claim 6. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to an extended version of
the classical game of chess played on a 10 by 10, 100 square chess board
including new Esquire pieces (Spec. 5: [Para 10] and [Para 12]).
Claim 6, reproduced below, is representative of the subject matter on
appeal.
6. A method of playing a modified chess game by a first
player against a second player, comprising the steps of:

(a) providing a game board consisting of ten horizontal rows
and ten vertical columns of squares having alternating light and
dark colors, squares having the same properties as the squares
of orthodox chess;

(b) providing a plurality of playing pieces, including one set of
light-colored pieces for the first player and a set of dark-colored
pieces for the second player, each set of pieces comprising of
ten pawns, one king, one queen, two rooks, two bishops, two
knights, and two esquires;

(c) initially positioning the set of light-colored pieces, at the
start of the game, in the first row of ten squares at a first end of
the game board from left to right in the sequence, rook, knight,
bishop, esquire, king, queen, esquire, bishop, knight, and rook,
with the light-colored pawns being initially positioned, one
pawn in each square of the second row of ten squares;

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(d) initially positioning the set of dark-colored pieces in the
tenth row of ten squares at the opposing end of the game board,
from left to right in the sequence, rook, knight, bishop, esquire,
king, queen, esquire, bishop, knight, and rook, with the dark-
colored pawns being initially positioned, one pawn in each
square of the ninth row of ten squares;

(e) formatting rules of movement for play wherein each of the
queens, the rooks, the bishops, the knights have the same rule
of movement as the corresponding piece in orthodox chess;

(f) formatting rules of movement for play wherein each of the
kings have the same rule of movement as the corresponding
piece in orthodox chess except that the kings move three
squares towards the rook instead of two during castling;

(g) formatting rules of movement for play wherein each of the
pawns have the same rules of movement as the pawns of
orthodox chess, except that each pawn, on its first move, may
move forwardly one, two or three squares;

(h) formatting rules of promotion movement of the pawns
wherein each of the pawns have the same rules of promotion as
the pawns of orthodox chess, except that they may now
promote into one more piece, the esquire;

(i) formatting rule of movement of the pawns wherein the rule
stays the same as rule in orthodox chess, except that en-passant
rule can now in addition to 3rd row be applied on the 4th row;

(j) formatting rules of movement for play wherein each of the
esquires moves to a square two squares in either horizontal,
either vertical or either diagonal direction; and

(k) formatting rules of movement for play wherein each of the
esquires may move over other pieces.

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THE REJECTION
The following rejection by the Examiner is before us for review:
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lampman (US 6,095,523, issued Aug. 1, 2000) in view of Pendexter
(US 6,702,287 B1, issued Mar. 9, 2004).

ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Lampman and Pendexter would have led a person
having ordinary skill in the art to the steps of initially positioning on a game
board, from left to right, a set of light-colored pieces and a set of dark-
colored pieces such that in each set a king precedes a queen, as called for in
independent claim 6 (App. Br. 10-11).

ANALYSIS
Independent claim 6 calls for, inter alia, the steps of
(c) initially positioning the set of light-colored pieces, at the
start of the game, in the first row of ten squares at a first end of
the game board from left to right in the sequence, . . . king,
queen” and “(d) initially positioning the set of dark-colored
pieces in the tenth row of ten squares at the opposing end of the
game board, from left to right in the sequence, . . . king, queen.
(Emphasis added).
Appellant contends (1) that Lampman does not describe initially
positioning on a game board, from left to right, a set of light-colored pieces
and a set of dark-colored pieces such that in each set the king precedes the
queen, as called for in independent claim 6 (App. Br. 10-11), (2) that in
Lampman, the initial positions of the king and queen are reversed from the
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initial positions of the pieces in a typical game of chess (App. Br. 10), and
(3) that the initial positions of the pieces are important because they
determine the castling positions (id.).
The Examiner found that Lampman teaches all of the limitations
(which include the initial positioning of the pieces, paragraphs (c) and (d))
called for in claim 6 except that Lampman does not teach pawn promotion
upon reaching the tenth row (Ans. 3). In support thereof, the Examiner
found that “Lampman in claim 1 paragraphs (D) and (E)” provides support
for the initial positioning limitations, as called for in independent claim 6,
paragraphs (c) and (d) (Ans. 4).
Appellant’s Specification describes
The initial setup of pieces stays as close as possible to the
classical game setup of pieces. Due to the introduction of two
new columns and in respect to the requirement that white queen
initially starts from a white square and black from black, the
relative starting positions on the first and last row of the board
for Kings and Queens are reversed. That is, the white King is
now left of the white Queen. The most significant impact of
that change is on the respective castling moves of Kings, short
vs. long castle. The sides in that respect are now reversed for
the white and the black Kings.
(Spec. 7-8: [Para 20]).
Lampman describes that in the initial positioning of the pieces the
queen precedes the king for both the light-colored pieces and the dark-
colored pieces (col. 1, ll. 52-65 and col. 6, ll. 42-55 (claim 1, paragraphs (D)
and (E))).
Since Lampman describes in the initial positioning of the pieces the
queen as preceding the king and not following the king, Lampman does not
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describe the initial positioning of the king and queen, as called for in claim
6.
The Examiner has not relied on Pendexter for any teaching that would
remedy the deficiency in Lampman (Ans. 3).
We conclude that the Examiner’s conclusion of obviousness is based
on a faulty fact finding in Lampman. In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The legal conclusion of obviousness must be supported by
facts. Where the legal conclusion is not supported by facts it cannot stand.”)
Thus, we are constrained to reverse the rejection of independent claim
6.

CONCLUSION
The Examiner has erred in concluding that the combined teachings of
Lampman and Pendexter would have led a person having ordinary skill in
the art to the steps of initially positioning on a game board, from left to right,
a set of light-colored pieces and a set of dark-colored pieces such that in
each set a king precedes a queen, as called for in independent claim 6.

DECISION
The decision of the Examiner to reject claim 6 is reversed.

REVERSED

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