Ex Parte Thomopoulos

Patent Trial and Appeal Board

Nov 17, 2016

13489625 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/489,625
66140 7590
Jonathan Blanchard
P.O. Box 51295
FILING DATE
06/06/2012
11/21/2016
Knoxville, TN 37950-1295
FIRST NAMED INVENTOR
Nick T. Thomopoulos
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.
SGIOl_OOl_US_CON 7638
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
11/21/2016 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):
docketing@pl-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICK T. THOMOPOULOS
Appeal2015-000528
Application 13/489,625 1
Technology Center 3700
Before THOMAS F. SMEGAL, ERIC C. JESCHKE, and PAUL J.
KORNICZKY, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
1'-Jick T. Thomopoulos (i\1ppellant) seeks our revie\x; under 35 U.S.C.
§ 134 of the Examiner's Final Rejection under 35 U.S.C. § 103(a) of claims
1-3, 5, and 7-15 as unpatentable over Joel (US 4,285,521, iss. Aug. 25,
1981 ); of claim 16 as unpatentable over Joel and either Wittwer (US
7,334,796 B2, iss. Feb. 26, 2008) or Macrory (US 4,120,503, iss. Oct. 17,
1978); and of claims 17-19 as unpatentable over Joel and Schneider (US
2006/0214370 Al, pub. Sept. 28, 2006). 2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is StatoGames, Inc.
Appeal Br. 1.
2 Claims 4 and 6 have been canceled. Appeal Br. 17 and 18, Claims App.
Appeal2015-000528
Application 13/489,625
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A game for simulating American football, comprising:
action cards, each action card including offensive plays
and defensive outcomes,
where the action cards include a chance element of
the game and the chance element is introduced by
different defensive outcomes for the same offensive plays
on different action cards, and
where each of the action cards includes the
offensive plays and each of the offensive plays has a
single corresponding defensive outcome;
a field, where the field simulates an American football
field; and
markers, where the markers attach removably to the field
to monitor the progress of the game, and
where the game is played by consecutively selecting the
action cards and plotting the defensive outcomes of the
offensive plays with the markers on the field.
ANALYSIS
Obviousness of Claims 1-3, 5, and 7-15 over Joel
We are persuaded by Appellant's arguments that the Examiner erred
in rejecting claims 1-3, 5, and 7-15 over Joel. See Appeal Br. 5-8.
In rejecting claim 1, the Examiner finds that Joel teaches a game
having, inter alia, "a plurality of action cards indicating offensive plays and
defensive outcomes[,]" where the "[a]ction cards can be treated as including
[a] chance element[,]" that the Examiner determines to be "a 'rule/method'
aspect of [the] game and not a structure." Final Act. 2 (citing Joel, figs. 2, 3)
(emphasis added). From the foregoing, the Examiner concludes that "[i]n
order to convey a desired message it would have been obvious to use any
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Application 13/489,625
suitable indicia on the card[,]" and that "[o]ne of ordinary skills [sic] in [the]
art at the time the invention was made would have suggested printing any
suitable indicia to convey any desired message and to create a variation." Id.
at 2-3.
The Examiner also observes that "[ s ]hould applicant have arguments
about printed matter on cards, the differences residing in meaning and
information conveyed by printed matter are not considered patentable
differences." Id. at 2 (citations omitted).
In contesting the Examiner's rejection as obvious over Joel, Appellant
first explains that "[ t ]he action cards recited in [claim 1] each include
offensive plays and a single corresponding defensive outcome for each
offensive play" so that "different defensive outcomes for the same offensive
plays [are] provided on the different action cards [to] introduce the chance
element of Applicant's game." Appeal Br. 4 (emphases added). In contrast,
Appellant points out that "Joel teaches using two decks of cards, one for
each player, where the defense deck of cards determines which of a plurality
of defensive outcomes results from a specific offensive play." Id. at 5
(citing Joel, Abstract; col. 1, 11. 57---61; col. 3, 11. 18-20, 24--25; and figs. 2,
3).
Appellant continues by explaining that "Joel provides offensive plays
as a first deck of cards played by the offensive player and provides the
outcome of the selected offensive play with a second deck of cards played
by the defensive player," which results in "a game in which both players
have a wide latitude in determining their respective strategies." Id. at 6-7
(citing Joel, col. 2, 11. 23-25). However, Appellant points out that the game
recited by claim 1 "provides no opportunity for the defensive player to
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Application 13/489,625
determine or use strategy, as the chance element is incorporated into the
cards by providing different defensive outcomes for the same offensive
plays." Id. at 7 (citing Spec. i-f 13).
Without responding to Appellant's arguments regarding the
deficiencies of Joel, the Examiner observes that "in an apparatus claim,
limitations directed to the inherent functional characteristics of a particular
structure must create a structural distinction between the claimed subject
matter and the prior art[,]" and then concludes, without further elaboration,
that "[i]f a prior art structure can function or be used in the manner recited in
the claim the claim will read on the prior art even if there is no express
mention of that capability, because it would be inherent." Ans. 5---6.
"Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations omitted). "In relying upon the theory of inherency, the
examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art."
Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990).
Furthermore, inherency involves a burden-shifting framework
wherein the Examiner can shift the burden to an applicant to demonstrate
why the allegedly inherent characteristic is not necessarily present in the
prior art. MPEP § 2112(V). This is because an applicant is generally in the
best position to enter evidence pertaining to how a device actually works.
Nevertheless, before the burden shifts, the Examiner must provide sufficient
evidence or scientific reasoning to establish that there is a sound basis for the
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Examiner's belief that it is an inherent characteristic of the prior art that it
produces the recited results. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) (discussing the standard for burden-shifting before the PTO); In re
Cruciferous Sprout Litigation, 301F.3d1343, 1351 n.4 (Fed. Cir. 2002)
(discussing the similar applicability of inherency principles to both method
and composition or product claims).
Here, we find that the Examiner has not provided sufficient evidence
to establish that there is a sound basis for the Examiner's belief that Joel
inherently discloses "action cards [that include] the offensive plays [where]
each of the offensive plays has a single corresponding defensive outcome[,]"
as recited by claim 1.
Regarding the Examiner's rejection of claim 1 under the "printed
matter doctrine" (Final Act. 2), we agree with Appellant that "[ d]ifferences
between an invention and the prior art cited against it cannot be ignored
merely because those differences reside in the content of the printed matter."
Appeal Br. 10 (citing In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)).
As our reviewing court also held in Gulack, "the critical question is whether
there exists any new and unobvious functional relationship between the
printed matter and the substrate." Id.
Appellant contends that "the printed matter on the action cards
[recited by claim 1] directly relates to how the game is played[,]" and
"results in a form of play that is not described or suggested [by] Joel."
Appeal Br. 10. In particular, Appellant explains that "[t]he printed matter
functionally relates to the cards, markers, and field, and distinguishes ...
claim 1 from Joel." Id. at 11.
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In response, the Examiner reasons that "indicia on cards are functional
limitations," but that "[t]here is no patentable weight given to the printed
matter unless there is an unobvious functional relationship between the
printed matter and the substrate." Ans. 6. The Examiner determines that
Appellant's "claim includes a functional relationship 'but not an unobvious'
functional relationship[,]" and "[t]herefore, the printed matter has no
patentable weight." Id.
Noting that "under Gulack, the printed matter of the action cards must
be considered when determining the patentability of [Appellant's] claim,
Appellant again explains that "Joel provides a game in which both players
have a wide latitude in determining their respective strategies," including
"offensive plays from a first deck of cards played by the offensive player[,]"
and "the selection of one of a plurality of defensive outcomes from a second
deck of cards played by the defensive player." Reply Br. 5 (citing Joel, col.
3, 11. 8-27). Appellant continues by again pointing out that "[i]n direct
contrast to Joel, the action cards of [Appellant's] claim 1 provide no
opportunity for the defensive player to determine or use strategy, as a chance
element is incorporated into the cards by providing different defensive
outcomes for the same offensive plays." Id.
Based on the foregoing, we agree with Appellant that there is a
nonobvious functional relationship between the printed matter on the action
cards recited by claim 1, so that "[t]he 'two active player' game of Joel
cannot be played with the action cards of the pending claims[.]" Id. We,
therefore, find that the Examiner's legal conclusion of obviousness is not
supported by evidence and, thus, cannot stand. See In re Warner, 379 F.2d
1011, 1017 (CCP A 1967) ("The legal conclusion of obviousness must be
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supported by facts. Where the legal conclusion is not supported by facts it
cannot stand.").
For the foregoing reasons, we do not sustain the Examiner's rejection
of claims 1-3, 5, and 7-15 over Joel.
Obviousness of Claim 16 over Joel and either Wittwer or Macrory;
and of Claims 17-19 over Joel and Schneider
Regarding claims 16-19, each of the Examiner's rejections are based
on the same unsupported findings discussed above with respect to the
disclosure of Joel. See generally Final Act. 4--5. The addition of either
Wittwer or Macrory, or Schneider does not remedy the deficiencies of Joel,
as discussed supra.
Accordingly, for similar reasons as discussed above for claim 1, we
do not sustain the Examiner's decision rejecting claim 16 over Joel and
either Wittwer or Macrory; and of Claims 17-19 over Joel and Schneider.
DECISION
We REVERSE the Examiner's rejections.
REVERSED
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