Ex Parte Vandoren

Patent Trial and Appeal Board

Nov 29, 2017

14003123 (P.T.A.B. Nov. 29, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/003,123 09/04/2013 Rolf Vandoren VAND3091/REF 1082
81841 7590 12/01/21
John Alumit
135 South Jackson Street, Suite 200
Glendale, CA 91205
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
john@ alumitip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLF VANDOREN
Appeal 2016-005533
Application 14/003,1231
Technology Center 3700
Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
NATHAN A. ENGELS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rolf Vandoren (Appellant) seeks our review under 35 U.S.C. § 134(a)
of the Examiner’s decision rejecting claims 16-18, 20-28, and 30-38. Final
Office Action (April 15, 2015) [hereinafter “Final Act.”]. Claims 1-15 and
29 are canceled; claim 19 is objected to as being dependent upon a rejected
base claim. Id. at 1, 6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies Smart NV as the real party in interest. Appeal Brief 1
(October 15, 2015) [hereinafter “Appeal Br.”].
Appeal 2016-005533
Application 14/003,123
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter “relates to game pieces.”
Specification 1,1. 4 (filed September 4, 2013) [hereinafter “Spec.”]. Claims
16 and 30 are independent and are reproduced below.
16. A polyomino game piece comprising:
at least two slidable polyomino parts,
at least one of said slidable parts is a polyomino
comprising at least two blocks that are permanently attached
together in an orthogonal pattern to form the slidable part,
at least a second of said slidable parts is a polyomino
comprising at least two blocks that are permanently attached
together in an orthogonal pattern or is a single block;
wherein the at least two slidable parts are slidably coupled
together to form a game piece in a configuration which may be
altered by sliding one slidable part relative to the other to form a
different polyomino configuration.
30. A polycubic game piece comprising at least two
inextricably but slidable parts for forming different polycubic
configurations,
wherein each slidable part comprises one cubic block, or
several cubic blocks that are fixed together in a polycube
configuration,
wherein the blocks of all parts together form a polycube,
and wherein the at least two slidable parts are connected
to each other in a slidable in a parallel manner relative to each
other with respect to two faces of the cubic blocks to form a game
piece in a configuration which may be altered by sliding one
slidable part relative to the other.
Appeal Br. 16, 18 (Claims Appendix).
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Application 14/003,123
EVIDENCE
The Examiner’s decision relies upon the following evidence:
Abu-Shumays US 4,593,907
US 4,676,762
US 5,868,388
June 10, 1986
June 30, 1987
Feb. 9, 1999
July 19, 2011
Nov. 1,2012
Ballard
Wood
Belykh US 7,980,560 B2
US 2012/0274023 A1Carpenter
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 16-18, 20-27, 36, and 37 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Ballard.
2. Claims 16, 30-33, and 35-38 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Abu-Shumays.
3. Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over one of Ballard and Abu-Shumays in view of either Carpenter
or Wood.
4. Claim 34 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Abu-Shumays and Belykh.
ANALYSIS
First Ground of Rejection: Anticipation by Ballard
The Examiner finds that Ballard discloses “a polyomino game piece
comprising at least two slidable polyomino parts (10, 12), at least one of said
slidable parts (10) is a polyomino comprising at least two blocks (41, 42, 43)
that are permanently attached together in an orthogonal pattern to form the
slidable part.” Final Act. 2. Appellant contests this finding, arguing that
“Ballard discloses something close to polycubes . . ., but certainly not
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polyominos forming a game piece as presently claimed.” Appeal Br. 9.
Appellant contends that “[i]t is understood by one of ordinary skill in the art,
that a polyomino is essentially a two-dimensional structure, with equal,
square, elements orthogonally placed with respect to each other.” Id.
(referring to polyominoes as “flat blocks” or “square slabs”). Appellant
asserts that Ballard’s building block is not a polyomino because “the
elements [(41, 42, 43)] are not the same size” and “the elements form a
three-dimensional assembly.” Id.
The Examiner responds that “[t]he game pieces in Ballard are
polyominoes that are square blocks clearly capable of being placed in a
plane in orthogonal pattern (Fig[s]. 4, 5, 14) touching each other side by side
as per appellant’s own definition.” Examiner’s Answer 7 (February 29,
2016) [hereinafter “Ans.”]. The Examiner disagrees with a definition of
“polyomino” as a two-dimensional structure, noting that “[t]he claim
requires a plurality of blocks and by definition blocks are three dimensional
structures[;]” and noting that Appellant’s Figures 1 through 4 show the
polyominoes as three-dimensional structures. Id.
Appellant’s Specification describes that “polyominoes are game
pieces formed by a number of blocks in the form of squares placed in a plane
in an orthogonal pattern, such that they form one fixed game piece and such
that they touch each other on at least one side.” Spec. 1,11. 10-14. Ordinary
meanings of “polyomino” include “[a] polygon made from joining identical
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squares at their edges”2 and “[a] plane figure formed by joining a finite
number of unit squares along their sides.”3
Based on the ordinary meaning of the term “polyomino” and the
description of “polyominoes” provided in Appellant’s Specification, we
agree with Appellant that Ballard’s building block is not a polyomino. Each
side of Ballard’s block 10 contains elements4 separated by slots 20, 30. The
elements are not all square and are formed in different sizes. As such,
Ballard’s block 10 is not formed by joining equal squares at their edges, and
thus, is not a polyomino.
For this reason, we do not sustain the rejection of independent claim
16, and its dependent claims 17, 18, 20-27, 36, and 37, as anticipated by
Ballard.
Second Ground of Rejection: Anticipation by Abu-Shumays
Independent Claim 16
The Examiner finds that Abu-Shumays discloses:
a polyomino game piece comprising at least two slidable
polyomino parts (Fig. la-g). . . wherein the at least two slidable
parts are slidably (Fig. la-g) coupled together to form a game
piece in a configuration which may be altered by sliding one
slidable part relative to the other to form a different polyomino
configuration.
2 Collins English Dictionary, HarperCollins Publishers,
www.collinsdictionary.com/dictionary/english/polyomino.
3 McGraw-Hill Dictionary of Scientific & Technical Terms, 6E, (2003), The
McGraw-Hill Companies, Inc.
4 The Examiner refers to elements 41, 42, and 43 of Ballard as the “blocks”
that form the first slidable part 10. In Ballard, reference numbers 41, 42, and
43 refer to sides of building block piece 10. Ballard, col. 6,11. 34^10.
Ballard does not provide a reference number for the individual elements
formed between the slots 20 and 30 on building block piece 10.
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Final Act. 4.
Appellant argues that Abu-Shumays does not anticipate claim 16
because “there is no different polyomino configuration formed by [rotation
of the two slidable polyomino parts].” Appeal Br. 12. Appellant asserts that
rotation of the two parts relative to one another results in the same cube
structure. Id. In response, the Examiner adds a citation to Figures 4, 5, and
15 of Abu-Shumays. Ans. 8. We agree with Appellant that Abu-Shumays
does not anticipate claim 16.
First, we agree with Appellant that the cubes of Figures la-lg of
Abu-Shumays do not form different polyomino configurations when the two
slidable polyomino parts are rotated. Rather, rotation of the slidable
polyomino parts results in the same cube configuration.
Second, the Examiner’s citation to the different embodiments depicted
Figures 4, 5, and 15 of Abu-Shumays does not cure this deficiency. The
embodiments of Figures 4 and 5 are not formed of slidable parts that are
polyominoes, as defined supra, because the slidable parts are not formed by
joining equal squares at their edges, and/or the slidable parts do not slide
relative to each other to form a different polyomino configuration. Further,
Abu-Shumays contains no Figure 15.
For these reasons, we do not sustain the rejection of independent
claim 16, and its dependent claims 36-38, as anticipated by Abu-Shumays.
Independent Claim 30
Independent Claim 30 is directed to “[a] polycubic game piece
comprising at least two inextricably but slidable parts for forming different
polycubic configurations” and “wherein the at least two slidable parts are
connected to each other in a slidable in a parallel manner relative to each
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other with respect to two faces of the cubic blocks to form a game piece in a
configuration which may be altered by sliding one slidable part relative to
the other.” Appeal Br. 18 (Claims Appendix).
Appellant argues that Abu-Shumays “teaches polyhedral and spherical
cubic puzzles and not a polycubic game piece[;]” and does not anticipate
claim 30 because “the blocks in Abu-Shumays rotate but do not slide in a
parallel manner as required by claim 30.” Appeal Br. 12—13; Reply Br. 7.
We find no error in the Examiner’s finding of anticipation of claim 30 based
on the asserted errors raised by Appellant.
The Specification describes:
[b]y extension to three dimensions, it is also known to have
polycubes consisting of a number of cubic blocks connected
together in a fixed way, that are not only combined together in a
plane in two directions, but also along a third direction
perpendicular to this plane, whereby at least one side of each
block touches one of the sides of the other blocks.
Spec. 2,11. 10-16.
The cube of Abu-Shumays shown in Figures la, lb, and lc is
comprised of a number of cubic blocks connected together in a fixed way,
and which are combined together in three directions and wherein at least one
side of each block touches one of the sides of the other blocks. Thus, we
find that the cube of Abu-Shumays is a “polycube” as that term is
understood when interpreted in light of the Specification, and thus forms a
“polycubic game piece,” as recited in claim 30.
Further, Abu-Shumays discloses a first slidable part (comprised of
blocks 1, 2, 3, and 4) and a second slidable part (comprised of blocks 5, 6, 7,
and 8), with the parts connected to each other and slidable in a parallel
manner relative to each other with respect to two faces of the slidable parts.
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See Abu-Shumays, Figs, lb, lc (showing sliding of a top part in a parallel
manner relative to a second part, such that the lower faces of blocks 1, 2, 3,
and 4 slide relative to the upper faces of blocks 5, 6, 7, and 8). Thus,
although the parts rotate about a common axis relative to one another, the
faces of the slidable parts also slide in a parallel manner relative to each
other as the parts rotate.
To be clear, we do not construe the above-quoted claim language to
encompass turning of one polycube relative to another about a hinge, as
depicted in Figures 42 and 43 of Appellant’s application. The Specification
separately describes sliding movement of the parts relative to one another,
on the one hand, and turning movement of the parts about a hinge, on the
other. That said, we do not discern a distinction in the plain language of
claim 30 read in light of the Specification between translational sliding of
the faces of polycubes versus rotational sliding of the faces of polycubes
about a common axis. The embodiments of Figures 42 44 in the
Specification show a contrast between an embodiment in which opposed
faces of the polycubes remain opposed and slide relative to one another in a
longitudinal direction (e.g., Figure 44) versus embodiments in which
opposed faces of the polycubes do not slide, but instead move away from
one another, such that the faces are no longer opposed to one another after
turning about a hinged edge (e.g., Figures 42 and 43).
Although the Specification does not explicitly depict an embodiment
in which opposed faces remain opposed and slide relative to one another
about a common axis, nothing in the claim language or the Specification
limits claim 30 to the embodiment depicted in Figure 44. Claim 32, for
example, depends from claim 30 and specifies that “two directly connected
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parts can be slid relative to each other along a side of a block of each of the
parts of the pair in a direction parallel to these sides.” Appeal Br. 19
(Claims Appendix); see Bancorp Servs. L.L.C. v. Sun Life Assurance Co. of
Can., 687 F.3d 1266, 1275 (Fed. Cir. 2012) (quoting Liebel-Flarsheim Co.
v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)) (“the presence of a
dependent claim that adds a particular limitation raises a presumption that
the limitation in question is not found in the independent claim”).
In our view, the broadest reasonable interpretation of claim 30
encompasses both translational and rotational sliding motions because
during both kinds of motion the face of one polycube remains opposed to the
face of the other polycube(s) and the faces move relative to one another in a
parallel manner in that the planes in which the faces slide do not intersect as
they slide relative to one another. For example, the Specification describes
that in a preferred embodiment, the blocks “can be slid on at least one side
with respect to one another in a direction parallel to one of the sides of such
a . . . cubic block.” Spec. 4,11. 2-5 (emphasis added). We see nothing in the
Specification that requires us to limit the claimed sliding motion to
longitudinal sliding motion, i.e., in a direction along a side or edge of the
blocks. Cf. Appeal Br. 19 (Claims Appendix) (claim 32 reciting sliding
“along” a side of a block).
For these reasons, we sustain the rejection of independent claim 30 as
anticipated by Abu-Shumays. We likewise sustain the rejection of
dependent claims 31 and 32, which are not argued separately from claim 30.
See 37 C.F.R. § 41.37(c)(l)(iv).
With regard to dependent claims 33 and 35, Appellant reiterates that
“the parts slidably coupled and slidable in a parallel manner is in clear
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distinction to the rotational or arcaded motion taught in Fig 2 of the
reference.” Appeal Br. 13; Reply Br. 7. For the same reasons discussed
above in our analysis of the rejection of claim 30, we find that the faces of
the slidable parts of Abu-Shumays slide in a parallel manner with respect to
each other. Accordingly, we likewise sustain the rejection of claims 33 and
35 as anticipated by Abu-Shumays.
Third Ground of Rejection
The third ground of rejection of claim 28 relies on the same deficient
findings that Ballard and Abu-Shumays disclose a slidable polyomino part
and/or slidable parts sliding relative to each other to form a different
polyomino part. For the same reasons discussed above in our analysis of the
anticipation rejections of claim 16, we likewise do not sustain the rejection
of claim 28 as unpatentable over Ballard or Abu-Shumays in view of
Carpenter or Wood.
Fourth Ground of Rejection
Claim 34 depends indirectly from claim 30 and recites “each of the
aforementioned parts are hollow, that the first sub-part is a base and the
second sub-part is a cover, and that the base and the cover are connected
together along their periphery by edges, whereby the groove is created in the
edges.” Appeal Br. 19 (Claims Appendix). The Examiner finds that Belykh
teaches a block having hollow parts and that it would have been obvious to
modify Abu-Shumays to use hollow parts. Final Act. 6. Appellant does not
contest the Examiner’s finding as to the teaching of Belykh or the proposed
modification of Abu-Shumays with Belykh. Rather, Appellant argues only
that “the teachings of Belykh concerning hollow parts does not overcome the
deficiencies of the primary reference.” Appeal Br. 15. For the reasons
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discussed above, we find no deficiency in the disclosure of Abu-Shumays as
it relates to claims 30 and 33, from which claim 34 depends. Accordingly,
we likewise sustain the rejection of claim 34 as unpatentable over Abu-
Shumays and Belykh.
DECISION
The decision of the Examiner rejecting claims 16-18, 20-28, and 36-
38 is reversed.
The decision of the Examiner rejecting claims 30-35 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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