Ex Parte Woody

Patent Trial and Appeal Board

Sep 29, 2014

11839291 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL J. WOODY
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Appeal 2012-005964
Application 11/839,291
Technology Center 3700
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Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael J. Woody (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1–8, 10, 11, 13–20, 22, 23, and 25,
which are all the pending claims. Appeal Br. 5. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “game programs and digital
mediums for storing the game programs.” Spec., ¶ 2. Claims 1, 13, and 25
are independent. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A game system configured to execute a game program
stored on a non-transitory computer readable storage medium,
the game system comprising:
a stationary display configured to display output from the
game program; and
a handheld pointing controller configured to detect an
orientation thereof and configured to provide indirect user
interaction with a simplified graphical user interface displayed
on the display,
wherein the controller is easily manipulable with one
hand and includes at least one button or trigger,
wherein the user interaction includes game object
selection or manipulation from a plurality of user locations and
perspectives proximate to the display,
wherein the controller is operable substantially only with
a gross motor movement of the user,
wherein the game program is arranged so as to convey to
the user at least one lesson or skill involving a daily activity,
task, or chore, and
wherein the user is a toddler.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Brick US 2006/0258454 A1 Nov. 16, 2006
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Overview of The Frog Game (The Frog Game) from the website
Playkidsgames.com (2002), available at http://web.archive.org/
web/20021205084952/http://www.playkidsgames.com/games/
frog/default.htm.

REJECTIONS
The following rejections are before us for review:
I. Claims 1–8, 13–20, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Brick.
II. Claims 10, 11, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Brick and The Frog Game.

ANALYSIS
Rejections I and II – Claims 1–8, 10, 11, 13–20, 22, 23, and 25 as
unpatentable over Brick or the combination of Brick and The Frog Game
We shall not sustain the Examiner’s rejections of claims 1–8, 10, 11,
13–20, 22, 23, and 25 under 35 U.S.C. § 103(a). For the reasons explained
in detail infra, independent claims 1, 13, and 25, and dependent claims 2–8,
10, 11, 14–20, 22, and 23, are indefinite. Before a proper review of these
rejections can be performed, the subject matter encompassed by the claims
on appeal must be reasonably understood without resort to speculation.
Therefore, since the claims fail to satisfy the requirements of the second
paragraph of 35 U.S.C. § 112, we are constrained to reverse, pro forma, the
prior art rejections because they necessarily are based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862–63 (CCPA 1962). It should be understood, however, that our decision
in this regard is based solely on the indefiniteness of the claimed subject
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matter, and does not reflect on the adequacy of the prior art evidence applied
in support of the rejections.

New Ground of Rejection
We enter a new ground of rejection for claims 1–8, 10, 11, 13–20, 22,
23, and 25 pursuant to 37 C.F.R. § 41.50(b) (2011).
Claims 1–8, 10, 11, 13–20, 22, 23, and 25 are rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, that the claims must be definite, is that the language of the claims
must provide clarity to those skilled in the art regarding the scope of the
subject matter which the claims encompass. See In re Hammack, 427 F.2d
1379 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112, second
paragraph, is “whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted); see also Nautilus, Inc. v. Biosig Instruments, Inc., 134
S.Ct. 2120, 2129 (2014).
Each of independent claims 1, 13, and 25 recites the limitations of a
handheld pointing controller that is “easily manipulable with one hand” for
use with a game that is arranged to convey “at least one lesson or skill
involving a daily activity, task, or chore.” Appeal Br., Clms. App. Initially,
we note that the Examiner determined that these limitations are “subjective”
or “a matter of opinion” (Ans. 5–6, 12–13), and that Appellant “does not
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necessarily disagree with this principle,” but instead urges that any necessary
claim clarification should be requested “in the context of a § 112, second
paragraph rejection.” (Reply Br. 2–4). We agree with both positions.
Neither the claims themselves nor the Specification provides any
definition or objective standard for ascertaining the reach of these
limitations. We note that the Specification provides no specific structure
required to make the controller easily manipulable with one hand (even one
hand of a toddler), but rather points only to “exemplary illustrative non-
limiting implementations” of a controller in the drawings and discloses that
the controller “only needs to be gripped with one hand,” without any further
structural detail or objective standard. Spec., ¶¶ 20, 83; see also Spec.,
¶¶ 14, 63. Similarly, the Specification lists a number of “exemplary
illustrative embodiments” of sample daily activities, tasks, or chores, but
provides no objective standard for which activities would or would not be
included. Spec., ¶¶ 110–121.
Thus, the limitations of a handheld pointing controller that is “easily
manipulable with one hand” for use with a game that is arranged to convey
“at least one lesson or skill involving a daily activity, task, or chore” are
indefinite because they lack sufficient precision to permit one endeavoring
to practice the invention to adequately determine the metes and bounds
thereof.
In light of the above, we conclude that independent claims 1, 13, and
25, and dependent claims 2–8, 10, 11, 14–20, 22, and 23, are indefinite
under 35 U.S.C. § 112, second paragraph, for failing to particularly point out
and distinctly claim the subject matter which Appellant regards as the
invention.
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DECISION
We REVERSE the Examiner’s decision rejecting claims 1–8, 10, 11,
13–20, 22, 23, and 25 under 35 U.S.C. § 103(a).
We ENTER A NEW GROUND OF REJECTION for claims 1–8, 10,
11, 13–20, 22, 23, and 25 under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides that “[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.”
37 C.F.R. § 41.50(b) also provides that 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. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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)(1)(iv) (2011).

REVERSED; 37 C.F.R. § 41.50(b)

Ssc