Ex Parte Yu

Patent Trial and Appeal Board

Sep 23, 2016

12901031 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/901,031 10/08/2010
66078 7590 09/27/2016
KOLISCH HARTWELL, P.C.
Mattel Customer Number
200 PACIFIC BUILDING
520 SW YAMHILL STREET
PORTLAND, OR 97204
FIRST NAMED INVENTOR
BrianM. Yu
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.
16725 (131) 9079
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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@khpatent.com
chuck@khpatent.com
veronica@khpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN M. YU
Appeal2014-006962
Application 12/901,031
Technology Center 3700
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-11 and 16-20.2 We have jurisdiction over this appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appellant identifies the real party in interest as "Mattel, Inc." (Appeal
Br. 2.)
2 Claims 12-15 have been allowed. (See Final Action 2.)
Appeal2014-006962
Application 12/901,031
STATEMENT OF THE CASE
The Appellant's invention relates to "[a]n educational card game to
provide amusement to players." (Spec. i-f 6.)
Illustrative Claim3
1. A method of playing a card game, comprising:
dealing an equal number of cards from a plurality of
cards to each one of a plurality of players of the card game so
that each player has a predetermined number of cards, wherein
each one of the plurality of cards has a noun imprinted on a face
of each one of the plurality of cards;
rolling a die having a plurality of faces imprinted with at
least one character so that one of the plurality of faces is an
uppermost face of the die;
announcing a word corresponding to the at least one
character appearing on the uppermost face of the die, wherein at
least two of the plurality of players select a card from their
corresponding predetermined number of cards that
complements the announced \vord;
determining one of the cards selected by the at least two
of the plurality of players that best complements the announced
word;
awarding a point to the player whose selected card was
determined to best complement the announced word; and
repeating the steps of rolling, announcing, determining
and awarding until a winner of the game is determined when
one of the plurality of players is awarded a predetermined
amount of points.
3 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 16-22 of the Appeal Brief.
2
Appeal2014-006962
Application 12/901,031
Rejections4
I. The Examiner rejects claims 1-11 and 18-20 under 35 U.S.C.
§ 101 as attempting to patent non-statutory subject matter. (Final Action 3.)
II. The Examiner rejects claims 16 and 17 under 35 U.S.C.
§ 102(b) as anticipated by Mercado-Torres. 5 (Id. at 5.)
ANALYSIS
Claims 1, 8, and 16 are the independent claims on appeal. (Claims
App.) Independent claims 1 and 8 each recites "[a] method of playing a card
game," and independent claim 16 recites "[a] game." (Id.) Claims 2-7 and
18-20 depend directly or indirectly from independent claim 1; claims 9-11
depend directly or indirectly from independent claim 8; and claim 17
depends directly from independent claim 16. (Id.)
Rejection I
Independent claim 1 recites the steps of "dealing" cards having nouns
imprinted thereon, "rolling a die," "announcing a word" corresponding to
"[a] character appearing on the uppermost face of the die," "determining"
which card "best complements the announced word," and "awarding a point
to the player whose selected card was determined to best complement the
announced word." (Claims App.) Independent claim 8 recites similar
dealing, rolling, identifying, choosing, determining, and awarding steps.
(Id.) The Examiner determines that these claimed methods are "an attempt
to claim a new set of rules for playing a card game" which is "an abstract
4 The Examiner's rejection of claims 8-11 under 35 U.S.C. § 112 (see Final
Action 7) has been withdrawn (see Answer 9).
5 US 4,966,366 issued October 30, 1990.
3
Appeal2014-006962
Application 12/901,031
idea." (Answer 5, emphasis omitted.) The Examiner also determines that
the additional elements recited in these claims "are not considered to impose
a meaningful limit on the abstract idea attempting to be claimed." (Final
Action 5, emphasis omitted.)
The Appellant argues that the methods recited independent claims 1
and 8 amount to more than merely abstract ideas, and thus qualify as patent-
eligible subject matter. (Appeal Br. 8, 12.) We are not persuaded by the
Appellant's position because, although the Examiner's rejection was
couched in pre-Alice guidelines, the Examiner's findings are sufficient to
satisfy the now-applicable two-step Alice analysis. 6 And the Appellant does
not adequately address why the Examiner's Alice-pertinent findings are
incorrect, incomplete, unsupported, or otherwise deficient.
Regarding the first step of the Alice analysis (i.e., determining
whether the claims at issue are directed to a patent-ineligible concept), as
indicated above, the Examiner characterizes the claimed methods as "a new
set of rules for playing a card game." (Answer 5, emphasis omitted.) The
6 The Examiner applied the Interim Guidance (discussing Bilski v. Kappas,
561 U.S. 593 (2010)) which was developed before the United States
Supreme Court issued its decision in Alice Corp. v. CLS Bank International,
134 S. Ct. 2347 (2014). In Alice, the Supreme Court reiterated the two-step
framework previously set forth in Mayo Collaborative Services v.
Prometheus Labs., Inc., 132, S. Ct. 1289, 1300 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of these concepts." Alice,
134 S. Ct. at 2355. The first step in the analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts." Id.
If so, the second step is to consider the elements of the claims "individually"
and "as an ordered combination" to determine whether there are additional
elements that "transform the nature of the claim" in a patent-eligible
application. Id. (quoting Mayo, 132 S. Ct. at 1297).
4
Appeal2014-006962
Application 12/901,031
Specification also conveys that "a method of playing a card game" is
provided. (Spec. i-f 7.) Moreover, the Appellant does not assert that the
claimed methods are directed to something other than a new set of rules for
playing a card game. (See Appeal Br. 11-13; Reply Br. 4---6.) As such, we
agree with the Examiner that the claims are directed to a new set of rules for
playing a card game and thus they are directed to an abstract idea. 7
Regarding the second step of the Alice analysis (i.e., determining
whether there are additional elements that transform the nature of the claim
in a patent-eligible application), we agree with the Appellant that the claims
recite "physical elements (cards and die) to achieve performance of the
method." (Appeal Br. 8, 12.) However, we agree with the Examiner that
"[c]ard games traditionally involve the use of a physical deck of cards"
(Answer 5); and the Specification conveys that the claimed cards and the
steps associated therewith are conventional (see Spec. i-fi-11-5). 8 Further, the
Appellant does not assert that, and we do not see how, the rolling of a
multifaceted die somehow brings the claimed methods within patent-eligible
territory. Thus, we agree with the Examiner that the additional elements
7 See In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016) wherein, ultimately,
the Federal Circuit held that claims describing a set of rules for a game are to
be regarded as an abstract idea; see also Planet Bingo, LLC v. VKGS LLC,
576 F. App'x 1005, 1008 (Fed. Cir. 2014) (non-precedential) wherein the
Federal Circuit held that the claimed method of "managing a game of
Bingo" was directed to an abstract idea.
8 The Federal Circuit has indicated that "claims directed to conducting a
game using a new or original deck of cards [could] potentially surviv[e] step
two of Alice. '' Smith, 815 F.3d at 819. Here, however~ the claimed cards
appear to the same as those used in an already popular card game. (See
Spec.~ 1.)
5
Appeal2014-006962
Application 12/901,031
recited in claims 1-11 and 18-20 do not impose meaningful limits on the
abstract idea of a set of rules for playing a game. (See Final Action 5.)
Thus, we sustain the Examiner's rejection of claims 1-11 and 18-20
under 35 U.S.C. § 101 as attempting to patent non-statutory subject matter.
Rejection II
As indicated above, independent claim 16 recites a "[a] game," as
opposed to a method. (Claims App.) Independent claim 16 requires this
game to comprise "a plurality of game cards" and "a multifaceted die." (Id.)
The Examiner finds that Mercado-Torres discloses a game comprising a
plurality of game cards and a multifaceted die that meet the limitations
recited in claims 16 and 17. (See Final Action 5---6.) The Appellant does not
point, with particularity, to flaws in this finding by the Examiner.
Independent claim 16 further requires the game to comprise "a rule set
that includes a plurality of rules for playing the game." (Claims App.) The
Examiner considers such rules to be functional limitations and finds that the
game structure disclosed in Mercado-Torres (i.e., the game cards and the
die) are inherently capable of performing such functions. (See Answer 7-8.)
In other words, the prior art components (i.e., game cards and die) could be
used to play a game according to the rules recited in claims 16 and 17.
The Appellant argues that Mercado-Torres "simply does not disclose"
the rules set forth in claims 16 and 17. (Reply Br. 6.) We are not persuaded
by this argument because the Appellant does not adequately address the
Examiner's findings regarding inherency. The Appellant does not, for
example, contend that the game cards and/or the die disclosed in Mercado-
Torres do not possess the characteristics necessary to play a game according
6
Appeal2014-006962
Application 12/901,031
to the recited rule set. 9 Insofar as the recited "rule set" is intended to cover a
printed set of rules, or instructions, this is not sufficient to distinguish the
claimed game from the prior art. 10
Thus, we sustain the Examiner's rejection of claims 16 and 17 under
35 U.S.C. § 102(b) as anticipated by Mercado-Torres.
DECISION
We AFFIRM the Examiner's rejections of claims 1-11 and 16-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9 See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) ("Although
Schreiber is correct that [the prior art reference] did not address the use of
the disclosed structure [for the recited function]," the absence of such
disclosure "does not defeat" a finding of anticipation).
10 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (The Appellants is
not "entitled to patent a known product by simply attaching a set of
instructions to that product.~').
7