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Patent Trials and Appeals Board

Nov 21, 2019

15330545 - (D) (P.T.A.B. Nov. 21, 2019)

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.
15/330,545 10/06/2016 GUY L. MCCLUNG III McWord 5761
7590 11/21/2019
GUY MCCLUNG
SUITE 402-361
24200 SOUTHWEST FREEWAY
ROSENBERG, TX 77471-5985
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
11/21/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUY L. McCLUNG, III
Appeal 2019-003596
Application 15/330,545
Technology Center 3700
Before JAMESON LEE, JONI Y CHANG, and
MICHAEL R. ZECHER, Administrative Patent Judges.

LEE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Guy L. McClung, III. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The independent claims are claims 1 and 14. Both recite a method for
playing a word game. Claims 2–13 each depend directly from claim 1, and
claims 15–18 each depend from claim 14. Claims 1 and 14 are reproduced
below:
1. A method for playing a word game, the word game
playable by a plurality of players, the plurality of players
comprising at least a first player and a second player, the word
game comprising a game piece location structure, the game piece
location structure having multiple game piece locations, the
multiple game piece locations including a first plurality of first
game piece locations each with a location designator indicating
the first player and a second plurality of game piece locations
each with a location designator indicating the second player, each
location designator either preprinted on the game piece location
structure or created on the game piece location structure before
the game commences, the word game further comprising a
plurality of lettered game pieces each placeable on a game piece
location of the game piece location structure and positionable
adjacent each other to form words produced by the players, a first
group of the plurality of lettered game pieces having indicia
thereon indicating the first player and a second group of the
plurality of lettered game pieces having indicia thereon
indicating the second player, the method comprising:
the players receiving joint scores of game points for
producing a word;
the first player producing a first word, the first player
producing the first word using at least one lettered game piece,
the first player producing the first word by placing the at least
one lettered game piece on a game piece location of the game
piece location structure and positioning the at least one lettered
game piece to spell out the first word, the first word produced by
the first player alone in a first turn,
the first player receiving a first point score of game points
for production of the first word,
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the second player taking no action in the game during the
first player’s production of the first word during the first turn,
and
the second player receiving a second point score of game
points based on the first word if the at least one lettered piece
used to produce the first word is from the second group
indicating the second player.
14. A method for playing a word game, the word game
playable by a plurality of players, the plurality of players
comprising at least a first player and a second player, the word
game comprising the word game comprising a game piece
location structure, the game piece location structure comprising
a board having multiple game piece locations, the multiple game
piece locations including a first plurality of first game piece
locations each with a location designator indicating the first
player and a second plurality of game piece locations each with
a location designator indicating the second player, each location
designator either preprinted on the game piece location structure
or created on the game piece location structure before the game
commences, the word game further comprising a plurality of
lettered game pieces each placeable on a game piece location of
the game piece location structure and positionable adjacent each
other to form words produced by the player, a first group of the
plurality of lettered game pieces having indicia thereon
indicating the first player and a second group of the plurality of
lettered game pieces having indicia thereon indicating the second
player, the method comprising:
the first player producing a first word, the first player
producing the first word using at least one lettered game piece,
the first player producing the first word by positioning the at least
one lettered game piece to spell out the first word, the first word
produced by the first player alone in a first turn,
the first player receiving a first point score of game points
for production of the first word,
the second player taking no action in the game during the
first player’s production of the first word during the first turn,
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the second player receiving a second point score of game
points based on the first word if the at least one lettered piece
used to produce the first word is from the second group
indicating the second player,
the second player receiving an additional point score of
game points if the first word includes any lettered game piece
positioned on a game piece location with a location designator
indicating the second player,
wherein the second point score is determined by chance.
The Specification states the following: “The present invention
discloses, inter alia, word games in which an acting player achieves a word
score and then one (or more than one) non-acting player(s) can achieve a
score based on the acting player’s action and/or score.” Spec. ¶ 3. The
Specification explains as follows: (1) “No word game known to the present
inventor makes provision for the new and nonobvious possibility of a non-
acting player receiving a score based on the action of an acting player”; and
(2) “No word game known to the present inventor provides the new and
nonobvious possibility for a non-acting player to receive a score based, in
whole or in part, on chance.” Id. ¶ 5.
The Specification summarizes the invention as follows:
The present invention discloses, in certain aspects, games
in which before an acting player receives a word score (e.g., for
producing a word, making a word, finding a word), a
determination is made regarding who, if any, of the other
player(s) (and, in one aspect, the acting player himself or herself)
will either receive an additional score or have the chance to
receive an additional score. Such a determination may be made
by chance or according to pre-set rules or agreement, a specific
player is designated; e.g., if there are only two players, then it is
the other player or, e.g., it is always a player to the right or to the
left of an acting player, or it is all non-acting players; also e.g., if
there are two players, tokens or game pieces (e.g., cards) are dealt
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or chosen or distributed, and some indicator indicates which
player will be able to receive an additional score or have the
chance to receive an additional score.
Id. ¶ 6.

REJECTION
Claims 1–18 stand finally rejected under 35 U.S.C. § 101 as not
directed to patent-eligible subject matter. Final Act. 2–4.
OPINION
A. Rejection Under § 101 for Patent-Ineligible Subject Matter
Appellant appeals the final rejection of claims 1–18 as being directed
to patent-ineligible subject matter under § 101. Appeal Br. 3, 8.
Independent claims 1 and 14 are argued as a group. See id at 9–10. We,
therefore, select claim 1 as representative of claims 1 and 14. See 37 C.F.R.
§ 41.37(c)(1)(iv).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has held that § 101 includes implicit
exceptions—laws of nature, natural phenomena, and abstract ideas—which
are not patent-eligible. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014); Bilski v. Kappos, 561 U.S. 593, 601 (2010). In January 2019,
the Office issued the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”), which
addresses the manner in which § 101 case law is to be applied by the
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Office.2 The Board is required to adhere to the 2019 Guidance as a matter of
Office policy. 2019 Guidance 51. The 2019 Guidance sets forth a four-part
analysis for determining whether a claim is eligible subject matter under
§ 101. The four parts are referred to as Step 1, Step 2A Prong 1, Step 2A
Prong 2, and Step 2B. See id. at 53–56.
1. 2019 Guidance Step 1
First, under “Step 1,” we consider whether the claimed subject matter
falls within the four statutory categories set forth in § 101, namely
“[p]rocess, machine, manufacture, or composition of matter.” 2019
Guidance 53–54; see 35 U.S.C. § 101. Claim 1 recites a “method” and, thus,
falls within the “process” category. Consequently, we proceed to the next
step of the analysis.
2. 2019 Guidance Step 2A Prong 1
Second, under “Step 2A Prong 1,” we evaluate “whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon.” 2019 Guidance 54; see Alice, 573 U.S. at 216 (2014);3 Bilski,
561 U.S. at 601–602.4 The Examiner determined that the rejected claims
recite an abstract idea, because steps of “organizing human activity” are
treated as abstract ideas. Final Act. 2. In support of that conclusion, the
Examiner determined that the claims include steps of assigning and

2 A further update was issued in October 2019. October 2019 Patent
Eligibility Guidance Update, 84 Fed. Reg. 55942 (October 18, 2019).
3 In Alice, a method of exchanging financial obligations between two parties
using a third-party intermediary to mitigate settlement risk is deemed an
abstract idea. Alice, 573 U.S. at 219.
4 In Bilski, a method of hedging or protecting against risk is deemed an
abstract idea. Bilski, 561 U.S. at 611.
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positioning lettered game pieces, making words and receiving points, and
following a set of rules for playing a game. Id. at 2–3. The Examiner
further explained as follows, citing Alice:
In the present application “steps of assigning, positioning letter
pieces, making words and receiving points” is effectively a
method of exchanging and resolving financial obligations based
on rules of playing. Thus, the claim of the present application as
recited, is akin to the “method of exchanging financial
obligations” discussed in Alice.
Id.
For reasons discussed below, we agree with the Examiner that claim 1
recites an abstract idea.
The 2019 Guidance identifies the following as a sub-group of abstract
ideas: “Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions).” 2019 Guidance 52 (emphasis added).5

5 The 2019 Guidance identifies another subgroup of “abstract ideas,” i.e.,
mental processes—concepts performed in the human mind. 2019 Guidance
52. In addition to concluding that claims 1 recites “steps of organizing
human activity, the Examiner also concludes that claim 1 recites a mental
process. Ans. 6. We need not decide whether the claims also recite a mental
process, because, as discussed below, we agree with the Examiner that the
claims recite an abstract idea within the grouping of “Certain methods of
organizing human activity.” Id. The same is true for claims 2–18.
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Claim 1 is similar to the claims held to recite an abstract idea in In re
Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160 (Fed. Cir. 2018) and
In re Smith, 815 F.3d 816, 818–819 (Fed. Cir. 2016). The claims in Marco
recite a method of playing a dice game including placing wagers on whether
certain die faces will appear face up. Marco, 911 F.3d at 1160. The claims
in Smith recite a method of conducting a card game, with wagering. Smith,
815 F.3d at 817–818. In Smith, the Federal Circuit likened the recited
method for a wagering card game to a fundamental economic practice and
agreed with the Board that the claimed method effectively is a method of
exchanging and resolving financial obligations based on probabilities
created during distribution of the cards. Id. at 818–819. On that basis, the
Court determined that claimed invention was an abstract idea much like
Alice’s method of exchanging financial obligations and Bilski’s method of
hedging risk. Id. at 819. Likewise, in Marco, the Court determined that the
claimed method was like that in Smith, except that the probabilities are based
on dice rather than on cards. Marco, 911 F.3d at 1160. The claimed method
of playing a dice game was determined to be an abstract idea. Id.
First, the Examiner determined that claim 1 includes the requirement
of following a set of rules for playing a game. Final Act. 3. We agree.
Appellant has not disputed that claim 1 includes such a requirement. The
rules are these individual steps recited in claim 1, which are all of the steps
recited in claim 1:
the players receiving joint scores of game points for
producing a word;
the first player producing a first word, the first player
producing the first word using at least one lettered game piece,
the first player producing the first word by placing the at least
one lettered game piece on a game piece location of the game
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piece location structure and positioning the at least one lettered
game piece to spell out the first word, the first word produced by
the first player alone in a first turn,
the first player receiving a first point score of game points
for production of the first word,
the second player taking no action in the game during the
first player’s production of the first word during the first turn,
and
the second player receiving a second point score of game
points based on the first word if the at least one lettered piece
used to produce the first word is from the second group
indicating the second player.
The U.S. Court of Appeals for the Federal Circuit has determined that
a set of rules for a game constitutes an abstract idea. Marco, 911 F.3d at
1161; Smith, 815 F.3d at 819. For this reason alone, claim 1 recites an
abstract idea.
For a separate reason, we conclude that claim 1 recites an abstract
idea. Although it is true that the method of playing a wagering game in
Marco (using dice) and in Smith (using playing cards) requires wagering
and, thus, is likened to a way to resolve financial obligations between
parties, and that the method of playing the game here according to claim 1
requires no wagering, that difference does not make the idea here any less
abstract. Claim 1 recites that the players would receive “points” based on
the specified rules. Thus, the game potentially can be played for money,
based on points awarded to each player. The game can be played for money,
or not. The claim is sufficiently broad to cover both. If a game, played for
money, is an abstract idea, it would be even more of an abstract idea if
played simply for fun without a financial consequence. Given that the
methods for playing wagering games in Marco and in Smith constitute an
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abstract idea, the method here according to claim 1 also constitutes an
abstract idea.
Finally, Appellant also argues that a “specific apparatus is required for
the implementation of the game.” Appeal Br. 11. The argument is
misplaced. A similar argument was raised in Marco, supra, and the Federal
Circuit explained as follows:
We disagree [that physical parts nullifies the abstract idea
determination], because the abstract idea exception does not turn
solely on whether the claimed invention comprises physical
versus mental steps. The claimed methods in Bilski and Alice
also recited actions that occurred in the physical world. See
Bilski, 561 U.S. at 599, 130 S.Ct. 3218; Alice, 573 U.S. at 213–
14, 134 S.Ct. 2347. The same is true of the claimed method of
conducting a wagering game in Smith. Smith, 815 F.3d at 817.
Marco, 911 F.3d at 1161–1162.
Because claim 14 is grouped with claim 1, it also recites an abstract
idea. Because each of claims 2–13 and 15–18 depends from either claim 1
or claim 14, and they incorporate all the recitations of claim 1 or claim 14,
they also recite the same abstract idea discussed and identified above.
3. 2019 Guidance Step 2A Prong 2
Having determined that claim 1 recites an abstract idea, we proceed to
“Step 2A Prong 2” of the 2019 Guidance, which requires that we evaluate
whether “the claim as a whole integrates the recited judicial exception into a
practical application of the exception.” 2019 Guidance 54. “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
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designed to monopolize the judicial exception.” Id.; see also Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012).
The 2019 Guidance specifies that this evaluation is conducted by first
“[i]dentifying whether there are any additional elements recited in the claim
beyond the judicial exception(s),” then “evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.” 2019 Guidance 54–55.
The Examiner identified all of the other elements recited in claim 1,
i.e., (1) a game piece location structure having multiple game piece
locations, where the game piece locations including a first plurality of first
game piece locations each with a location designator indicating the first
player and a second plurality of game piece locations each with a location
designator indicating the second player, (2) each location designator either
preprinted on the game piece location structure or created on the game piece
location structure before the game commences, (3) a plurality of lettered
game pieces each placeable on a game piece location of the game piece
location structure and positionable adjacent each other to form words, and
(4) a first group of the plurality of lettered game pieces having indicia
thereon indicating the first player and a second group of the plurality of
lettered game pieces having indicia thereon indicating the second player.
Ans. 6–7.
The Examiner determined that these additional elements do not
integrate the abstract idea into a practical application. Id. at 7. The
Examiner finds claim 1 simply to be applying the abstract idea to a general
technological environment or field of use. Id. We agree with the Examiner
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that no additional element or combination of additional elements integrate
the abstract idea into a practical application of the abstract idea.
The 2019 Guidance lists several non-exhaustive exemplary
considerations tending to indicate that a judicial exception such as an
abstract idea has been integrated into a practical application:
An additional element reflects an improvement in the
functioning of a computer, or an improvement to other
technology or technical field;
an additional element that applies or uses a judicial
exception to effect a particular treatment or prophylaxis for a
disease or medical condition;
an additional element implements a judicial exception
with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction
of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception
in some other meaningful way beyond generally linking the use
of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.
2019 Guidance (Footnotes omitted).
None of these exemplary considerations fit the facts of this case, and
we have no other reason to support a conclusion that any additional element
or combination of elements in claim 1 integrates the abstract idea into a
practical application. In particular, the additional elements, alone or in
combination, do not improve the functioning of a computer or any
technology, do not effect a particular treatment or prophylaxis for a disease
or medical condition, do not implement the abstract idea with a particular
machine or manufacture, do not effect a transformation or reduction of a
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particular article to a different state or thing, and do not apply the abstract
idea in a meaningful way beyond linking it to a particular technological
environment. Although the additional elements are physical, i.e., game
piece location structure, lettered game pieces having indicia thereon, and
location designator on game piece locations, they are recited as generic
elements and, as such, do not set forth a particular machine or manufacture.
We, therefore, are not persuaded by Appellant’s assertion (Appeal Br. 9) that
the claims “require specific and particular apparatus,” with respect to
claim 1.
For the foregoing reasons, we determine that no additional element or
combination of elements in claim 1 integrates the abstract idea into a
practical application. Claim 14 is separately argued by Appellant, but only
to the extent that it adds an additional rule to the set of rules set forth in
claim 1, i.e., “the second player receiving an additional point score of game
points if the first word includes any lettered game piece positioned on a
game piece location with a location designator indicating the second player.”
Appeal Br. 10. This additional rule does not add an element or combination
of elements satisfying any of the above-reproduced considerations for Step
2A, Prong 2 of the 2019 Guidance. Therefore, we likewise are not
persuaded by Appellant’s assertion (Appeal Br. 9) that the claims “require
specific and particular apparatus,” with respect to claim 14. Consequently,
no additional element or combination of elements in claim 14 integrates the
abstract idea into a practical application.
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Appellant has not separately argued the merits of dependent claims 4,
5, 7, 10, 11, and 18.6 Consequently, they are grouped with claims 1 and 14.
See 37 C.F.R. § 41.37(c)(1)(iv). No additional element or combination of
elements in any of claims 4, 5, 7, 10, 11, and 15 integrates the abstract idea
into a practical application.
Claim 2 depends from claim 1 and further recites “further comprising
the second player receiving an additional point score of game points if the
first word includes any lettered game piece positioned on a game piece
location with a location designator indicating the second player.” This claim
adds a rule to the set of rules set forth in claim 1, but does not add an
element or combination of elements satisfying any of the above-reproduced
considerations for Step 2A, Prong 2 of the 2019 Guidance. Therefore, we
likewise are not persuaded by Appellant’s assertion (Appeal Br. 9) that the
claims “require specific and particular apparatus,” with respect to claim 2.
We find nothing in claim 2 to establish integration of the abstract idea into a
practical application.
Claim 3 depends from claim 1 and further recites “wherein the game piece
location structure is a board with multiple locations on which a game piece is
placeable, the method further comprising the players forming words by placing
lettered game pieces on at least one location of the board.” The additional element
here is a generic game board. It is insufficiently specific to constitute a particular

6 On page 11 of the Appeal Brief, Appellant refers to claim 18 as requiring
that the game be effected electronically. Claim 18 includes no such
recitation. Rather, claim 15 does. We assume Appellant’s argument is
directed to claim 15 and not claim 18.

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machine or manufacture under the 2019 Guidance. Also, we agree with the
Examiner (Ans. 7) that the recitation of a generic game board merely reflects
application of the game rules to a particular technological environment or field of
use, i.e., “the art area of board games.” As such, the element is insufficient under
the 2019 Guidance to establish integration of the abstract idea into a practical
application.
Claim 6 depends from claim 1 and further recites “wherein the lettered game
pieces are one of die, tile, card, and electronic game piece.” This recitation is
generic and not sufficiently specific under the 2019 Guidance to constitute a
particular machine or manufacture. We also have considered other factors noted
above for prong 2 of Step 2A, and we find nothing in claim 6 to establish
integration of the abstract idea into a practical application.
Claim 8 depends from claim 1 and further recites “wherein the method is
effected electronically.” This recitation merely reflects application of the game
rules to a particular technological environment or field of use, i.e., electronically.
As such, claim 8 has no additional element or combination of elements sufficient
under the 2019 Guidance to establish integration of the abstract idea into a
practical application.
Claim 9 depends from claim 1 and further recites “wherein the method is
effected over the Internet.” This recitation merely reflects application of the game
rules to a particular technological environment or field of use, i.e., over the
Internet. As such, claim 9 has no additional element or combination of elements
sufficient under the 2019 Guidance to establish integration of the abstract idea into
a practical application.
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Claim 12 depends from claim 1 and further recites as follows:
wherein the at least one lettered game piece is from the second
group, and the method further comprising
determining a game point value for the second point score
by using a die or dice by one of the following:
a die is rolled and shows a die face with a numeral thereon
and the value of the numeral is the second point score;
a die is rolled and shows a die face with a numeral thereon
and the value of the second point score is the first point score
times the numeral value of the numeral;
two dice are rolled and a face of each die shows on a die
face a numeral and the combined value of the two numerals is
the second point score; and
two dice are rolled and each shows a die face with a
numeral thereon and the second point score is the first point score
times the combined numeral value of the two numerals.
The additional element here is one generic die or two generic dice. In either
case, the recitation is not sufficiently specific to constitute a particular
machine or manufacture under the 2019 Guidance. Cf. Marco, 911 F.3d at
1161–1162 (determining that a claimed method for playing a dice game
involving the use of a first die, second die, and third die is not patent-
eligible). We also have considered other factors noted above for prong 2 of
Step 2A, and we find nothing in claim 12 to establish integration of the
abstract idea into a practical application.
Claim 13 depends from claim 1 and further recites “wherein the game
is an improved version of an existing word game, the existing word game
being one of SCRABBLE (Trademark) game and BOGGLE (Trademark)
game.” This claim is sufficiently broad so as to require only the adoption of
certain rules of the pre-existing games and not any particular game piece
structure or game piece location structure from the pre-existing games.
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Therefore, nothing added by claim 13 is sufficiently specific to constitute a
particular machine or manufacture under the 2019 Guidance. We also have
considered other factors noted above for prong 2 of Step 2A, and we find
nothing in claim 13 to establish integration of the abstract idea into a
practical application.
Claim 15 depends from claim 14 and further recites “wherein the
method is effected electronically or over the Internet.” For the same reasons
discussed above in the context of claims 8 and 9, claim 15 has no additional
element or combination of elements sufficient under the 2019 Guidance to
establish integration of the abstract idea into a practical application.
Claim 16 depends from claim 14 and further recites “wherein the game piece
location structure is a container with multiple compartments for holding a game
piece, the method further comprising the players forming words by placing lettered
game pieces in at least one compartment of the container.” The recited container
with multiple compartments is not sufficiently specific, in the context of the 2019
Guidance, to constitute a particular machine or manufacture. It is generic and does
not have expressed details. We also have considered other factors noted above for
prong 2 of Step 2A, and we find nothing in claim 16 to establish integration of the
abstract idea into a practical application.
Claim 17 depends from claim 14 and further recites “wherein the
game piece location structure is a board with multiple locations on which a
game piece is placeable, the method further comprising the players forming
words by placing lettered game pieces on at least one location of the board.”
For the same reasons discussed above in the context of claim 3, we find
nothing in claim 17 to establish integration of the abstract idea into a
practical application.
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For the above reasons, Appellant has not shown that the Examiner
erred in concluding that claims 1–18 do not integrate the recited abstract
idea into a practical application.
4. 2019 Guidance Step 2B
We now review claims 1–18, each of which recites an abstract idea
that has not been integrated into a practical application, to determine
whether any claim element, alone or in combination with others, provides an
“inventive concept,” i.e., whether the additional elements beyond the
abstract idea, individually and in combination, amount to “significantly
more” than the abstract idea itself to make the claimed invention patent-
eligible. 2019 Guidance 56; see Alice, 573 U.S. at 217–218. According to
the 2019 Guidance, “[adding] a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field” may indicate an inventive concept is present. Id. Conversely, “simply
append[ing] well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality,” typically
indicates an inventive concept is absent. Id.
The claim elements beyond the abstract idea itself already have been
discussed above in the context of determining whether the abstract idea is
integrated into a practical application. We now consider the same in the
context of determining whether an “inventive concept,” i.e., something
significantly more than the abstract idea itself, is provided in any claim.
The Examiner identified all of the other elements recited in claim 1,
i.e., (1) a game piece location structure having multiple game piece
locations, where the game piece locations including a first plurality of first
game piece locations each with a location designator indicating the first
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player and a second plurality of game piece locations each with a location
designator indicating the second player, (2) each location designator either
preprinted on the game piece location structure or created on the game piece
location structure before the game commences, (3) a plurality of lettered
game pieces each placeable on a game piece location of the game piece
location structure and positionable adjacent each other to form words, and
(4) a first group of the plurality of lettered game pieces having indicia
thereon indicating the first player and a second group of the plurality of
lettered game pieces having indicia thereon indicating the second player.
Ans. 6–7.
The Examiner determined that in the art of the claimed invention,
“game surfaces and game pieces are well known to include location
designations for ownership of the game surface and game pieces.” Ans. 9–
10. The Examiner determined that the additional elements are all well-
understood, routine, and conventional. Id. at 8. We understand the
Examiner to have made the same determination regarding the combination
of game pieces on game surfaces, because the Examiner stated the
following: “Viewed as a whole the additional items game pieces, game
surface do not provide meaningful limitations to transform the abstract idea
into a patent eligible application of the abstract idea such that the claims
amount to significantly more than the abstract idea itself.” Id. at 8–9.
With regard to the claimed game pieces being “lettered,” the
requirement covers printed lettering on the game pieces. The Examiner
correctly determined that content of printed matter, if not functionally
related to the substrate on which printed matter appears, cannot serve as a
basis for patentable distinction, citing In re Gulack, 703 F.2d 1381, 1385
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(Fed. Cir. 1983). Ans. 8. Here, printed lettering would be mere information
not functionally related to the structural game piece. See Marco, 911 F.3d
at 1161 (“the printed indicia on each die are not functionally related to the
substrate of the dice.”). Additionally, the Specification expressly
acknowledges multiple pre-existing word games having lettered game
pieces. Spec. ¶¶ 147–150, 180–183; Figs. 11A, 11C. On this record,
“lettered” game pieces are well-known and conventional.
Although the Examiner cites no extrinsic evidence to support the
conclusion that in the art of the claimed invention, “game surfaces and game
pieces are well known to include location designations for ownership of the
game surface and game pieces” (Ans. 9–10), that determination is fully
supported by the intrinsic evidence, i.e., the Specification, and Appellant has
not shown that finding to be erroneous.
The Specification, in numerous places, describes the invention as
differing from the prior art in the specific rules for playing the word game—
not as providing a novel or unconventional game board or game piece
support structure, or game piece. We reproduce several examples below:
No word game known to the present inventor makes provision
for the new and nonobvious possibility of a non-acting player
receiving a score based on the action of an acting player. No
word game known to the present inventor provides the new and
nonobvious possibility for a non-acting player to receive a score
based, in whole or in part, on chance.
Spec. ¶ 5.
The present invention is directed to word games with
enhanced player participation in which all players have a
possibility of scoring no matter who is in the process of
producing a word; and even players with a limited vocabulary
can win the game.
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Id. ¶ 17.
In one particular aspect [of applying the invention], in an
improved SCRABBLE (trademark) game, upon an acting player
completing a turn [and] receiving a score for making a word, a
non-acting player (chosen or designated; e.g., in any way
described above) rolls two dice and, if the sum of the numerals
on the up face is not 7, the non-acting player received half the
word score previously achieved by the acting player, and, if the
sum is 7 (or 7 or 11), the non-acting player receives the same
score, the word score, which the acting player received. In
another respect, the chosen or designated non-acting player
receives a percentage of the acting player’s word score,
determined in any chosen way, e.g., as described above.
Id. ¶ 14.
In one particular aspect [of applying the invention], in an
improved BOGGLE (trademark) game, upon an acting player
completing adding up a total score for that turn of the game, and
receiving the totaled score for finding words, a non-acting player
(chosen or designated; e.g., in any way described above) rolls
two dice and, if the sum of the numerals on the up faces is not 7,
the non-acting player received half the totaled score previously
achieved by the acting player, and, if the sum is 7 (or 7 or 11),
the non-acting player receives the same totaled score which the
acting player received. In another respect, the chosen or
designated non-acting player receives a percentage of the acting
player’s totaled score, determined in any chosen way, e.g., as
described above.
Id. ¶ 15.
In contrast, we find no description in the Specification indicating that
the Appellant has invented a novel or nonobvious game piece and/or game
piece support structure. We find the Examiner’s determination that “game
surfaces and game pieces are well known to include location designations
for ownership of the game surface and game pieces” (Ans. 9–10) to be
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supported by the Specification, notwithstanding Appellant’s argument which
we discuss below.
Appellant has not shown that finding, supported by the record, to be
erroneous. Although Appellant asserts that the claimed method “requires for
its implementation specific, new game apparatus, inter alia, a unique game
piece location structure in combination with lettered game pieces,”
Appellant does not state with any meaningful degree of specificity what is
that unique apparatus. Appeal Br. 7. We already discussed above in the
context of prong 2 of Step 2A that the recited additional elements in claim 1
are generic. Appellant further argues the following:
The claim limitations requiring specific “location designators”
for each player are, e.g., designators “pre-printed on the board”
or they are “created before play commences with suitable
indicators;” for example, but not limited to: different designators
in the compartments of the game location structure of the
apparatus of the game 60, shown in Fig[.] 6 and described in
Application Paragraphs [0124] – [0126]; and “transparent
indicators each of which covers a game board letter tile location”
(Application Specification, Paragraph [0186]). Game location
designators may, e.g., be in a pre-established position (Paragraph
[0186]); placed by the players (Paragraph [0188]); or placed
during the game (Paragraph [0190]).
Id. at 9–10. Location designators that are either pre-printed on the board or
created before play commences are still generic and not unique. Even when
referencing, in the above-quoted text, “different designators in the
compartments of the game location structure of the apparatus of the game
60, shown in Fig. 6 and described in Application Paragraphs [0124] –
[0126],” Appellant describes the reference as merely an example and not a
limitation of the claims. Indeed, Appellant does not point out what specific
location designator is required by the claims, and we can see none. For
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instance, no claim requires a transparent indicator as a location designator.
Furthermore, the claimed location designator covers a printed insignia, but
as we have explained above, printed matter that merely constitutes
information and is not functionally related to the underlying structure cannot
serve as basis for patentable distinction. See Marco, 911 F.3d at 1161.
Appellant further asserts that “the required game apparatus are new
and nonobvious, as established by the record in this application.” Id. at 7.
The assertion is unpersuasive, as we explain below.
According to Appellant, during prosecution of the parent application
(U.S. Patent Application No. 13/694,275 (“the ’275 application”), claims
were initially rejected as unpatentable over prior art, but then the Appellant
successfully responded to that prior art rejection by providing “points of
differences” relative to the applied prior art. Appeal Br. 12 (citing response
dated March 11, 2014 in the parent application). Appellant further notes that
in this ensuing “offspring application,” there is no rejection by the Examiner
based on prior art. Id.
These arguments are misplaced and are insufficient to rebut the
Examiner’s determination, supported by the record, that “game surfaces and
game pieces are well known to include location designations for ownership
of the game surface and game pieces.” Ans. 9–10. We have reviewed the
Applicant’s response dated March 11, 2014, in the ’275 application. We
find only arguments by Applicant that distinguish the claimed invention
from the applied prior art on the basis of the rules for playing the game, and
not on the basis of differences in the structure or configuration of the game
surface or game pieces.
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Notably, Applicant argued in that response: “The Hyra reference . . .
teaches only a second player completing a word begun by a first player.
This reference has no teaching or suggestion of a second player who does
nothing during a first player's turn receiving a point score based on what the
first player alone does in producing a word.” ’275 Application, Response
dated March 11, 2014 at 8. The Applicant further argued the following:
“The Johnson II reference . . . teaches, inter alia, players acquiring ‘territory’
of other players, the territory made by making words. This reference has no
teaching or suggestion of a second player who does nothing during a first
player's turn receiving a point score based on what the first player alone does
in producing a word.” Id.
Also, the lack of a prior art rejection by the Examiner in the
application on appeal does not indicate novelty or non-obviousness of the
claimed game surface and/or game pieces. None of the claims on appeal
covers only the game surface and/or game pieces, without the rules for
playing the game. As discussed above, the Specification indicates that
novelty lies in the rules for playing a game and not in the structure or
configuration of a game surface and/or game pieces.
Thus, for the reasons explained above, we agree with the Examiner
(Ans. 8–9) that claim 1 does not recite an element or a combination of
elements constituting an “inventive concept,” i.e., something significantly
more than the abstract idea itself, sufficient to render claim 1 patent-eligible.
Claim 14 is separately argued by Appellant, but only to the extent that
it adds an additional rule to the set of rules set forth in claim 1, i.e., “the
second player receiving an additional point score of game points if the first
word includes any lettered game piece positioned on a game piece location
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with a location designator indicating the second player.” Appeal Br. 10. We
are not persuaded by Appellant’s assertion (Appeal Br. 9) that the claims
“require specific and particular apparatus,” with respect to claim 14. We
agree with the Examiner (Ans. 8–9) that claim 14 does not recite an element
or a combination of elements constituting an “inventive concept,” i.e.,
something significantly more than the abstract idea itself, sufficient to render
claim 14 patent-eligible.
Because Appellant has not separately argued claims 4, 5, 7, 10, 11,
and 187 apart from claims 1 and 14, they stand or fall with claims 1 and 14.
37 C.F.R. § 41.37(c)(1)(iv). Thus, we also agree with the Examiner that
claims 4, 5, 7, 10, 11, and 18 do not recite elements, individually or in
combination, constituting an “inventive concept,” i.e., something
significantly more than the abstract idea itself, sufficient to render them
patent-eligible.
Claim 2 depends from claim 1 and further recites “further comprising
the second player receiving an additional point score of game points if the
first word includes any lettered game piece positioned on a game piece
location with a location designator indicating the second player.” This claim
adds a rule to the set of rules set forth in claim 1, but does not add an
element, alone or in combination with other elements, constituting an
“inventive concept,” i.e., something significantly more than the abstract idea
itself, sufficient to render them patent-eligible.

7 On page 11 of the Appeal Brief, Appellant refers to claim 18 as requiring
that the game be effected electronically. Claim 18 includes no such
recitation. Rather, claim 15 does. We assume Appellant’s argument is
directed to claim 15 and not claim 18.
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Claim 3 depends from claim 1 and further recites “wherein the game
piece location structure is a board with multiple locations on which a game
piece is placeable, the method further comprising the players forming words
by placing lettered game pieces on at least one location of the board.” The
additional element here, aside from the game rules, is a generic game board.
The Examiner has determined that a generic game board is a well
understood, routine, and conventional game surface. Ans. 10. For the same
reasons as those discussed above in the context of claims 1 and 14, we reject
Appellant’s assertion that claim 3 requires a specific and particular game
apparatus that is novel and nonobvious. Thus, we agree with the Examiner
(Ans. 8–9) that claim 3 does not recite an element or a combination of
elements constituting an “inventive concept,” i.e., something significantly
more than the abstract idea itself, sufficient to render claim 3 patent-eligible.
Claim 6 depends from claim 1 and further recites “wherein the
lettered game pieces are one of die, tile, card, and electronic game piece.”
This recitation is generic and the Examiner has determined that such
elements are well understood, routine and conventional. Ans. 10. For the
same reasons as those discussed above in the context of claims 1 and 14, we
reject Appellant’s assertion that claim 6 requires a specific and particular
game apparatus that is novel and nonobvious. Thus, we agree with the
Examiner (Ans. 8–9) that claim 6 does not recite an element or a
combination of elements constituting an “inventive concept,” i.e., something
significantly more than the abstract idea itself, sufficient to render claim 6
patent-eligible.
Claim 8 depends from claim 1 and further recites “wherein the
method is effected electronically.” This recitation merely reflects
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application of the game rules to a particular technological environment or
field of use, i.e., electronically. The prohibition against patenting abstract
idea cannot be circumvented by attempting to limit the use of the formula to
a particular technological environment. Bilski, 561 U.S. at 610–11;
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981). We agree with the
Examiner (Ans. 8–9) that claim 6 does not recite an element or a
combination of elements constituting an “inventive concept,” i.e., something
significantly more than the abstract idea itself, sufficient to render claim 8
patent-eligible.
Claim 9 depends from claim 1 and further recites “wherein the
method is effected over the Internet.” This recitation merely reflects
application of the game rules to a particular technological environment or
field of use, i.e., over the Internet. The prohibition against patenting abstract
idea cannot be circumvented by attempting to limit the use of the formula to
a particular technological environment. Bilski, 561 U.S. at 610–11;
Diamond, 450 U.S. at 191–92. We agree with the Examiner (Ans. 8–9) that
claim 9 does not recite an element or a combination of elements constituting
an “inventive concept,” i.e., something significantly more than the abstract
idea itself, sufficient to render claim 9 patent-eligible.
Claim 12 depends from claim 1 and further recites as follows:
wherein the at least one lettered game piece is from the second
group, and the method further comprising
determining a game point value for the second point score
by using a die or dice by one of the following:
a die is rolled and shows a die face with a numeral thereon
and the value of the numeral is the second point score;
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a die is rolled and shows a die face with a numeral thereon
and the value of the second point score is the first point score
times the numeral value of the numeral;
two dice are rolled and a face of each die shows on a die
face a numeral and the combined value of the two numerals is
the second point score; and
two dice are rolled and each shows a die face with a
numeral thereon and the second point score is the first point score
times the combined numeral value of the two numerals.
The additional element here is one generic die or two generic dice.
The Examiner has determined that generic dice is well understood, routine,
and conventional. Ans. 10. For the same reasons as those discussed above
in the context of claims 1 and 14, we are not persuaded by Appellant’s
assertion that claim 12 requires a specific and particular game apparatus that
is novel and nonobvious. We agree with the Examiner (Ans. 8–9) that claim
12 does not recite an element or a combination of elements constituting an
“inventive concept,” i.e., something significantly more than the abstract idea
itself, sufficient to render claim 12 patent-eligible.
Claim 13 depends from claim 1 and further recites “wherein the game
is an improved version of an existing word game, the existing word game
being one of SCRABBLE (Trademark) game and BOGGLE (Trademark)
game.” This claim is sufficiently broad so as to require only the adoption of
certain rules of the pre-existing games and not any particular game piece
structure or game piece location structure from the pre-existing games.
Even if the same game board and game pieces from pre-existing games are
adopted, it does not support that any structure beyond what is well
understood, routine, or conventional is used. We agree with the Examiner
(Ans. 8–9) that claim 13 does not recite an element or a combination of
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elements constituting an “inventive concept,” i.e., something significantly
more than the abstract idea itself, sufficient to render claim 13 patent-
eligible.
Claim 15 depends from claim 14 and further recites “wherein the
method is effected electronically or over the Internet.” For the same reasons
discussed above in the context of claims 8 and 9, claim 15 does not recite an
element or a combination of elements constituting an “inventive concept,”
i.e., something significantly more than the abstract idea itself, sufficient to
render claim 15 patent-eligible.
Claim 16 depends from claim 14 and further recites “wherein the
game piece location structure is a container with multiple compartments for
holding a game piece, the method further comprising the players forming
words by placing lettered game pieces in at least one compartment of the
container.” As discussed above in the context of claim 16 and prong 2 if
Step 2A, the recited container with multiple compartments is generic and
does not require a specific structure. The Examiner has determined that such
generic game structure is well understood, routine, and conventional. Ans.
10. For the same reasons as those discussed above in the context of claims 1
and 14, we are not persuaded by Appellant’s assertion that claim 16 requires
a specific and particular game apparatus that is novel and nonobvious. We
note also that the Specification at page 30 refers to the pre-existing word
game BOGGLE® having a container structure, and incorporates by reference
U.S. Patent No. 8,002,280, which discloses a container with internal
compartments for holding lettered dice pieces in a word game apparatus.
Spec. 30. We, therefore, agree with the Examiner (Ans. 8–9) that claim 16
does not recite an element or a combination of elements constituting an
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“inventive concept,” i.e., something significantly more than the abstract idea
itself, sufficient to render claim 16 patent-eligible.
Claim 17 depends from claim 14 and further recites “wherein the
game piece location structure is a board with multiple locations on which a
game piece is placeable, the method further comprising the players forming
words by placing lettered game pieces on at least one location of the board.”
For the same reasons discussed above in the context of claim 3, we agree
with the Examiner (Ans. 8–9) that claim 3 does not recite an element or a
combination of elements constituting an “inventive concept,” i.e., something
significantly more than the abstract idea itself, sufficient to render claim 17
patent-eligible.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–18 101 Patent-
Ineligible
Subject Matter
1–18

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED