Tackett, Keith Martin.

Patent Trials and Appeals Board

Aug 28, 2020

12779855 - (D) (P.T.A.B. Aug. 28, 2020)

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.
12/779,855 05/13/2010 Keith Martin Tackett TACK/0004 9373
26290 7590 08/28/2020
PATTERSON + SHERIDAN, L.L.P.
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
PINHEIRO, JASON PAUL
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/28/2020 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):
PSDocketing@pattersonsheridan.com
pair_eofficeaction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEITH MARTIN TACKETT
____________

Appeal 2018-007679
Application 12/779,855
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.

WARNER, 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 20 and 21, which are the only pending
claims. See Appeal Br. 3; Adv. Act. 2. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). An oral hearing, scheduled for March 17, 2020, was
waived.
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as the
inventor, Keith M. Tackett. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to number place puzzles.”
Spec. ¶ 2. Claims 20 and 21, reproduced below, are the sole independent
claims and are representative of the subject matter on appeal.
20. A complete number place puzzle, comprising:
nine columns and nine rows defining eighty-one boxes
printed for placing numerals, wherein each row consists of three
triads wherein each triad is three adjacent boxes in the row; and
sufficient pre-assigned numerals selected from numerals
1-9 and printed on the eighty-one boxes to form a puzzle having
remaining empty boxes and a single solution provided that no
numeral in the single solution appears more than once in each
row and each column, and that each triad in the single solution
contains no more than one numeral from each of three distinct
groups of numerals, wherein the three distinct groups of
numerals are numerals 1-3, numerals 4-6, and numerals 7-9,
and wherein the complete number place puzzle has the
following pre-assigned numerals:
1 5 _ 3 4 7 _ _ 9;
_ 2 _ _ _ _ _ 8 _;
_ _ 3 _ _ _ 7 5 _;
9 _ _ 6 2 _ _ _ 1;
_ 8 _ _ _ _ _ 2 _;
_ _ 7 _ 8 _ 3 _ _;
_ _ _ 9 _ 4 _ _ 6;
4 _ _ _ _ 1 _ _ _;
_ _ _ _ _ _ _ _ _.

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21. A complete number place puzzle, comprising:
nine columns and nine rows defining eighty-one boxes
printed for placing numerals, wherein each row consists of three
triads wherein each triad is three adjacent boxes in the row; and
sufficient pre-assigned numerals selected from numerals
1-9 and printed on the eighty-one boxes to form a puzzle having
remaining empty boxes and a single solution provided that no
numeral in the single solution appears more than once in each
row and each column, and that each triad in the single solution
contains no more than one numeral from each of three distinct
groups of numerals, wherein the three distinct groups of
numerals are numerals 1-3, numerals 4-6, and numerals 7-9,
and wherein the complete number place puzzle has the
following pre-assigned numerals:
1 5 _ 3 _ 7 _ _ 9;
_ 2 _ _ _ _ _ 8 _;
_ _ 3 _ _ _ 7 5 _;
9 _ _ 6 2 _ _ _ 1;
_ 8 _ _ _ _ _ 2 _;
_ _ 7 _ 8 _ 3 _ _;
_ _ _ 9 _ 4 _ _ 6;
4 _ _ _ _ 1 _ _ _;
_ _ _ _ _ _ _ 4 _.

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EVIDENCE
The Examiner relies on the following evidence in rejecting the claims
on appeal:
Internet Post from user dukuso on The New Sudoku Players’ Forum,
dated Oct. 6, 2005 (“Dukoso”).

REJECTIONS
The following rejections are before us for review:
I. Claims 20 and 21 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Adv. Act. 2–4.
II. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dukoso. Id. at 4–5.

PROCEDURAL NOTE
The Patent Trial and Appeal Board previously heard and decided an
appeal in this application, issuing a Decision on September 2, 2015
(“Previous Decision”), in which a rejection of previously-pending
independent claim 11 as being directed to patent-ineligible subject matter
was affirmed. We note that present claims 20 and 21 differ from previously-
pending independent claim 11 only in the provision of “wherein the
complete number place puzzle has the following pre-assigned numerals,”
along with the specific starting numbers for the puzzle. Claims 20 and 21
also differ from one another only in two entries for the specific starting
numbers for the puzzle, which it is noted share the same single solution.

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ANALYSIS
Rejection I – Claims 20 and 21 as being directed to
patent-ineligible subject matter
Each of claims 20 and 21 recites “[a] complete number place puzzle,”
that includes “nine columns and nine rows defining eighty-one boxes printed
for placing numerals, wherein each row consists of three triads wherein each
triad is three adjacent boxes in the row,” and “sufficient pre-assigned
numerals selected from numerals 1-9 and printed on the eighty-one boxes to
form a puzzle having remaining empty boxes and a single solution provided
that no numeral in the single solution appears more than once in each row
and each column, and that each triad in the single solution contains no more
than one numeral from each of three distinct groups of numerals, wherein
the three distinct groups of numerals are numerals 1-3, numerals 4-6, and
numerals 7-9,” and also includes starting numbers for the puzzle “wherein
the complete number place puzzle has the following pre-assigned numerals,”
followed by one of two possible sets of starting numbers. Appeal Br.,
Claims App.
The Examiner rejects claims 20 and 21 under 35 U.S.C. § 101,
concluding that the “claimed subject matter [does] not fall into one of the
four statutory categories.” Adv. Act. 2. Section 101 provides that:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” If the subject matter of a claim fails to fall within
one of these statutory categories, namely, process, machine, manufacture or
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composition of matter, it is not patentable. In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007); see Adv. Act. 2 (citing same).
For all categories except process claims, the eligible subject
matter must exist in some physical or tangible form. To qualify
as a machine under section 101, the claimed invention must be a
“concrete thing, consisting of parts, or of certain devices and
combination of devices.” Burr v. Duryee, 68 U.S. 531, 570
(1863). To qualify as a manufacture, the invention must be a
tangible article that is given a new form, quality, property, or
combination through man-made or artificial means. Diamond v.
Chakrabarty, 447 U.S. 303, 308 (1980). Likewise, a
composition of matter requires the combination of two or more
substances and includes all composite articles. Id.
Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344,
1348–49 (Fed. Cir. 2014); see Adv. Act. 2–3 (citing same). “The Supreme
Court and [our reviewing] court have consistently interpreted the statutory
term ‘process’ to require action.” Nuijten, 500 F.3d at 1355; see Adv. Act. 4
(citing same).
The “number place puzzle” recited in each of claims 20 and 21 is a
mathematical structure or numerical arrangement having a single solution
consisting of 9×9 Latin Squares with entries drawn from the whole numbers
between 1 and 9. Appellant urges that the claimed number place puzzle has
“a new and non-obvious relationship to the substrate.” Appeal Br. 5. Stated
in terms more familiar to the jurisprudence of § 101, Appellant’s argument is
to the effect that the claimed number puzzle is tied to a particular machine,
manufacture, or composition of matter in a novel or non-obvious manner.
The Examiner correctly concludes that claims 20 and 21 do not recite
any particular “substrate,” that is, any machine, manufacture, or composition
of matter. Ans. 2–3. Appellant’s Specification teaches representing a
solution to a number place puzzle (which is itself a number place puzzle) in
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electronic form using a data structure corresponding to a two-dimensional
matrix. See Spec. ¶¶ 36–38. This disclosure provides that claims 20 and 21
are not limited so as to require embodiment of the recited number place
puzzle in any particular physical or tangible form.
Even if the claims were read to imply that the recited boxes and pre-
assigned numerals are to be “printed” on some substrate (e.g., paper or an
electronic medium), the Examiner is still correct that merely printing or
displaying characters (boxes and numerals) does not result in any new or
non-obvious functional relationship with a substrate on which they simply
appear. Ans. 2–3; see also Reply Br. 2 (where Appellant acknowledges that
number place puzzles “are typically printed on paper or computer screens,
and that Appellant “does not assert novelty in selection of the type of
substrate,” which significantly undermines any assertion of a functional
relationship between the displayed characters and any suitable substrate on
which they appear). In sum, we are not apprised of error in the Examiner’s
conclusion that the number place puzzle recited in each of claims 20 and 21
is not a machine, manufacture, or composition of matter.
Further, the Examiner is correct that claims 20 and 21 do not recite
any steps for creating or solving the claimed number place puzzle. Ans. 4.
Lacking any action, that is, any recitation of method steps, the claims do not
claim a process. Since the number place puzzles of claims 20 and 21 do not
fall into any statutory category listed in § 101, we sustain the Examiner’s
rejection of the claims.

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Rejection II – Claims 20 and 21 as unpatentable over Dukoso
Because our decision to sustain the Examiner’s rejection of the claims
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter,
discussed above, is dispositive as to the patentability of claims 20 and 21
(see 37 C.F.R. § 41.50(a)), we do not reach the Examiner’s additional
rejection of the claims under 35 U.S.C. § 103(a) as being unpatentable over
Dukoso for the same reasons as in the Previous Decision. In short, no
meaningful result would come from an attempt to review an application of
prior art to an ineligible concept that does not exist in any physical form.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 20 and 21
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
We DO NOT REACH the Examiner’s decision rejecting claims 20
and 21 under 35 U.S.C. § 103(a) as being unpatentable over Dukoso.
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).

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CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
20, 21 101 Eligibility 20, 21
20, 21 103(a) Dukoso
Overall
Outcome
20, 21

AFFIRMED