Ex Parte Findlay et alDownload PDFPatent Trial and Appeal BoardJan 19, 201713861834 (P.T.A.B. Jan. 19, 2017) Copy Citation 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. 13/861,834 04/12/2013 James Bruce Hampton Findlay KHC0101PUSA1 5815 22045 7590 01/23/2017 RROOKS KTTSHMAN P C EXAMINER 1000 TOWN CENTER COLLINS, DOLORES R TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 01/23/2017 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): docketing @brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES BRUCE HAMPTON FINDLAY and CAROLYN JEAN HAMMOND Appeal 2015-002716 Application 13/861,834 Technology Center 3700 Before STEFAN STAICOVICI, BRANDON J. WARNER, and FREDERICK C. LANEY, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James Bruce Hampton Findlay and Carolyn Jean Hammond (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—3 and 6—11.1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. i Claims 4 and 5 are canceled. See Final Act. 2 (mailed Mar. 12, 2014). Appeal 2015-002716 Application 13/861,834 INVENTION Appellants’ “invention relates to ‘card games’ . . . that may be played with tokens which indicate values.” Spec. 12. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A set of playing tokens comprising: a sub-set of numeric playing tokens, each playing token of the sub-set having: a first numeric value disposed on a first region of the playing token and having exactly a first digit and a second digit, the first numeric value being in the range of “10” to “99” inclusive, and a second numeric value disposed on a second region of the playing token and having exactly one digit, wherein the second numeric value is equivalent in value to the second digit of the first numeric value. REJECTIONS I. The Examiner rejected claims 1—3 and 6—10 under 35 U.S.C. § 103(a) as being unpatentable over Latell (US 7,367,564 B2, iss. May 6, 2008). II. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Latell and Official Notice. III. The Examiner rejected claims 1—3 and 6—11 under the ground of non-statutory, obviousness-type double patenting as being unpatentable over the claims of Findlay (US 8,511,683 B2, iss. Aug. 20, 2013). 2 Appeal 2015-002716 Application 13/861,834 ANALYSIS Rejection I Claims 1 and 6—10 Appellants have not presented arguments for the patentability of claims 6—10 apart from claim 1. See Appeal Br. 4—7 (filed Sept. 11, 2014). Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 6—10 standing or falling with claim 1. The Examiner finds that Latell discloses numerical playing cards (tokens) including first and second numeric values, “wherein the second numeric value is derived from the digit or digits which represent that first numeric value.” See Final Act. 3 (citing Latell, Abstract, Fig. 1). The Examiner further finds that, although “Latell fails to explicitly teach the specific indicia as claimed,” nonetheless, because “[i]t has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability.” Id. (citing In re Gulackl 03 F.2d 1381, 1385 (Fed. Cir. 1983). The Examiner takes the position that “there is no novel and unobvious functional relationship between the printed matter e.g. physical trait indicia, numbers, suits etc. and the substrate e.g. playing card, which is required for patentability.” Id. In response, Appellants argue that “Latell does not disclose the claimed ‘first numeric value’ (two-digits) along with a ‘second numeric value’ (one-digit).” Appeal Br. 4—5. According to Appellants, each of Latell’s cards “is associated with one single value that is represented in various manners (i.e., ‘8’, ‘eight’, ‘AAAAAAAA’).” Id. at 4. 3 Appeal 2015-002716 Application 13/861,834 Appellants further take the position that “[t]he Examiner’s use of In re Gulack is overreaching and incorrect.” Id. at 5. According to Appellants, similar to In re Gulack, which . . require[s] a particular sequence of digits to be displayed’ on the band,” independent claim 1 “require[s] such particularity regarding the relationship between the first and second numeric values on each playing token.” Id. (emphasis omitted). Appellants explain that, because the “second numeric value has exactly one digit that is equivalent in value to the second digit of the first numeric value,” “based on the value of the first numeric value, the precise value of sequential second numeric values can be determined.” Id. at 5—6 (emphasis omitted). Thus, Appellants contend that, similar to In re Gulack, where “each digit resid[es] in a unique position with respect to every other digit in an endless loop,” in instant independent claim 1, A functional relationship between the numeric values and the playing token is provided by the relationship between regions of the playing token having numeric values that can be specifically determined based on the numeric values in another region of the playing token. In other words, the different regions of the playing token include different values in a particular sequence that is not disclosed or obvious in view of the prior art. Each playing token having two different regions with two different respective values provides a new and nonobvious set of playing tokens for various games. Id. at 6 (emphasis omitted); see also Reply Br. 2 (filed Dec. 5, 2014). We are not persuaded by Appellants’ arguments because when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 703 F.2d at 1385. It is well settled that to show a new and unobvious functional relationship, it has to be shown that 4 Appeal 2015-002716 Application 13/861,834 the printed matter would not achieve its purpose without the substrate and the substrate without the printed matter would similarly be unable to produce the desired result. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). In contrast to In re Gulack, where the printed matter would not achieve its educational purpose without the “endless” feature of the band, and the band without the printed matter would similarly be unable to produce the result, the printed matter in this case (first and second numerical values) does not depend on any feature of the tokens (cards) and the tokens (cards) do not depend on the printed matter. In other words, although we appreciate Appellants’ position that there is a “direct relationship” between first and second numerical values, nonetheless, the depiction of first and second numerical values on the tokens (e.g., cards) of claim 1 does not exploit, or interrelate with, the underlying structure of the tokens (e.g., cards) of independent claim 1. See Reply Br. 2; see also Appeal Br. 6. Hence, the printed matter (first and second numerical values) does not depend on the claimed “playing tokens” and the “playing tokens” do not depend on the claimed printed matter. Moreover, even though Appellants argue that the printed matter is functionally related to the cards because “a player is able to deduce . . . how many particular one-digit numbers remain in the sub-set after seeing a plurality of playing tokens being played” (see id. at 5—6 (emphasis added)), this argument is unpersuasive because the substance of the printed matter cannot impart patentability as it is “useful and intelligible only to the human mind.” See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (citing In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969). Lastly, we note that Appellants’ reference to US Patents 5,568,924; 5,863,040; 7,810,815; 8,651,869; and 8,678,392, as evidence that the 5 Appeal 2015-002716 Application 13/861,834 “claimed subject matter resides in the printed matter itself’ (see Appeal Br. 7, footnote 1) is not persuasive because attorney argument cannot take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Appellants fail to persuasively explain how the claims of each of the noted US patents relates to the claims at issue in the instant case. It is well established that patentability decisions involving claims in other patents or patent applications are not necessarily germane to issues in another patent application. See In re Gyurik, 596 F.2d 1012, 1016 (CCPA 1979) (“Each case is determined on its own merits; allowed claims in other applications or patents are not considered in reviewing specific rejections of specific claims.”). In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Latell. Claims 6— 10 fall with claim 1. Claims 2 and 3 Claim 2, which depends from independent claim 1, adds the limitation that “no two tokens in the sub-set indicate the same first numeric value.” Appeal Br., Claims App. 1. Claim 3, which depends from claim 2, recites that “the sub-set of playing tokens comprises 90 playing tokens.” Id. Appellants argue that “[cjlaims 2 and 3 even further define the content or ‘sequence’ of the one-digit and two-digit numbers that are claimed in claim 1.” Appeal Br. 7 (emphasis added). We are not persuaded by Appellants’ argument because Appellants are advancing patentability based upon the content printed on the claimed “playing tokens.” However, as we have discussed above, such content is not 6 Appeal 2015-002716 Application 13/861,834 afforded patentable weight “absent a new and unobvious functional relationship between the printed matter and the substrate.” In re Bernhart, 417 F.2d at 1399. Therefore, for the foregoing reasons, we also sustain the rejection of claims 2 and 3 as unpatentable over Latell. Rejection II Appellants do not set forth any substantive arguments with respect to the rejection of claim 11. See Appeal Br. 4—7. Accordingly, for the same reasons as discussed supra, we sustain the rejection under 35 U.S.C. § 103(a) of claim 11 as unpatentable over Latell and Official Notice. Rejection III The Examiner’s rejection under the ground of non-statutory, obviousness-type double patenting over the claims of Findlay is DISMISSED as the Terminal Disclaimer, filed June 11, 2014, has been accepted. See Ans. 2 (mailed Oct. 6, 2014); see also Final Act. 5—8. SUMMARY The Examiner’s decision to reject claims 1—3 and 6—11 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)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation