Ex Parte Findlay et al

Patent Trial and Appeal Board

Jan 19, 2017

13861834 (P.T.A.B. Jan. 19, 2017)

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).
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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.
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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
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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
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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
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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
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