Ex Parte GoldblattDownload PDFPatent Trial and Appeal BoardJul 13, 201612802085 (P.T.A.B. Jul. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/802,085 05/28/2010 100776 7590 07113/2016 Gregor N Neff 489 Fifth Avenue 12th Floor New York, NY 10017 FIRST NAMED INVENTOR Vivian B. Goldblatt 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. 33192-2000 8082 EXAMINER MENDIRATTA, VISHU K ART UNIT PAPER NUMBER 3711 MAILDATE DELIVERY MODE 07/13/2016 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 VIVIAN B. GOLDBLATT Appeal2014-007077 Application 12/802,085 Technology Center 3700 Before STEFAN STAICOVICI, KEN B. BARRETT, and SEAN P. O'HANLON, Administrative Patent Judges. O'HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Vivian B. Goldblatt (Appellant) appeals under 35 U.S.C. § 134 from the Examiner's decision in the June 17, 2013 Non-Final Action ("Non-Final Act.") rejecting claims 1--4. 1 App. Br. 2. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM-IN-PART. 1 Claims 5-15 have been canceled (App. Br. 16), claims 16-18 have been allowed (id. at 2), and claims 19-21 have been withdrawn (id.). Appeal2014-007077 Application 12/802,085 SUMMARY OF INVENTION Appellant's "invention relates to game boards in which, during play, game pieces or 'tiles' are positioned at various locations on the game board by multiple players, such as in 'Scrabble,' TM Chess, Checkers, Bingo, etc." Spec. 1. Claim 1, reproduced below from page 16 (Claims Appendix) of the Appeal Brief, is representative of the claimed subject matter: 1. A game board for bearing a plurality of game pieces distributed in a plurality of game piece locations on said game board, said game board bearing indicia defining said game piece locations, said game board comprising a normally flat solid sheet of resilient plastic material with said indicia, said sheet being bendable by hand into a substantial U-shape with said game indicia on separate parts of said board being moved towards one another, and without permanent deformation so as to return due to its resilience to a flat shape when released. REFERENCES The Examiner relies on the following prior art references in rejecting the claims on appeal: Baker us 2,465,418 Mar. 29, 1949 Jackman us 3,152,806 Oct. 13, 1964 Liversidge us 4,334,680 June 15, 1982 Nicholas us 5,316,310 May 31, 1994 Bennet us 6,044,877 Apr. 4, 2000 Pelzel US 2006/0273510 Al Dec. 7, 2006 2 Appeal2014-007077 Application 12/802,085 REJECTIONS I. Claim 1 is rejected under 35 U.S.C. § 102(b) as being anticipated by Nicholas. II. Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Pelzel and Bennet. III. Claims 1-3 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jackman and Baker or Bennet.2 IV. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jackman, Baker or Bennet, and Liversidge. ANALYSIS Rejection I-Anticipation Based on Nicholas The Examiner finds that Nicholas discloses all of the elements of independent claim 1. Non-Final Act. 3. More specifically, the Examiner finds, inter alia, that Nicholas discloses a resilient game board (game mat 2)3 "with memory (see summary) bendable into a U shape (3:64) with markings ( 4) moving towards each other and returning to flat shape due to resilience upon being released (inherently)." Id. In addition to finding that Nicholas discloses a resilient game board, the Examiner also asserts that the "[!]imitations [sic] 'sheet being bendable by hand ....... return due to resilience to a flat surface' is a functional limitation and does not positively add any structure to the claimed [sic]." Id. 2 We note that although claims "1, 2, 4" are listed in the heading of the rejection (see Non-Final Act. 5), claims 1-3 are actually addressed in the body of the rejection. Therefore, we consider the Examiner's omission of claim 3 and inclusion of claim 4 a typographical error. 3 Parentheticals refer to the terminology of the cited references. 3 Appeal2014-007077 Application 12/802,085 Appellant first argues that "Nicholas merely shows a toss game mat made to have 'memory' to facilitate rolling or folding the mat into a roll to fit it into a carrying case," "[t]herefore, it is not a 'normally flat sheet of resilient plastic material which will return to a flat condition due to its resilience."' App. Br. 5 (citing Nicholas, 4:42--43). Nicholas discloses that "[i]n a most preferred embodiment the game mat 2 is constructed, extruded or molded of a flexible, resilient material having a 'memory' to facilitate rolling or folding in a carrying case and periodically extending into functional playing configuration." Nicholas, 4:39--44 (emphasis added). Furthermore, the playing configuration ofNicholas's game mat 2 is flat. See id. at 1 :8. Thus, Nicholas fairly discloses a game board (mat) that is normally flat, can be bent by hand into a curved configuration (such as a U- shape ), and will resiliently return to its flat shape when released. We, therefore, find Appellant's argument to be unpersuasive. Appellant also argues that Nicholas "does not show the removal of multiple game pieces from the mat at the end of the game to permit the start of another." App. Br. 5. This argument is unpersuasive because there is no such requirement in claim 1. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F .2d 1344, 1348 (CCP A 1982). Finally, in response to the Examiner's position regarding the functional language limitation, Appellant argues "the recited limitations in Claim 1 are ... not functional because they describe the physical characteristics of the game board which make it usable in the unique manner described in the patent application." App. Br. 6. It is well established that claims directed to an apparatus must be distinguished from the prior art in 4 Appeal2014-007077 Application 12/802,085 terms of structure rather than function, and in order to satisfy the functional limitations in an apparatus claim the prior art apparatus must be capable of performing the claimed function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Here, as the term "bendable" is an adjective, it serves as a modifier of the term "sheet," thereby describing a quality of the "sheet," namely, the capability of the claimed sheet to be bent by hand into a substantial U-shape and without permanent deformation to return to its original shape due to its resilience. As discussed above, the Examiner correctly finds Nicholas to be capable of performing the recited "being bendable" and "return due to its resilience to a flat shape" functions of claim 1. Non-Final Act. 3. Appellant has not provided persuasive evidence or technical reasoning to show otherwise. Accordingly, we find Appellant's argument to be unpersuasive. As such, for the foregoing reasons, we sustain the Examiner's rejection of claim 1 as being anticipated by Nicholas. Rejection II-Obviousness Based on Pelzel and Bennet The Examiner finds that Pelzel discloses the invention substantially as claimed, including, inter alia, a game board (game map/board 100) that is bendable and will resiliently return to its normal flat configuration upon release. Non-Final Act. 3 (citing Pelzel i-f 80, Figs. 1, 2). "The examiner takes the position that the game board sheet as shown in Pelzel had to [be] inherently resilient and [have] memory to uncurl because the sheet when 'allowed' has the tendency to unroll by itself and create hollow space for other game objects to be placed within the hollow." Id. at 4. The Examiner also asserts that the "[!]imitations [sic] 'sheet being bendable by hand ...... . 5 Appeal2014-007077 Application 12/802,085 return due to resilience to a flat surface' is a functional limitation and does not positively add any structure to the claimed [sic]." Id. The Examiner relies on Bennet to teach the use of a resilient plastic material for the game board, finding that it would have been obvious to a skilled artisan to use the "well known and commonly used memory plastic with resilience" material of Bennet for Pelzel's game board "to allow efficient unrolling/uncoiling." Id. at 4--5. The Examiner further asserts that "the selection of a known material based on its suitability for its intended use was held obvious." Id. at 5 (citing In re Leshin, 277 F.2d 197 (CCPA 1960)). Appellant first argues that Pelzel does not disclose a resilient game board. App. Br. 8. Pelzel discloses a game board that is flat when in a use position (see Pelzel, Fig. 1) and is rolled-up for storage and transport (see id. at Fig. 2, i-f 80). When in the rolled-up storage position, the board is "allowed to unrolled [sic] sufficiently to be urged against the insides of the cups" placed over each end to thereby maintain the board and cups together for transport and storage. Id. i-f 80 (emphasis added). Thus, Pelzel fairly discloses a game board that, if bent, will, through its resiliency, unroll to a flat position. Appellant's argument, therefore, is unpersuasive. Appellant next argues that the Examiner's functional language rejections are improper. App. Br. 8. We find this argument unpersuasive for the reasons discussed above-namely, Pelzel is capable of performing the recited functions. Appellant has not provided persuasive evidence or technical reasoning to show otherwise. Appellant next argues that "[t]here is no disclosure in either the Pelzel or the Benett [sic] reference which teaches, suggests, or would motivate one to combine the two references." Id. at 9. This argument is unpersuasive 6 Appeal2014-007077 Application 12/802,085 because the reason to modify or combine references need not be found in the references themselves. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 415-21 (2007) (setting forth that the motivation to modify or combine reference teachings may arise in the interrelated teachings of multiple prior art references, the effects of demands known to the design community or present in the marketplace, the background knowledge possessed by a person having ordinary skill in the art, the existence at the time of invention of a known problem for which there was an obvious solution encompassed by the claims, and common sense). Appellant also argues that "[t]he holding in the In Re Leshin case is not applicable here" because "applicant does not claim any new materials at all. Instead, the applicant claims a new use as a game board for a mechanical structure used in a distant field of endeavor." App. Br. 9-10. In the Leshin case, the Court of Customs and Patent Appeals held that "[ m ]ere selection of known plastics to make a container-dispenser of a type made of plastics prior to the invention, the selection of the plastics being on the basis of suitability for the intended use, would be entirely obvious." Leshin, 277 F .2d at 199. These facts are similar to the instant situation, as Pelzel discloses a bendable and resilient game board and the Examiner proposes to use Bennet's resilient plastic material to make Pelzel's game board. Thus, to show that the holding in Leshin is inapplicable to this case, Appellant must establish that, prior to the invention, it was not known to use a resilient plastic material to make a bendable and resilient game board. Appellant has not convincingly established this fact, and Appellant's argument is therefore unpersuasive. We additionally find Appellant's argument that the "new use as a game board" yields patentability to be unpersuasive because the claims 7 Appeal2014-007077 Application 12/802,085 are not drawn to a method of using a board game, but rather to the game board itself. It is well established that claims directed to an apparatus (such as a game board) must be distinguished from the prior art in terms of structure rather than function. See, e.g., Schreiber, 128 F.3d at 1477-78. Appellant also argues that "[t]here is no disclosure in Benett [sic], which would suggest its use with a game board or anything resembling a game board, because it is merely used to stiffen the sides of a plastic trash bag." App. Br. 9. Pelzel discloses a sheet of material that when rolled-up, will, by its resiliency, unroll somewhat to retain in place cups positioned over its ends. See Pelzel, i-f 80, Fig. 2. Bennet discloses a plastic material that returns to a "flat relaxed state after being coiled, rolled or bent." See Bennet, 2:67-3: 1. It would have been obvious to a skilled artisan to look to the teachings of Bennet's plastic material, which provides the same function. See Bennet, 2:55-3:4. We find Appellant's argument to be unpersuasive because, as discussed above, we agree with the Examiner that the selection of a similar material for the intended use (here, unrolling via its resilience) would have been obvious. See Leshin, 277 F.2d at 199. Finally, Appellant argues that "the Examiner is using hindsight when he suggests that it would have been obvious to one skilled in the art of making game boards to make it in the specific form recited in Claim 1." App. Br. 9. We disagree. In our view the Examiner articulated sufficient reasoning with rational underpinnings as to why a skilled artisan would have combined the prior art references to achieve the claimed invention. Specifically, the Examiner explained that both Pelzel and Bennet disclose sheets of material that uncurl through resiliency, so a skilled artisan would look to the resilient material of Bennet in forming the game board of Pelzel. 8 Appeal2014-007077 Application 12/802,085 Non-Final Act. 4--5. Appellant's conclusory argument fails to apprise us of error in the Examiner's rationale. Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of claim 1 as being unpatentable over Pelzel and Bennet. Rejection III-Obviousness Based on Jackman and Baker or Bennet The Examiner finds that Jackman discloses the invention substantially as defined in claim 1, including, inter alia, a game board. Non-Final Act. 5. The Examiner asserts that the "[!]imitations [sic] 'sheet being bendable by hand ....... return due to resilience to a flat surface' is a functional limitation and does not positively add any structure to the claimed [sic]." Id. The Examiner also relies on Baker as establishing that the claimed material qualities "are known to be used in making game surfaces and in order to create variation in the game [so] it would have been obvious to select any known material as desired." Id. at 6 (citing Baker, 1:27-31). As an alternative to Baker, the Examiner also finds that Bennet "teaches a resilient plastic with memory when released from [a] rolled condition relaxes to a flat condition." Id. (citing Bennet, Figs. 1, 2a-2c). The Examiner concludes that "[i]n the art area of games it is common for manufacturers to select known material to use as a choice. One of ordinary skills in art at the time the invention was made would have suggested using resilient material plastic as a choice." Id. Appellant argues, inter alia, that "it is mere hindsight to attempt to combine these references in the way the Examiner has done." App. Br. 11. We find this argument persuasive. Although the Examiner asserts that the "sheet being bendable by hand ... without permanent deformation so as to 9 Appeal2014-007077 Application 12/802,085 return due to its resilience to a flat shape when released" recitation of claim 1 to be functional language, the Examiner has not made findings that the Jackman apparatus is capable of performing these functions. See Non-Final Act. 5. Baker does not satisfy this limitation, as the Baker mat (strip 10) is formed of "felt, composition, or the like" (see Baker, 2:29-34), and, the Examiner did not make a finding that Baker discloses a resilient material. See Non-Final Act. 6. Rather, the Examiner summarily stated "it would have been obvious to select any known material as desired." Id. "However, rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). The Examiner has not articulated any reasoning with rational underpinnings as to why a skilled artisan would substitute the felt material of Baker's mat for that of Jackman's rolls, and therefore has failed to satisfy the requirements for a prima facie obviousness rejection. Nor does the Examiner's reliance on Bennet satisfy the resiliency requirement. Although Bennet discloses a resilient material, the Examiner has not presented a colorable reason with rational underpinnings why a skilled artisan would be motivated to form Jackman's rolls 50, 51 of the plastic material disclosed by Bennet. Although it may be obvious to select a material on the basis of its suitability for the intended use (see Leshin, 277 F .2d at 199), the Examiner does not propose, nor does our review of Jackman reveal, any reason why a skilled artisan would intend rolls 50, 51 to 10 Appeal2014-007077 Application 12/802,085 "return[] to [a] flat relaxed state after being coiled, rolled or bent." See Bennet, 2:66-3: 1. The Examiner has, therefore, failed to set forth a prima facie rejection, and, accordingly, we reverse the rejection of independent claim 1 as being unpatentable over Jackman and Baker or Bennet. Because claims 2 and 3 depend from claim 1, and the Examiner's application of the references to those claims does not remedy the foregoing error for claim 1, we likewise reverse the Examiner's rejection of claims 2 and 3. Claim 2 Claim 2 depends directly from claim 1 and further requires, inter alia, that the game board indicia "include a retaining structure at each of said locations to impede sideways movement of said game piece." App. Br. 16. In the Examiner's Answer, the Examiner states: Examiner also takes the position that in claim 2 the limitation " •....1 • ....1• • • I ...I • • • ;J smu iiluiCia iilC1uue a retammg stn1cture .... to impeue sideways movement" only describes a printing ("indicia" in this case) on the game board and does not add any structure to the game board surface. Accordingly limitation "the indicia include ..... " is being treated as a printed matter describing a rule of the play and not as a physical structure. Ans. 8. Appellant replies that because claim 2 recites "a retaining structure," "this language makes it clear that Claim 2 recites a physical structure." Reply Br. 2-3. We find this argument to be persuasive. Although merely including functionally unrelated printing on a substrate does not render a claimed invention patentable (see In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (citing In re Miller, 418 F.2d 1392 (CCPA 1969))), the recitation 11 Appeal2014-007077 Application 12/802,085 at issue here is structural ("retaining structure comprising barriers") and the Examiner's attempt to categorize it as being mere printing is in error. Rejection IV-Obviousness Based on Jackman, Baker or Bennet, and Liversidge Liversidge is not relied upon by the Examiner in any manner that would remedy the deficiency noted above with respect to the proposed combination of Jackman and Baker or Bennet in rendering obvious the subject matter of claim 1, from which claim 4 directly depends. The rejection of claim 4, therefore, is reversed. DECISION The Examiner's decision to reject claim 1 under 35 U.S.C. § 102(b) as being anticipated by Nicholas is affirmed. The Examiner's decision to reject claim 1under35 U.S.C. § 103(a) as being unpatentable over Pelzel and Bennet is affirmed. The Examiner's decision to reject claims 1-3 under 35 U.S.C. § 103(a) as being unpatentable over Jackman and Baker or Bennet is reversed. The Examiner's decision to reject claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Jackman, Baker or Bennet, and Liversidge is reversed. 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-IN-PART 12 Copy with citationCopy as parenthetical citation