Ex Parte Goldblatt

Patent Trial and Appeal Board

Jul 13, 2016

12802085 (P.T.A.B. Jul. 13, 2016)

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 at 2), and claims 19-21 have been withdrawn (id.).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
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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.
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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
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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 ...... .
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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
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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
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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.
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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
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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
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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
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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
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