Ex Parte Grinold

Patent Trial and Appeal BoardAug 29, 2016

13505462 (P.T.A.B. Aug. 29, 2016)

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. 13/505,462 05/02/2012 Itzhak Grinold 4605/17 2264 108796 7590 08/29/2016 The IP - Law Office of Guy Levi 820 Albermarle St. Wyckoff, NJ 07481 EXAMINER MENDIRATTA, VISHU K ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 08/29/2016 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 ITZHAK GRINOLD ____________________ Appeal 2014-008707 Application 13/505,4621 Technology Center 3700 ____________________ Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Itzhak Grinold (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1–9, 11, and 132. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 According to Appellant, the real party in interest is the inventor, Itzhak Grinold. Appeal Br. 3 (filed February 10, 2014). 2 Claims 10, 12, 14, and 15 are cancelled and claims 16–19 are withdrawn from consideration. Id. at 5. Appeal 2014-008707 Application 13/505,462 2 SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention relates to “board games involving magnetic play pieces to be attached to a cardboard to obtain a three dimensional scenery.” Spec. 1, ll. 4–6. Claim 1, the sole independent claim on appeal, is representative of the claimed invention, and reads as follows: 1. A game comprising: (a) at least one actively attractive cardboard; (b) one or more folding borders dividing the attractive cardboard to two or more mutually alignable portions, the one or more folding borders enabling folding the attractive cardboard and placing it on a substantially horizontal plane such that at least one of the mutually alignable portions being vertically disposed relative to the horizontal plane; (c) a plurality of removable play pieces attractable to the attractive cardboard; (d) at least several removable play pieces of the plurality of removable play pieces being attractable to at least one of the removable play pieces; (e) a booklet having a plurality of illustrated scenarios for reproduction on the actively attractive cardboard, each illustrated scenario illustrating a plurality of items included in a plurality of respective removable play pieces; and (f) the plurality of removable play pieces and the attractive cardboard being adapted to allow reproduction of at least one illustrated scenario on a vertically disposed portion of the cardboard, the reproduction including placing at least three play pieces on the vertically disposed portion without falling downward despite gravitation, a first piece being placed on the vertically disposed portion, a second play piece being placed on Appeal 2014-008707 Application 13/505,462 3 the first play piece, and a third playing piece being placed on the second play piece. THE REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1–3, 5–9, and 11 under 35 U.S.C. § 103(a) as being unpatentable over Gowri (US 2010/0066017 A1, pub. Mar. 18, 2010) and Ekberg (US 2005/0042584 A1, pub. Feb. 24, 2005).3 II. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Gowri, Ekberg, and Amos (US 3,952,133, iss. Apr. 20, 1976).4 III. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Gowri, Ekberg, and Burrows (US 6,217,405 B1, iss. Apr. 17, 2001). ANALYSIS Claim 1 recites, in part, “(d) at least several removable play pieces of the plurality of removable play pieces being attractable to at least one of the removable play pieces.” 3 The Examiner also separately rejected claims 7–9 and 11 under 35 U.S.C. § 103(a) as being unpatentable over Gowri and Ekberg. See Final Act. 4. Because each of claims 7–9 and 11 is rejected based on Gowri and Ekberg in Rejection I, we do not separately address this additional rejection of claims 7–9 and 11. 4 Because claim 4 depends from independent claim 1, we view the Examiner’s omission of Ekberg in the heading of this rejection as a typographical error. Appeal 2014-008707 Application 13/505,462 4 The Examiner finds that Gowri discloses a plurality of magnetically attractable removable play pieces 28, 29 that are attractable to at least one removable play piece. Final Act. 2 (citing Gowri, paras. 36, 37; Fig. 1). Appellant asserts that Gowri’s “Fig. l fails to disclose attraction between game pieces 29” and that “Gowri teaches away of attraction between game pieces 29 in the framework of a game,” because “game pieces 29 are not thin flat elements, as shown in Fig. 1, and they have magnets 31 in their lower part, they are not adapted to attract each another such as to be disposed one game piece on another.” Br. 10–11 (citing Gowri, para. 44). We do not find Appellant’s arguments to be persuasive because Appellant does not adequately explain why the Examiner’s interpretation of Gowri’s activity boards 28 as the recited play pieces is not reasonable. See Final Act. 2. Gowri discloses a plurality of different activity boards 28 that are magnetic and are used with magnetic activity pieces 29 as part of playing a game. Gowri, paras. 40, 43, and 44; see also Final Act. 2. As such, Gowri discloses activity game pieces 29 magnetically disposed on activity boards 28. Appellant does not point to any definition in the Specification or provide any other explanation as to why the recited play pieces would exclude Gowri’s activity boards 28. Moreover, Gowri discloses that the magnetic attraction is sufficiently strong that “the components of the device, when engaged upon the planar surface of the case, are prevented from dislodging or moving.” Id., para 14. Although we appreciate that there might be a stronger magnetic attraction between thin flat elements, Appellant does not adequately explain why a magnetic attraction that prevents dislodging or moving would not allow stacking of one piece on another. Appeal 2014-008707 Application 13/505,462 5 Furthermore, Appellant does not point to any passage in Gowri that “criticize[s], discredit[s] or otherwise discourage[s]” a magnetic attraction between game pieces, and as such, Gowri does not teach away from such a configuration. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, we note that paragraph 44 of Gowri, to which Appellant alludes in the Appeal Brief (see Br. 11), discusses playing a game of checkers and an artisan must be presumed to know something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). In this case, a person of ordinary skill in the art would readily understand that the game of checkers requires the capability of stacking two game pieces to form a “King” checker. Claim 1 also recites, in part, “(e) a booklet having a plurality of illustrated scenarios for reproduction on the actively attractive cardboard, each illustrated scenario illustrating a plurality of items included in a plurality of respective removable play pieces.” The Examiner finds that Gowri discloses an actively magnetically attractive cardboard 13 and a plurality of removable play pieces 28, 29, but does not disclose a booklet having a plurality of illustrated scenarios for reproduction on the actively attractive cardboard. Final Act. 2 (citing Gowri, paras. 7, 36, and 37; Fig. 1). The Examiner relies on Ekberg as teaching “a game comprising a story scenario book (22).” Id. The Examiner concludes that a person of ordinary skill in the art would have provided Ekberg’s “scenario booklet to make the game playing [of Gowri] educational and attractive to users.” Id. According to the Examiner, the use of the term “illustrated” is an ‘intended use limitation[]” and the difference Appeal 2014-008707 Application 13/505,462 6 between Ekberg’s booklet and the recited booklet is “only in [the] printed matter on the booklet.” Final Act. 2. Appellant argues that Ekberg discloses a story “described in a text and/or separated object images,” and that Ekberg has “no illustrated scenario having several items mutually interacting with one another.” Br. 11 (citing Ekberg, para. 5; Figs. 1 and 2) (emphasis added). Appellant further asserts that the recited booklet is printed matter that has a functional relationship with the product because element “(e) limits the booklet of scenarios by ‘each illustrated scenario illustrating a plurality of items included in a plurality of respective removable play pieces.’” Id. at 12. Appellant thus argues that “there is close connection between the plurality of the game pieces and the scenarios in the booklet, and the coordination of these two features is far from being obvious and necessitates an inventive step.” Id. We are not persuaded by Appellant’s position because regardless of whether there is a functional relationship between the printed matter and the booklet of Ekberg, we treat element (e) as a positive limitation that is satisfied by the combined teachings of the references. Specifically, Ekberg discloses a book 22 having first markings 26 that include “small illustrations or icons that correspond to very similar larger illustrations” denoted by second markings 42 on a set of cards 34. Ekberg, paras. 19, 21. As the story in Ekberg’s booklet is read by a player, markings 26 will be encountered and will prompt the reader to place card 34 having corresponding marking 42 on board 12. Id. para. 24. As such, the player reproduces illustrations 26 on board 12 using cards 34 having illustrations 42. Therefore, there is as much correlation between the book and the board game of Ekberg as there is in Appellant’s game. Appeal 2014-008707 Application 13/505,462 7 Appellant’s contention that, in claim 1, there are several pieces illustrated that interact together in a single illustration is sufficient to structurally define over Ekberg, is not well taken. The Examiner concluded that “[i]n order to convey a desired message it would have been obvious to print any suitable indicia, symbol, character, words, sentences or any other matter on the booklet.” Final Act. 3. Consistent with that conclusion and based on the disclosure of Gowri, if the book of Ekberg were to depict a game of checkers (see Br. 11, citing to paragraph 44 of Gowri), the illustrated scenario in a booklet in the game of Gowri, as modified by Ekberg, would look like Gowri’s Figure 1, which includes a plurality of items 28, 29 and a plurality of removable play pieces 28, 29 that interact with one another, for example, in a game of checkers. In view of this, we are not persuaded of Examiner error. Claim 1 further recites, in part, reproducing at least one illustrated scenario by “a first piece being placed on the vertically disposed portion, a second play piece being placed on the first play piece, and a third playing piece being placed on the second play piece.” The Examiner’s position is that the “Gowri game surface is fully capable of demonstrating limitations ‘placing at least three pieces on the vertically disposed portion without falling despite gravitation.’” Ans. 6. The Examiner concludes that “Gowri teaches a magnetic surface (12) and magnetic pieces (29, 45, 46, 47) that are clearly capable of being attracted singly or in stacked position, in that they will be functionally disposed without falling.” Id. Appeal 2014-008707 Application 13/505,462 8 Appellant asserts that the Examiner “fails to cite a teaching by either Gowri or Eckberg” of “at least three play pieces on the vertically disposed portion without falling downward despite gravitation.” Br. 11. We are not persuaded by Appellant’s position because as the Examiner correctly finds, Gowri’s activity board 28 is magnetically placed on (cardboard) surface 12, and then magnetic activity pieces 29 are placed upon activity board 28. See Ans. 6; see also Gowri, Figure 1. Although we appreciate that Gowri fails to explicitly disclose stacking activity pieces 29, nonetheless, Gowri discloses a game of checkers in paragraph 44, to which Appellant alludes (see Br. 11), and thus, a person of ordinary skill in the art would have readily known that checkers (activity pieces 29) are placed on top of each other in order to crown a checker to make it a King checker. Hence, as Gowri’s activity board 28 and activity pieces 29 magnetically interact with each other, in a game of checkers, they are adapted to have at least three play pieces (one activity board 28 and two activity pieces 29) disposed vertically without falling due to the effect of gravitation, as called for by claim 1. Accordingly, for the foregoing reasons, we sustain the rejection under 35 USC § 103(a) of claim 1 as being unpatentable over Gowri and Ekberg. Appellant does not present any arguments with respect to the rejection of claims 2–9, 11, and 13. See Br. 9–12. Therefore, we likewise sustain the rejections under 35 USC § 103(a) of claims 2, 3, 5–9, and 11 as being unpatentable over Gowri and Ekberg; of claim 4 as being unpatentable over Gowri, Ekberg, and Amos; and of claim 13 as being unpatentable over Gowri, Ekberg, and Burrows. See In re Berger, 279 F.3d 975, 984– 985 (Fed. Cir. 2002). Appeal 2014-008707 Application 13/505,462 9 DECISION The decision of the Examiner to reject claims 1–9, 11, and 13 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)(1)(iv). AFFIRMED