Ex Parte Hansen et al

Patent Trial and Appeal Board

Aug 29, 2017

13156507 (P.T.A.B. Aug. 29, 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.
13/156,507 06/09/2011 Dale Hansen HAN-10002/29 5204
25006 7590 08/31/2017
DTNSMORF fr SHOHT T T P
EXAMINER
900 Wilshire Drive COLLINS, DOLORES R
Suite 300
TROY, MI 48084 ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
MichiganPatTM @ dinsmore. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE HANSEN and BRYCE HANSEN
Appeal 2016-000401
Application 13/156,507
Technology Center 3700
Before THOMAS F. SMEGAL, ERIC C. JESCHKE, and
GORDON D. KINDER, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dale Hansen and Bryce Hansen (“Appellants”) seek review under
35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final
Office Action dated August 1, 2014 (“Final Act.”), rejecting claims 18—34.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-000401
Application 13/156,507
BACKGROUND
The disclosed subject matter “relates generally to role-playing games
(RPGs) and, in particular to a board game that uses character dice and other
features and rules to enhance randomness and skill.” Spec. 11. Claims 18
and 26 are independent and reproduced below1:
18. A game played in rounds, comprising:
a plurality of dice, each die representing a
character involved the game, each die having at
least one face side and a plurality of roll sides;
each face side presenting character
information, the character information at least
including the level of the character represented by
that die; and
wherein each roll side includes roll
information regarding the round of the game and
actions which the character represented by that die
may take during a particular round.
26. A method of playing a game, comprising the
steps of:
providing the dice of claim 18 along with a
map and map pieces representing the dice;
each player choosing a subset of the dice until
the level reaches a predetermined value for each
player;
placing the map pieces representing the dice
chosen by the players onto the map; and, for each
round of the game:
each player choosing at least one character
die to roll, and based upon the result of the roll:
1 The identifying letters at the beginning of the three substeps of the
last clause of claim 26 have been revised from “d”, “e”, “f ’ to “a”, “b”, “c.”
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([a]) moving the map piece
associated with that die,
([b]) taking an action, or
([c]) neither (a) nor (b).
REJECTIONS
1. Claims 18—25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Macrory (US 4,120,503, issued Oct. 17, 1978).
2. Claims 26, 31, and 32 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Macrory and Kenney (US 6,938,899 B2, issued Sept. 6,
2005).
3. Claim 27 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Macrory, Kenney, and Salerno (US 5,046,743, issued
Sept. 10, 1991).
4. Claim 33 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Macrory, Kenney, and Fowler (US 2010/0072702 Al,
published Mar. 25, 2010).
5. Claim 34 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Macrory, Kenney, and official notice.
6. Claims 26—34 stand rejected under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter.
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DISCUSSION
Rejection 1 — The rejection of claims
18—25 under 35 U.S.C. § 103(a)
For this Rejection, Appellants argue the patentability of independent
claim 18 and do not separately argue claims 19—25, which depend from
claim 18. Appeal Br. 3—5 (§ B).2 Thus, we address claim 18, with claims
19-25 standing or falling with claim 18. See 37 C.F.R. § 41.37(c)(l)(iv)
(2014). For claim 18, the Examiner identified various aspects of Macrory
for certain limitations (including the dice shown in Figure 5), but stated that
“Macrory fails to be explicit regarding his dice character being one of a
character involved [in] the game.” Final Act. 5. The Examiner then stated,
“[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
Gulack, 703 F.2d 1381 (Fed. Cir. 1983)); see also Ans. 3 (stating, as to
claim 18, that “Examiner gives no patentable weight to the printed matter
since there is no novel and unobvious functional relationship between the
printed matter and the substrate which is required for patentability”).
First, Appellants contend that “the dice of Macrory have no
‘characters. ”’ Appeal Br. 4. Appellants also contend that “[e]ven if
Macrory were modified to include ‘character dice,’ not all of Appellants’
2 Although Appellants state that “[cjlaims 19—25 include numerous
other limitations not even mentioned by the Examiner” (Appeal Br. 5), we
do not consider this a separate argument as to these claims because
Appellants merely state that the Examiner erred without explaining why.
See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); see
also 37 C.F.R. § 41.37(c)(l)(iv) (2014) (“The arguments shall explain why
the examiner erred as to each ground of rejection contested by appellant.”).
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claim limitations would be satisfied” because claim 18 requires that
“character information at least includes the level of the character represented
by that die, and each roll side includes roll information regarding the round
of the game and actions which the character represented by that die may take
during a particular round.” Id. at 5. According to Appellants, “[n]one of
this is suggested by Macrory.” Id.
We are not apprised of error based on this argument. As an initial
matter, we understand Appellants’ statement that “the dice of Macrory have
no ‘characters ”’ (Appeal Br. 4) and the reference to “character dice” (id. at
5) to relate to the limitation “each die representing a character involved [sic
— in] the game” (id. at 9 (Claims App.)).3 Here, however, the Examiner has
not given patentable weight to that limitation, or the other two limitations
referenced by Appellants—i.e., “the character information at least including
the level of the character represented by that die” and “each roll side
includes roll information regarding the round of the game and actions which
the character represented by that die may take during a particular round.”
See Ans. 8 (“Examiner is therefore giving no weight to the indicia on
[Appellants’] dice.”). For the reasons below, we agree with the Examiner’s
position on this issue.
To be given patentable weight, recited printed matter must have a new
and nonobvious functional relationship to the substrate. See In re Gulack,
703 F.2d 1381, 1386 (Fed. Cir. 1983) (stating that, when dealing with
printed matter, “the critical question is whether there exists any new and
3 We understand the requirement that “each die represents] a
character involved [sic — in] the game” to manifest in the “character
information” presented by each die.
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unobvious functional relationship between the printed matter and the
substrate”). We first assess whether there is a functional relationship at all
between the recited printed matter and the substrate in claim 18. On this
issue, the Examiner stated “mere support by the substrate for the printed
matter is not the kind of functional relationship necessary for patentability.”
Ans. 7. Appellants argue that the recited “information is more [than]
decorative printed matter” because “[e]ach face side presents] character
information” and “each roll side includes roll information.” Reply Br. 2—3.
Using a substrate merely to present information using printed matter,
however, does not rise to the level of the required functional relationship.
See, e.g., In re Bryan, 323 F. App’x 898, 901 (Fed. Cir. 2009) (determining
that printed matter on cards in a board game is not “functionally related to
the substrate”).
We turn now to whether any functional relationship that does exist
between the recited printed matter and the substrate is a new and nonobvious
one.4 On this issue, the Examiner stated that “there is no novel and
unobvious functional relationship between the printed matter and the
substrate which is required for patentability.” Ans. 7—8. We agree. To the
extent a functional relationship does exist between the printed matter and
substrates at issue, the relationship between the “information” and the
“side[s]” in claim 18 is the same relationship as between the “markings” and
the sides of the dice in Figure 5 of Macrory. See Macrory, col. 1,11. 18—34
4 For example, Appellants’ arguments as set forth above (see Reply
Br. 2—3), could be understood to argue that a functional relationship exists
because the “information” provided on each “side” of the “dice” in claim 18
is only relevant when that side faces upward after the die is rolled.
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(cited at Final Act. 5). In both, the printed matter provides information
relevant when that side of the die faces upward after the die is rolled.
We turn now to the argument that it is “unwarranted and unfair insofar
as the Examiner duly considers the ‘indicia’ of the prior art while
disregarding the ‘indicia’ of Appellants]” and that, “[wjithout Macrory’s
indicia, Macrory’s invention would be rendered inoperable.” Reply Br. 2.
The Examiner does not, however, (1) rely on the indicia on the sides of the
dice in Macrory to address any limitation in claim 18 or (2) propose to
modify or remove the indicia on the sides of the dice in Macrory to address
any limitation in claim 18. See Final Act. 5, Ans. 3, 7—8. Further, the
contention that it is “unfair” that, under the printed matter doctrine, the
limitations at issue are not entitled to patentable weight does not demonstrate
error in the Examiner’s application of the law. For these reasons, we are not
apprised of error in the Examiner’s position that the limitations at issue are
not entitled to patentable weight.
Second, Appellants assert error in the reasoning statement provided in
the original statement of the Rejection, in which the Examiner stated “[i]n
view of the teaches [sic — teachings] of In re Gulack, [i]t would have been
obvious to use any printed matter desired or expedient to game play to add
excitement to game play.” Final Act. 5—6. Appellants argue that
‘“[e]xcitement’ is entirely subjective” because “[w]hat might be more
exciting to one player may be less exciting to another.” Appeal Br. 4.
We are not apprised of error based on this argument. In the current
statement of the Rejection of claim 18, the Examiner does not provide a
reasoning statement because the Examiner does not propose to modify
Macrory or combine its teachings with other teachings. See Ans. 3.
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Third, Appellants argue that the dice disclosed in Macrory “are
required to play Macrory’s game” because “[wjithout black/red faces,
Macrory’s chance cards could not be selected” and “[wjithout a spot die,
instructions could not be determined.” Appeal Br. 4, 5; see also Macrory,
Fig. 5, col. 2,11. 19-27 (discussing the two dice disclosed). Appellants then
state (1) “[i]f a proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification” (citing In re
Gordon, 733 F.2d 900 (Fed. Cir. 1984)) and (2) “[i]f the proposed
modification or combination of the prior art would change the principle of
operation of the prior art invention being modified, then the teachings of the
references are not sufficient to render the claims prima facie obvious” (citing
In re Ratti, 270 F.2d 810 (CCPA 1959)). Appeal Br. 5.
We are not apprised of error based on this argument because, as noted
above, in the current statement of the Rejection of claim 18, the Examiner
does not propose to modify Macrory or combine its teachings with other
teachings. See Ans. 3.
For the reasons set forth above, we sustain the rejection of
independent claim 18 as unpatentable over Macrory. Claims 19—25 fall with
claim 18.
Rejection 2 — The rejection of claims 26,
31, 32 under 35 U.S.C. § 103(a)
Independent claim 26 recites “each player choosing a subset of the
dice until the level reaches a predetermined value for each player.” Appeal
Br. 10. In the Rejection, the Examiner does not address this limitation. See
Final Act. 8; Ans. 4.
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Appellants argue that “[e]ven if Macrory were modified by Kenn[e]y,
not all of Appellants’ claim limitations [in claim 26] would be satisfied.”
Appeal Br. 6. Appellants then set forth the limitation at issue (among other
limitations) and state that “[n]one of this is suggested by the cited art.” Id. at
6—7. For this reason (among other asserted reasons), Appellants argue that
“the Examiner has failed to establish aprima facie case that claims 26 and
31—32 are obvious over Macrory in view of Kenn[e]y.” Id. at 7. In the
Answer, the Examiner does not address the limitation set forth in the prior
paragraph. See Ans. 7—10.
The Patent and Trademark Office fails to carry its procedural burden
of establishing a prima facie case ‘“when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(quoting Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)); see also
35 U.S.C. § 132(a) (“Notice of Rejection”). We agree with Appellants that
the Examiner has not provided sufficient explanation to present a prima facie
case as to claim 26 in this Rejection because both the Final Office Action
and the Answer lack findings to provide notice of how the prior art allegedly
satisfies the limitation at issue. Thus, we do not sustain the rejection of
claim 26, or the rejection of claims 31 and 32, which depend from claim 26.
Rejections 3—5 — The rejections of claim 27,
33, and 34 under 35 U.S.C. § 103(a)
Claims 27, 33, and 34 depend from claim 26. Appeal Br. 10-11
(Claims App.). The Examiner’s added reliance on Salerno (regarding
Rejection 3), Fowler (regarding Rejection 4), and official notice (regarding
Rejection 5) does not remedy the deficiencies in the combined teachings of
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Macrory and Kenney, discussed above, regarding claim 26 (see supra
Rejection 2). Thus, for the same reasons discussed above, we do not sustain
the rejection of claims 27, 33, and 34.
Rejection 6 — The rejection of claims
26—34 under 35 U.S.C. § 101
For this Rejection, Appellants argue the patentability of claim 26 and
do not separately argue claims 27—34, which depend from claim 26. Appeal
Br. 3 (§ A); Reply Br. 1—3.5 Thus, we address claim 26, with claims 27—34
standing or falling with claim 26. See 37 C.F.R. § 41.37(c)(l)(iv).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S.Ct. 1289, 1294
(2012)). Under that framework, we first “determine whether the claims at
issue are directed to one of those patent-ineligible concepts”—i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. If so, we secondly
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application. Id. (quoting Mayo,
5 Appellants state that “the Examiner is misapplying § 101 as against
claim 26 and claims 27—34 which depend therefrom and add further
limitations.” Appeal Br. 3. We do not, however, consider this a separate
argument as to the patentability of claims 27—34 because Appellants
generally refer to the language of the claims but do not demonstrate error in
the Examiner’s findings. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”).
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132 S.Ct. at 1298, 1297). The Supreme Court has described the second step
of the analysis as “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.”’ Id. (alteration in original) (quoting Mayo, 132 S.Ct. at
1294).
A. First Step
As to the first step under the Supreme Court’s framework, the
Examiner states that claim 26 is “directed to rules to a dice game, which is
an abstract idea.” Ans. 2; see also Final Act. 4 (stating that the limitations in
claim 26 “are not directed to a proper application of a law of nature, and are
just a mere statement of a general concept”).
Appellants “insist that the claims are statutory and not ‘merely a set of
rules’” and argue that the claims “are not directed exclusively to abstract
ideas, and include limitations beyond ineligible concepts.” Reply Br. 1.
In the first step of the analysis, the issue is “the ‘focus’ of the claims,
their ‘character as a whole.’” Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (quoting Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1335—36 (Fed. Cir. 2016) and Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). At this stage of the
analysis, we agree with the Examiner that claim 26, as a whole, is directed to
rules to a dice game. See Ans. 2. In a decision issuing after the briefing in
this appeal, the Federal Circuit addressed a § 101 rejection of claims directed
to a “method of conducting a wagering game.” In re Smith, 815 F.3d 816,
817 (Fed. Cir. 2016). There, the court “conclude[d] that the rejected claims,
describing a set of rules for a game, are drawn to an abstract idea” despite,
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for example, including the step of a “dealer providing at least one deck of
. . . physical playing cards and shuffling the physical playing cards.” Id. at
819, 817.
B. Second Step
We turn now to the second step of the analysis, regarding which the
Examiner states: “The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial exception
because the use of dice, when considered separately and in combination,
does not add significantly more to the abstract idea.” Ans. 2; see also Final
Act. 4 (stating that the limitations in claim 26 “include no recitation or
insufficient recitation of a machine [and] have no transformation”).
First, Appellants argue that “[t]he first step of the method requires
‘providing the dice of claim 18 along with a map and map pieces
representing the dice’” and “[t]he subsequent steps detail how the dice, map
and map pieces are used.” Appeal Br. 3. According to Appellants, the
recited “dice, map and map pieces are physical, structural objects broadly
constituting a machine” and “[t]he subsequent steps transform the objects
and comprise more than a ‘general concept.’” Id. Appellants also argue that
“[d]ice, a map, and map pieces are all physical objects constituting structural
limitations.” Reply Br. 2
The Examiner responds with the discussion of the printed matter issue
set forth above (see supra Rejection 1 (first argument)), concluding that “no
weight” will be given “to the indicia on [Appellants’] dice.” Ans. 7—8.6
6 Given the location of this discussion with respect to statements
regarding subject matter eligibility, we understand this discussion to relate to
both the Rejections under § 101 and under § 103.
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We are not apprised of error based on this argument. Although the
machine-or-transformation test remains a “useful and important clue ... for
determining whether some claimed inventions are processes under § 101,”
the “machine” prong requires the process to be “tied to a particular machine
or apparatus.” Bilski v. Kappos, 561 U.S. 593, 604, 602 (2010) (emphasis
added). Here, for reasons discussed above (see supra Rejection 1 (first
argument)), Appellants have not shown error in the Examiner’s position that
the “information” on the “dice” (in claim 18) that must be provided in claim
26 is not entitled to patentable weight. And Appellants do not contest that
the prior art relied on regarding claim 26 discloses “dice,” “a map,” and
“map pieces.” Final Act. 5, 8. Appending such routine and conventional
aspects to an abstract idea—here, the rules to a game—does not transform
that abstract idea to patent-eligible subject matter. See Alice, 134 S.Ct. at
2359-60; Smith, 815 F.3d at 819 (rejecting the argument that claims that
“require shuffling and dealing ‘physical playing cards,’ . . . bring the claims
within patent-eligible territory”).
As to the “transformation” prong of the machine-or-transformation
test, Appellants do not explain how the “subsequent steps [of claim 26]
transform the objects” required to be provided by the first step. Appeal Br.
3. Here, we agree with the Examiner that claim 26 does not require a
transformation. See Final Act. 4.
Second, Appellants argue that “Alice implements a two-part test to
determine the eligibility of computer-implemented subject matter’'' and state
that “Appellants’] claims are not computer-implemented.” Reply Br. 1; see
also id. at 2 (arguing that the claimed “invention does not involve the use of
a computer, let alone a generic computer to perform generic computer
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functions that are well-understood, routine and conventional activities
previously known to the industry”).
We are not apprised of error based on this argument. The test for
subject matter eligibility set forth in Alice has been applied to technologies
outside the field of computers. See, e.g., In re Smith, 815 F.3d 816 (Fed.
Cir. 2016) (applying Alice to claims related to a card game). Thus, that
claim 26 does not necessarily require implementation on a computer does
not demonstrate that it recites patent-eligible subject matter.
For these reasons, we sustain the rejection of independent claim 26 as
directed to patent-ineligible subject matter. Claims 27—34 fall with claim 26.
DECISION
We affirm the decision to reject claims 18—25 under 35 U.S.C.
§ 103(a), we reverse the decision to reject claims 26, 27, and 31—34 under
35 U.S.C. § 103(a), and we affirm the decision to reject claims 26—34 under
35 U.S.C. § 101.7
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 See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.”).
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