Ex Parte Mackay

Patent Trial and Appeal Board

Sep 20, 2017

13297194 (P.T.A.B. Sep. 20, 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.
13/297,194 11/15/2011 Glenn Frederick Mackay 1256-002U 7575
7590 09/22/201729973
CRGO LAW
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/22/2017 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@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENN FREDERICK MACKAY
Appeal 2015-0082321
Application 13/297,1942
Technology Center 3700
Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of our Decision entered June 30, 2017,
which affirmed the Examiner’s rejection of claims 1—11, 13, 14, and 16 as
1 We may reference herein Appellant’s Appeal Brief (“Appeal Br.,” filed
Mar. 10, 2015), Reply Brief (“Reply Br.,” filed Sept. 14, 2015), and Request
for Rehearing (“Request,” filed Aug. 30, 2017); the Examiner’s Answer
(“Ans.,” mailed July 14, 2015) and Final Office Action (“Final Act.,” mailed
Mar. 10, 2014); and our Decision on Appeal (“Decision,” mailed June 30,
2017.
2 According to Appellant, the real party in interest is Fun Media, Ltd.
Appeal Br. 2.
Appeal 2015-008232
Application 13/297,194
directed to non-statutory subject matter.3 After reconsideration, we realize
that the relied-upon identification of an abstract idea (i.e., “rules for playing
a game”) may not be affiliated with the limitations recited in the claims on
appeal. Independent claim 1, for example, recites the creation of a game
board surface image but does not state any specific rules for the game.
Accordingly, as the record before us fails to adequately establish that
the claims at issue are directed to an abstract idea, the rejection under 35
U.S.C. § 101 is not sustained.
CONCLUSION
We have carefully reviewed the original Decision in light of
Appellant’s request, and we now REVERSE the rejection of claims 1—11,
13, 14, and 16 under 35 U.S.C. § 101. Therefore, Appellant’s request for
rehearing is granted.
GRANTED
3 The Decision also addressed rejections under 35 U.S.C. §§ 112, 102, 103,
which are not addressed in the Request.
2