Ex Parte Mackay

Patent Trial and Appeal Board

Jun 28, 2017

13297194 (P.T.A.B. Jun. 28, 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 06/30/201729973
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
06/30/2017 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 APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1—11 and 13—17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
According to Appellant, “[t]he present invention relates to puzzles in
general and more particularly to an apparatus and method for providing a
1 Our Decision references the Appeal Brief (“Appeal Br.,” filed Mar. 10,
2015) and Reply Brief (“Reply Br.,” filed Sept. 14, 2015), and the
Examiner’s Answer (“Ans.,” mailed July 14, 2015) and Final Office Action
(“Final Act.,” mailed Mar. 10, 2014).
2 According to Appellant, the real party in interest is Fun Media, Ltd.
Appeal Br. 2.
Appeal 2015-008232
Application 13/297,194
puzzle structure in which a surface has a pattern or confining region.”
Spec. 11.
CLAIMS
Claims 1—11 are on appeal. Claim 1 is illustrative of the appealed
claims and recites:
1. A computer implemented method for providing a sudoku-
style game, the method comprising:
generating, in memory of a computer- a game board
surface image having a plurality of P x Q sub-matrices of cells,
wherein P represents the number of rows in each sub-matrix, and
Q represents the number of columns in each sub-matrix;
dividing, in the memory of the computer, each of the cells
of each of the plurality of P x Q sub-matrices into a first section
and a second section, each section of each cell having sufficient
space to contain a visually perceivable indicator, the first sections
of each of the divided cells defining a first logic game and the
second sections of each of the divided cells defining a second
logic game, the first logic game and the second logic game
combine to define an overall master matrix logic game;
assigning, at the commencement of the game, a plurality
of indicators to a respective plurality of the sections of the
divided cells;
generating a master matrix having the plurality of P x Q
sub-matrices coupled one P x Q sub-matrix to another P x Q sub­
matrix to form a desired game board shape;
completing the master matrix logic game so that each
indicator is displayed only once in each row of the divided cells
and in each column of the divided cells; and
rendering the master matrix on an electronic display.
Appeal Br. 30-31.
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Application 13/297,194
REJECTIONS
1. The Examiner rejects claims 1—11, 13, 14, and 16 under 35 U.S.C. § 101
as directed to non-statutory subject matter.
2. The Examiner rejects claims 1 and 16 under 35 U.S.C. § 112, second
paragraph as indefinite.
3. The Examiner rejects claims 1, 2, 5—10, and 13—17 under 35 U.S.C.
§ 102(a) as anticipated by Harris.3
4. The Examiner rejects claims 1,2, 6—11, and 13—17 under 35 U.S.C.
§ 102(b) as anticipated by Chen.4
5. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Harris or Chen in view of Muller.5
6. The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Harris or Chen in view of Bower.6
DISCUSSION
Non-statutory subject matter
Appellant groups claims 1—11, 13, 14, and 16 together with respect to
the rejection under § 101 as stated in the Answer. See Reply Br. 2—3. We
select claim 1 as representative of this group, and claims 2—11, 13, 14, and
16 stand or fall with claim 1.
In the Answer, the Examiner finds that claim 1 is directed to an
abstract idea and is therefore rejected as directed to ineligible subject matter.
Ans. 2. The Examiner finds that the claimed steps are directed to abstract
3 Harris, US 2012/0025461 Al, pub. Feb. 2, 2012.
4 Chen, US 2009/0160131 Al, pub. June 25, 2009.
5 Muller, III et al., US 2010/0259001 Al, pub. Oct. 14, 2010.
6 Bower, US 2009/0278310 Al, pub. Nov. 12, 2009.
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game rules and that the claim limitations when viewed individually or as a
whole “do not provide meaningful limitations to transform the abstract idea
into a patent eligible application of the abstract idea such that the claims
amount to significantly more than the abstract idea itself.” Id. at 3.
In reply, Appellant argues that “the Examiner ignores the steps
invoked in creating the game board surface image of the sudoku-style game”
and that “the Appellant has provided a sudoku-style game that, contrary to
the Examiner's assertions, is not directed to ‘an abstract idea of following a
set of rules for playing a board game.’” Reply Br. 2—3.
We are not persuaded of error in the rejection as stated in the Answer,
and we fail to see any distinction between creating a game board surface
image with particular game rules and the abstract idea of following a set of
rules for playing a board game.
The Supreme Court 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. Pty.
Ltd. v. CLSBankInt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
must 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.
The Supreme Court characterizes the second step of the analysis as “a search
for an ‘inventive concept’ — i.e., an element or combination of elements that
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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). To transform an abstract idea into a patent-eligible concept, the
claims require “more than simply stating the abstract idea while adding the
words ‘apply it.”’ Id. at 2357 (citations omitted).
Regarding step one of the Alice framework, Appellant does not
persuade us of any error in the Examiner’s finding that the claims are
directed to the abstract concept of creating and following rules for a game.
Appellant indicates that because the claims are directed to the creation of a
game board surface image, the claims are different from the abstract concept
of following a set of rules for playing a board game. Reply Br. 2—3. We are
not persuaded. Rather, we find that the creation of the game board surface
image is part and parcel to the rules of playing the game, i.e. the creation of
the game board surface as claimed defines the rules of the game. We also
note that Appellant’s claim compares to other “rules” for human activity
found abstract by the Federal Circuit. See, e.g., In re Smith, 815 F.3d 816
(Fed. Cir. 2016) (determining that rules for playing physical cards are
abstract ideas); Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005,
1007—08 (Fed. Cir. 2014) (determining that methods of managing a bingo
game are abstract ideas); In re Brown, 645 Fed. Appx. 1014, 1016—17 (Fed.
Cir. 2016) (determining that a method of cutting hair using scissors is an
abstract idea) (non-precedential). Accordingly, claim 1 is directed to an
abstract idea.
Regarding step two of the Alice framework, Appellant does not
contest the Examiner’s finding that the steps of the claim, taken individually
or as a whole, do not elevate the claims to eligible subject matter. See Ans.
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2—3; see also Reply Br. 2—3. We agree with and adopt the Examiner’s
findings in this regard.
Based on the foregoing, we find that claim 1 is directed to ineligible
subject matter. Thus, we sustain the rejection of claim 1 under 35 U.S.C.
§101, and we also sustain the rejection of claims 2—11, 13, 14,7 and 16,
which fall with claim 1, as noted above.
Indefiniteness
With respect to claim 1, the Examiner finds the claim indefinite
because the “preamble does not clearly set the scope of [the] claim” and
certain limitations relate to making a game while other limitations related to
steps for practicing the game. Final Act. 3^4. Thus, the Examiner finds that
it is unclear whether the claim is a method of manufacturing or a method of
use. Id.
Appellant responds:
Appellant respectfully disagrees with the Examiner's assertion
that “assigning” can be treated as a step of practicing the game.
The limitation “assigning, at the commencement of the game, a
plurality of indicators to a respective plurality of the sections of
the divided cells” is to illustrate that prior to providing the game
to a user, a plurality of indicators are assigned to a respective
plurality of the sections of the divided cells and that master
matrix is then rendered on an electronic display. The assigning
step is to set up the initial game that will be provided to a player
to solve the puzzle. Finally, the completing step is to provide that
a solution to the game is to complete the master matrix logic
game so that each indicator is displayed only one in each row of
the divided cells and in each column of the divided cells. The
7 Because we sustain the rejection of claim 14 based on the two-step Alice
test, we do not reach the Examiner’s alternative basis for rejecting claim 14
under 35 U.S.C. § 101.
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completing step provides a puzzle game rule, which a player is
to follow in order to solve the master matrix.
Appeal Br. 8—9. We agree with Appellant and are not persuaded that the
claim is unclear in any way. Thus, we do not sustain this rejection as to
claim 1.
With respect to claim 16, the Examiner finds that the claim is
incomplete for omitting essential structural cooperative relationships of
elements. Final Act. 4. Claim 16 depends from claim 1 and further requires
the step: “displaying the master matrix on printed media.” The Examiner
finds that “(a) [t]he scope is unclear whether the matrix is an electronic
display or a printed display rendering he scope unclear, (b) Additionally the
limitation ‘printed display’ does not clearly indicate the nature of substrate
rendering the scope unclear.” Id.
We agree with Appellant that claim 16 is clear in that it “will take the
master matrix render on the electronic display and provide [it] on a printed
media, such as a piece of paper.” Appeal Br. 10. Without further
explanation, the Examiner has not identified any essential element that is
missing from the claim. Accordingly, we do not sustain this rejection as to
claim 16.
Anticipation - Harris
We agree with Appellant that the Examiner has not shown that Harris
teaches dividing each of the cells into first and second sections as required
by each of the independent claims. The Examiner relies on Harris’
disclosure of providing both a number and a color for each cell in the matrix.
Final Act. 4—5. In response to Appellant’s argument, the Examiner states:
“Harris clearly teaches each cell into a color section and a number section
with sufficient space visually perceivable (0088) and because Harris is a
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computer game the two sections are clearly generated and divided in the
memory of the computer.” Ans. 19. Thus, the Examiner finds that because
there is necessarily a separate space for the number and color of each cell in
the computer memory, Harris discloses the dividing step of the claims.
However, we find that the claim requires more than simply having
separate memory space for two different items related to each cell. Rather,
the claim requires generating an image of a game board with cells in the
memory and then dividing the cells on the image in the memory into
different sections. We agree with Appellant that Harris does not appear to
divide the image of the cells in the game board as required. See Appeal Br.
12—15. For this reason, we do not sustain the rejection of claims 1, 2, 5—10,
and 13—17 as anticipated by Harris.
Anticipation — Chen
Here, we also agree with Appellant that the Examiner has not shown
that Chen teaches dividing each of the cells into first and second sections as
required by each of the independent claims. In response to Appellant’s
argument that Chen does not disclose dividing the cells into sections as
claimed, the Examiner states:
Chen clearly teaches each of cells of each of the plurality of P x
Q sub-matrices (Fig.3) into a first section (first numeral/first
difficulty level) and a second section (second numeral/second
difficulty level/symbol), each cell for example (Fig.l) having a
numeral “4” indicates four logical games with four different
indicators (Fig.3), each section of each cell having sufficient
space to contain a visually perceivable indicator (0010,0028),
and because Chen is a computer game the two sections are
clearly generated and divided in the memory of the computer.
Ans. 20. Similar to Harris as discussed above, although Chen may disclose
a separate space in the computer memory for the separate solutions for each
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cell, we agree with Appellant that Chen does not appear to disclose that the
cells on the image of the game board created in the memory are actually
divided into different sections. See Appeal Br. 22—23. At best, Chen
discloses some examples where the possible multiple solutions are
presented, but those appear to be examples of answer keys and not actual
game boards. See, e.g., Chen Fig. 4B. For this reason, we do not sustain the
rejection of claims 1, 2, 6—11, and 13—17 as anticipated by Chen.
Obviousness
Claims 3 and 4 depend from claim 1 and the art of record does not
appear to correct the deficiencies in the rejections of claim 1, as discussed
above. Thus, we do not sustain the obviousness rejections for the same
reasons.
CONCLUSION
We AFFIRM the rejection of claims 1—11, 13, 14, and 16 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
We REVERSE the rejection of claims 1 and 16 under 35 U.S.C.
§112, second paragraph.
We REVERSE the rejection of claims 1, 2, 5—10, and 13—17 under
35 U.S.C. § 102(a) as anticipated by Harris.
We REVERSE the rejection of claims 1, 2, 6—11, and 13—17 under
35 U.S.C. § 102(b) as anticipated by Chen.
We REVERSE the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Harris or Chen in view of Muller.
We REVERSE the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Harris or Chen in view of Bower.
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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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