Ex Parte MackayDownload PDFPatent Trial and Appeal BoardJun 28, 201713297194 (P.T.A.B. Jun. 28, 2017) Copy Citation 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. 2 Appeal 2015-008232 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. 3 Appeal 2015-008232 Application 13/297,194 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 4 Appeal 2015-008232 Application 13/297,194 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. 5 Appeal 2015-008232 Application 13/297,194 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. 6 Appeal 2015-008232 Application 13/297,194 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 7 Appeal 2015-008232 Application 13/297,194 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 8 Appeal 2015-008232 Application 13/297,194 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. 9 Appeal 2015-008232 Application 13/297,194 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 10 Copy with citationCopy as parenthetical citation