Ex Parte MallettDownload PDFPatent Trial and Appeal BoardJul 18, 201613533098 (P.T.A.B. Jul. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/533,098 06/26/2012 94488 Miracle IP 7590 1020 Dennison A venue Suite 101 Columbus, OH 43201 07118/2016 FIRST NAMED INVENTOR Jerry Lamar Mallett 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ML.Ul.MALLETT 5567 EXAMINER MENDIRATTA, VISHU K ART UNIT PAPER NUMBER 3711 MAILDATE DELIVERY MODE 07/18/2016 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 JERRY LAMAR MALLETT Appeal 2014-006391 1,2 Application 13/533,098 Technology Center 3700 Before BART A. GERSTENBLITH, PHILIP J. HOFFMANN, and AMEE A. SHAH, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's rejections of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellant's Specification ("Spec.," filed June 26, 2012) and Appeal Brief ("Br.," filed Jan. 2, 2014), as well as the Final Office Action ("Final Action," mailed Sept. 3, 2013) and the Examiner's Answer ("Answer," mailed Mar. 7, 2014). 2 Appellant identifies himself, "Jerry Lamar Mallett," as the real party in interest. Br. 2. Appeal2014-006391 Application 13/533,098 Independent claim l is the only independent claim under appeal. See Br., Claims App. We reproduce claim 1, below, as representative of the appealed claims. Id. 1. A board game for drug dealing sensitivity, compnsmg: a) a playing board; b) a pair of dice; c) a plurality of chips/cards; and d) a plurality of playing pieces; wherein said playing board has a path thereon; wherein said path of said playing board is in a generally figure 8 configuration; wherein said path of said playing board is divided into a plurality of landing spaces; wherein said plurality of landing spaces of said path of said playing board have instructional indicia thereon, respectively, instructing what to do if landed upon; wherein said plurality of chips/cards have instructional indicia thereon, respectively; wherein each chip/card is disposed adjacent to a corresponding landing space and whose instructional indicia corresponds to said instructional indicia of said corresponding landing space of said path of said playing board; and wherein said pair of dice determine an amount of landing spaces of said path of said playing board that a respective playing piece moves along said path of said playing board. REJECTIONS AND PRIOR ART The Examiner rejects claim 1under35 U.S.C. § 103(a) as unpatentable over Casanova (US 2006/0261548 Al, pub. Nov. 23, 2006). 2 Appeal2014-006391 Application 13/533,098 The Examiner rejects claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Hill (US 5,350, 179, iss. Sept. 27, 1994). The Examiner rejects claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Hill and Casanova. See Final Action 2---6; see also Answer 2---6. ANALYSIS For the below reasons, we sustain each of the Examiner's obviousness rejections of claims 1-7. With respect to the rejection based on Casanova alone, Appellant argues that claim 1 's limitation of "wherein each chip/ card is disposed adjacent to a corresponding landing space and whose instructional indicia corresponds to said instructional indicia of said corresponding landing space of said path of said playing board" must be considered by the Examiner when determining the patentability of the claim. See Br. 5-8. Even assuming we agree with Appellant, we note that after the Examiner determines "that the differences residing in meaning and information conveyed by printed matter on cards and spaces are not considered patentable differences" (Answer 3; Final Action 2), the Examiner nonetheless concludes that it would have been obvious to "coordinate the message" on the landing space with that on the chip/card, which would meet the claim requirement that the landing space and chip/ card include corresponding indicia (Answer 3, Final Action 2). The Examiner's determinations are sufficient to establish a prima facie case of obviousness. Appellant does not argue that the Examiner's determination is unreasonable 3 Appeal2014-006391 Application 13/533,098 or otherwise rebut the rejection. Therefore, we sustain the rejection of claim 1 as obvious based on Casanova. With respect to the rejection based on Hill alone, Appellant first states that "[t]he Board's attention is respectfully drawn to the arguments of GROUND I above." Br. 8. Inasmuch as Appellant's referenced arguments are directed to deficiencies in the Examiner's rejection based on Casanova, Appellant does not persuade us that the Examiner's rejection based on Hill is erroneous. Appellant's other argument is that "[a]pplying the [appropriate] case law ... to the case at bar, it is revealed that by consulting FIGURE 1 of Appellant Mallett's original [S]pecification, the figure 8 path is intended to be in the shape of an [A ]rabic number 8, and[,] as such, it is not met by Hill." Id. at 9. Appellant's argument is insufficient to persuade us that a broad, reasonable interpretation of the claim limitation "said path of said playing board is in a generally figure 8 configuration" (id. at Claims App.) excludes Hill's figure 8 path that, as the Examiner finds, is similar to a "digital clock[] [where] the eight figure has two squares connected by a common line" (Answer 3). We further note that Appellant does not establish that the claimed "generally figure 8 configuration" excludes additional game paths connecting to a figure 8 game path. Thus, for the above reasons, Appellant does not persuade us that the Examiner's rejection is erroneous. Based on the foregoing, we sustain the obviousness rejection of independent claim 1 based on Hill. Although Appellant discusses limitations of claims 2-7 that depend from claim 1, Appellant does not identify patentable differences between the dependent claims and Hill. See 4 Appeal2014-006391 Application 13/533,098 Br. 9-10. Thus, we sustain the obviousness rejection of dependent claims 2-7 based on Hill. Notwithstanding the above discussion, we also affirm the rejection of claims 1-7 based on a combination of Hill and Casanova. Appellant's arguments are directed to why the claimed "generally figure 8 configuration" is a limitation that must be shown by the prior art. See Br. 10-12. Regardless, the Examiner finds that "Casanova teaches a game path in shape of figure 8." Answer 5. The Examiner's finding is reasonable and supported by a preponderance of the evidence, and Appellant does not rebut the Examiner's finding. Thus, we sustain the obviousness rejection of independent claim 1 based on Hill and Casanova, and the rejection of dependent claims 2-7 that Appellant does not argue separately. See id. at 12. DECISION We AFFIRM the Examiner's obviousness rejection of claim 1 based on Casanova. We AFFIRM the Examiner's obviousness rejection of claims 1-7 based on Hill. We AFFIRM the Examiner's obviousness rejection of claims 1-7 based on Hill and Casanova. 5 Appeal2014-006391 Application 13/533,098 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation