Ex Parte Mallett

Patent Trial and Appeal Board

Jul 18, 2016

13533098 (P.T.A.B. Jul. 18, 2016)

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).
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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
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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
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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.
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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
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