Ex Parte Ruderer

Patent Trial and Appeal Board

Jan 30, 2017

12884766 (P.T.A.B. Jan. 30, 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.
12/884,766 09/17/2010 Richard Ruderer 30474-3 7359
76656 7590
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
USpatents @ armstrongteasdale. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD RUDERER
Appeal 2015-003478
Application 12/884,7661
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard Ruderer (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting under 35 U.S.C. § 101 claims 1,9,
10, 13—15, and 17—20 as directed to non-statutory subject matter.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellant, the real party in interest is the inventor, Richard
Ruderer. Appeal Br. 1 (filed July 25, 2014).
2 Claims 1—6, 8, 11, 12, and 16 have been canceled. Id. at 3.
Appeal 2015-003478
Application 12/884,766
SUMMARY OF DECISION
We AFFIRM, and denominate our affirmance as a NEW GROUND
OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
INVENTION
Appellant’s invention relates to “multi-player games involving the
selection and placement of related words on a game board by players.”
Spec., para. 1.
Claims 7 and 19 are independent. Claim 7 is illustrative of the
claimed invention and reads as follows:
7. A method of playing a game between a plurality of
players, said method comprising:
(a) providing a game board that enables a mark made
thereon by a writing element to be easily erased, the game
board comprising a playing surface marked with a grid pattern
of spaces sized and shaped to accommodate a written
representation of a character;
(b) generating a first seed word, wherein generating the
first seed word comprises:
rolling a die to generate a first die identifier,
wherein the die includes a plurality of surfaces that each include
a die identifier thereon; and
selecting the first seed word from a first card of a
plurality of cards, wherein each of the plurality of cards
includes a plurality of seed words that are each associated with
a respective card identifier, and wherein the first seed word is
selected based on the first die identifier and a first card
identifier associated with the first die identifier;
(c) populating adjoining spaces in the grid pattern on the
game board playing surface with letters of a first word that is a
synonym of the first seed word;
(d) generating a second seed word, wherein generating
the second seed word comprises:
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Application 12/884,766
rolling the die to generate one of the first die
identifier and a second die identifier; and
selecting the second seed word from a second card
of the plurality of cards, wherein the second seed word is
selected based on the one of the first die identifier and the
second die identifier and a second card identifier associated
with the one of the first die identifier and the second die
identifier; and
(e) populating adjoining spaces in the grid pattern on the
game board playing surface with at least one letter of a second
word that is a synonym of the second seed word, the second
word comprising at least one letter in the first word populated
in one of the spaces on the playing surface.
ANALYSIS
Appellant does not present separate arguments for the patentability of
claims 9, 10, 13—15, and 17—20 apart from independent claim 7. See Appeal
Br. 14. Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select
claim 7 as the representative claim to decide the appeal of the rejection of
these claims, with claims 9, 10, 13—15, and 17—20 standing or falling with
claim 7.
The Examiner finds that the claims are directed to “a general concept
or rules for playing a game.” Final Act. 2. The Examiner notes that “several
factors weighing toward and against patent eligibility have been analyzed.”
Id. at 3 (citing Interim Guidance for Determining Subject Matter Eligibility
for Process Claims in View ofBilski v. Kappos, 75 Fed. Reg. Vol. 75, No.
143 (July, 27, 2010)). The Examiner concludes that “the claims are
considered ‘rules’ for playing a game that can be performed by human
thought alone and, as such, [are] considered merely an abstract idea that is
not patent eligible under 101.” Id. at 4.
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Appeal 2015-003478
Application 12/884,766
Appellant notes that subsequent to the Final Action, the Supreme
Court decided A lice Corporation Pty. Ltd. v. CLS Bank International, 134
S.Ct. 2347 (2014) (“Alice”), and that the Commissioner of Patents then
issued instructions for analyzing claims using a two-part test in view of
Alice. Appeal Br. 9 (citing Preliminary Examination Instructions in view of
the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank
International, June 25, 2014). Appellant asserts that when the two-part test
is applied, “claim 7 is limited to a particular practical application, and is not
directed to an abstract idea, and thus does not fall within the ‘abstract ideas’
category of judicially created exceptions to subject matter eligibility.” Id. at
10. Appellant further asserts that even if claim 7 includes an abstract idea,
“the collaboration of the limitations of (1) the game board structure and the
already-placed words on the game board, as well as (2) the synonym options
and placement options, [serve] to add significantly more than any alleged
abstract idea.” Id. at 14.
In response, the Examiner notes that, consistent with part one of the
two-part test in Alice, rules for playing games are an abstract idea. See Ans.
5—11. The Examiner states that, moreover, Appellant’s assertion that the
claims include limitations that add significantly more to transform an
abstract idea into a patent-eligible application is unfounded, because “the
steps of providing a game board and generating the seed word are part of the
process of rules themselves attempting to be claimed.” Id. at 11.
In reply, Appellant once more takes the position that the claims are
not abstract because “the present claims (1) recite a specific game board
structure, and also (2) recite specific steps that are narrowly tailored to
require and rely on that specific structure.” Reply Br. 2.
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Appeal 2015-003478
Application 12/884,766
Although we appreciate that the two-step test for patent eligibility set
forth in Alice supersedes the Bilski Interim Guidance that was applied by the
Examiner in the Final Action, this does not change the Examiner’s finding
that the claims are directed to an abstract idea and that “neither the game
board, die or cards have any new use or purpose,” i.e., are conventional, and
thus, are patent ineligible. Final Act. 6; see also Ans. 11—12. Several
decisions followed Alice and the USPTO provided updated Subject Matter
Eligibility Guidance to provide a basis for determining whether an invention
claims ineligible subject matter. One of the decisions following Alice was
directed to a “method of conducting a wagering game” using a deck of
“physical playing card[s],” and was determined to be drawn to an abstract
idea. See In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016). There, the court
held that “shuffling and dealing a standard deck of cards are ‘purely
conventional’ activities,” and that “the rejected claims do not have an
‘inventive concept’ sufficient to ‘transform’ the claimed subject matter into
a patent-eligible application of the abstract idea.” Id. at 819. However, the
court stated that not “all inventions in the gaming arts would be foreclosed
from patent protection under § 101,” and that it was possible for “claims
directed to conducting a game using a new or original deck of cards
potentially surviving step two of Alice A Id.
Here, following the two-step test for patent eligibility in Alice, first,
we determine whether the claims at issue are directed to a patent-ineligible
concept such as an abstract idea, and, second, we “examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 134 S. Ct. at 2357 (quoting Mayo Collaborative Servs. v. Prometheus
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Appeal 2015-003478
Application 12/884,766
Labs, Inc., 132 S. Ct. 1289, 1294, 1298 (2012)). Under the first step of the
test, we, like the Examiner, find that the claimed “method of playing a
game” is drawn to an abstract idea much like Alice’s method of exchanging
financial obligations and Smith’s method of conducting a wagering game,
because “claims, describing a set of rules for a game, are drawn to an
abstract idea.” Smith, 815 F.3d at 819; see also Final Act. 4. However,
“[a]bstract ideas, including a set of rules for a game, may be patent-eligible
if they contain an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Id. (quoting Alice, 134 S.
Ct. at 2357). In view of this guidance, under the second step of the test, we
determine whether there are unconventional activities that supply a
sufficiently inventive concept.
Claim 7 requires “providing a game board that enables a mark made
thereon by a writing element to be easily erased, the game board comprising
a playing surface marked with a grid pattern of spaces sized and shaped to
accommodate a written representation of a character,” and “populating
adjoining spaces in the grid pattern on the game board playing surface with
letters of a first word that is a synonym of the first seed word,” which
Appellant asserts collaboratively supply a sufficiently inventive concept.
See Appeal Br. 14. Known word games use a board where a player writes a
word on a grid pattern with one letter per adjoining space as in a variation of
Scrabble® known as “A/Z.”3 Accordingly, this limitation is conventional.
Fikewise, making a word using a letter from an already-placed word is
conventional in Scrabble®. In addition, using a synonym of a given word is
3 See, e.g., Mind Games 99, http://www.mli.gmu.edu/kaufman/mg99.html
(last visited January 6, 2017).
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Application 12/884,766
not a difference that amounts to a sufficiently inventive concept to
distinguish over Smith. For example, Spelling Roll-A-Word is a well-known
word game that requires a user to write a synonym of a given word.4
Variations of Spelling Roll-A-Word require a user to select a word from a
plurality of cards having a word associated with an identifier of a dice.5
Thus, rolling a die to generate an identifier and selecting a word from a
plurality of cards that include words associated with the identifier are
conventional. As such, the claims are directed to a method of playing a
game using “purely conventional” activities. See Smith, 815 F.3d at 819.
In Alice, the Supreme Court determined that Alice’s claims to methods
were ineligible because “the claims at issue amount to ‘nothing significantly
more’ than an instruction to apply the abstract idea of intermediated
settlement using some unspecified, generic computer.” Alice, 134 S.Ct. at
2360 (citation omitted). This holding in Alice is analogous to the present
matter in that Appellant is seeking patent protection for a method of playing
a game, including providing a game board, generating a first seed word,
populating adjoining spaces with a synonym of the first seed word, and
repeating the generating and populating steps for additional words. We are
of the opinion that, as in Alice, “nothing significantly more” is claimed by
Appellant, because the steps are conventional. Nor does Appellant
persuasively indicate how such claimed steps render these rules anything
other than an abstract idea as the Examiner finds. See Final Act. 2-4.
4 See, e.g., Spelling Roll-A-Word, http://www.mrsgoldsclass.com/PDF/
SpellingRollATask[l].pdf (last visited January 6, 2017).
5 See, e.g., Roll and Write a game to practice spelling FREEBIE,
https://www.teacherspayteachers.com/Product/Roll-and-Write-a-game-to-
practice-spelling-FREEBIE-1264114 (last visited January 6, 2017).
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Application 12/884,766
Accordingly, and based on the analysis above, we do not agree that
the Examiner’s rejection of method claims 7, 9, 10, 13—15, and 17—20 as
being ineligible subject matter is improper. Thus, we sustain the rejection of
claims 7, 9, 10, 13—15, and 17—20 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. However, we denominate our affirmance as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b),
because our analysis relies upon facts and reasoning that the Examiner did
not use.
SUMMARY
The Examiner’s decision to reject claims 7, 9, 10, 13—15, and 17—20
under 35 U.S.C. § 101 as directed to non-statutory subject matter is
affirmed, but denominated as a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
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Application 12/884,766
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R, $ 41.50(b)
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