James Moran

Patent Trials and Appeals Board

Jan 7, 2022

2021001092 (P.T.A.B. Jan. 7, 2022)

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. 15/712,505 09/22/2017 James Moran AMK-6520-3 5725 23117 7590 01/07/2022 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER KORB, JENNIFER LUANN ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 01/07/2022 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES MORAN Appeal 2021-001092 Application 15/712,505 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, BRADLEY W. BAUMEISTER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision rejecting claims 1-14 and 18-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor, James Moran. Appeal Br. 3. Appeal 2021-001092 Application 15/712,505 2 ILLUSTRATIVE CLAIM 1. A set of polyhedral game pieces suited for reinforcing certain mathematical operations, the polyhedral game pieces each comprising a plurality of sides, each of which contains a number, wherein the polyhedral game pieces are configured to eliminate occurrences of level one fact families when rolled, the set of polyhedral game pieces comprising two 12-sided dice each with six numbers each occurring on two of the plurality of sides, respectively. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Larson US 4,465,279 Aug. 14, 1984 Butler US 5,707,239 Jan. 13, 1998 Panicali US 7,862,337 B2 Jan. 4, 2011 Wirthlin et al. (“Wirthlin”) US 2014/0342319 A1 Nov. 20, 2014 REJECTIONS2 I. Claims 1-13 and 18-21 are rejected under 35 U.S.C. § 103 as unpatentable over Wirthlin, Larson, and Butler. II. Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over Wirthlin, Larson, Butler, and Panicali. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. 2 In addition to the rejections addressed herein, the Final Office Action rejects claim 8 under 35 U.S.C. § 112(a) for lack of enablement and claims 8 and 21 under 35 U.S.C. § 112(b) for indefiniteness. See Final Act. 3-5. These rejections are withdrawn. Answer 3. Appeal 2021-001092 Application 15/712,505 3 ANALYSIS The Appellant’s Specification explains that the disclosed subject matter “relates to a system or set of polyhedral gaming devices (commonly known as dice) that include non-traditional number series and combinations of numbers that optimize reinforcement of certain mathematical operations, specifically certain operations associated with more ‘difficult to learn’ number operation combinations or so-called ‘fact families.’” Spec. ¶ 3. The “fact families” are collections of numbers associated with mathematical operations having varying levels of difficulty for students to learn. See id. ¶¶ 8-12. The polyhedral dice may exclude numbers belonging to lower- level fact families, in order to provide, when rolled, higher-level (e.g., more challenging) number combinations for performing mathematical operations. See id. ¶ 12. For example, the dice “may be configured to eliminate occurrences of the level one fact families when rolled by excluding numbers 1, 2 and 10” and “may be configured to reduce occurrences of the level two fact families by limiting a number of sides including numbers 3 and 9.” Id. Consistent with the foregoing concepts, all of the claims in this Appeal require particular numbers - whether identified explicitly, or by reference to corresponding “fact families” - to be included on, or excluded from, the recited “sides” of the “polyhedral game pieces.” Appeal Br. 15-16 (Claims App.). The representation of numbers (on the recited “sides” of the “polyhedral game pieces”) raises the issue of whether these recited combinations of numbers have patentable weight. This issue stems from legal principles relating to so-called “printed matter” or “nonfunctional descriptive material.” See Ex parte Nehls, No. 2007-1823, 2008 WL Appeal 2021-001092 Application 15/712,505 4 258370, at *5-*9 (BPAI Jan. 28, 2008) (precedential). Our reviewing court explained that “historically ‘printed matter’ referred to claim elements that literally encompassed ‘printed’ material”; however, “the doctrine has evolved over time to guard against attempts to monopolize the conveyance of information using any medium.” C.R. Bard Inc. v. AngioDynamics, Inc., 979 F.3d 1372, 1381 (Fed. Cir. 2020). Thus, “printed matter encompasses any information claimed for its communicative content, and the doctrine prohibits patenting such printed matter unless it is ‘functionally related’ to its ‘substrate,’ which encompasses the structural elements of the claimed invention.” Id. A claim limitation that constitutes printed matter, but lacks a functional relationship to its substrate, “does not lend any patentable weight to the patentability analysis” - that is, “it may not be a basis for distinguishing prior art.” In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). The foundation of all of the Appellant’s arguments, for the nonobviousness of the claims in this Appeal, require the recited inclusion or exclusion of particular numbers (appearing on sides of the dice) to have patentable weight - i.e., even though constituting printed matter claiming information content, the numbers bear a functional relationship with the recited “polyhedral game pieces.” See Appeal Br. 9-14. Indeed, the Appellant concedes: “Without the numbers, the dice are just polyhedral shapes; without specific numbers, the dice are just dice.” Id. at 12. “[B]ut,” the Appellant argues, “with the dice configured eliminate occurrences of level one fact families as defined in claim 1, for example, the functional relationship between the numbers and the dice becomes clear.” Id. Specifically, the “Appellant submits that a functional relationship exists in Appeal 2021-001092 Application 15/712,505 5 the manner in which the use of specific numbers serves to reinforce certain mathematical operations.” Id. at 12-13. See also id. at 10, 11; Reply Br. 1-3. The Federal Circuit addressed a question of whether markings on game dice could create a functional relationship with the dice themselves, in In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018). In Marco Guldenaar, the alleged “primary novelty of the claimed invention [wa]s the markings (or lack thereof) on the dice, which have only particular faces marked.” Id. at 1159. Those claims recited information conveyed by the dice markings, because “[e]ach die’s marking or lack of marking communicates information to participants indicating whether the player has won or lost a wager, similar to the markings on a typical die or a deck of cards.” Id. at 1161. Further, the Federal Circuit determined that “the printed indicia on each die are not functionally related to the substrate of the dice,” because “the markings on each of Appellant’s dice do not cause the die itself to become a manufacture with new functionality.” Id. The Federal Circuit contrasted the Marco Guldenaar dice markings with indicia determined to have a functional relationship to corresponding substrates, in In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983) and In re Miller, 418 F.2d 1392 (CCPA 1969). Id. Gulack involved claims “require a particular sequence of digits to be displayed on the outside surface of a band.” Gulack, 703 F.2d at 1386. The disposition of the particular numerical sequence on an “endless” substrate made it possible to use the device “to perform magic tricks,” based upon certain mathematical relationships among the sequence of numbers, “or to display various aspects of number theory.” Id. at 1383. Thus, the numbers bore a functional relationship to the substrate, because “the digits Appeal 2021-001092 Application 15/712,505 6 exploit the endless nature of the band.” Id. at 1387. In Miller, the claims recited markings on measuring cups or spoons, stating that the corresponding vessels bore a particular fractional ratio to the indicated volumes (thus simplifying the measurements of amounts used, when, e.g., halving a recipe). Miller, 418 F.2d at 1394-95. According to the predecessor of our reviewing court, there was a “functional relationship between a measuring receptacle, volumetric indicia thereon indicating volume in a certain ratio to actual volume, and a legend indicating the ratio.” Id. at 1396. In the present Appeal - a circumstance similar to that in Marco Guldenaar - the Appellant has not persuaded us that the particular markings would bear a functional relationship to the dice on which they appear. The Appellant contends that “the manner in which the use of specific numbers serves to reinforce certain mathematical operations” gives rise to a functional relationship that would afford patentable weight to the recited markings. Appeal Br. 13. Yet, this asserted relationship pertains to the numbers themselves - notwithstanding their appearance on the recited “polyhedral game pieces.” Unlike the circumstances in Gulack (where the claimed arrangement of numbers on a looping band was needed to manifest certain mathematical relationships among them) and Miller (where the claimed indicia were needed to utilize the measuring vessels properly), the Appellant does not sufficiently demonstrate that the attributes of the recited numbers in the claims of this Appeal (i.e., including or excluding various “fact families” denoting levels of arithmetic difficulty) are functionally related to the supporting substrate (the dice). Accordingly, the Appellant has Appeal 2021-001092 Application 15/712,505 7 not persuaded us of error in the Examiner’s determination that the numbers recited in the claims lack patentable weight. Because the asserted patentable weight of the numbers disposed on the “polyhedral game pieces” is the basis for the Appellant’s nonobviousness arguments for all of the claims in this Appeal (see Appeal Br. 12), we are not persuaded of error in the rejection of claims 1-14 and 18-21 under 35 U.S.C. § 103. CONCLUSION We affirm the Examiner’s rejection of claims 1-13 and 18-21 under 35 U.S.C. § 103 as unpatentable over Wirthlin, Larson, and Butler. We affirm the Examiner’s rejection of claim 14 under 35 U.S.C. § 103 as unpatentable over Wirthlin, Larson, Butler, and Panicali. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-13, 18- 21 103 Wirthlin, Larson, Butler 1-13, 18- 21 14 103 Wirthlin, Larson, Butler, Panicali 14 Overall Outcome 1-14, 18- 21 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED