Jo-Anne Dressendofer

Patent Trials and Appeals Board

Sep 16, 2019

14810459 - (D) (P.T.A.B. Sep. 16, 2019)

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.
14/810,459 07/27/2015 Jo-Anne Dressendofer 48599/003 2317
116187 7590 09/16/2019
Kintner IP, LLC
PO Box 81
Kintnersville, PA 18930-0081
EXAMINER
VANDERVEEN, JEFFREY S
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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):
mludwig@kintnerip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JO-ANNE DRESSENDOFER
____________

Appeal 2018-007955
Application 14/810,4591
Technology Center 3700
____________

Before LINDA E. HORNER, WILLIAM A. CAPP, and
BRENT M. DOUGAL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1‒16 and 21‒24.2 Final Office Action (July
27, 2017, “Final Act.”), as further modified in the Examiner’s Answer (June
14, 2018, “Ans.”). We have jurisdiction under 35 U.S.C. § 6(b).
The Examiner rejected all of the claims as being directed to patent
ineligible subject matter under 35 U.S.C. § 101 and as unpatentable over

1 Jo-Anne Dressendofer (“Appellant”) is the applicant and the real party in
interest. Appeal Brief 3 (February 19, 2018, “Appeal Br.”).
2 Claims 17‒20 are canceled.
Appeal 2018-007955
Application 14/810,459

2
various combinations of prior art under 35 U.S.C. § 103. For the reasons set
forth below, we agree with the Examiner that the claims are directed to an
abstract idea and do not contain an inventive concept sufficient to transform
the claimed abstract idea into a patent-eligible application. Further, we
agree with the Examiner that the subject matter of claims 1‒16, 21, and 22 is
unpatentable under 35 U.S.C. § 103 as obvious over the prior art. We find,
however, that the Examiner failed to establish unpatentability of claims 23
and 24 over the prior art. Thus, we do not sustain the rejection of claims 23
and 24 under 35 U.S.C. § 103.
Because we sustain at least one rejection of each claim on appeal, we
AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter on appeal relates generally to games that
include instruction cards that dictate the move the player shall make after
drawing the card. Specification ¶ 7 (“Spec.”).3 The card may instruct the
player, for example, to move his own game piece or the opponent’s game
piece. Id.; see also claim 1. The card may, alternatively, instruct the player
to switch sides with an opponent. Id.; see also claim 2. The instruction
cards can be used with strategy games, such as chess, backgammon,
checkers, the Parcheesi® board game, etc., and with word games like the
Scrabble® board game. Id. ¶ 3.
Claims 1 and 23 are the independent claims. Claim 1 is representative
of the subject matter on appeal and is reproduced below.

3 Citations to the Specification are to the Substitute Specification filed on
September 22, 2015.
Appeal 2018-007955
Application 14/810,459

3
1. A game wherein a player and an opponent each
strategically move both their own games pieces and their
opponent’s game pieces, the game comprising
a plurality of player’s game pieces;
a plurality of opponent’s game pieces;
a plurality of physical cards, each physical card having a
face;
wherein said plurality of physical cards comprise a first
player piece card, an indicia of one of the player’s game pieces
on the face of the first player piece card, and a second player
piece card, an indicia of one of the opponent’s game pieces on
the face of the second player piece card;
wherein the player must randomly select one of the
plurality of physical cards before making each move; and,
wherein if the selected physical card is a first player
piece card the player must move the corresponding player’s
game piece and if the selected physical card is a second player
piece card the player must move the corresponding opponent’s
game piece.
Appeal Br. 21 (Claims Appendix).
EVIDENCE
The Examiner relies on the following evidence in the grounds of
rejection on appeal:
Harmening US 2006/0284374 A1 Dec. 21, 2006
Barker et al. (“Barker”) US 2014/0073389 A1 Mar. 13, 2014
“Playing cards with letters on a chess-board.” https://web.archive.org
/web/20110910092920/http://www.64g.ru/vtor/wgen1.htm
(published on website www.wordgame.64g.ru on Sept. 10, 2011)
(“Wordgame”) (last accessed Dec. 16, 2016).
Appellant relies on Declarations Under 37 C.F.R. § 1.132 of Stuart
Chagrin, Richard Gill, and Richard Gottlieb in support of patentability of
claims 2 and 3.
Appeal 2018-007955
Application 14/810,459

4
REJECTIONS
The Final Office Action, as modified by the Examiner’s Answer4,
includes the following rejections:
1. Claims 1‒16 and 21‒24 are rejected under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter.
2. Claims 1‒6, 15, 21, and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Harmening.
3. Claims 7‒14 and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Harmening and Wordgame.
4. Claims 23 and 24 are rejected under 35 U.S.C. § 103 as
unpatentable over Harmening, Wordgame, and Barker.
ANALYSIS
Rejection under 35 U.S.C. § 101
Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).

4 The Examiner modified the rejection under 35 U.S.C. § 103 of claim 8 to
correct a typographical error. Ans. 10, 17. Also, because claims 21 and 22
depend from claims 2 and 3, respectively, the Examiner modified the
rejection of claims 21 and 22 under 35 U.S.C. § 103 to be rejected based on
Harmening alone. Id. at 5. Appellant presented arguments in its Appeal
Brief in keeping with the claim rejections as modified in the Examiner’s
Answer. Appeal Br. 13, 18.
Appeal 2018-007955
Application 14/810,459

5
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191(“We
view respondents’ claims as nothing more than a process for molding rubber
Appeal 2018-007955
Application 14/810,459

6
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must 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, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
Earlier this year, the PTO published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
Appeal 2018-007955
Application 14/810,459

7
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 54–56.
Claim Grouping
Appellant argues claims 1‒16, 21, and 22 as a group. Appeal Br. 9‒
12. We select claim 1 as representative of the group, and claims 2‒16, 21,
and 22 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant further argues that claim 23, and its dependent claim 24, are
patentable “for the same reasons cited above for claim 1.” Appeal Br. 13.
Thus, the resolution of the appeal of the rejection under 35 U.S.C. § 101
turns on our analysis of the rejection as to claim 1.
Claim Scope
The preamble of claim 1 is directed to a “game.” The remainder of
the preamble, i.e., “wherein a player and an opponent each strategically
Appeal 2018-007955
Application 14/810,459

8
move both their own games pieces and their opponent’s game pieces,”
recites the intended use of the game.
The body of claim 1 recites certain physical components of the game
in a generic manner. Specifically, claim 1 recites that the game comprises “a
plurality of player’s game pieces” and “a plurality of opponent’s game
pieces.” These recitations are not specific as to the form of the game pieces.
The Specification describes an embodiment of the game suitable for use with
conventional chess pieces. Spec. ¶ 91. In the case of a chess game, for
example, the player’s game pieces could be the white chess pieces and the
opponent’s game pieces could be the black chess pieces. Id. The
Specification describes another embodiment of the game that may be used in
conjunction with board games such as the Scrabble® board game. Id. ¶ 113.
In the case of the Scrabble® board game, the game pieces used by both the
player and the opponent can be conventional Scrabble® letter tiles. In this
embodiment, the player’s game pieces would not differ physically from the
opponent’s game pieces, i.e., both the player and the opponent select game
pieces from the same pool of letter tiles. The Specification also describes
that the claimed game can be used in conjunction with other games,
including solitaire, backgammon, the Parcheesi® board game, and checkers.
Id. ¶ 127. Like the Specification, the independent claims do not require that,
for example, the player’s game pieces differ physically from the opponent’s
game pieces. The recitations of player’s game pieces and opponent’s game
pieces are so broad as to encompass any physical objects that can be used as
game pieces.
The body of claim 1 further recites “a plurality of physical cards, each
physical card having a face.” The Specification describes that the
Appeal 2018-007955
Application 14/810,459

9
instruction cards can be dice, “wherein a player may roll the dice and play
the move which appears on the top face of the dice.” Spec. ¶ 89. Figures
1A through 1L are illustrations of “piece cards” that are embodiments of the
claimed “physical card[s] having a face.” Spec. ¶¶ 13‒24. The generic
recitation in claim 1 of “a plurality of physical cards” is claimed broadly and
is not specific as to a particular number of cards, aside from having more
than one card, and is not specific as to any physical attributes of the cards.
Also, the fact that each card has a face is simply an inherent attribute of a
card itself and does not further define or meaningfully limit the claimed
cards.
We next look to the “wherein” clauses to help us further determine the
scope of the claims. The first “wherein” clause of claim 1 recites that the
plurality of physical cards comprise a first player piece card and a second
player piece card, where these cards contain certain indicia on them. Each
card’s marking communicates instructions to players indicating which game
piece they should move. Thus, the recited claim limitation is directed to
information. The printed indicia on each card are not functionally related to
the substrate of the card. Unlike in In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983), where digits were printed on a band in such a manner that the
digits exploited the endless nature of the band itself, and the particular
sequence of digits was critical to the invention disclosed in the claims, or In
re Miller, 418 F.2d 1392 (CCPA 1969), where the volumetric indicia on the
side of a cup created a specialized measuring cup, the indicia on each of
Appellant’s cards do not cause the card itself to become a manufacture with
new functionality. Rather, similar to In re Ngai, 367 F.3d 1336 (Fed. Cir.
2004), where a new set of instructions added to a known kit was held to
Appeal 2018-007955
Application 14/810,459

10
simply teach a new use for an existing product, here, the printed indicia on
each card simply teach a new use for an existing game, e.g., chess.
The second “wherein” clause of claim 1 recites that “the player must
randomly select one of the plurality of physical cards before making each
move.” This recitation describes rules for playing the game. In other words,
this “wherein” clause describes how the game is played, but does not further
limit any of the physical components of the game discussed above. This
second “wherein” clause is simply a statement of intended use, i.e., rules for
playing the game, using the claimed physical game pieces and cards.
Likewise, the third “wherein” clause of claim 1 recites additional rules
that the player must follow depending on whether the selected physical card
is a first player piece card or a second player piece card. Similar to the
second “wherein” clause discussed above, this recitation describes how the
game is played, but does not further limit any of the physical components of
the game. Thus, in determining the scope of claim 1, this third “wherein”
clause also is simply a statement of intended use, i.e., rules for playing the
game, using the claimed physical game pieces and cards.
Step One: Does Claim 1 Fall within a Statutory Category of § 101?
We now examine whether the claim recites one of the enumerated
statutory classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101.
Claim 1 is directed to a game, which is one of the statutory classes (i.e., a
manufacture) under 35 U.S.C. § 101.
Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception?
We next look to whether the claim recites any judicial exceptions,
including certain groupings of abstract ideas, i.e., mathematical concepts,
Appeal 2018-007955
Application 14/810,459

11
certain methods of organizing human activity such as a fundamental
economic practice, or mental processes.
Claim 1 recites “wherein the player must randomly select one of the
plurality of physical cards before making each move.” This, the second
“wherein” clause of claim 1, recites rules of the game, which rules call for
the player to do an action before doing another action. For instance, the rule
requires the player to randomly select a card by, for example, either drawing
a playing card or rolling a die or set of dice, before moving a game piece.
This “wherein” clause pertains to a player following rules or instructions on
how to play the game, which relates to managing personal behavior or
relationships or interactions between people. See In re Marco Guldenaar
Holding B.V., 911 F.3d 1157, 1160 (Fed. Cir. 2018) (holding that rules for
playing games “is one type of method of organizing human activity.”).
Managing personal behavior or relationships or interactions between people
falls within the abstract idea exception subgrouping of methods of
organizing human activity. Guidelines, 84 Fed. Reg. at 52. Thus, the
second “wherein” clause of claim 1 recites a method of organizing human
activity, which is a judicial exception.
Claim 1 further recites “wherein if the selected physical card is a first
player piece card the player must move the corresponding player’s game
piece and if the selected physical card is a second player piece card the
player must move the corresponding opponent’s game piece.” This, the
third “wherein” clause of claim 1, recites additional rules of the game, which
rules call for the player to do a particular action based upon the indicia on a
selected card. For instance, the Specification describes that “if the player
draws a black knight card, he must move a black knight on the chessboard.
Appeal 2018-007955
Application 14/810,459

12
If he draws a white rook card, he must move a white rook.” Spec. ¶ 93.
This “wherein” clause pertains to a player following rules or instructions on
how to play the game, which relates to managing personal behavior or
relationships or interactions between people. See Marco Guldenaar 911
F.3d at 1160. Managing personal behavior or relationships or interactions
between people falls within the abstract idea exception subgrouping of
methods of organizing human activity. Guidelines, 84 Fed. Reg. at 52.
Thus, the third “wherein” clause of claim 1 recites a method of organizing
human activity, which is a judicial exception.
Considered as a whole, the second and third “wherein” clauses
discussed above, under their broadest reasonable interpretation, contribute to
the rules of playing the game and recite steps for managing interactions
between people, which are methods of organizing human activity. These
limitations are similar to other processes that courts have determined are
methods of organizing human activity. See, e.g., Marco Guldenaar, 911
F.3d at 1160‒61 (holding that a claimed “method of playing a dice game”
was drawn to an abstract idea); In re Smith, 815 F.3d 816, 819 (Fed. Cir.
2016) (holding that a claimed “method of conducting a wagering game”
using a deck of playing cards was drawn to an abstract idea).
Step 2A, Prong Two: Does Claim 1 Recite Additional Elements that
Integrate the Judicial Exceptions into a Practical Application?
Following our Office guidance, having found that claim 1 recites a
judicial exception, we next determine whether the claim recites “additional
elements that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)–(c), (e)–(h)). See Guidance, 84 Fed. Reg. at 54.
Appeal 2018-007955
Application 14/810,459

13
Claim 1 further recites that the game comprises “a plurality of
player’s game pieces,” “a plurality of opponent’s game pieces,” and “a
plurality of physical cards, each physical card having a face.” As discussed
above in our interpretation of the claim language, the player and opponent
game pieces are recited generically and encompass any physical objects that
can be used as game pieces. Also, as discussed above, the physical cards are
recited generically and are not specific to any particular manifestation of the
cards, e.g., playing cards or dice. The only physical requirement of the cards
recited in this claim language is that each card has a face, which is an
inherent characteristic of the card itself.
Claim 1 further recites “wherein said plurality of physical cards
comprise a first player piece card, an indicia of one of the player’s game
pieces on the face of the first player piece card, and a second player piece
card, an indicia of one of the opponent’s game pieces on the face of the
second player piece card.” As discussed above, this wherein clause recites
printed matter that is not functionally related to the substrate of the card and
is used to convey information for a new use for an existing game. Printed
matter cannot be relied on as the practical application of an abstract idea.
See Marco Guldenaar, 911 F.3d at 1161 (“this court has generally found
printed matter to fall outside the scope of § 101”) (citing AstraZeneca LP v.
Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010)). See also Praxair
Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032 (Fed.
Cir. 2018) (“Claim limitations directed to the content of information and
lacking a requisite functional relationship are not entitled to patentable
weight because such information is not patent eligible subject matter under
35 U.S.C. § 101.”).
Appeal 2018-007955
Application 14/810,459

14
Thus, the methods of organizing human activity of claim 1 are recited
as being performed with generic game pieces and with generic physical
cards containing printed matter that, when considered both individually and
in combination, do not implement the judicial exception with, or use the
judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim. The recitations of the generic structures, with
which the recited steps are performed, are merely instructions to apply the
judicial exception in the context of a game. Thus, the claims do not apply,
rely on, or use rules of playing the game, i.e., the methods of organizing
human activity, in a manner that imposes a meaningful limit on those aspects
of the claim. See, e.g., Marco Guldenaar, 911 F.3d at 1162 (holding that
“[b]ecause the only arguably unconventional aspect of the recited method of
playing a dice game is printed matter, which falls outside the scope of § 101,
the rejected claims do not recite an ‘inventive concept’ sufficient to
‘transform’ the claimed subject matter into a patent-eligible application of
the abstract idea.”). Rather, the claim is simply a drafting effort designed to
monopolize the rules of playing the game of claim 1.
Under step one of the Alice inquiry, “we evaluate the focus of the
claimed advance over the prior art to determine if the character of the claim
as a whole, considered in light of the specification, is directed to excluded
subject matter.” Trading Technologies Int’l, Inc. v. IBG LLC, 921 F.3d
1084, 1092 (Fed. Cir. 2019) (citations and internal quotation marks omitted).
The claims are not directed to an improvement in the claimed game pieces.
Rather, the claims are directed to an improvement in the way the
conventional game is played through the use of playing cards, having printed
matter, which provides instructions to the player on how to play the game.
Appeal 2018-007955
Application 14/810,459

15
This asserted improvement to the manner in which a conventional game,
such as chess, is played does not reflect an improvement in the particular
manufacture, i.e., the game. Rather, the improvement lies in the rules for
playing the game, which is the judicial exception itself.
We acknowledge that the claims at issue are directed to a physical
game (see Appeal Br. 11), unlike the claims in Smith and Marco Guldenaar,
which were directed to a method of playing a game. This distinction does
not necessitate a different outcome in this instance due to the generic manner
in which the physical components of the game are claimed, and due to
Appellant’s reliance on printed matter as the inventive contribution. We
find the Court’s recent discussion in Chamberlain Group, Inc. v. Techtronic
Industries Co., No. 2018-2103 (Fed. Cir. August 21, 2019) instructive on
this point.
The court in Chamberlain Group held that apparatus claims for
communicating information about the status of a movable barrier, for
example, a garage door, were directed to an abstract idea. Slip op. at 3
(claim 1 reciting a “movable barrier operator”). The court determined that
the focus of the claimed advance over the prior art was directed to wirelessly
communicating status information about a system. Id. at 5. The court held
that “[t]he specification admits that the act of transmitting data wirelessly is
‘well understood in the art,’ and no other changes to the generically claimed
movable barrier operator are recited in the asserted claims or described in
the specification.” Id. at 7 (emphasis added). As to the physical nature of
the claim elements, the court stated “the mere physical nature of [patentee’s]
claim elements (e.g., controller, interface, and wireless data transmitter) is
not enough to save the claims from abstractness, where the claimed advance
Appeal 2018-007955
Application 14/810,459

16
is directed to the wireless communication of status information using off-
the-shelf technology for its intended purpose.” Id. at 8 (citing Marco
Guldenaar, 911 F.3d at 1161).
As in Chamberlain Group, the claims in this case use a generic game
where the claimed advance is the printed matter on the cards and the rules
for playing the game. Appellant does not assert that the general idea of
using playing cards having indicia printed on them in a game is an advance
in the field of gaming. See generally Appeal Br. 9–12. Rather, Appellant
argues that the particular indicia printed on the claimed plurality of playing
cards is the advance. Id. at 10 (arguing that the specific features of the
physical cards recited in the first wherein clause of claim 1 “distinguish the
cards from those of a standard deck,”5 and arguing that “[t]hese
distinguishing features of the physical cards are critical to play of the game”
as claimed in the subsequent wherein clauses of claim 1.)
Thus, the additional elements do not add meaningful limits to the
method of organizing human activity limitations recited in claim 1. Instead,
the generic game limitations are no more than instructions to apply the
judicial exception using generic game components.
For these reasons, the additional elements of claim 1 do not integrate
the judicial exception into a practical application. Thus, claim 1 is directed

5 Appellant does not identify what is meant in this argument by “a standard
deck.” Appeal Br. 11–12. We note that Harmening is directed to a modified
game of chess which employs a 52-card deck, where each card has a face
bearing indicia printed thereon representing one of the chess pieces.
Harmening ¶¶ 4, 8. Thus, as discussed further below, Appellant’s assertion
that the plurality of cards bearing the claimed indicia are a distinguishing
aspect of the claimed game is without merit.
Appeal 2018-007955
Application 14/810,459

17
to an abstract idea, which is a judicial exception to patent eligible subject
matter under 35 U.S.C. § 101.
Step 2B: Does Claim 1 Recite an Inventive Concept?
We next consider whether claim 1 recites any elements, individually
or as an ordered combination, that transform the abstract idea into a patent-
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217–18. The guidance similarly states, under Step 2B, “examiners should
. . . evaluate the additional elements individually and in combination . . . to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
84 Fed. Reg. at 56 (emphasis added).
As discussed above, the additional elements include generic
recitations of game pieces and physical cards bearing printed matter. These
additional elements do not add a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field. Rather, the claimed game pieces are recited at such a high level of
generality as to encompass any physical object capable of being used as a
game piece. And as discussed above, the Specification describes that the
game pieces can be conventional game pieces. Likewise, the claimed
physical cards having a face are recited at such a high level of generality as
to encompass a variety of physical objects, including conventional playing
cards or dice. Further, Appellant does not contend that the use generally of
playing cards and game pieces in combination is unconventional.
Appellant argues the specific claimed indicia on the cards correspond
to the piece movement for the player, and that “[t]he claimed cards are not
only a required physical apparatus of the game, but the indicia of the cards
Appeal 2018-007955
Application 14/810,459

18
transform conventional game play with the unconventional step of the player
needed to move either their own or their opponent’s game piece.” Appeal
Br. 11; see also id. at 12 (arguing that the claimed “original deck of cards”
survive step two of Alice). Reliance on printed matter, i.e., indicia printed
on the face of the cards, to survive step two of Alice, was foreclosed by the
court in Marco Guldenaar, 911 F.3d at 1161.
In our view, claim 1 fails to add a specific limitation beyond the
judicial exception that is not ‘well-understood, routine, conventional” in the
field, but instead “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.” See Guidance, 84 Fed. Reg. at 56. For
the reasons discussed above, we find no element or combination of elements
recited in claim 1 that contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 221.
For these reasons, we find no error in the Examiner’s rejection of
claim 1, and claims 2‒16 and 21‒24, under 35 U.S.C. § 101.
Rejections under 35 U.S.C. § 103
Rejection of clams 1‒6, 15, 21, and 22 over Harmening
Appellant argues claims 1, 4‒6, and 15 as a first group and claims 2
and 3 as a second group. Appeal Br. 16. We select claims 1 and 2 as
representative claims for each group. Claims 4‒6 and 15 stand or fall with
claim 1, and claim 3 stands or falls with claim 2. See 37 C.F.R.
§ 41.37(c)(1)(iv).
In the rejection of claim 1, the Examiner found that Harmening
teaches the claimed player and opponent game pieces and physical cards,
Appeal 2018-007955
Application 14/810,459

19
each having a face, comprising a first player piece card, an indicia of one of
the player’s game pieces on the face of the first player piece card, and a
second player piece card, an indicia of one of the opponent’s game pieces on
the face of the second player piece card. Final Act. 5 (citing Harmening,
Abst., ¶¶ 4, 10). The Examiner further found that Harmening teaches that
the player must select one of the physical cards before making a move and
that if the selected physical card is a first player piece card the player must
move the corresponding player’s game piece and if the selected physical
card is a second player piece card the player must move the corresponding
opponent’s game piece. Id. at 6 (citing Harmening, Abst., ¶¶ 4, 10). The
Examiner found that “Harmening may not explicitly teach certain aspects of
the printed material on the cards or some of the specific rules for
movements.” Id. at 6. The Examiner noted that where the printed matter is
not functionally related to the substrate, it will not patentably distinguish the
invention from the prior art. Id.
Appellant argues that although Harmening’s cards are marked with a
game piece, they are not marked with indicia which distinguish between
player’s game pieces and opponent’s game pieces. Appeal Br. 15. As noted
above in our interpretation of the claim language, the claimed indicia
marked on playing cards are printed matter that are not functionally related
to the substrate. Such printed matter cannot be relied on to patentably
distinguish the claimed playing cards from prior art cards bearing different
indicia. See In re Bryan, 323 Fed. App’x. 898, 901 (Fed. Cir. 2009) (holding
that printed matter indicia on touring band themed game cards and game
board that are not functionally related to the substrate are nonfunctional
printed matter that do not patentably distinguish over the prior art). The
Appeal 2018-007955
Application 14/810,459

20
court in Bryan, in response to arguments similar to those made by Appellant
here, noted that Mr. Bryan’s arguments that the printed matter is functionally
related because it allows the cards to be collected, traded, and drawn during
game play “pertain to the patentability of methods or processes of playing
the game, which are irrelevant to the apparatus claims at issue.” Id.
Applying the logic set forth in Ngai, 367 F.3d at 1339, the court in Bryan
explained that “if we were to accept Mr. Bryan’s arguments, it seems anyone
could patent the structure of a pre-existing game simply by changing the
game’s theme without changing its structure.” 323 Fed. App’x. at 901‒902.
Appellant also argues that Harmening does not teach a player moving
both the player’s game pieces and the opponent’s game pieces. Appeal
Br. 15 (arguing that “the present application includes unconventional moves,
such as the movement of an opponent’s piece”). This argument, and the
claim limitations relied on, do not distinguish the claimed game apparatus
structurally from Harmening’s game. Rather, the distinctions are directed to
the method of playing the game. The limitations relied on by Appellant are
directed to the intended use of the physical game components and do not
patentably distinguish these components over Harmening’s components.
See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled
that the recitation of a new intended use for an old product does not make a
claim to that old product patentable.”).
Claim 2 depends from claim 1 and recites that the plurality of physical
cards further comprises “a switch card, a switch indicia on the face of the
switch card, whereby when the switch card is drawn the player must switch
positions with the opponent, so that the player takes control of the
Appeal 2018-007955
Application 14/810,459

21
opponent’s game pieces and the opponent takes control of the player’s game
pieces.” Appeal Br. 21.
The Examiner held that Harmening teaches a switch card. Final
Act. 7 (citing Harmening ¶¶ 4, 10). Specifically, the Examiner explained
that “[t]he switch card does not impart structure into the claim and is
directed to printed matter and the intended use of the card. Such limitations
are not seen as providing patentable distinction over the prior art.” Id. at 7.
Appellant argues that “one skilled in the art would have no motivation
to modify Harmening to include the limitations of claim 2” and that the use
of the switch card of claim 2 “dramatically alters game play away from
conventional objectives of a chess game as taught by Harmening.” Appeal
Br. 16. Appellant also directs our attention to the Chagrin, Gottlieb, and Gill
declarations, which Appellant submitted to provide objective evidence of
non-obviousness of claims 2 and 3. Id. at 17.
As in our analysis of the argued limitations of claim 1, Appellant’s
arguments and evidence as to the distinguishing features of claim 2 do not
serve to patentably distinguish the claimed switch card from Harmening’s
cards. Specifically, the declarations focus on the use of the switch card in
playing the game and do not identify any patentably distinguishing physical
characteristic of the claimed switch card. Chagrin Dec. ¶¶ 6‒8; Gill Dec.
¶¶ 6‒7; Gottlieb Dec. ¶¶ 6‒7. As with the indicia recited in claim 1, the
claimed indicia printed on the switch card of claim 2 are not functionally
related to the substrate of the card. Thus, the indicia aspect of claim 2 is
printed matter that cannot be relied on to patentably distinguish over
Harmening’s cards. The remainder of claim 2 recites intended use of the
card, similar to the last two wherein clauses of claim 1. Thus, for the same
Appeal 2018-007955
Application 14/810,459

22
reasons discussed above, claim 2 does not patentably distinguish over
Harmening.
Appellant does not present additional arguments for claims 21 and 22,
which depend from claim 1, apart from the arguments raised in support of
claim 1. Appeal Br. 19.
For the reasons discussed above, we sustain the rejection of claims 1‒
6, 15, 21, and 22 under 35 U.S.C. § 103 as unpatentable over Harmening.
Rejection of claims 7‒14 and 16 over Harmening and Wordgame
Appellant argues claims 7‒14 and 16 as a group. Appeal Br. 18‒19.
We select claim 7 as representative. Claims 8‒14 and 16 stand or fall with
claim 7. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 7 depends from claim 1 and
recites “a game board, wherein the plurality of player’s game pieces and the
plurality of opponent’s game pieces each represents a letter, and wherein a
plurality of game pieces are placed on the game board to form a word.”
Appeal Br. 22.
The Examiner found that Wordgame teaches game pieces each
representing a letter and placed on a game board to form a word. Final
Act. 10. Appellant argues that “player’s and opponent’s decks are separated
in Wordgame, and a player is thereby prevented from selecting a card
corresponding to an opponent’s game piece or moving an opponent’s game
piece, as recited in claim 1 from which claim 7 depends.” Appeal Br. 18‒
19. Thus, Appellant contends that Wordgame does not cure the deficiency
in Harmening asserted in the rejection of claim 1. Id. Having found no
deficiency in the rejection of claim 1 over Harmening, we likewise sustain
the rejection of claims 7‒14 and 16 as unpatentable over Harmening and
Wordgame.
Appeal 2018-007955
Application 14/810,459

23
Rejection of claims 23 and 24 over Harmening, Wordgame, and Barker
Independent claim 23, and dependent claim 24, are directed to an
electronic game. Appeal Br. 24‒25. Claim 23 recites, in relevant part, that
when a first piece card is displayed on the screen of the electronic game, the
available moves for the player to move the corresponding player’s game
piece are highlighted on the board, and when a second piece card is
displayed on the screen of the electronic game, the available moves for the
player to move the corresponding opponent’s game piece are highlighted on
the board. Id. at 25.
The Examiner found that Barker teaches an electronic device having a
screen, a board displayed on the screen, and a virtual environment where
cards can be displayed. Final Act. 16 (citing Barker, Figs. 1‒3). The
Examiner determined it would have been obvious to modify Harmening to
include a virtual format of the game, as taught by Barker, so that
Harmening’s game can be played on-line. Id. (citing Barker ¶ 2).
Appellant argues that Barker, which is cited as providing an electronic
device having a screen, is not relied on to teach “virtual cards having indicia
of player’s and opponent’s game pieces or with respect to available moves
corresponding to the indicia of virtual cards.” Appeal Br. 19 (emphasis
added).
We understand claim 23 to require that the electronic game is
programmed to highlight the available moves based on the displayed virtual
card. The Examiner has not addressed this aspect of claim 23 in the
rejection and, particularly, has not explained what would have led one
having ordinary skill in the art, modifying Harmening to include a virtual
Appeal 2018-007955
Application 14/810,459

24
format as disclosed in Barker, to include the functionality to provide
highlighting of the available moves on the display.
For these reasons, we do not sustain the rejection of claims 23 and 24
under 35 U.S.C. § 103 as unpatentable over Harmening, Wordgame, and
Barker.
DECISION
We sustain the rejection of claims 1‒16 and 21‒24 under 35 U.S.C.
§ 101, the rejection of claims 1‒6, 15, 21, and 22 under 35 U.S.C. § 103 as
unpatentable over Harmening, and the rejection of claims 7‒14 and 16
under 35 U.S.C. § 103 as unpatentable over Harmening and Wordgame.
We do not sustain the rejection of claims 23 and 24 under 35 U.S.C.
§ 103 as unpatentable over Harmening, Wordgame, and Barker.
Because we sustain at least one ground of rejection as to each claim
on appeal, the decision of the Examiner as to the unpatentability of
claims 1‒16 and 21‒24 is affirmed.
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