Mark H. Small

Patent Trials and Appeals Board

Dec 26, 2019

14047370 - (D) (P.T.A.B. Dec. 26, 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.
14/047,370 10/07/2013 Mark H. Small 2013-112 9463
27569 7590 12/26/2019
PAUL AND PAUL
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
EXAMINER
LEICHLITER, CHASE E
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
INFO@PAULANDPAUL.COM
claire@paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK H. SMALL1
____________

Appeal 2018-005259
Application 14/047,370
Technology Center 3700
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, and 4−30 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
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 Small Games,
Co. (App. Br. 2.)
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THE INVENTION
The Appellant’s claimed invention relates to a crossword-type game
played with letters to make words on a grid (Spec. 1, lines 7−9). Claim 11,
reproduced below with the italics added, is representative of the subject
matter on appeal.

11. A method of operating a crossword game system for
playing a crossword game in an electronic environment,
including:
storing the game program on a system server;
connecting a plurality of player playing devices to said
system server when each player logs on;
providing each player with an identical electronic grid
game board on which to build words and crosswords;
providing each player with an identical set of electronic
alphabet letter tiles with the identical set of respective point
values with which to build words and crosswords, said tiles
each electronically having a point value selected from one to
three, wherein there may be duplicate alphabet letter tiles with
identical or different point values;
providing each player with a set of three wild tiles each,
exclusively, having one of the point values from one to three,
wherein each of said wild tiles may be interchanged with a tile
of any alphabet letter, being assigned the same point value as
the wild tile interchanged; and
connecting an administrator console to said server, said
administrator console being usable to upload a new one of the
set of electronic alphabet letter tiles and three wild tiles to said
server for each day as a DAILY CHALLENGE crosswords
game competition to the players;
wherein said set of electronic alphabet tiles contains 21
tiles, and wherein said electronic grid game board is 7-by-7
rows and columns, thereby providing 49 letter tile blocks; and
wherein each player plays the game individually such
that the play of each individual player during a game is not
affected by the play of other players or any opponent.

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THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 2 and 4−30 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter (i.e., an abstract idea) without
significantly more.
2. Claims 1, 2 and 4−30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Patnoe (US 2013/0231167 A1, pub. Sept. 5, 2013) and
Crossword Scrabble, SoloWords, Webcrosswords.com (last visited: Aug. 20,
2010) (“SoloWords”).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 11 is improper
because the claim is not directed to an abstract idea (App. Br. 18−25; Reply
Br. 3–7). The Appellant further argues that the claim is “significantly more”
than the alleged abstract idea (App. Br. 25, 35; Reply Br. 8−16).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 3−9, 24−35; Ans. 3−9, 20−39).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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We agree with the Examiner. 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).
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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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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
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. (internal citation omitted) (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.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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 human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a
manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort
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designed to monopolize the judicial exception.” (see Guidance,
84 Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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
is 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.
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 (citation 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.
The Specification at page 1 states that the invention generally relates
to a “crossword-type game played with letters to make words on a grid”.
The Examiner has determined that the claim sets forth a variation of a
known crossword games having rules for conducting the game and are
directed to organizing human activities and an abstract concept (Ans. 21).
We substantially agree with the Examiner. Here, the claim sets forth a
method of playing a crossword game subject to a series of rules which is a
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certain method of organizing human activities i.e. a judicial exception. In re
Smith, 815 F.3d 816 (Fed. Cir. 2016) held a claimed “method of conducting
a wagering game” using a deck of playing cards was drawn to an abstract
idea. In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018)
held that a method of playing a dice game with a wager was an abstract
concept. In that case is was held that claims directed to the “rules for
playing a dice game” were held to be an abstract concept. Id. at 1160, 1161.
Here, the claims at issue here are largely drawn to a crossword game and
similarly a game subject to a set of rules and we thus consider the claim set
forth a certain method of organizing human activities, i.e., a judicial
exception.
Thus, we consider the claim to recite a judicial exception as identified
above.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c)
and (e)–(h).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
For example, in claim 11 the steps of [1] “storing the game program”,
[2] “connecting a plurality of player playing devices to said system server”,
[3] “providing each player with an identical electronic grid game board”, [4]
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providing each player with an identical set of electronic alphabet letter tiles”,
[5] “providing each player with a set of three wild tiles each”, and [6]
“connecting an administrator console to said server” are merely steps
performed by a generic computer that do not improve computer
functionality. That is, these recited steps [1]–[6] “do not purport to improve
the functioning of the computer itself” but are merely generic functions
performed by a generic processor. Likewise, these same steps [1]–[6] listed
above do not improve the technology of the technical field and merely use
generic computer components and functions to perform the steps. Also, the
recited method steps [1]–[6] above do not require a “particular machine” and
can be utilized with a general purpose computer, and the steps performed are
purely conventional. In this case the general purpose computer is merely a
tool to perform the above-identified abstract idea. Further, the claim as a
whole fails to effect any particular transformation of an article to a different
state. The recited steps [1]–[6] fail to provide meaningful limitations to limit
the judicial exception and rather are mere instructions to apply the abstract
idea with a generic computer.
Considering the elements of the claim both individually, and as an
ordered combination, the functions performed by the computer system at
each step of the process are purely generic. Each step of the claimed method
does no more than require a generic computer to perform a generic computer
function. Thus, the claimed elements have not been shown to integrate the
judicial exception into a practical application as set forth in the Revised
Guidance which references the MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
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Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The claim both individually and as an ordered combination fails to add
subject matter beyond the judicial exception that is not well-understood,
routine, and conventional in the field. Rather the claim uses well-
understood, routine, and conventional activities previously known in the art
and they are recited at a high level of generality. The Specification at page
10 for example describes using conventional computer components such as a
PC, the Internet, and a server in a conventional manner. The claim
specifically includes recitations for computers to implement the method but
these computer components are all used in a manner that is well-understood,
routine, and conventional in the field. Thus, the record evidences that the
claimed computer components which are used to implement the claimed
method are well understood, routine, or conventional in the field; and the
Appellant has not persuasively shown otherwise.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same or similar arguments for the remaining
claims which are drawn to similar subject matter and the rejection of these
claims is sustained as well.

Rejection under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitations for:
providing each player with an identical electronic grid game
board on which to build words and crosswords; providing each
player with a set of three wild tiles each, exclusively, having
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one of the point values from one to three, wherein each of said
wild tiles may be interchanged with a tile of any alphabet letter,
being assigned the same point value as the wild tile
interchanged; and wherein said set of electronic alphabet tiles
contains 21 tiles, and wherein said electronic grid game board is
7-by-7 rows and columns, thereby providing 49 letter tile
blocks.

(App. Br. 69, 70).
In contrast, the Examiner at pages 36 and 37 of the Answer has
determined that rejection of record discloses or suggests the cited claim
limitations.
We agree with the Examiner. Here, Patnoe for instance discloses a
grid board (Fig. 2), tiles with letter and point values (para. 20), the use of
“wildcard tiles” (para. 22), as well as being used in an electronic game
format. SoloWords describes using a “crossword” scrabble type format. We
agree with the Examiner that the claimed use of 7-by-7 rows and column
format would have been obvious in the cited combination as one of ordinary
skill in the art would have readily inferred that the size of the game board
could be varied based on the skill of the individual players. The Appellant
also argues that neither Patnoe nor SoloWords disclose a “crossword where
the words can overlap by having letters in common” (App. Br. 69), but this
is not a limitation to the claim. Regardless, SoloWords does disclose a
“crossword scrabble” game where such a feature is known.
The Appellant also argue that Patnoe is not a prior art reference by
providing a Declaration to show the Appellant conceived and reduced to
practice the invention of claims 1, 2, and 4−30 prior to the filing date of
Patnoe (App. Br. 74). The Examiner has determined that the Declaration
and Exhibit A (Wordstar) fail to disclose facts to establish the claim
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limitation for “wherein each player’s total score is counted after the player
has completed the game, as a function of word point values being
cumulative of individual tile point values and any bonus points and any
point deductions, for comparison of that player’s total score with one or
more other players’ total scores” (Ans. 37, 38 (emphasis omitted)). We
agree with the Examiner’s determination in this regard. With regard to
claim 11, it is unclear that the Wordstar document provides support, for
example, “duplicate alphabet letter tiles or different point values”. With
regard to claim 25, the exhibit fails to provide support for the claimed
connection to a “FACEBOOK play selection”. With regard to claim 26, the
exhibit fails to provide support for the claim limitation “said server
programmable structure being capable of manipulating the movement of said
alphabet tiles to said grid game board in response to instructions from a
player’s electronic communications device”.
Thus, we agree with and adopt the Examiner’s determination and the
rejection of claim 1 is sustained. The Appellant has provided the same or
similar arguments for claims 11, 25 and 26 which are drawn to similar
subject matter and the rejection of these claims is sustained as well.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1, 2 and 4−30 under 35 U.S.C. § 101.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1, 2 and 4−30 under 35 U.S.C. § 103(a) as
unpatentable over Patnoe and SoloWords.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4−30 101 Eligibility 1, 2, 4−30
1, 2, 4−30 103 Patnoe, SoloWords 1, 2, 4−30
Overall
Outcome
1, 2, 4−30

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