Benjamin Radford et al.Download PDFPatent Trials and Appeals BoardMay 4, 202015694549 - (D) (P.T.A.B. May. 4, 2020) Copy Citation 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. 15/694,549 09/01/2017 Benjamin Radford FANDF101 8291 158147 7590 05/04/2020 Aaron Ward 401 Sherrow Ave Falls Church, VA 22046 EXAMINER WONG, STEVEN B ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 05/04/2020 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 BENJAMIN RADFORD and CELESTIA NAOMI WARD ____________ Appeal 2019-006003 Application 15/694,549 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–20. 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(a). Appeal 2019-006003 Application 15/694,549 2 THE INVENTION Appellant’s invention relates to puzzles. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. l. A puzzle comprising: a substrate; and a plurality of element fragments dispersed over the substrate and including a first set of element fragments corresponding to a first solvable element, and a second set of element fragments corresponding to a second solvable element; wherein the first solvable element is solvable according to a first fold configuration of the substrate to unify the first set of element fragments, wherein the first fold configuration is associated with a first difficulty level based on irregular folds from various predetermined but seemingly arbitrary angles; and wherein the second solvable element is solvable according to a second fold configuration of the substrate, different than the first fold configuration, to unify the second set of element fragments, wherein the second fold configuration is associated with a second difficulty level, greater than the first difficulty level, based on irregular folds from various predetermined but seemingly arbitrary angles different than those of the first difficulty level. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Wiederseim US 698,603 Apr. 29, 1902 Edborg US 2,327,875 Aug. 24, 1943 Ketch US 5,282,749 Feb. 1, 1994 Appeal 2019-006003 Application 15/694,549 3 The following rejections are before us for review: 1. Claims 1–18 are rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which a joint inventor regards as the invention. 2. Claims 1 and 4–15 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Edborg. 3. Claims 1–3 and 18 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Ketch. 4. Claim 19 is rejected under 35 U.S.C. § 102(a)(1) as anticipated by Wiederseim. 5. Claims 16 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over either Edborg or Ketch. 6. Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over Wiederseim. OPINION Indefiniteness of Claims 1–18 Claims 1 and 18 The Examiner considers that Appellant’s recitation of “irregular folds” renders the claim indefinite. Final Act. 2. “It is unclear what is irregular about the folds to identify them as ‘irregular’.” Id. Furthermore, the Examiner considers that it is unclear what there is about the folds that make one level in the puzzle more difficult than another. Id. Appellant asserts that the claims are not indefinite and that, generally, Appellant has acted as its own lexicographer to define the invention in the Specification. Appeal Br. 10. Appellant argues that a person of ordinary skill in the art would be able to derive the appropriate meaning to be given Appeal 2019-006003 Application 15/694,549 4 the claim terms at issue given the context contained in the claims and throughout the Specification and drawings. Id. at 12. In response, the Examiner considers “irregular” to be a term of degree and that the Specification fails to provide any standard for measuring such degree. Ans. 9. A claim is properly rejected as indefinite under 35 U.S.C. § 112 second paragraph if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam) (approving, for pre-issuance claims, the standard from MPEP § 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). In the instant case, the disputed term “irregular folds” infers that there is such a thing as a “regular” fold which is distinguishable from an “irregular fold.” We agree with the Examiner that it is unclear, even after reviewing the Specification, the drawings, and the surrounding claim language, how a person of ordinary skill in the art would distinguish between “regular” and “irregular” folds. Appellant’s Specification refers to “irregular folds from various predetermined but seemingly arbitrary angles.” Spec. ¶ 23. Likewise, Appellant contends that “[t]he claim language itself makes clear the boundaries of the subject matter for which protection is sought, by articulating which features of the folds are irregular, e.g., in a geometric sense (non-regular/non-symmetric) based on angles of the folds.” Appeal Br. 11. Appellant’s Specification, however, does not provide sufficient Appeal 2019-006003 Application 15/694,549 5 guidance from which a person having ordinary skill in the art would be able to distinguish between fold angles that would give rise to a regular/ symmetric fold and those that would give rise to a non-regular/ non-symmetric fold. Further in that regard, we note that there is no claim limitation that restricts the shape of the substrate. Thus, the substrate could be circular, oval shaped, or any of an almost infinite variety of geometric shapes. Without having a frame of reference, such as a defined shape of the underlying substrate, it is impossible for us to determine whether folding the substrate in any particular way would result in a fold that is “irregular” as opposed to “regular.” With respect to the “difficulty level” term at issue, we are not convinced that such term also renders the claim indefinite. The Examiner’s concern that users may differ as to whether one task is more or less difficult lacks evidentiary support. Appellant’s Specification provides examples of tasks with increased difficulty. Spec. ¶ 29 (multiple folds, nested solutions). Furthermore, there are objective means to determine if one task is more difficult than another. One means could be to measure the time it takes to complete the task. Another means could be to measure the error rate in the number of attempts to complete the task. To the extent that there may be individual differences among members of the population, such differences can be accounted for by selecting an appropriate sample size of potential users and then computing a statistical average and variance. In summary, we determine that claim 1 is rendered indefinite by the “irregular fold” claim language, but not the difficulty level language. In view of the foregoing, we sustain the Examiner’s Section 112 indefiniteness rejection of claims 1 and 18. Appeal 2019-006003 Application 15/694,549 6 Claims 2–17 These claims depend, directly or indirectly, from claim from claim 1 and are indefinite at least by reason of their dependency from claim 1. Final Act. 2. They fall with claim 1. Anticipation of Claims 1 and 4–15 by Edborg In traversing the Examiner’s anticipation rejection, Appellant argues that Edborg’s triangular fold angles are not “irregular.” Appeal Br. 18. Thus, the rejection turns on trying to read an indefinite claim term onto the prior art. It is well settled that a claim cannot be both indefinite and anticipated. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010); In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims). Because we have concluded that claim 1 is indefinite, the art rejection of claims 1 and 4–15 must fall because it is necessarily based on a speculative assumption as to the meaning of the claims. In re Steele, 305 F.2d 859, 862 (CCPA 1962). Under the circumstances, therefore, we reverse the Examiner’s Section 102 anticipation rejection of claims 1 and 4–15 over Edborg. Anticipation of Claims 1–3 and 18 by Ketch We reverse the Examiner’s Section 102 anticipation rejection of claims 1–3 and 18 over Ketch for the same reasons expressed above with respect to the Section 102 anticipation grounds over Edborg. Appeal 2019-006003 Application 15/694,549 7 Anticipation of Claim 19 by Wiederseim Claim 19 is an independent claim. Claims App. Claim 19 differs in scope from claim 1 in that omits irregular folds and angles, but includes a “distraction element.” Id. Claim 19 is also limited to a book format. Id. In traversing the rejection, Appellant argues that Wiederseim fails to disclose resolving two different elements in successive steps. Appeal Br. 26. Appellant argues that Wiederseim solves two elements in one step. Id. In response, the Examiner takes the position that claim 19 does not require first and second fold configurations. Ans. 15. In other words, the claim can be satisfied by resolving the puzzle in a single step. In reply, Appellant reiterates that Wiederseim is solved in a single step. Reply Br. 5. Consequently, according to Appellant, it is not possible for solution of the first element to decrease the difficulty in the second element. Id. Wiederseim is directed to a book or pamphlet that is arranged to present a plurality of pairs of illustrations. Wiederseim, Figs. 1–4; p. 1, ll. 8–22. The left side of each pair consists of one half of an illustration, such as one half of an animal (the head). Id. The right side of each pair contains the corresponding matching half of such animal (the tail). Id. The pages are folded and arranged in such a manner that a user can flip through the pages on the left side of the pamphlet and flip through the pages on the right side of the pamphlet until a corresponding matched pair of illustrations depict a completed animal. Id. The name of the animal also appears above the picture of the animal. Id. One half of the name appears on the left page and the other half on the right page. Id. Thus, when the animal picture is Appeal 2019-006003 Application 15/694,549 8 completed by correctly matching the left and right halves of the picture, the name of the animal is also completed. Id. Until the corresponding left and right halves of a picture are correctly matched, the pamphlet displays an incorrect half-picture and half-name. Id. For example, in Figure 2, the pamphlet displays a half-picture and half-name of a monkey on the left and an elephant on the right. Id. Fig. 2. If the user is attempting to solve the puzzle for the elephant, the half-monkey name and picture serves as a distraction element that introduces a distracting ambiguity to solving the puzzle. The dispute between Appellant and the Examiner boils down to whether claim 19 requires the puzzle to be solved in two separate and sequential steps as opposed to a single step. The Examiner’s position is that the claim does not explicitly require two separate and sequential steps. Under the Examiner’s approach, solving the second (name) element is less difficult than solving the first (picture) element, because the difficulty level of solving the name element is essentially zero once the picture element is solved. Appellant does not argue that claim 19 explicitly recites two separate and sequential steps. Appeal Br. 24–27. Instead, Appellant essentially asks us to infer that the claim requires separate and sequential steps so that the difficulty of the first step can be compared to the difficulty of the second step. Using a broad, but reasonable, construction of the claim language, we agree with the Examiner that the limitations of claim 19 are satisfied by Wiederseim. There are two solvable elements, namely a picture element and a name element. Wiederseim, Figs. 1–4. There is little or no difficulty in solving the name element once the picture element is solved. Rather than Appeal 2019-006003 Application 15/694,549 9 infer limitations of separate and sequential steps when the claim contains no such explicit limitation, we think the better approach is for Appellant, in the event of further prosecution of the claimed subject matter, to amend the claim so that it explicitly claims what Appellant wants us to infer. We sustain the Examiner’s Section 102 anticipation rejection of claim 19. Unpatentability of Claims 16 and 17 over Either Edborg or Ketch Claims 16 and 17 depend, directly or indirectly, from claim 1. In view of our determination that claim 1 is indefinite, we reverse the Examiner’s art rejection of claims 16 and 17. Steele, 305 F.2d at 862. Unpatentability of Claim 20 over Wiederseim Claim 20 depends from claim 19 and adds the limitation: wherein the plurality of substrates are removable from the puzzle, and wherein the plurality of substrates are to form at least one solvable aggregate element based on element fragments dispersed among the plurality of substrates when the plurality of substrates are arranged in a layout configuration. Claims App. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to make the pages of Wiederseim removable from the book. Final Act. 5 (incorporating findings from February 2, 2018 Non Final Action 6). In traversing the rejection, Appellant merely recites a plethora of generic legal principles that apply to obviousness rejections, together with a blanket statement that the claim elements are not met by the prior art. Appeal Br. 27–28. Such does not rise to the level of a substantive argument Appeal 2019-006003 Application 15/694,549 10 for the patentability of claim 20. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Appellant fails to apprise us of error with respect to either the Examiner’s findings of fact or legal conclusion of obviousness. We sustain the Examiner’s Section 103 unpatentability rejection of claim 20 over Wiederseim. CONCLUSION Claims Rejected § Reference(s)/Bases Affirmed Reversed2 1-18 112 Indefiniteness 1-18 1, 4-15 102 Edborg 1, 4-15 1-3, 18 102 Ketch 1-3, 18 19 102 Wiederseim 19 16, 17 103 Edborg 16, 17 16, 17 103 Ketch 16, 17 20 103 Wiederseim 20 Overall Outcome 1-20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 2 The reversal of the art rejections in this case are pro forma reversals under In re Steele, 305 F.2d 859, 862 (CCPA 1962) and should not be construed as resolving any factual issues related to the substantive merits of the rejections. Copy with citationCopy as parenthetical citation