14819740 - (D) (P.T.A.B. Dec. 23, 2019)

Bryant Rushing

Patent Trials and Appeals BoardDec 23, 2019

14819740 - (D) (P.T.A.B. Dec. 23, 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. 14/819,740 08/06/2015 Bryant Rushing TUP25496 8589 62439 7590 12/23/2019 SINORICA, LLC 20251 Century Blvd. Suite 140 Germantown, MD 20874 EXAMINER BALDORI, JOSEPH B ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 12/23/2019 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): SINORICA@GMAIL.COM pair@sinorica.com sinorica@outlook.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRYANT RUSHING ____________________ Appeal 2018-002603 Application 14/819,740 Technology Center 3700 ____________________ Before MICHAEL L. HOELTER, RICHARD H. MARSCHALL, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–3 and 5–23 (entered Mar. 21, 2017, “Final Act.”).2 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 Bryant Rushing as the real parties in interest. Appeal Br. 2. 2 Claim 4 has been cancelled. Id. Appeal 2018-002603 Application 14/819,740 2 THE CLAIMED SUBJECT MATTER Appellant’s invention “relates to a multi-player combative war strategy game that utilizes specific items and placement to affect the players' outcome.” Spec. 1. Claims 1 and 21 are independent. Claim 1 is reproduced below and is representative of the claimed subject matter. 1. A strategy game system comprising: a plate member; the plate member being generally flat; the plate member comprising a playing surface, a plurality of marked landing regions and at least one raised region; at least one game coin; the at least one game coin being adapted to be placed on the plate member for shooting via a cue stick into one of the plurality of marked landing regions and the at least one raised region; the plate member further comprising a track region and a course region; the course region being located in a center of the plate member; the track region being located on a periphery of the plate member; the plate member further comprising a track rail; the track rail being positioned in between the track region and the course region; the track region and the course region being separate from each other via the track rail; the plate member further comprising at least one passage for the at least one game coin; the at least one passage being formed on the track rail; and the track region and the course region being communicated with each other via the at least one passage such that the at least one game coin being capable of entering the course region from the track region through the at least one passage. Appeal 2018-002603 Application 14/819,740 3 REJECTIONS References Basis 35 U.S.C. Claims Rejected § 112(d) 8–11, 15, 16, 18, 23 § 112(b) 9, 10, 16, 17, 18, 21, 22, 23 Chambless3, Bakken4 § 103 1, 2, 5–13, 21, 23 Chambless, Bakken, Guyer5 § 103 3, 14–16, 18 Chambless, Bakken, Guyer, Weigl6 § 103 17 Chambless, Bakken, Guyer, Casey7 § 103 19 Chambless, Bakken, Stromberg8 § 103 20 Chambless, Bakken, Dunham9 § 103 22 ANALYSIS I. Section 112 Rejections Appellant does not identify any disputed issues with the Examiner’s rejections of claims 8–11, 15, 16, 18 , and 23 under 35 U.S.C. § 112(d) and claims 9, 10, 16, 17, 18, 21, 22, and 23 under 35 U.S.C. § 112(b). See Appeal Br. 7–13. Therefore, we summarily affirm these rejections. 3 US 2012/0235353 A1, pub. Sept. 20, 2012 (“Chambless”). 4 US 2,684,849, iss. July 27, 1954 (“Bakken”). 5 US 8,951,135 B1, iss. Feb. 10, 2015 (“Guyer”). 6 US 7,503,564 B2, iss. Mar. 17, 2009 (“Weigl”). 7 US 3,871,650, iss. Mar. 18, 1975 (“Casey”). 8 US 2005/0275164 A1, pub. Dec. 15, 2005 (“Stromberg”). 9 US 2,159,966, iss. May 30, 1939 (“Dunham”). Appeal 2018-002603 Application 14/819,740 4 II. Section 103 Rejections Regarding the Examiner’s rejections of claims 1–3 and 5–23 under 35 U.S.C. § 103 in view of various combinations of Chambless, Bakken, Guyer, Weigl, Casey, Stromberg, and Dunham, Appellant only contests the obviousness rejection of claims 1, 2, 5–13, 21, and 23 in view of Chambless and Bakken. See Appeal Br. 7–13. Moreover, Appellant contests that rejection of claims 1, 2, 5–13, 21, and 23 collectively. See id. Therefore, we select claim 1 as representative and the remaining claims will stand or fall with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant makes two arguments against the Examiner’s obviousness rejection of claim 1. Appellant argues first that the Examiner erred in finding Bakken shows a “plate member further comprising a track rail,” and argues second that the Examiner erred in finding Bakken shows “at least one passage being formed on the track rail,” as recited by claim 1. Appeal Br. 7– 13. In both arguments, Appellant contends that the Examiner’s findings are erroneous because the guiding strip 6 in Bakken is “multi-layered.” Id. at 9, 12. Additionally, Appellant’s second argument suggests that the Examiner’s rejection is improper because Bakken’s guiding strip 6 “completely encircl[es] the course region 10.” Id. at 12. The Examiner found Appellant’s arguments unpersuasive because all of the limitations that claim 1 recites “have been met and it appears that Appellant is reading limitations into the claims that do not currently exist.” Ans. 17. We agree. “Limitations not recited in a claim cannot be relied upon to impart patentability to that claim.” In re Teter, 158 F.2d 1007, 1010 (CCPA 1947). Appeal 2018-002603 Application 14/819,740 5 In this case, Appellant fails to recognize that “the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Appellant does not identify any specific claim language that limits “a track rail” to a single layer between the track region and the course region or limits “a passage being formed on the track rail” to a single layer that does not completely encircle the course region. Appeal Br. 7–12. Although we are directed to the description of an exemplary embodiment in the Specification that includes the alleged distinguishing attributes, Appellant does not provide any argument or analysis why the Specification’s description of an exemplary embodiment properly limits the scope of the claims. Id. at 8, 11. “Just as it is improper to ‘import[ ] limitations from the specification into the claims,’ Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005), however, a preferred embodiment disclosed in the specification cannot impart structure to a term that otherwise has none.” MTD Products Inc. v. Iancu, 933 F.3d 1336, 1342–43 (Fed. Cir. 2019). As with all lexicography, “[i]t is not enough for a patentee to simply disclose a single embodiment.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Rather, “the patentee must ‘clearly express an intent’ to redefine [a] term.” Id. (quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008)). In addition, because claim 1 recites the transitional term “comprising,” it can include additional structural features. MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377, 1383 (Fed. Cir. 2012) (“Open claim language, such as the word ‘comprising’ as a transition from the preamble to the body of a claim, ‘signals that the entire claim is presumptively open-ended.’” (citing Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005)). Appeal 2018-002603 Application 14/819,740 6 Because both arguments depend on points of distinction that are not supported by the recited elements of the claims, Appellant has not apprised us of an error with the Examiner’s finding that Bakken shows a “plate member further comprising a track rail” and “at least one passage being formed on the track rail,” as recited by claim 1. Therefore, because Appellant does not challenge any other aspect of the Examiner’s rejections of claims 1–3 and 5–23 under 35 U.S.C. § 103 in view of the various combinations of Chambless, Bakken, Guyer, Weigl, Casey, Stromberg, and Dunham, we sustain all of the Examiner’s obviousness rejections. DECISION The Examiner’s rejections of claims 1–3 and 5–23 are affirmed. Claims Rejected Basis 35 U.S.C. Reference(s)/Basis Affirmed Reversed 8–11, 15, 16, 18, 23 § 112(d) Improper Dependency 8–11, 15, 16, 18, 23 9, 10, 16, 17, 18, 21, 22, 23 § 112(b) Indefiniteness 9, 10, 16, 17, 18, 21, 22, 23 1, 2, 5–13, 21, 23 § 103 Chambless, Bakken 1, 2, 5– 13, 21, 23 3, 14–16, 18 § 103 Chambless, Bakken, Guyer 3, 14–16, 18 17 § 103 Chambless, Bakken, Guyer, Weigl 17 19 § 103 Chambless, Bakken, Guyer, Casey 19 20 § 103 Chambless, Bakken, Stromberg 20 22 § 103 Chambless, Bakken, Dunham 22 Appeal 2018-002603 Application 14/819,740 7 Claims Rejected Basis 35 U.S.C. Reference(s)/Basis Affirmed Reversed Overall Outcome 1–3, 5–23 FINALITY AND 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED