Ex Parte Griffith

Patent Trial and Appeal Board

Nov 7, 2013

11560134 (P.T.A.B. Nov. 7, 2013)

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.
11/560,134 11/15/2006 Michael Griffith 06-5017P 5244
28143 7590 11/08/2013
NATTER & NATTER
501 FIFTH AVENUE
SUITE 808
NEW YORK, NY 10017
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
11/08/2013 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 MICHAEL GRIFFITH
____________________

Appeal 2011-013727
Application 11/560,134
Technology Center 3700
____________________

Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013727
Application 11/560,134

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
22 and 24-30. Claims 1-21 and 23 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a global property trading board game.
Independent claim 22 is reproduced below:
22. A method for playing a global property trading
game with a plurality of players, said game including a
substantially planar game board, said game board having a
pattern thereon defining a continuous travel path, said travel
path being divided into a plurality of stations, at least some of
said stations being country-designated stations, with at least
some of said country-designated stations being denoted as
starting stations, said starting stations having identifying
indicia, said country-designated stations being grouped to
define a plurality of color-coded global regions, each of said
country-designated stations further being assigned a monetary
asset evaluation, a plurality of business cards each having a
designated monetary value, a plurality of game-pieces color-
coded for correspondence with the global regions, said game-
pieces being adapted for movement within said stations, a set of
three dice having markings on its faces, at least two of said dice
having numerical markings on each of its faces, with one of
said three dice being differentiated from the other two dice,
whereby a roll of the dice will randomly provide an upturned
face on each of the dice, comprising the steps of:
a) distributing the business cards to each player in pre-
determined monetary amounts,
b) rolling the single differentiated die in turn by each
player,
c) determining a player's initial starting station on the
game board by correspondence of the identifying indicia with
the markings on the upturned face of said differentiated die,
Appeal 2011-013727
Application 11/560,134

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d) assigning the player a color-coded global region as
determined by the player's starting station,
e) selecting a game-piece color-coded in correspondence
with the global region for placement on the starting station,
f) rolling said three dice to determine the extent of
movement along the travel path of the player's game-piece,
g) advancing the game-piece from the initial starting
station to another starting station having identifying indicia
corresponding to the markings on the upturned face of the
differentiated die,
h) adding the numerical markings on the upturned faces
of the remaining two dice,
i) moving the game-piece the equivalent amount of
stations represented by the sum of the numerical markings
appearing on the respective upturned faces of the two dice, and
then
j) optionally purchasing non-owned assets of the country-
designated station in which the player's game-piece has been
moved by surrendering the player's business cards in the
equivalent value of the assigned monetary asset evaluation
wherein the player acquiring and holding the most country-
designated station assets within the respective player's global
region being declared the winner.

GROUNDS OF REJECTION
Claims 22 and 24-30 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

OPINION
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. While “Congress plainly
contemplated that the patent laws would be given wide scope,” Bilski v.
Kappos, 130 S. Ct. 3218, 3225 (2010) (quoting Diamond v. Chakrabarty,
Appeal 2011-013727
Application 11/560,134

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447 U.S. 303, 308 (1980)), “[t]he Court’s precedents provide three specific
exceptions to § 101’s broad patent-eligibility principles: ‘laws of nature,
physical phenomena, and abstract ideas.’” Id. (quoting Diamond, 447 U.S.
at 309).
The Court’s precedents first point to the machine-or-transformation
test as “an investigative tool . . . for determining whether some claimed
inventions are processes under §101.” Bilski, 130 S. Ct. at 3227; see also
Interim Guidance for Determining Subject Matter Eligibility for Process
Claims in View of Bilski vs. Kappos, 75 Fed. Reg. 43,922, 43,924 (July 27,
2010). The machine-or-transformation test asks whether a claimed process
is: (1) “tied to a particular machine or apparatus, or (2) transforms a
particular article into a different state or thing.” Bilski, 130 S. Ct. at 3225
(quoting In re Bilski, 545 F. 3d 943, 954 (Fed. Cir. 2008) (en banc))
(emphasis added).
The Examiner determines that the “[c]laims do not require that [the]
method be implemented by a particular machine and [the] claims do not
require that the method particularly transform a particular article.” Ans. 3.
Appellant argues that “[i]ndependent Claim 22 and dependent
claim[s] 24 - 30 require implementation by a particular game apparatus,
namely the combination of the physical, tangible, and real, game
components including, the game board that defines a travel path having
stations [and] the game-pieces adapted for movement on the game board.”
App. Br. 9-10. We agree. The claims at issue require a specific apparatus
set forth therein in order to be performed. The Examiner errs in determining
that the method can be performed without the apparatus.
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Application 11/560,134

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Accordingly, we do not sustain the Examiner’s rejection of claims 22
and 24-30.

DECISION
The Examiner’s rejection of claims 22 and 24-30 is REVERSED.

REVERSED

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