Mark HUMM

Patent Trials and Appeals Board

Mar 17, 2022

2021004741 (P.T.A.B. Mar. 17, 2022)

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. 16/245,408 01/11/2019 Mark HUMM 404-320.002-2 8032 4955 7590 03/17/2022 WARE, FRESSOLA, MAGUIRE & BARBER LLP BRADFORD GREEN, BUILDING 5 755 MAIN STREET MONROE, CT 06468 EXAMINER WONG, STEVEN B ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 03/17/2022 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): mail@warefressola.com uspatents@warefressola.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARK HUMM ____________ Appeal 2021-004741 Application 16/245,408 Technology Center 3700 ____________ Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and LISA M. GUIJT, 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 30-34, 36-46, 48, and 49. 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 2021-004741 Application 16/245,408 2 CASE POSTURE The patent application before us is a continuation-in-part (CIP) application of non-provisional patent application No. 14/867,447, filed September 28, 2015 (the “Parent Application”). The Parent Application came before the Board on appeal which resulted in the affirmance of a final rejection of all then pending clams as unpatentable under 35 U.S.C. § 103 over the same Wolf, Baum, and McCarty references that are cited by the Examiner in the rejection currently under review in the instant case. Ex parte Humm, Appeal No. 2018-003202 (PTAB, Dec. 4, 2018). After the Board issued its decision in the Parent Case, Appellant allowed the Parent Application to become abandoned. See Jan. 14, 2019, Notice of Abandonment in Parent Application. On January 11, 2019, Appellant filed the application currently under review as a CIP of the abandoned Parent Application. Eventually, Appellant filed amended claims including claim 30, which is substantially similar in scope to that of claim 1 of the Parent Application, the rejection of which was previously affirmed by the Board. After considering Appellant’s amended claims, the Examiner entered a final rejection of all pending claims, including the rejection of claim 30 over Wolf, Baum, and McCarty. Final Act. 2. On February 1, 2021, Appellant filed a Notice of Appeal initiating the instant appeal. Thereafter, Appellant filed an Appeal Brief. See generally Appeal Br. On page 2 of the Appeal Brief, Appellant made the following declarative statement under a sub-heading captioned RELATED APPEALS AND INTERFERENCES: “There are no related appeals or interferences.” Appellant’s statement cites 37 C.F.R. § 41.37(c)(1)(ii) of our Rules which Appeal 2021-004741 Application 16/245,408 3 govern appeals to the Board. Such rule provides, in pertinent part, as follows: 37 CFR 41.37 Appeal brief. (a) . . . Appellant must file a brief under this section . . . (c) Content of appeal brief. (1) . . . the brief shall contain the following items under appropriate headings . . . (ii) Related appeals, interferences, and trials. A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences, trials before the Board, or judicial proceedings (collectively, “related cases”) which satisfy all of the following conditions: involve an application or patent owned by the appellant or assignee, are known to appellant, the appellant’s legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal, except that such statement is not required if there are no such related cases. If an appeal brief does not contain a statement of related cases, the Office may assume that there are no such related cases. (emphasis added). We are at a loss to comprehend how or why Appellant could have affirmatively represented to us that “[t]here are no related appeals or interferences” in view of the Parent Application and its unsuccessful appeal to the Board. Appeal Br. 2. This is particularly so given the substantial similarity of the claims in the Parent Application and the instant appeal, and the near identity of prior art relied on by the Examiners in the Parent Application and the instant appeal. Appeal 2021-004741 Application 16/245,408 4 THE INVENTION Appellant’s invention relates to puzzles. Spec. 1. Claim 30, reproduced below, is illustrative of the subject matter on appeal. 30. A puzzle comprising: exactly fifty component pieces, each component piece separable from another, each component piece having six sides, including two square sides and four rectangular sides, wherein said fifty component pieces include twenty-five two-cube pieces and twenty-five three cube pieces, each two-cube piece made up of two cubes joined together, each three-cube piece made up of three cubes joined together in a linear arrangement, and when all of said fifty component pieces are assembled into a single body in one of a plurality of correct combinations, the single body has eight vertices, twelve edges and six faces of equal area, wherein the sides of the component pieces are provided with a plurality of component patterns, and the component patterns provided on the sides of at least some of said fifty component pieces are arranged to form a set of N different combined patterns, each of the N different combined patterns arranged to appear on a different one of the six faces, N being an integer greater than three but smaller than or equal to six, and each of the N different combined patterns is a predetermined design, and when all of said fifty component pieces are assembled into the single body in a different one of the plurality of correct combinations, the component patterns provided on the sides of at least some of said fifty component pieces are arranged to form a different set of N different combined patterns, and wherein said plurality of correct combinations consist of four correct combinations. Appeal 2021-004741 Application 16/245,408 5 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Wolf US 3,672,681 June 27, 1972 Park US 7,320,633 B2 Jan. 22, 2008 McCarty US 2009/0289415 A1 Nov. 26, 2009 Baum US 2010/0264589 A1 Oct. 21, 2010 Pomeroy US 2012/0164913 A1 June 28, 2012 The following rejections are before us for review:2 1. Claims 30-32, 36-44, 48, and 49 are rejected under 35 U.S.C. § 103 as unpatentable over Wolf, Baum, and McCarty. 2. Claims 33, 34, 45, and 46 are rejected under 35 U.S.C. § 103 as unpatentable over Wolf, Baum, McCarty, and either Park or Pomeroy. OPINION Unpatentability of Claims 30-32, 36-44, 48, and 49 over Wolf, Baum, and McCarty Claim 30 The Examiner finds that Wolf discloses the invention substantially as claimed except for possibly being limited to exactly fifty pieces each having six sides as claimed. Final Act. 2-3. The Examiner relies on Baum for using component pieces in 1x2 and 1x3 configurations. Id. at 3-4. The Examiner relies on McCarty as disclosing a 3D puzzle game in a 5x5x5 configuration. Id. at 5 (citing McCarty, Fig. 4). The Examiner concludes 2 A rejection of claims 1-4 under 35 U.S.C. § 101 has been withdrawn by the Examiner. Final Act. 4; Ans. 4. Appeal 2021-004741 Application 16/245,408 6 that it would have been obvious to use exactly twenty-five 1x2 components and twenty-five 1x3 components to build a larger cube as such requires no more than ordinary skills including basic math and geometry skills. Id. The Examiner relies on McCarty as teaching the forming of different patterns on the faces of the completed, assembled puzzle cube as claimed. Id. at 6. The Examiner relies on the printed matter doctrine in not ascribing patentable weight to the content of indicia featured on the surfaces of the puzzle pieces. Id. at 7-8. Finally, with respect to claim limitations directed to a specific number of correct combinations, such as four as recited in the claim, the Examiner considers such to be simply a matter of obvious design choice and that a person of ordinary skill in the art would have been motivated to make a puzzle with as many correct combinations as desired. Id. at 8. Appellant argues that Wolf does not disclose assembly into a plurality of correct combinations. Appeal Br. 6. Appellant argues that Wolf discloses a first game set with pieces that are painted white and a second game set with pieces that are painted black. Id. Thus, according to Appellant, Wolf does not disclose that the cubic puzzle can be assembled from all of said component pieces in a number of different combinations. Id. With respect to Baum, Appellant argues that Baum merely discloses a tower building game, not a puzzle cube. Id. With respect to McCarty, Appellant argues that McCarty only discloses a single pattern. Id. at 7. Furthermore, Appellant argues that it is not obvious to create a larger cube out of fifty component pieces that can be assembled into four correct combinations. According to Appellant, it would not have been obvious for one of ordinary skilled in the art before the effective date of invention to have suggested printing indicia to assemble twenty-five two-cube pieces and Appeal 2021-004741 Application 16/245,408 7 twenty-five three-cube pieces into a 5x5x5 cube wherein the correct combinations consist of four correct combinations. Id. at 11. Finally, Appellant disputes the Examiner’s application of the printed matter doctrine. Id. Appellant argues that indicia displayed on the puzzle pieces has a functional relationship with the substrate. Id. at 12. Appellant argues that, if the indicia, colors, or patterns provided on the faces of the component pieces are removed, many puzzles would cease to be puzzles. Id. In Appellant’s own words, “indicia, colors, or patterns are essential to certain puzzles.” Id. at 13. [T]he main purpose of a puzzle is to solve it. In many puzzles, the puzzle can only be solved by the indicia such as colors, numbers, figures and symbols provided on the component pieces. The indicia allow the puzzle to perform some function with respect to the indicia to which it is associated. Id. In response, the Examiner observes that the subject matter claimed in claim 30 before us is substantially similar to claim 1 of the Parent Application, the rejection of which was previously affirmed by the Board. Ans. 4. With respect to the configuration of the individual puzzle pieces, the Examiner points out that it was known, in the prior art, to assemble 1x2 and 1x3 components into larger structures, i.e., Baum. Id. With respect to using exactly 50 pieces, 25 of which are 1x2 components and 25 of which are 1x3 components, the Examiner explains that the combined teachings of Wolf and Baum suggest teaching the assembly of larger cubes from basic 1x2 and 1x3 components. Id. Based on such teachings, the Examiner concludes that a person of ordinary skill in the art would have been sufficiently motivated to make a larger cube of any size, including a 5x5x5 arrangement by using smaller components. Id. at 4-5. The Examiner notes Appeal 2021-004741 Application 16/245,408 8 that McCarty teaches a puzzle game that can be assembled into a 5x5x5 array. Id. at 5. Given that it was known to create individual 1x2 and 1x3 components for further assembly (Baum, Fig. 1, elements 22, 24), the Examiner concludes that it would have been obvious to person of ordinary skill in the art to use exactly 25 1x2 components and 25 1x3 components to construct a 5x5x5 cube. Ans. 5. It would have been obvious to one of ordinary skills (including basic math/geometry skills) in the art to build the 5x5x5 cube of the combination using twenty five basic two-cube components and twenty five basic three-cube components in order to build a larger cube having fifty components. Id. With respect to Appellant’s arguments regarding four correct combinations, the Examiner reminds Appellant that the Board previously affirmed the rejection of claim 1 of the Parent Application which contained a limitation directed to an unspecified number of different combined patterns. Id. The Examiner considers narrowing the scope of such limitation to exactly four combinations lacks patentable significance. Id. Furthermore, the Examiner finds that “McCarty teaches a puzzle wherein a plurality of correct combinations are possible.” Id. Appellant submits a Reply Brief that, for the most part, just repeats, substantially verbatim, the arguments set forth in the Appeal Brief. Compare, e.g., Appeal Br. 9 under heading “B,” with Reply Brief 12 under heading “B.” Appellant reiterates its allegation that McCarty does not disclose a “different correct combination.” Reply Br. 13. Appellant argues that the Examiner fails to point out why it is obvious that assembling fifty patterned, component pieces results in four correct combinations. Id. Appeal 2021-004741 Application 16/245,408 9 Wolf discloses a game that assembles a plurality of individual cubes into a larger cube. Wolf, Abstract, Fig. 1. Baum discloses a game where individual pieces of various configurations are assembled into a tower. Baum, Abstract, Figs. 1, 10. Baum includes individual component pieces that exhibit 1x2 and 1x3 configurations. Id., Fig. 1, elements 22, 24. McCarty discloses a 5x5x5 cube puzzle with graphical images on the side of the cube. McCarty, Abstract, ¶¶ 24-25, Figs. 6-7. Appellant’s patentability arguments are not persuasive. For the most part, they entail attacks on individual references in a rejection that is based on the combined teachings of multiple references. It is well settled that non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant presents no persuasive argument against the combinability of the references. See generally Appeal Br., Reply Br. Appellant’s argument that McCarty does not teach more than one solution to the puzzle lacks evidentiary support. McCarty discloses a first solution to the puzzle that features different graphic images on three faces of a 5x5x5 cube. McCarty, Fig. 6. McCarty further teaches that: Image segments may be provided in different configurations, for example, every image segment 8 can be used to form at least one primary or secondary image 6, 10, or neither a primary or secondary image 6, 10, and at least some of the image segments 8 may correspond to more than one primary or secondary image 6, 10. This permits a large number of images to be created from a single first block 2. Appeal 2021-004741 Application 16/245,408 10 Id. ¶ 25. From the foregoing disclosure, a person of ordinary skill in the art would understand that a plurality of different, combined correct patterns could be formed. Id. Appellant’s argument that it is not obvious to create a 5x5x5 cube from 25 1x2 and 25 1x3 components that consists of four correct combinations is not persuasive. Appellant’s Specification reveals that the calculating the number of various permutations and combinations of assembling 25 1x2 and 25 1x3 individual pieces is little more than a mathematical exercise. Spec. 9:26-12:19. A fair reading of Appellant’s Specification reveals that determining how many of the various permutations and combinations solutions result in a successful solution to the puzzle is just a mathematical exercise of filtering the universe of possible permutations and combinations against a specified selection criteria. Id. The ability to perform mathematical computations and apply them to geometric figures entails no more than ordinary skill. It is not invention to perform a mathematical computation. Neither is it invention to merely compare a computational result against a selection criterion. Appellant’s Specification explains that more than four solutions are actually possible. Id. at 11:26-29. Appellant does not explain how to reduce the number of possible solutions from more than 4 to only 4. To the extent that such reduction is accomplished by imparting particular graphical image segments onto the faces of the individual game pieces, we agree with the Examiner that the content of graphical image segments runs afoul of the printed matter doctrine. Ans. 6. Appellant’s arguments against the application of the printed matter doctrine to the facts of this case are not persuasive. In particular, Appeal 2021-004741 Application 16/245,408 11 Appellant’s arguments that indicia, colors, and patterns are “essential” to certain puzzles and, therefore, creates a functional relationship between an image segment and its substrate (Reply Br. 15) does not align with applicable legal precedent. In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161 (Fed. Cir. 2018). Appellant attempts to analogize the instant case to that of In re Gulack, 703 F.2d 1381, 1382-83 (Fed. Cir. 1983), and In re Miller, 418 F.2d 1392, 1393 (CCPA 1969), each of which involved printed matter that was considered to have a functional relationship with an underlying substrate. Appeal Br. 13. Neither Gulack nor Miller are reasonably analogous to the puzzle cube of Appellant’s invention. Gulack involved digits that were placed on a circular band. Gulack, 703 F.2d at 1382-83. Such digits exploited the band’s endless nature and made it useful for performing mathematical operations. Id. Miller involved indicia on a measuring cup. Miller, 418 F.2d at 1393. Such indicia made the cup useful for measuring partial recipes. Id. However, in the context of placing indicia on game instrumentalities, the Federal Circuit explicitly distinguished Gulack and Miller, and maintained that markings on dice had no functional relationship to the dice themselves because the markings did not cause the dice to become a “manufacture with new functionality.” Guldenaar, 911 F.3d at 1161. In the instant case, as in Guldenaar, Appellant’s graphical images do not cause the cube to become a manufacture with new functionality. Looking at, for example, Figures 6B and 6C of Appellant’s disclosure, if the graphical images were removed from the face of the cube pieces, the puzzle would retain its solution. The graphical images only serve to convey non- Appeal 2021-004741 Application 16/245,408 12 functional information to the human mind to inform the user that the puzzle has been solved. Appellant’s graphical images are printed matter because they are useful and intelligible only to the human mind. In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969). Such information transfer, by itself, does not create a functional relationship with the substrate. Id. We have considered Appellant’s remaining arguments and find them to be without merit. The Examiner’s findings of fact are supported by a preponderance of the evidence and the Examiner’s legal conclusion of unpatentability is well-founded. In view thereof, we sustain the Examiner’s unpatentability rejection of claim 30. Claims 31, 32, 36-44, 48, and 49 Appellant does not present separate arguments for patentability of claims 31, 32, 36-44, 48, and 49 apart from arguments presented with respect to claim 30 which we have previously considered. We sustain the Examiner’s unpatentability rejection of claims 31, 32, 36-44, 48, and 49 over Wolf, Baum, and McCarty. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of arguments for separate patentability). Unpatentability of Claims 33, 34, 45, and 46 over Wolf, Baum, McCarty, and either Park or Pomeroy These claims, which depend, directly or indirectly, from either claim 30 or independent claim 42, are rejected over Wolf, Baum, and McCarty in combination with either Park or Pomeroy, and are not separately argued. Claims App.; Appeal Br. 9. Consequently, we sustain the Examiner’s rejection thereof. Appeal 2021-004741 Application 16/245,408 13 CONCLUSION Claims Rejected 35 U.S.C. § References Affirmed Rev’d 30-32, 36-44, 48, 49 103 Wolf, Baum, McCarty 30-32, 36-44, 48, 49 33, 34, 45, 46 103 Wolf, Baum, McCarty, Park, Pomeroy 33, 34, 45, 46 Overall Outcome 30-34, 36-46, 48, 49 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED