Richard M. Spurgeon

Patent Trials and Appeals Board

Aug 1, 2019

14627702 - (D) (P.T.A.B. Aug. 1, 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.
14/627,702 02/20/2015 Richard M. Spurgeon 67349-0030 6840
10291 7590 08/01/2019
FISHMAN STEWART PLLC
39533 WOODWARD AVENUE
SUITE 140
BLOOMFIELD HILLS, MI 48304-0610
EXAMINER
CLARKE JR, ROBERT T
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/01/2019 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):
docketing@fishstewip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD M. SPURGEON
____________

Appeal 2017-010484
Application 14/627,702
Technology Center 3700
____________

Before MICHELLE R. OSINSKI, SUSAN L. C. MITCHELL, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Richard M. Spurgeon (“Appellant”)1 appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–21 in this application. The
Board has jurisdiction over the appeal under 35 U.S.C. § 6(b).
A hearing was held on June 11, 2019. See Transcript (entered July 10,
2019) (“Tr.”).
We AFFIRM.

1 Appellant is identified as the real party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s application “relates to . . . a modified chess game.” Spec.
¶ 2. Claims 1, 6, and 13 are independent. Claim 1 illustratively recites, with
lettering [A1]–[C] added for reference in the discussion below:
1. A method comprising:
[A1] providing a game board having squares forming
eight rows and ten columns;
[A2] providing first and opposing sets of game pieces,
each set including ten pawns, one king, one queen, two rooks,
two bishops, two knights, and two AGP[2];
[A3] initially positioning the game pieces with each of
the AGP being placed between each of the respective rooks and
knights of the first and opposing sets;
[B1] assigning the AGP of the first set a first property to
capture, and be captured by, the AGP of the opposing set;
[B2] assigning the AGP of the first set a second property
to move one square in any direction to land on an unoccupied
adjoining square;
[B3] assigning the game pieces of the first set a third
property to leap over the AGP of the first set;
[B4] assigning the AGP and the knights of the first set a
[fourth] property to leap over the AGP of the opposing set while
the other of the game pieces of the first set are not allowed to leap
over the game pieces of the opposing set;
[B5] assigning the bishops, rooks and queen of the first
set a fifth property to bounce off the AGP of the first set by
coming to a square occupied by the AGP of the first set and then
moving off with a right angle turn;
[B6] assigning the knights of the first set a sixth property
to bounce off the AGP of the first set by coming to a square
occupied by the AGP of the first set and then making an
additional right angle turn; and
[C] providing a restriction having a predefined duration.

2 The term “AGP” abbreviates “additional game piece(s).” Spec. 16
(original claim 1).
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REJECTIONS ON APPEAL3
Claims 1–21 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Non-Final Act. 8–9.
Claim 21 stands rejected under 35 U.S.C. § 112(b)4 as indefinite.
Non-Final Act. 9–10.
Claims 1–19 and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over Spurgeon ’685 (US 2013/0252685 A1, pub. Sept. 26,
2013) and Dolk (US 2015/0042043 A1, pub. Feb. 12, 2015). Non-Final
Act. 10–21.
Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over
Spurgeon ’685, Dolk, and Fisher (US 2014/0203506 A1, pub. July 24,
2014). Non-Final Act. 21–22.
OPINION
A. Statutory Subject Matter (claims 1–21)
Legal Principles Concerning 35 U.S.C. § 101
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 § 101 to include implicit
exceptions, including that “abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014).

3 The Examiner has withdrawn provisional double patenting rejections of
claims 1–20. See Non-Final Act. 3–8 (rejections); Ans. 2 (withdrawal).
4 This application was filed on February 20, 2015, after the AIA
amendments to § 112 took effect on September 16, 2012. See Leahy-Smith
America Invents Act, Pub. L. No. 112-29, § 4(e), 125 Stat. 284, 297 (2011);
MPEP § 2161(I).
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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 step one of that
framework, we determine what concept the claim is “directed to.” See id. at
219; see also Bilski v. Kappos, 561 U.S. 593, 611 (2010). 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) and mental
processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
The USPTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 USPTO § 101 Memorandum”).
Under that guidance, when applying Alice step one, we 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See 2019 USPTO § 101 Memorandum, 84 Fed. Reg. at 51–55. If a claim
(1) fails to recite a judicial exception, or (2) recites a judicial exception but
integrates the exception into a practical application, then the claim is not
“directed to” a judicial exception, and is patent-eligible pursuant to Alice
step one. Id. at 53.
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We need to consider Alice step two only if the claim is “directed to”
an abstract idea under Alice step one. Alice, 573 U.S. at 221; 2019 USPTO
§ 101 Memorandum, 84 Fed. Reg. at 54, 56.
Alice Step One — Revised Step 2A, Prong One
For Alice step one (2019 USPTO § 101 Memorandum, Revised
Step 2A, Prong One), the Examiner determines claim 1 recites an abstract
idea because the claimed “steps comprise an idea of itself that can be
performed by a human using a pen and paper and in the human mind.”
Non-Final Act. 9. The Examiner further determines the “steps are similar to
the abstract ideas of managing a game at issue in” Planet Bingo, LLC v.
VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014), and to the “set of rules for
a game at issue in” In re Smith, 815 F.3d 816 (Fed. Cir. 2016). Non-Final
Act. 9; Ans. 2–3.
Appellant responds that “[a] very common and long patented field is
games,” and “there are thousands of patents on various types of games,”
“covering not just the physical equipment used in the games, but the rules of
the games themselves.” Appeal Br. 15–16; see also id. at 16–18 (discussing
four U.S. Patents that issued post-Alice). Appellant contends the Examiner’s
rejection is deficient in relation to Alice step one, because the rejection
“fail[s] to articulate how each of the elements of claims 1–20 are directed to
an abstract idea” pursuant to Office guidance documents. Id. at 18–24
(summarizing Office guidance documents), 24–25 (addressing claim 1).
Appellant focuses on limitations [A1]–[A3] in claim 1 as
demonstrating that the claim is not directed to an abstract idea. Id. at 25–26.
Appellant contends limitations [A1]–[A3] distinguish claim 1 from the
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Planet Bingo decision, because they are not mental steps that can be carried
out by a human using pen and paper. Id. at 25; Reply Br. 6–7. Appellant
contends limitations [A1]–[A3] also distinguish claim 1 from the Smith
decision, because they have nothing to do with fundamental economic
practices like the wagering game at issue in Smith. Appeal Br. 25; Reply
Br. 6.
Upon our review of the foregoing, we determine claim 1 recites a set
of rules for playing a modified chess game, which amounts to managing
personal behavior or relationships or interactions between people, which is
one certain method of organizing human activity identified in the 2019
USPTO § 101 Memorandum as an abstract idea. Our determination is
largely compelled by Smith, in which the Federal Circuit held “the rejected
claims, describing a set of rules for a game, are drawn to an abstract idea.”
Smith, 815 F.3d at 818–19. Appellant correctly points out that the Smith
decision’s holding was reached “in light of” previous cases concerning
“fundamental economic practice[s]” found to be abstract, which the Federal
Circuit analogized to the “rules for conducting a wagering game” at issue in
Smith. Id. Nonetheless, we disagree with Appellant’s assertion that Smith is
limited to wagering games. For example, the Smith decision itself
contemplated that it applies to “inventions in the gaming arts” including
“claims directed to conducting a game using a new or original deck of
cards,” without limiting its discussion to wagering games. Id. at 819.
Further, Smith is not the only game-related case decided by the
Federal Circuit. In Planet Bingo, the Federal Circuit considered claims that
recited “computer-aided methods and systems for managing the game of
bingo.” Planet Bingo, 576 F. App’x at 1006. The claims were directed to
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“managing a game of Bingo,” which was “similar to the kind of ‘organizing
human activity’ at issue in Alice.” Id. at 1008; see also id. at 1006 (claims at
issue recited storing, retrieving, playing, and tracking a player’s preferred
sets of bingo numbers, and verifying winning numbers). Notably, the
Federal Circuit did not analogize the game of Bingo to a fundamental
economic practice in that regard, and instead limited its consideration of
fundamental economic practices to the claim recitations directed to
minimizing security risks. Id. at 1008.
In In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir
2018), the Federal Circuit considered claims “directed to the abstract idea of
rules for playing a dice game.” Id. at 1158–59. As Appellant points out (see
Tr. 9:23–10:10), the Marco Guldenaar decision noted the common wagering
aspect at issue in that case and in the earlier Smith decision, in relation to the
fundamental economic practice line of case law. Marco Guldenaar,
911 F.3d at 1160. Nonetheless, as in Smith, the ultimate holding in Marco
Guldenaar was that the Board did not err in concluding that the claims were
directed to “rules for playing a dice game” without focusing on wagers. Id.
at 1160–61.
Appellant cites two additional decisions that have little applicability
here. The decision in Ameranth, Inc. v. Genesis Gaming Sols., Inc.,
No. SACV 11-00189 AG (RNBx), 2014 WL 7012391, at *3–6 (C.D. Cal.
Nov. 12, 2014), concerned claims directed to “monitoring a physical casino
poker game,” not rules for playing a poker game, and further “expresse[d]
no opinion on the ultimate issue” of patentability under § 101. See id. at *3–
6, 9. In Ex Parte Poisson, Appeal No. 2012-011084 (PTAB Feb. 27, 2015),
our colleagues held the Examiner erred in finding the claimed invention was
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directed to “a new set of rules for playing a card game,” so the rejection on
appeal was not supported by a preponderance of the evidence. Id. at 4–5.
The Poisson decision did not reach the issue of whether a claim reciting a set
of rules for a game is directed to an abstract idea. Id.
The Smith, Planet Bingo, and Marco Guldenaar decisions, taken
together, support our conclusion that a claim which recites a set of rules for
playing a game thereby recites a certain method of organizing human
activities constituting an abstract idea, specifically managing personal
behavior or relationships or interactions between people, despite some of the
discussions in those decisions related specifically to wagering games. More
fundamentally, Alice step one asks whether the claims are directed to an
abstract idea, not whether the claims are directed to a fundamental economic
practice. Thus, the 2019 USPTO § 101 Memorandum “extracts and
synthesizes key concepts identified by the courts as abstract ideas,”
including “[c]ertain methods of organizing human activity” which include
“fundamental economic principles or practices” and “managing personal
behavior or relationships or interactions between people (including social
activities . . . and following rules or instructions).” 2019 USPTO § 101
Memorandum, 84 Fed. Reg. at 52 & n.13 (in part citing Smith). Claim 1 at
issue here, in reciting a set of rules for playing a modified chess game,
recites a method of organizing human activity, a judicial exception as set
forth in the Office Guideline. Indeed, Appellant argues “[g]ames are a
classic example of organizing human activity,” and game rules are “rules for
organizing human behavior.” Appeal Br. 15–16.
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Alice Step One — Revised Step 2A, Prong Two
Having concluded claim 1 recites an abstract idea under Revised
Step 2A, Prong One, we next consider whether the abstract idea is integrated
into a practical application, pursuant to the 2019 USPTO § 101
Memorandum, 84 Fed. Reg. at 54–55 (“Revised Step 2A,” “Prong Two”).
A claim that integrates a judicial exception into a practical
application will apply, rely on, or use 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 designed to
monopolize the judicial exception.
Id. at 54. We conclude claim 1 integrates the abstract idea into a practical
application, so claim 1 is not directed to an abstract idea under Alice
step one.
Limitations [A1]–[A3] of claim 1 require certain actions to be taken in
the physical world, as Appellant argues (see Appeal Br. 25–26). These
actions include “providing a game board having squares forming eight rows
and ten columns,” “providing first and opposing sets of game pieces” of
specified kinds including two AGP per set, and “initially positioning the
game pieces” on the game board in a specified configuration. Appeal Br. 43
(Claims App’x). The remaining limitations [B1]–[B6] and [C] of claim 1
recite rules for playing a modified chess game after the initial setup required
by limitations [A1]–[A3]. Nonetheless, we conclude that, when read as a
whole, limitations [A1]–[A3] impose a meaningful limitation on the abstract
idea of a set of rules for playing a modified chess game. That is because
limitations [A1]–[A3] use the abstract idea in conjunction with a particular
machine or manufacture that is integral to the claim: a game board having a
specified configuration, and game pieces arranged on the game board in a
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specified configuration. 2019 USPTO § 101 Memorandum, 55 & n.27
(citing MPEP § 2106.05(b)). The structure and configuration of a gaming
apparatus is patent eligible under 35 U.S.C. § 101, and additionally reciting
rules for playing the game does not suddenly strip this structure of its
patent-eligible status.
The other two independent claims on appeal are similar to claim 1 in
the foregoing regards. See Appeal Br. 44–45 (claim 6), 46–47 (claim 13)
(Claims App’x). Thus, we conclude claims 1–21 are not directed to an
abstract idea, even though they recite an abstract idea, because the claims
integrate the abstract idea into a practical application, as set forth in the 2019
USPTO § 101 Memorandum.
Alice Step Two — Revised Step 2B
Having concluded claims 1–21 are not directed to an abstract idea, we
need not consider Alice step two (2019 USPTO § 101 Memorandum,
Revised Step 2B).
B. Indefiniteness (claim 21)
Claim 21 recites: “The method as claimed in claim 1, wherein leap
over includes pass through without bouncing off the AGP.” Appeal Br. 48
(Claims App’x). The Examiner rejects claim 21 under 35 U.S.C. § 112(b) as
being “generally unclear” and therefore indefinite, as follows:
When referring to “leap over”, which leap over of claim 1 is
being referred to? Is it the third property and/or the [fourth]
property? Also, when referring to “the AGP”, which AGP is
being referred to? The AGP of the first set and/or the opposing
set?
Non-Final Act. 10; Ans. 4.
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Appellant responds that “[s]upport” for the subject matter recited in
claim 21 “can be found throughout the application as originally filed
including, for example, figures 2–3 and paragraph 51.” Appeal Br. 29.
Further according to Appellant, a person of ordinary skill in the art would
understand the “leap over” limitation recited in claim 21 further defines both
of the third and fourth property limitations of parent claim 1, so there is no
indefiniteness. Id. at 29–30; Reply Br. 11.
We determine claim 21 is not unclear. We agree with Appellant’s
argument that claim 21 further defines the claim term “leap over,” which
applies to the term wherever it appears in the claim, including both of the
third and fourth properties described in parent claim 1. Further, there is no
lack of clarity as to whether the “leap over” refers to the AGP of the first set
or the AGP of the second set. This is because the third property specified in
claim 1 expressly applies to “the AGP of the first set,” and the fourth
property specified in claim 1 expressly applies to “the AGP of the opposing
set.” Appeal Br. 43 (Claims App’x) (claim 1, lines 11–15) (emphases
added). Thus, we do not sustain the rejection of claim 21 as being indefinite.
C. Obviousness Over Spurgeon ’685 and Dolk (claims 1–19 and 21), and
Obviousness Over Spurgeon ’685, Dolk, and Fisher (claim 20)
Priority Filing Date of the Application on Appeal, and Scope of Prior Art
The Examiner determines the application on appeal is entitled to a
priority date of February 20, 2015, so Spurgeon ’685 is prior art. Non-Final
Act. 2, 22. Appellant contends Spurgeon ’685, to which the application on
appeal claims priority, is not prior art. Appeal Br. 9–11, 31.
The application on appeal claims priority to the filing dates of several
prior applications, and is a continuation-in-part of Application
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No. 13/896,034 filed on May 16, 2013 (“the ’034 application”), which was
published as Spurgeon ’685. See Filing Receipt (dated March 3, 2015);
Spec. ¶ 1; Spurgeon ’685, (21)–(22). The ’034 application, in turn, claims
priority to several other previously filed applications. See Filing Receipt;
Spec. ¶ 1; Spurgeon ’685, (63).
The Examiner concludes “claims 1–21 include certain subject matter
that is not supported by the priority applications.” Non-Final Act. 2. The
Examiner specifically identifies limitation [C], “a restriction having a
predefined duration,” which is found in all three independent claims on
appeal, as not being supported. Id.; Ans. 4–5. Therefore, based on a review
of “each of the priority applications,” the Examiner determines each claim
on appeal is entitled to a priority date only of February 20, 2015, the actual
filing date of the application on appeal. Non-Final Act. 2; Ans. 4–5. From
that determination, the Examiner concludes Spurgeon ’685 is prior art,
because Spurgeon ’685 published on September 26, 2013, more than one
year before February 20, 2015. Non-Final Act. 22; Ans. 5.
Appellant responds that we cannot sustain the Examiner’s conclusion
as to priority, because the Examiner does not specify which application(s) in
the priority chain fail to support the subject matter recited in claims 1–21.
Appeal Br. 10; Reply Br. 2–3. Appellant also contends claims 1–21 “are
entitled to priority for common subject matter with parent applications,
making the priority allegations by the Office Action clearly in error.”
Appeal Br. 10 (emphasis added); Reply Br. 2–3.
Upon our review of the foregoing, we do not discern error in the
Examiner’s priority determination. Pursuant to 35 U.S.C. § 120, the
application on appeal is entitled to assert priority to the filing date of a
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parent application only if the parent application discloses the claimed
invention in the manner provided by 35 U.S.C. § 112(a). The test for
sufficiency of a written description under 35 U.S.C. § 112(a) is whether the
earlier application’s disclosure “reasonably conveys to those skilled in the
art that the inventor had possession of the claimed subject matter as of the
filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). The written description “test requires an
objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art.” Id.
The Examiner cites Santarus, Inc. v. Par Pharmaceutical, Inc.,
694 F.3d 1344 (Fed. Cir. 2012), for the proposition that “individual claims
have their own priority dates.” Non-Final Act. 2; Ans. 5. We agree with the
Examiner’s reading of Santarus. See Santarus, 694 F.3d at 1352 (“The
scope and content of the prior art applicable to each asserted claim, however,
differs depending on the claim’s effective filing date.”). Appellant’s
arguments concerning Santarus do not address that holding. See Appeal
Br. 11.
Turning to the claims at issue here, the Examiner sufficiently
articulates the claimed subject matter at issue: “a restriction having a
predefined duration” as recited in all three independent claims on appeal.
Non-Final Act. 2; Ans. 4–5; Appeal Br. 43 (claim 1), 44–45 (claim 6), 46–
47 (claim 13). Further, the Examiner states “each” of the priority
applications does not support such subject matter, thus placing Appellant on
notice as to the priority applications at issue — that is, all of them.
Non-Final Act. 2; Ans. 4–5. The Examiner, finally, states why the correct
priority date of the application on appeal is at issue here: it determines what
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references, especially Spurgeon ’685, are prior art to the application on
appeal. Non-Final Act. 22; Ans. 4–5. Thus, at the very least, the
Examiner’s rejection raises the issue of whether the ’034 application (which
published as Spurgeon ’685) fails to provide written description support for
“a restriction having a predefined duration,” which determines whether
Spurgeon ’685 is prior art to the application on appeal.
In response, Appellant’s briefs do not address, in any fashion, whether
the ’034 application provides written description support for “a restriction
having a predefined duration.” Appeal Br. 9–11; Reply Br. 2–3. Most
importantly, Appellant fails to point to any disclosure(s) in the
’034 application that might demonstrate possession of such subject matter,
despite that particular application being placed at issue by the Examiner’s
rejection. Appeal Br. 9–11; Reply Br. 2–3. Given Appellant’s complete
silence on this critical issue, we decline to sift through the ’034 application
disclosure sua sponte to evaluate whether the Examiner’s factual finding in
this regard is supported by a preponderance of the evidence. See, e.g.,
37 C.F.R. § 41.37(c)(1)(iv) (an appeal brief shall contain “[t]he arguments of
appellant with respect to each ground of rejection, and the basis therefor,
with citations of . . . parts of the Record relied on,” and “any arguments . . .
not included in the appeal brief will be refused consideration by the Board”).
During oral argument, Appellant cited paragraph 59 of Spurgeon ’685
as supporting “a restriction having a predefined duration.” Tr. 4:15–6:17.
We are not persuaded. The cited disclosure pertinently describes a
“restriction” on the movement of the queen piece, which is that “[t]he queen
cannot approach the beast square [i.e., the game board square occupied by
the AGP of the queen’s own color] diagonally and then bounce orthogonally
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or vice versa.” Spurgeon ’685 ¶ 59. Such a restriction does not correspond
to a restriction having a predefined duration, as claimed. This claim
limitation is elucidated by paragraph 69 of the application presently on
appeal. Appellant has not cited to any corresponding disclosure in the
’034 application.
Appellant advances a legal theory that, so long as there is “an
uninterrupted chain of priority applications” — that is, so long as the
co-pendency requirement for priority is met — the Examiner may not cite
“the common subject matter” of the parent application(s) as prior art.
Appeal Br. 9–10, 31; Reply Br. 2–3, 12–13; Tr. 6:23–8:10. Thus,
Appellant’s view is that the Examiner may not cite Spurgeon ’685 as prior
art against the present application, even if the ’034 application fails to
provide written description support for the presently-claimed “restriction
having a predefined duration.” Tr. 6:23–8:10.
Appellant is wrong on the law. An application is entitled to assert
priority to the filing date of a prior application only “for an invention
disclosed [in the prior application] in the manner provided by [35 U.S.C.]
section 112(a).” 35 U.S.C. § 120. This requires that the earlier application
provides written description support for the invention claimed by the later
application. See Paice LLC v. Ford Motor Co., 881 F.3d 894, 906 (Fed. Cir.
2018) (“For claims to be entitled to a priority date of an earlier-filed
application, the application must provide adequate written description
support for the later-claimed limitations.”); PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1306–11 (Fed. Cir. 2008); Augustine Medical,
Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1302–03 (Fed. Cir. 1999)
(different claims of a continuation-in-part application receive different
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effective filing dates, depending on whether the claimed subject matter first
appeared in the parent application or in the continuation-in-part application).
The three cases cited by Appellant are not to the contrary.
Appellant’s first case is Santarus, wherein the Federal Circuit reversed a
District Court’s holding that the ’772 patent, which was a
continuation-in-part of the ’737 patent, was not entitled to priority to the
filing date of the ’737 patent. Santarus, 694 F.3d at 1350–51 (“Because the
lack of written description for the ‘no sucralfate’ limitation was the district
court’s only reason for concluding that the ’772 patent claims cannot claim
priority to the application that issued as the ’737 patent, we . . . reverse this
holding.”) & 1352 (“Santarus appeals the court’s priority determination only
as to the ’772 patent (and as described above, we reverse)”) (emphasis in
original). However, the reversal was based on the Federal Circuit’s
conclusion that the ’737 patent provided written description support for the
’772 patent claims, not on a holding that such support is not required for
priority (as Appellant would have it). Id. Concerning the other patents at
issue in Santarus, Santarus did “not contend that the district court erred” so
“Santarus waived any argument that the ’737 patent is not prior art.” Id. at
1352.
Appellant’s second case is Medtronic CoreValve, LLC v. Edwards
Lifesciences Corp., 741 F.3d 1359 (Fed. Cir. 2014), wherein the Federal
Circuit addressed the statutory requirement that a patent application, to
obtain priority to an earlier application, must “contain a specific reference to
the earlier filed application . . . submitted at such time during the pendency
of the application as required by the Director.” Id. at 1363 (quoting
35 U.S.C. § 120). The Federal Circuit expressly stated the “other
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requirements” of § 120, such as the requirement at issue here that “the
invention described in the new application must be disclosed in” the
previous application, were “not at issue” in Medtronic. Id. at 1363 n.3.
Appellant’s third case is Natural Alternatives Int’l, Inc. v. Iancu,
904 F.3d 1375 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 2014 (May 13,
2019). This decision actually supports our reading of the law in that it states
“[a]n applicant can obtain an earlier effective filing date for claims in a CIP
application only if those claims find support in an earlier-filed
nonprovisional application,” and “[c]laims reciting new matter, however,
are entitled to only the filing date of the CIP application and not to the filing
date of the earlier-filed application.” Natural Alternatives, 904 F.3d at 1383
(emphasis added) (citing Transco Prods., Inc. v. Performance Contracting,
Inc., 38 F.3d 551, 557 n.6 (Fed. Cir. 1994)).
For the foregoing reasons, we agree with the Examiner’s finding that
the ’034 application does not provide written description support for “a
restriction having a predefined duration” as recited in independent claims 1,
6, and 13 presently on appeal. Therefore, each claim on appeal is entitled to
a priority date only of February 20, 2015, and Spurgeon ’685 is prior art.
Independent Claims 1, 6, and 13
In rejecting independent claims 1, 6, and 13 as unpatentable over
Spurgeon ’685 and Dolk, the Examiner finds Spurgeon ’685 discloses each
and every claim limitation except for “a restriction having a predefined
duration.” Non-Final Act. 11–12 (claim 1), 14–16 (claim 6), 17–19
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(claim 13) (citing Spurgeon ’685 ¶¶ 505 and 88, and claims 1 and 13).
Appellant’s only argument in opposition to those findings is that
Spurgeon ’685 is not prior art, which we have rejected supra. Appeal
Br. 31, 32 (claim 1), 35 (claim 6), 38 (claim 13). The Examiner’s findings
concerning the applicable disclosures of Spurgeon ’685, therefore, stand
unrebutted in the record before us. See 37 C.F.R. § 41.37(c)(1)(iv) (“any
arguments . . . not included in the appeal brief will be refused consideration
by the Board”).
The Examiner finds Dolk discloses “a restriction having a predefined
duration,” as claimed, because Dolk discloses placing time limit(s) for
players to make a move in a game. Non-Final Act. 12–13 (claim 1), 16
(claim 6), 19 (claim 13), 23–24 (citing Dolk ¶ 81). The Examiner
determines it would have been obvious to modify Spurgeon ’685 to include
such a time limit, “because such a restriction may decrease the overall
amount of time that it takes to complete a game.” Id. at 13 (claim 1), 16–17
(claim 6), 19–20 (claim 13).
Appellant responds that, while Dolk discloses that “each player must
complete the move within a predetermined amount of time” (quoting Dolk
¶ 81), Dolk does not disclose “a restriction in the claimed context of an
AGP.” Appeal Br. 32 (claim 1), 35 (claim 6), 38 (claim 13).
Appellant’s argument is not persuasive of Examiner error.
Non-obviousness cannot be established by attacking references individually
when unpatentability is predicated upon a combination of prior art
disclosures. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

5 The Examiner refers to ¶ 45, but discusses the subject matter disclosed in
¶ 50. See Non-Final Act. 12, 15, 18; Spurgeon ’685 ¶¶ 45, 50.
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Appellant does not dispute that Spurgeon ’685 discloses a modified chess
game incorporating an AGP having the movement properties specified in the
independent claims, and also does not dispute that Dolk requires each player
of a game to complete a move within a predetermined amount of time.
Thus, the combination of Spurgeon ’685 and Dolk discloses the claimed
subject matter.
For the foregoing reasons, we sustain the rejection of independent
claims 1, 6, and 13 as unpatentable over Spurgeon ’685 and Dolk.
Dependent Claims 2–5, 7–12, 14–17, and 21
In rejecting dependent claims 2–5, 7–12, 14–17, and 21 as
unpatentable over Spurgeon ’685 and Dolk, the Examiner finds
Spurgeon ’685 discloses the subject matter added by each claim to its parent
claim(s). Non-Final Act. 13–14 (claims 2–5), 17 (claims 7–12), 20
(claims 14–17), 21 (claim 21) (citing Spurgeon ’685, claims 1–5 and ¶ 20).
While Appellant addresses each of these claims in separate sections of the
Appeal Brief, the arguments are the same: (1) Spurgeon ’685 is not prior
art; and (2) Dolk fails to disclose the subject matter added by each respective
dependent claim. Appeal Br. 32–34 (claims 2–5), 35–38 (claims 7–12), 38–
40 (claims 14–17), 41 (claim 21). We have rejected Appellant’s first
argument supra. Appellant’s second argument is not persuasive of
Examiner error, because the Examiner relies on Spurgeon ’685, not on Dolk,
as disclosing the subject matter added by each dependent claim to its parent
claim(s). Thus, we sustain the rejection of claims 2–5, 7–12, 14–17, and 21
as unpatentable over Spurgeon ’685 and Dolk.
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Dependent Claim 18
Claim 18 recites: “The method of claim 1, wherein initially
positioning the game pieces further comprises operations to randomly
position one of the king, queen, rooks, bishops, knights, and AGPs of the
first and opposing sets along a rank.” Appeal Br. 48 (Claims App’x).
Appellant’s Specification indicates a “rank” is a horizontal row of squares
on a game board. See Spec. ¶ 37, Fig. 19.
In rejecting claim 18 as unpatentable over Spurgeon ’685 and Dolk,
the Examiner finds Dolk “discloses that the game pieces may be randomly
placed.” Non-Final Act. 20 (citing Dolk ¶ 22). The Examiner determines it
would have been obvious “to modify the [Spurgeon]/Dolk combination such
that the initial positions of any one of the game pieces of the
[Spurgeon]/Dolk combination . . . are randomly positioned along a rank
because it is known that chess game pieces may have random starting
positions.” Id.
Appellant responds that, while Dolk discloses “the pieces . . . may be
randomly placed by the opposing player who does not know which pieces
are in the concealed enclosure” (quoting Dolk ¶ 22), Dolk does not disclose
“randomly position[ing] one of the king, queen, rooks, bishops, knights, and
AGPs of the first and opposing sets along a rank.” Appeal Br. 40–41.
We find Dolk pertinently discloses “a strategy game” that “expands
upon traditional chess rules.” Dolk, Abstract. Further, game pieces may be
placed on the playing surface “randomly . . . by the opposing player who
does not know which pieces are in the concealed enclosure.” Id. ¶ 22. Thus,
we agree with the Examiner’s finding that Dolk discloses random placement
of game pieces on the game board of a modified chess game. Appellant
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does not otherwise challenge the Examiner’s findings concerning Dolk. To
the extent Appellant’s argument is that Dolk does not disclose an AGP,
Appellant’s argument is not persuasive of Examiner error for substantially
the same reasons set forth above concerning the obviousness rejection of
parent claim 1. Therefore, we sustain the rejection of claim 18 as
unpatentable over Spurgeon ’685 and Dolk.
Dependent Claim 19
Claim 19 recites: “The method of claim 1, wherein the predefined
duration includes at least one of a predefined period of time, a predefined
number of moves of at least four, and a predefined number of ranks of at
least three.” Appeal Br. 48 (Claims App’x). In rejecting claim 19 as
unpatentable over Spurgeon ’685 and Dolk, the Examiner finds Dolk
discloses the subject matter added by claim 19 to its parent claim 1.
Non-Final Act. 20–21 (citing Dolk ¶ 81).
Appellant responds that, while Dolk discloses that “each player must
complete the move within a predetermined amount of time” (quoting Dolk
¶ 81), Dolk does not disclose “a predefined duration in the claimed context
of an AGP.” Appeal Br. 41. This argument is not persuasive of Examiner
error, for substantially the same reasons set forth above concerning the
obviousness rejection of parent claim 1. Thus, we sustain the rejection of
claim 19 as unpatentable over Spurgeon ’685 and Dolk.
Dependent Claim 20
Claim 20 recites: “The method of claim 19, wherein the restriction is
specified by least one of a default setting and a user-defined setting.”
Appeal Br. 48 (Claims App’x). In rejecting claim 20 as unpatentable over
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Spurgeon ’685, Dolk, and Fisher, the Examiner finds Fisher discloses the
recited “user-defined setting,” because “Fisher discloses that the movement
of chess playing pieces may be changed by the players.” Non-Final Act. 21,
24 (citing Fisher ¶ 62); Ans. 6. The Examiner determines it would have
been obvious “to modify the game pieces of the [Spurgeon]/Dolk
combination such that the game pieces have movement restrictions specified
by the players because it is known that the movement associated with the
chess game pieces may be changed.” Non-Final Act. 21–22.
Appellant responds that Fisher does not disclose the subject matter
added by claim 20 to its parent claim 1. Appeal Br. 41–42. According to
Appellant, Fisher pertinently discloses only that “after commencement of the
game, such decisions may be changed one or more times by the same one
player or one team.” Id. at 42 (quoting Fisher ¶ 62). In Appellant’s view,
“Fisher thus teaches decisions changed by one player, but nothing regarding
a restriction specified by a setting, especially not in the claimed context of a
default or user-defined setting.” Id.
We find Fisher pertinently discloses a “Battlefield Chess” game that
“differs from conventional chess.” Fisher, Abstract. In one aspect of
Fisher’s game:
[T]he set of playing rules differs from conventional, old-
in-the-art chess rules with respect to decisions as to the maximum
number of allowed playing spaces of movement of the respective
playing pieces, wherein, after commencement of the game, such
decisions may be changed one or more times by the same one
player or one team, or by the second player or second team.
Id. ¶ 62 (emphasis added). Thus, we agree with the Examiner’s finding that
Fisher discloses a user-defined setting that restricts game piece movement.
Appellant does not otherwise challenge the rejection of claim 20. See
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37 C.F.R. § 41.37(c)(1)(iv) (“any arguments . . . not included in the appeal
brief will be refused consideration by the Board”). Therefore, we sustain the
rejection of claim 20 as unpatentable over Spurgeon ’685, Dolk, and Fisher.
DECISION
The rejection of claims 1–21 under 35 U.S.C. § 101 as directed to
non-statutory subject matter is reversed.
The rejection of claim 21 under 35 U.S.C. § 112(b) as indefinite is
reversed.
The rejection of claims 1–19 and 21 under 35 U.S.C. § 103 as
unpatentable over Spurgeon ’685 and Dolk is affirmed.
The rejection of claim 20 under 35 U.S.C. § 103 as unpatentable over
Spurgeon ’685, Dolk, and Fisher is affirmed.
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