Brian Diamond

Patent Trials and Appeals Board

Mar 28, 2022

2021002671 (P.T.A.B. Mar. 28, 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. 15/130,624 04/15/2016 Brian W. Diamond 0595P01.US 3188 39208 7590 03/28/2022 CR MILES, P.C. CRAIG R. MILES 405 MASON COURT, SUITE 119 FORT COLLINS, CO 80524 EXAMINER WONG, STEVEN B ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 03/28/2022 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 BRIAN W. DIAMOND ____________ Appeal 2021-002671 Application 15/130,624 Technology Center 3700 ____________ Before EDWARD A. BROWN, JEREMY M. PLENZLER, and LISA M. GUIJT, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 6-8, 10, 11, 25-28, 30, and 62-682. 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 Brian W. Diamond as the real party in interest. Appeal Br. 3. 2 Claims 2-5, 9, 12-24, 29, 31-61, 69, and 70 are cancelled. Appeal Br. 37- 39 (Claims App.). Appeal 2021-002671 Application 15/130,624 2 CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim on appeal, and reads: 1. A method of playing a solvable puzzle game, comprising: obtaining said solvable puzzle game comprising a matrix having N2 unfilled cells arranged in N rows, N columns, and N sub-matrices, each said sub-matrix formed from N continuous unfilled cells; wherein each said cell and said sub-matrix is visually distinguishable from each other said cell and said sub-matrix within said matrix; each said unfilled cell fillable with one indicia selected from N discrete indicia to provide a filled cell; each said row, said column, and said sub-matrix fillable with one indicia set which consists of one each of said N discrete indicia; and solving said solvable puzzle game by filling a minimum number of said unfilled cells to provide a minimum number of filled cells which renders each remaining said unfilled cell fillable with only one said indicia selected from said N discrete indicia to satisfy a matrix condition wherein each said row, said column, and said sub-matrix is filled with said one indicia set which consists of one each of said N discrete indicia. Appeal Br. 37 (Claims App.). REJECTIONS ON APPEAL Claims 1, 6-8, 10, 11, 25-28, 30, and 62-68 are rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Claims 1, 6-8, 10, 11, 25-27, 62-65, 67, and 68 are rejected under 35 U.S.C. § 103 as unpatentable over Edwards3, or, alternatively, over Edwards and Anand4. 3 U.S. 5,823,533, issued Oct. 20, 1998. 4 U.S. 2014/0274244 A1, published Sept. 18, 2014. Appeal 2021-002671 Application 15/130,624 3 Claims 28 and 30 are rejected under 35 U.S.C. § 103 as unpatentable over Edwards and Loveland5, or, alternatively, over Edwards, Anand, and Loveland. Claims 1, 6-8, 10, 11, 25-27, and 62-68 are rejected under 35 U.S.C. § 103 as unpatentable over Johnson6, or, alternatively, over Johnson and Anand. Claims 28 and 30 are rejected under 35 U.S.C. § 103 as unpatentable over Johnson and Loveland, or, alternatively, over Johnson, Anand, and Loveland. OPINION Patent Eligibility of Claims 1, 6-8, 10, 11, 25-28, 30, and 62-68 Principles of Law Pertaining to Patent Eligibility 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 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). 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 that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219. 5 US 2012/0013072 A1, published Jan. 19, 2012. 6 U.S. 4,784,392, issued Nov. 15, 1988. Appeal 2021-002671 Application 15/130,624 4 Concepts that have been 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 v. Kappos, 561 U.S. 593 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). If a claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. We apply the PTO revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019, hereinafter “Guidance”)7. The Guidance includes Steps 2A and 2B. Under Step 2A, Prong One, we first look to whether the claim recites a judicial exception, including certain groupings of abstract ideas (i.e., mathematical concepts; certain methods of organizing human activities 7 The PTO issued an update to the Guidance in October 2019 (“Guidance Update,” available at https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf). Appeal 2021-002671 Application 15/130,624 5 such as a fundamental economic practice; or mental processes). See id. at 54. If a claim recites a judicial exception, we proceed to Step 2A, Prong Two, to determine whether the claim recites additional elements that integrate the judicial exception into a practical application. See Guidance at 54; see also MPEP § 2106.05(a)-(c), (e)-(h). Only if a claim both recites a judicial exception and fails to integrate the judicial exception into a practical application, do we proceed to Step 2B of the Guidance. There, we determine whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance at 56. Analysis Claim Grouping In contesting the patent-eligibility rejection, Appellant argues claims 1, 6-8, 10, 11, 25-28, 30, and 62-68 as a group. Appeal Br. 24-35. We select claim 1 as representative, and claims 6-8, 10, 11, 25-28, 30, and 62- 68 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)8. 8 37 C.F.R. § 41.37(c)(1)(iv) states: “When multiple claims subject to the same ground of rejection are argued as a group . . . by appellant, the Board may select a single claim from the group . . . and may decide the appeal as to the ground of rejection with respect to the group . . . on the basis of the selected claim alone.” (Emphasis added). Appeal 2021-002671 Application 15/130,624 6 Step One - Statutory Category Claims 1, 6-8, 10, 11, 25-28, 30, and 62-68 are directed to a method of playing a solvable puzzle game. Appeal Br. 37-39 (Claims App.). Accordingly, the claims are directed to one of the statutory classes of subject matter eligible for patenting under § 101 (i.e., a process). Step 2A, Prong One - Judicial Exception The Examiner determines that claims 1, 6-8, 10, 11, 25-28, 30, and 62-68 recite a judicial exception. Final Act. 2. First, the Examiner determines that the claims recite a method of playing a solvable puzzle game, which is a mental process that can be performed in the human mind9. Id. Second, the Examiner considers the claimed method to be a certain method of organizing human activity, as the method manages interactions between people in following rules or instructions10. Id. The Examiner explains that the claims define a method for playing a game including a set of rules or instructions; e.g., claim 1 “merely defines a set of rules for directing a user to place particular indicia on a matrix.” Id. at 11. Mental Concept Appellant disagrees that claim 1 recites a mental process. The Examiner has consistently failed to recognize that the claimed matrix is a physical structure into which informational content, such as the claimed indicia, are disposed in the claimed method of playing a solvable puzzle game. To 9 Under the Guidance, “concepts performed in the human mind,” including “an observation, judgment or evaluation,” fall within the “mental processes” grouping of abstract ideas. See Guidance at 52. 10 Under the Guidance, “following rules or instructions” falls within the “managing personal behavior or relationships or interactions between people” sub-grouping of the “certain methods of organizing human activity” grouping of abstract ideas. See Guidance at 52. Appeal 2021-002671 Application 15/130,624 7 reiterate, the claimed matrix is a physical structure which includes physical elements, namely “cells arranged in N rows, N columns, and N sub-matrices, each said sub-matrix formed from N continuous unfilled cells.” In other words, physical rows, physical columns, and physical sub-matrices form the physical matrix. Appeal Br. 26. The Examiner responds that the claimed “matrix” does not require a specific structure, but reads on a “mental construct/process” that can be performed in the human mind. Ans. 13. The Examiner determines that “claim 1 merely defines a matrix having a plurality of cells which are fillable with indicia. This arrangement could clearly be completed in the human mind.” Id. The Examiner further determines that “the instant invention is directed to a solvable puzzle game where a matrix is provided and filled with particular indicia according to rules of the game. The game can simply be accomplished with the use of pen and paper as the claims do not require any structure whatsoever.” Id. (citing Guidance Update p. 9 (II)(C)(iii), “A Claim That Encompasses A Human Performing The Step(s) Mentally With The Aid Of A Pen And Paper Recites A Mental Process”). Claim 1 recites “a matrix having N2 unfilled cells arranged in N rows, N columns, and N sub-matrices, each said sub-matrix formed from N continuous unfilled cells,” “wherein each said cell and said sub-matrix is visually distinguishable from each other said cell and said sub-matrix within said matrix.” Appeal Br. 37 (Claims App.). We agree with the Examiner that claim 1 does not recite a limitation that requires the “matrix” to be a “physical structure” or a “physical matrix,” as Appellant contends. Appeal Br. 26. As disclosed in Appellant’s Specification, “the solvable puzzle game (1) can, but need not necessarily, further include[] a substrate (28) on which Appeal 2021-002671 Application 15/130,624 8 the matrix (11) can be disposed.” See Spec. 13, l. 30-14, l. 1 (emphasis added); Fig. 11. Accordingly, the matrix is not required to be disposed on a physical substrate. The Specification adds that “the substrate (28) can be configured as a writing surface (29) on which a player of the solvable puzzle game (1) can write with a writing instrument (30) to fill the unfilled cells (5).” Id. at 14, ll. 1-3. The Examiner’s determination that “[t]he game can simply be accomplished with the use of pen and paper as the claims do not require any structure whatsoever” is consistent with this disclosure. Ans. 13. Appellant also contends: the Examiner did not construe any of the alleged matrices of Edwards, Loveland, or Yang as “capable of being constructed in a user’s mind” and thus “a mere mental process.” Accordingly, if the alleged matrices of the alleged prior art were not viewed as “capable of being constructed in a user’s mind” and thus “a mere mental process” and the claimed matrix is considered to be analogous to these, then the claimed matrix should indisputably not be regarded as “capable of being constructed in a user’s mind” and thus “a mere mental process.” Appeal Br. 26-27. The Examiner responds that “employees of the USPTO must refuse to express any opinion as the validity or invalidity of any claim in any U.S. Patent.” Ans. 14 (citing MPEP § 1701). In addition to the Examiner’s response, each application is examined on its own merits for compliance with pertinent statutory requirements. See In re McDaniel, 293 F.3d 1379, 1387 (Fed. Cir. 2002) (“It is well settled that the prosecution of one patent application does not affect the prosecution of an unrelated application.”); In re Gyurik, 596 F.2d 1012, 1018-19 n.15 (CCPA 1979) (“Each case is determined on its own merits. In reviewing specific rejections of specific claims, this court does not consider allowed claims in other applications or patents.”); In re Wertheim, 541 F.2d 257, 264 Appeal 2021-002671 Application 15/130,624 9 (CCPA 1976) (“[I]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others.”). Accordingly, the Examiner has properly analyzed the eligibility of claim 1 based on its own merits, without considering the prosecution of Edwards, Loveland, or Yang. Appellant also contends that “the definition of ‘physical’ is having material existence: perceptible especially through the senses and subject to the laws of nature.” Appeal Br. 2711. Appellant submits, “by definition, if an object is perceptible through one or more senses, it has a material existence and is consequently a physical structure.” Id. Appellant contends that each of the claimed rows, columns, sub-matrices, and matrix is perceptible via sight and touch, and thus, a “physical structure.” Id. According to Appellant, in claim 1, “at least obtaining and filling are physical actions which are perceptible via at least sight and/or touch.” Id. at 28 (emphasis added). As for Appellant’s definition of “physical,” claim 1 does not recite a limitation that requires the rows, columns, and sub-matrices to be perceptible by touch. A person playing the puzzle game in their mind could “visualize” the matrix configuration, as well as filling its cells with “indicia” following the recited rules. Other persons may prefer to use pen and paper as a physical aid to help them perform a mental step. “The use of a physical aid (i.e., the pen and paper) to help perform the mental step (e.g., a mathematical calculation) does not negate the mental nature of this limitation.” See Guidance Update p. 9 (II)(C)(iii). For instance, such persons would be able to perform the “obtaining” step by drawing a matrix, 11 Citing Merriam Webster.com. 2019. https://www.merriamwebster. com (8 July 2019). Appeal 2021-002671 Application 15/130,624 10 as recited, on paper, and then perform the “filling” step by filling the cells of the matrix following the recited rules. Such players would be able to see and touch the matrix as drawn on the paper. The Examiner also submits that “a simple 2x2 or 3x3 matrix would meet the claim limitations and be capable of being solved within a user’s mind. The applicant appears to be requiring a particular difficulty or size for the matrix that is not recited in the claims.” Final Act. 11. Appellant contends that the Examiner erred because “dependent Claim 6 includes the limitation ‘wherein N is five.’” Appeal Br. 28. However, construing claim 1 to require the limitation of dependent claim 6 would result in claim 6 failing to further limit claim 1, and thus, failing to meet 35 U.S.C. § 112(d). See, e.g., AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003) (“Under the doctrine of claim differentiation, dependent claims are presumed to be of narrower scope than the independent claims from which they depend.”). Accordingly, we construe claim 1 to not require “N” to equal five. Appellant also contends: the claimed method of playing a solvable puzzle game which includes the claimed solving step cannot practically be performed in the mind, regardless of the size of the matrix, whether it be a 2x2 matrix, a 3x3 matrix, a 5x5 matrix, etc. Thus, the claimed method is not a mere mental process. Appeal Br. 28. Appellant requests that “the Examiner provide a corresponding affidavit, as required by MPEP § 707, as this would be a fact within his personal knowledge.” Id. at 29. The Examiner responds, “[A]ppellant has merely argued that the physical structure of the invention merely comprises the matrices. This clearly can be provided by simple pen Appeal 2021-002671 Application 15/130,624 11 and paper and surely an affidavit attesting to this fact would be unreasonable.” Ans. 15. Appellant appears to be contending that, regardless of the size of the matrix, the “solving” step could not practically be performed in the human mind. This argument is not supported by evidence, and thus, is insufficient to establish this assertion. See Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1260 (Fed. Cir. 2010) (“Unsupported attorney argument . . . is an inadequate substitute for record evidence.”). Also, Appellant does not provide persuasive reasoning or evidence to show that the “solving” step could not be performed a person using pen and paper. Indeed, claim 1 is directed to “playing a solvable puzzle game.” For the foregoing reasons, Appellant does not apprise us of error in the Examiner’s determination that claim 1 recites a mental process, and thus, an abstract idea. Method of Organizing Human Activity Appellant also contests the Examiner’s determination that claim 1 recites a method of organizing human activity. Appeal Br. 29. Appellant refers to In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) (cited at Guidance 52 n. 13). In Smith, the claimed subject matter was directed to “[a] method of conducting a wagering game” using a deck of playing cards. Id. at 817- 18. The court concluded that the claims “describing a set of rules for a game, are drawn to an abstract idea.” Id. at 819. Appellant asserts that “the instant ‘method of playing a solvable puzzle game’ cannot be construed as similar to Smith’s ‘method of conducting a wagering game,’” and the recited “solving step” cannot be Appeal 2021-002671 Application 15/130,624 12 construed as akin to any of the method steps in Smith’s claim 1. Appeal Br. 30. In contrast to Smith, Appellant contends: The instantly claimed method cannot be compared to the fundamental economic practice[s] found abstract by the Supreme Court, nor can the instantly claimed method be construed as analogous to (i) the wagering game of Smith, (ii) the method of exchanging financial obligations of Alice, or (iii) the method of hedging risk of Bilski. Id. at 31. We agree with Appellant insofar as claim 1 does not recite a “wagering” game or a method of “hedging risk.” Nonetheless, as noted by Appellant, Smith states that “Abstract ideas, including a set of rules for a game, may be patent-eligible if they contain an “‘inventive concept’ sufficient to transform the claimed abstract idea into a patent eligible application.’” Appeal Br. 31; see Smith, 815 F.3d at 819. Accordingly, Smith explicitly states that abstract ideas can be “a set of rules for a game.” Similarly, in In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160 (Fed. Cir. 2018), the court determined that the claimed “method of playing a dice game” was drawn to “the abstract idea of ‘rules for playing a dice game.’” Id. at 1160-61; see also Guidance Update p. 6 (II)(B)(iii) (listing “a set of rules for playing a dice game” as an example of the “managing personal behavior or relationships or interactions between people” sub- grouping). Similar to the claims found to recite abstract ideas in Smith and Guldenaar, claim 1 is directed to playing a game by following a recited set of rules. As such, both Smith and Guldenaar support the Examiner’s determination that claim 1 recites the abstract idea of a set of rules for playing a game. Appeal 2021-002671 Application 15/130,624 13 Appellant also asserts, “[i]n contrast to Smith’s “purely conventional” shuffling and dealing a standard deck of cards, the instantly claimed method is directed to a method of playing a solvable puzzle game using a new and original gaming apparatus. . . .” Appeal Br. 32. According to Appellant, the matrix as recited in the “obtaining” step and subsequent “wherein” clause is novel and original. Id. To the extent Appellant is contending that claim 1 recites an “inventive concept” sufficient to transform the abstract idea into a patent eligible application, this issue is pertinent to Step 2B of the Guidance, not to whether claim 1 recites an abstract idea. See Guidance at 56. Accordingly, claim 1 recites a method of playing a puzzle game by following rules, which is an example of “managing personal behavior or relationships or interactions between people,” i.e., a second abstract idea. Step 2A, Prong Two - Practical Application We next determine whether the recited judicial exception is integrated into a practical application of that exception. This evaluation requires an additional element, or a combination of additional elements, in the claim to 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 exception. When the judicial exception is integrated into a practical application of the exception, the claim is not “directed to” the judicial exception. See Guidance at 54. The Examiner determines that “[the] judicial exception is not integrated into a practical application because the game is merely integrated into any substrate or generic computer.” Final Act. 2. Appeal 2021-002671 Application 15/130,624 14 Appellant contends that the Examiner has failed to recognize (i) the new and original gaming apparatus, i.e., the recited matrix, and (ii) the novelty and originality of the claimed method step. Appeal Br. 33-34. As for (i), Appellant asserts that “the novelty and originality of the claimed matrix is evidenced by at least the fact that such a matrix has not been found in the art and correspondingly used to support a 35 U.S.C. § 102 rejection during prosecution of the instant application.” Id. at 34. The patent eligibility analysis is not, however, an evaluation of novelty or non-obviousness. “[A] claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics, Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even assuming that the claimed method may be novel, “[t]he ‘novelty’ of . . . the . . . [claim] itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90-91. Appellant also contends that the claimed method implements a method of playing a solvable puzzle game with a particular machine or manufacture that is integral to the claim (i.e., the specifically claimed matrix), which is indicative that the claim recites a practical application of a method of playing a solvable puzzle game. Appeal Br. 34 (citing Guidance at 54). As discussed above, we disagree that claim 1 requires the matrix to be a physical structure, such as a particular “machine” or “manufacture.” Appellant also contends that “the claimed solving step effects a transformation or reduction of the claimed matrix to a different state or Appeal 2021-002671 Application 15/130,624 15 thing,” which is indicative that the claim recites a practical application of a method of playing a solvable puzzle game. Appeal Br. 34-35 (citing Guidance at 54). According to Appellant, this effect can be seen by comparing Figure 10, which shows the claimed matrix before performing the claimed “solving” step, to Figure 1A showing the matrix after performing this step. Id. (reproducing Figs. 1A, 10). Figure 1A shows several of the cells of matrix 11 shown in Figure 10 after being “filled” with a number. This filling does not effect a transformation or reduction of the matrix itself to a different state or thing, as the indicia are not part of the claimed matrix, but are used with it in playing the puzzle game. For the foregoing reasons, Appellant does not apprise us of error in the Examiner’s determination that claim 1 fails to integrate the judicial exception into a practical application, and thus, is “directed to” the judicial exception. Step 2B - Inventive Concept Step 2B involves determining whether the additional elements provide “significantly more” than the judicial exception, i.e., an “inventive concept.” See Guidance at 56. This evaluation determines whether the additional element, or combination of elements, “[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present,” or “simply appends well-understood, routine, conventional activities previously known to the industry.” Id. The Examiner determines that claim 1 does not include any additional elements that are sufficient to amount to significantly more than the judicial Appeal 2021-002671 Application 15/130,624 16 exception. Final Act. 2. In response to Appellant’s contention that “the novelty and originality of the claimed matrix is evidenced by at least the fact that such a matrix has not been found in the art and correspondingly used to support a 35 U.S.C. § 102 rejection during prosecution of the instant application,” the Examiner points out that “lack of novelty under 35 U.S.C. [§] 102 or obviousness under 35 U.S.C. [§] 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements.” Ans. 17-18 (citing MPEP § 2106.05(I)). In both Smith and Guldenaar, the court acknowledged that “‘[a]bstract ideas, including a set of rules for a game, may be patent-eligible if [they] contain an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.’” See Smith, 815 F.3d at 819; Guldenaar, 911 F.3d at 1161. Here, however, claim 1 fails to meet this requirement for reasons discussed above12. Thus, we sustain the rejection of claim 1 under 35 U.S.C. § 101. Dependent claims 6-8, 10, 11, 25-28, 30, and 62-68 fall with claim 1. 12 In Guldenaar, the court concluded: “Because the only arguably unconventional aspect of the recited method of playing a dice game is printed matter, which falls outside the scope of § 101, the rejected claims do not recite an ‘inventive concept’ sufficient to ‘transform’ the claimed subject matter into a patent-eligible application of the abstract idea.” Guldenaar, 911 F.3d at 1162. Should there be further prosecution of this application, the Examiner can consider the applicability of the printed matter doctrine to the patent eligibility of the claims. Appeal 2021-002671 Application 15/130,624 17 Obviousness of Claims 1, 6-8, 10, 11, 25-27, 62-65, 67, and 68 over Edwards or Edwards/Anand Claims 1, 8, 10, 11, 25-27, 62-65, 67, and 68 The Examiner finds that Edwards discloses a puzzle game comprising a matrix having N cells arranged in N rows, N columns and N sub-matrices. Final Act. 3 (citing Edwards, Figs. 5, 8). The Examiner also finds that Edwards teaches that the puzzle can comprise indicia to assist a user in assembling the puzzle. Ans. 19 (citing Edwards, col. 7, ll. 1-14). Alternatively, the Examiner finds that Anand teaches that it is known in the art of puzzles to provide indicia which satisfy a matrix condition wherein each row and submatrix of the puzzle is filled with one indicia set, which consists of one each of N discrete indicia. Ans. 19. The Examiner determines that claim 1 does not define any particular substrate, and thus, there is no functional relationship between the substrate and the indicia. Final Act. 3. Further, the Examiner determines: the limitations relating to the matrix and the indicia filling the cells of the matrix are directed to printed matter that has no relationship whatsoever to the substrate. Because claim 1 is silent as to any particular structure for supporting the matrix and the indicia filling the cells of the matrix a relationship between the substrate and the indicia cannot exist. Even assuming that the substrate is paper which would support the matrix and the indicia applied to the cells of the matrix, this substrate has no functional relationship whatsoever to the printed matter of the puzzle game and merely serves as a support. Note MPEP [§] 2111.05 stating that “To be given patentable weight, the printed matter and associated product must be in a functional relationship” and “Where a product merely serves as a support for printed matter, no functional relationship exists.” Here, the product (i.e. paper) merely serves as a support for the printed matter and no functional Appeal 2021-002671 Application 15/130,624 18 relationship exists therebetween. Thus, the matrix and indicia filling the cells of the matrix should be given no patentable weight. Ans. 20 (emphasis added). Printed matter itself is non-statutory subject matter, and accordingly, it must have a functional relationship to a physical substrate holding the printed matter in order to be given patentable weight. See, e.g., In re Miller, 418 F.2d 1392, 1396 (CCPA 1969); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.”). And even if a functional relationship exists between the printed matter and the substrate, the functional relationship must be “new and unobvious.” See King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (citations omitted). Appellant did not reply to the Examiner’s “printed matter” position set forth in the Answer, and thus, waived this opportunity. Appellant emphasizes that the claims are directed to a method, and submits that each method step should be accorded patentable weight. Appeal Br. 10. The printed matter doctrine is applicable to method claims. Although these “printed matter” cases involved the addition of printed matter, such as written instructions, to a known product, we see no principled reason for limiting their reasoning to that specific factual context. See In re Ngai, 367 F.3d [1336,] 1338-39 [(Fed. Cir. 2004)]; In re Gulack, 703 F.2d 1385-87. Rather, we believe that the rationale underlying these cases extends to the situation presented in this case, wherein an instructional limitation is added to a method, as opposed to a product, known in the art. Appeal 2021-002671 Application 15/130,624 19 King, 616 F.3d at 1278-79. King supports the Examiner’s application of the of the printed matter doctrine to the claimed method. Also, in Guldenaar, the court determined that “[t]he markings on Appellant’s dice . . . constitute printed matter” and “the printed indicia on each die are not functionally related to the substrate of the dice.” Guldenaar, 911 F.3d at 1161. Guldenaar shows that descriptive material provided on a substrate used in a method needs to have a functional relationship with the substrate. Appellant’s Specification discloses that the solvable puzzle game can include “a set of rules which specify constraints regarding placement of the indicia (4) within the unfilled cells (5).” See Spec. 14, ll. 22-24 (emphasis added). Dependent claim 25 recites this feature. Appeal Br. 38 (Claims App.). The Specification also discloses that the solvable puzzle game can include “one or more hints which may be useful for solving the solvable puzzle game (1).” See Spec. 14, ll. 26-28 (emphasis added). Dependent claim 26 recites this feature. Appeal Br. 38 (Claims App.). Parent claim 1 encompasses this further use of printed matter in the claimed method. For the above reasons, we sustain the rejection of claim 1, and claims 8, 10, 11, 25-27, 62-65, 67, and 68 depending therefrom, which are not separately argued, over Edwards or, alternatively, over Edwards and Anand. Claims 6 and 7 Claim 6 depends from claim 1 and recites that “N is five,” and claim 7 also depends from claim 1 and recites that “N is less than five.” Appeal Br. 37 (Claims App.). The Examiner finds that Edwards teaches an 8x8 arrangement, but determines that it would have been obvious to provide the puzzle in other arrangements, such as 4x4 or 5x5 as other puzzle Appeal 2021-002671 Application 15/130,624 20 arrangements to solve. Final Act. 5. Appellant contends that Edwards teaches away from puzzle assemblages other than a 4x4x4 cube and corresponding 8x8x1 square. Appeal Br. 22. We disagree that Edwards’ teachings are limited to only 4x4x4 cube and corresponding 8x8x1 square assemblages. See, e.g., col. 7, ll. 28-36. Further, the Examiner responds that Edwards is relied upon merely for its teaching that it is known in the art of puzzles to arrange the puzzle pieces in the shape of a matrix with unfilled cells. Ans. 24. Further, the Examiner relies on the printed matter position for claims 6 and 7. Ans. 24-25. Appellant did not reply to this position. As Appellant does not apprise us of Examiner error, we sustain the rejection of claims 6 and 7 over Edwards or, alternatively, over Edwards and Anand. Obviousness of Claims 28 and 30 over Edwards/Loveland or Edwards/Anand/Loveland The Examiner relies on Loveland as teaching the limitations of claims 28 and 30, which depend from claim 1, relating to playing the solvable puzzle game on a computer. Final Act. 6; Appeal Br. 38 (Claims App.). Appellant does not address the rejection. Thus, we sustain the rejection of claims 28 and 30 over Edwards and Loveland, or, alternatively, over Edwards, Anand, and Loveland, for the same reasons discussed for the rejection of claim 1 over Edwards or Edwards and Anand. Appeal 2021-002671 Application 15/130,624 21 Obviousness of Claims 1, 6-8, 10, 11, 25-27, and 62-68 over Johnson or Johnson/Anand Claims 1, 8, 10, 11, 25-27, and 62-68 The Examiner finds that Johnson discloses a puzzle game comprising a matrix having N cells arranged in N rows and N columns. Final Act. 6. The Examiner also finds that Johnson teaches that the puzzle can comprise indicia to assist assembling the puzzle. Id. at 7 (citing Johnson, Figs. 11- 16). We note Johnson discloses using pieces having different colors. See Johnson, col. 3, ll. 25-28 Alternatively, the Examiner finds that Anand teaches that it is known in the art of puzzles to provide indicia which satisfy a matrix condition wherein each row and submatrix of the puzzle is filled with one indicia set, which consists of one each of N discrete indicia. Ans. 19. The Examiner also determines that claim 1 does not define any particular substrate, and thus, lacks a functional relationship between the substrate and the indicia. Final Act. 7; Ans. 20. Appellant presents substantially the same argument against Johnson and Anand as presented against the rejection of claim 1 over Edwards or Edwards and Anand. See Appeal Br. 10-18. This argument is similar unpersuasive here. Further, Appellant did not reply to the Examiner’s printed matter position, and thus, waived this opportunity. Accordingly, we sustain the rejection of claim 1, and claims 8, 10, 11, 25-27, and 62-68 depending therefrom, over Johnson, or, alternatively, over Johnson and Anand. Appeal 2021-002671 Application 15/130,624 22 Claims 6 and 7 The Examiner finds that Johnson teaches an 8x8 arrangement, but determines that it would have been obvious to provide the puzzle in other arrangements, such as 4x4 or 5x5. Final Act. 8. Appellant contends that Johnson requires that the block puzzle forms an 8x8 square. Appeal Br. 22 (citing Johnson, col. 1, l. 64-col. 2, l. 3). According to Appellant, due to the emphasized significance of the 4x4x4 cube and 8x8 two-dimensional square, it would not have been obvious to provide Johnson’s block puzzle in other arrangements. Id. at 23-24. The Examiner responds that Johnson is relied upon merely for its teaching that it is known in the art of puzzles to arrange the puzzle pieces in the shape of a matrix with unfilled cells. Ans. 24. Additionally, the Examiner relies on the printed matter position for claims 6 and 7. Ans. 24- 25. Appellant did not reply to this position, and thus, waived this opportunity. As Appellant does not apprise us of Examiner error, we sustain the rejection of claims 6 and 7 over Johnson, or, alternatively, over Johnson and Anand. Obviousness of Claims 28 and 30 over Johnson/Loveland or Johnson/Anand/Loveland The Examiner relies on Loveland as teaching the limitations of claims 28 and 30. Final Act. 10. Appellant does address the rejection, and thus, we sustain the rejection of claims 28 and 30 over Johnson and Loveland, or, alternatively, over Johnson, Loveland, and Anand for the same reasons as for the rejection of claim 1 over Johnson or Johnson and Anand. Appeal 2021-002671 Application 15/130,624 23 CONCLUSION We affirm the rejections of claims 1, 6-8, 10, 11, 25-28, 30, and 62- 68 under 35 U.S.C. §§ 101 and 103. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6-8, 10, 11, 25-28, 30, 62-68 101 Eligibility 1, 6-8, 10, 11, 25-28, 30, 62-68 1, 6-8, 10, 11, 25-27, 62-65, 67, 68 103 Edwards 1, 6-8, 10, 11, 25-27, 62-65, 67, 68 1, 6-8, 10, 11, 25-27, 62-65, 67, 68 103 Edwards, Anand 1, 6-8, 10, 11, 25-27, 62-65, 67, 68 28, 30 103 Edwards, Loveland 28, 30 28, 30 103 Edwards, Anand, Loveland 28, 30 1, 6-8, 10, 11, 25-27, 62-68 103 Johnson 1, 6-8, 10, 11, 25-27, 62-68 1, 6-8, 10, 11, 25-27, 62-68 103 Johnson, Anand 1, 6-8, 10, 11, 25-27, 62-68 28, 30 103 Johnson, Loveland 28, 30 28, 30 103 Johnson, Anand, Loveland 28, 30 Overall Outcome 1, 6-8, 10, 11, 25-28, 30, 62-68 Appeal 2021-002671 Application 15/130,624 24 TIME PERIOD FOR 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED