Coon, Liz et al.

Patent Trials and Appeals Board

Aug 26, 2019

13750646 - (R) (P.T.A.B. Aug. 26, 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.
13/750,646 01/25/2013 Liz Coon 08262.00314 1062
147848 7590 08/26/2019
Joseph R. DeSantis - FFHSJ DC
801 17th Street, NW
Suite 600
Washington, DC 20006
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/26/2019 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 LIZ COON, LYNN CIFKA, and JOHN DANIELS
____________

Appeal 2018-007249
Application 13/750,646
Technology Center 3700
____________
Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge CAPP
Opinion Concurring filed by Administrative Patent Judge HOELTER
CAPP, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Liz Coon, Lynn Cifka, and John Daniels (hereinafter “Appellant”), on
August 5, 2019, filed a Request for Rehearing (“Request”) in response to our
Decision mailed June 3, 2019 (“Decision”). In the Decision, we affirmed
the Examiner’s rejection of claims 24, 28, 32, 35, 37, 39, 41, 43, 45, 47,
and 49 under 35 U.S.C. § 101 as directed to a judicial exception to patent
eligible subject matter and claims 23, 27, 33, 34, 36, 38, 40, 42, 44, 46,
and 48 as unpatentable under 35 U.S.C. § 103.
After consideration of Appellant’s Request, we do not modify our
Decision.
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APPELLANT’S ASSERTIONS
In the instant case, Appellant asserts that we:
(1) misapprehended the “form and function” of the claimed
“credential cards”; and
(2) misapprehended the “printed matter” doctrine as it applies to the
facts of the case and, more particularly, how it applies to Appellant’s
“credential cards.” Id. Request 1.
ANALYSIS
Requests for Rehearing are limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See 37
C.F.R. § 41.52. A request for rehearing “‘must state with particularity the
points believed to have been misapprehended or overlooked by the Board”’
and “must specifically recite ‘the points of law or fact which appellant feels
were overlooked or misapprehended by the Board.”’ Ex parte Quist, 95
USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting MPEP
§ 1214.03).
A request for rehearing may not rehash arguments originally made in
the Brief. A request for rehearing is not an opportunity to merely express
disagreement with a decision. The proper course for an applicant
dissatisfied with a Board decision is to seek judicial review, not to file a
request for rehearing to reargue issues that have already been decided. See
35 U.S.C. §§ 141, 145.
Our decision on this request for rehearing presumes familiarity on the
part of the reader with the discussion of the facts and the law set forth in our
original Decision, which discussion will not repeated, at length, herein. In
our Decision, we noted that claims 24, 28, 32, 35, 37, 39, 41, 43, 45, 47,
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and 49 are method claims and that claims 23, 27, 33, 34, 36, 38, 40, 42, 44,
46, and 48 are apparatus claims. We affirmed the Examiner’s ground of
rejection of the method claims under the patent eligibility provisions of
Section 101. We reversed the Examiner’s ground of rejection of the method
claims under the obviousness provisions of Section 103. However, we
affirmed the Examiner’s ground of rejection of the apparatus claims under
Section 103. Our discussion herein of subject matter eligibility issues
should be considered directed to the method claims. Our discussion as to
obviousness issues should be considered directed to the apparatus claims.
Our discussion of the printed matter doctrine and the patentable weight to be
given non-functional descriptive matter (aka “printed matter”) applies
equally to both the Section 101 and Section 103 grounds of rejection and,
thus, to both the method and apparatus claims.
The “Form and Function” of Credential Cards
The “Form” of the Credential Cards
Contrary to Appellant’s position, we did not misapprehend either the
“form” or the “function” of Appellant’s “credential cards.” Appellant’s
invention is a board game. The cards are pieces of paper or card stock on
which information is printed. According to Appellant’s Specification, the
credentials cards are game instrumentalities that are collected by players
during the course of playing the game. Spec. ¶ 45 (“each must be obtained
before the player can proceed to finish the game”). The information printed
on the credential cards: “represent credentials that the homeless struggle
hard to obtain.” Spec. 45. The manner by which a player obtains credential
cards is dictated by the rules for playing the game. Id. ¶¶ 45–47.
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In the Request, Appellant confirms that credential cards are
“representations” of various credentials that must be collected. Request 1.
In our Decision, we noted that the Examiner finds that claim 24 entails
collecting cards. Decision 5–6. Similarly, we made our own observation
that:
Players manually move physical game pieces along a physical
game board path and following various instructions thereon that
encompass, among other things, collecting “credential cards”
and drawing gameplay cards that represent good or bad luck.
Id. at 10 (emphasis added). We further noted that:
The fact that Appellants play their game with particularized
information printed on the game board, game play cards, and
“credential cards” does not contribute to the patentability of the
claimed subject matter.
Id.
In the Request, Appellant argues that the credential cards “differ from
conventional gameplay cards . . . not because of what they say, but because
what they are.” Request 1. This argument does not persuade us that we
misapprehended or overlooked either the facts or the law in reaching our
Decision. The credential cards are merely designated items to be collected
in the course of playing the game. How many of such cards are to be
collected and the specific type of card(s) to be collected are dictated by:
(1) the rules of the game; and (2) the particularized content that is printed on
each card. One type of credential card, for example — an identification
card, differs from another type of credential card, for example — a banking
card, solely in the content of the information printed on the card. In other
words, the cards “are” what they are only because of what they “say” they
are.
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Thus, the “form” of the cards is paper with information printed
thereon. We did not misapprehend the “form” of the credential cards.
Appellant does not direct us to any evidence in the record that contradicts
our findings of fact summarized above.
The “Function” of the Credential Cards
Likewise, we did not misapprehend the “function” of the credential
cards. The function of the cards is to convey information to the human
mind. A player is directed by the game rules to collect a certain number and
types of cards. Claims App., claim 24. The information printed on the cards
merely allows one type of card to be differentiated from other cards. If, for
example, five different types of cards must be collected, the cards could just
as easily be differentiated with numbers from 1 to 5 or by different colors.
Appellant prints information on the credential cards to artificially simulate
credentials, such as an identification card, a bank card, or an educational
certificate. Id. This is merely an integral part of the overall abstract idea of
organizing human activity in the form of playing a game — a game that
happens to have a particular theme. The specific content on the cards
dovetails with the overall theme of the game, which is to artificially simulate
aspects of human life related to having a “home” as opposed to being
“homeless.” Id. Appellant does not direct us to any evidence in the record
that contradicts our determination that the “function” of the credential cards
is simply to convey information to the human mind related to how many
cards and which types of cards are to be collected in accordance with the
game rules and in the context of the game theme.
Appellant argues that the credential cards provide the “inventive
concept” sufficient to transform an abstract idea into patent eligible subject
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matter. Request 13. Appellant made this argument in its initial Appeal Brief
as well as in its Reply Brief. Appeal Br. 20–27, Reply Br. 6. We fully
considered and rejected this argument in reaching our Decision.
Decision 13–14.1 The “inventive concept” argument in the Request fails to
identify anything that we misapprehended or overlooked in reaching our
Decision and, instead, merely re-plows ground that we have already given
considerable attention to. A request for rehearing should not rehash
arguments originally made in the Brief. Ex parte David, Case No. 2010-
007382, 2011 WL 5080230 (BPAI Oct. 24, 2011); Ex parte Schlichting,
Case No. 2012-003981, 2014 WL 3421440 (PTAB July 11, 2014).
At the risk of repeating ourselves here, we do not consider collecting
items in a game as “unconventional” for purposes of a Section 101 analysis.
The Examiner considers rolling dice, moving game pieces
around a board, and reading and reacting to information on
game cards to be a purely conventional activity. . . We agree.
We view Appellants’ game steps as no less conventional than
the dice game that the Federal Circuit found ineligible in
Guldenaar.
Decision 15.
The basic concept of playing a board game by rolling dice,
moving game pieces around a game board, and reacting to
game cards dates back well over a century to time honored
games such as MONOPOLY and LIFE. Well known board games,
such as MONOPOLY and LIFE, establish that selecting random
numbers with dice (or spinners, etc.), moving pieces around a
game board, and reacting to information printed on game cards
amount to well-understood, routine, conventional activities
previously known to the industry.

1 “We find Appellants argument that the particularized content of the game
board, game cards, and credential cards entail an inventive concept
unpersuasive.” Id.
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Id. at 16. Particularly in regard to Appellant’s claim limitation directed to
collecting credential cards, we note that, in the well-known game of
MONOPOLY (discussed infra), players accumulate (collect) play money and
simulated “deeds” with names such as “Park Place” and “Board Walk” that
correspond to the names of spaces printed on the game board. Possession of
spaces such as “Park Place” and “Board Walk,” with an attendant right to
collect “rent” from other players landing on such spaces is evidenced by
printed cards that represent real estate deeds. Appellant presents no
persuasive evidence, either in the original Appeal Brief, Reply Brief, or the
instant Request, that Appellant’s limitation directed to collecting cards is
somehow unconventional and inventive in the field of board games. The
purported unconventionality or inventive concept is related only to the
information that is printed on the cards as it relates to Appellant’s ‘home
versus homeless’ theme.
In short, nothing in the Request causes us to reach a different
conclusion from that of our original Decision.
The claims here are ineligible because their purported
innovation is an innovation in ineligible subject matter. Their
subject is nothing but a group of rules and instructions for
playing a game. No matter how much Appellants’ game differs
from other board games, the difference lies entirely in the realm
of abstract ideas, with no cognizable advance in the nonabstract
application realm. Moreover, the inventive concept that
Appellants rely on lies almost entirely in the content of printed
matter that is not entitled to patentable weight for purposes of a
Section 101 analysis.
Decision 16.
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The Printed Matter Doctrine
Appellant suggests that we misapprehended the form and function of
the claimed “credential cards” vis-à-vis the “printed matter” doctrine.
Request 1. This is just a polite way of saying that we don’t understand the
printed matter doctrine.
The printed matter doctrine deals with claims that define purportedly
novel arrangements of printed lines or characters that are useful and
intelligible only to the human mind. In re Lowry, 32 F.3d 1579, 1583 (Fed.
Cir. 1994); In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969). Claim
limitations directed to printed matter are not entitled to patentable weight
unless the printed matter is functionally related to the substrate on which the
printed matter is applied. See In re DiStefano, 808 F.3d 845, 848 (Fed. Cir.
2015); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
If a claim limitation is directed to printed matter, the next step is to
ascertain whether the printed matter is functionally related to its “substrate.”
Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890
F.3d 1024, 1032 (Fed. Cir. 2018). Printed matter that is functionally related
to its substrate is given patentable weight. DiStefano, 808 F.3d at 850.
However, “[w]here 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.” Praxair, 890 F.3d at 1032. Claim limitations
not functionally related to the substrate are not entitled to patentable weight
because such information is not patent eligible subject matter under 35
U.S.C. § 101. See AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064
(Fed. Cir. 2010) (“This court has generally found printed matter to fall
outside the scope of § 101.”).
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Contrary to Appellant’s position, we are not persuaded that we
misapprehended how the printed matter doctrine applies to the facts of this
case. The case of In re Bryan, 323 Fed.Appx. 898 (Fed. Cir. 2009) is
directly on point with the instant case. In the Bryan case, Mr. Bryan claimed
a board game that, among other things, comprised a game board with a
network of irregular paths, tokens, dice, money that is distributed to the
players during the course of the game, a deck of “Consequence” cards, a
deck of “Band Member” cards, and a series of “Band Equipment” cards. Id.
at 900. The object of Bryan’s game is for each player to advance his or her
token along the network of paths and reach a finish space (central stage)
with a predetermined number of “Band Member” cards and a “Band
Equipment” card. Id.
In Bryan, the Board found that a prior art reference (Elrod) discloses a
board game with nearly the exact structure of Bryan’s claim except for the
specific matter printed on the game cards. Id. On appeal, Mr. Bryan argued
that the printed matter indicia on his game cards is functionally related to the
structural elements of his claimed game apparatus. Id. In affirming the
Board, the Federal Circuit agreed with the Board’s determination that there
is no new and unobvious functional relationship between the printed matter
on the cards and the card substrate. Id. at 901.
Specifically with respect to the printed matter on the “Consequence,”
“Band Member” and “Band Equipment” cards, the Federal Circuit noted that
Mr. Bryan, as with Appellant in the instant case, emphasized that the printed
matter is the distinguishing feature over the prior art. Id. Nevertheless, the
court maintained that such printed matter cannot impart patentability,
because it is “useful and intelligible only to the human mind.” Id. citing
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Lowry, 32 F.3d at 1583. Similarly, in the instant case, the printed matter on
Appellant’s “credential cards,” indicating a particular card is an
identification card, or a bank card, or an educational certificate, etc., is
intelligible only to the human mind and has no functional relationship with
the paper or card stock substrate that it is printed on.
In the Request, as in the Appeal Brief, Appellant relies on In re
Gulack, 703 F.2d 1381 (Fed. Cir. 1983) to support an argument that the
printed matter on the credential cards is functionally related to the substrate.
Request 7, 9 (“Gulack is directly on point here”), Appeal Br. 31–33. We
fully considered Appellant’s Gulack argument in reaching our Decision.
Decision 22–23. In the Decision, we recognize that the Federal Circuit, in
the context of indicia printed on game instrumentalities, distinguishes
Gulack in reaching its decision in the case of In re Marco Guldenaar
Holding B.V., 911 F.3d 1157 (2018). Id. Our discussion of the Bryan case
above confirms the correctness of our interpretation of Guldenaar as it
applies to the printed matter on Appellant’s game instrumentalities. See
Decision at 19 (maintaining that the printed matter doctrine, as applied by
the Federal Circuit in Guldenaar, defeated Appellant’s arguments about the
patentable significance of the printed matter on their credential cards).
Appellant also argues that Herman’s cards are different than the
claimed “credential cards” because they are only used to move to a
particular location or as a one-time “false-alarm” card. Request 7.
Appellant made this same argument in its Appeal Brief and we fully
considered and addressed this issue in our Decision. Decision 19. After
receiving our Decision on this point, Appellant states that it “respectfully
disagree[s]” with our determination. Request 7. Once again, Appellant
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ventures into inappropriate territory for a Request for Rehearing. See e.g.,
Ex parte Gitlin, Case No. 2017-001291, 2017 WL 5714438 (PTAB,
Nov. 13, 20170) (explaining that a Request for Rehearing is not merely an
opportunity to express disagreement with a decision).
Apparatus claim 23 recites: (1) opportunity cards; (2) challenge
cards, and (3) credential cards. Claims App. claim 23. The cards are not
distinguished based on any physical or structural characteristic of the
underlying substrate. Id. Rather, they differ only in the information that is
printed thereon, which is intelligible only to the human mind. Bryan, 323
Fed.Appx. at 901. To the extent that claim 23 requires that the cards fall
into defined sub-categories as to specific types of cards, we note that
Herman discloses at least two categories of cards, namely: (1) theme related
cards 40; and (2) false alarm cards. Herman ¶¶ 12–14.
The concept of using multiple different types or categories of game
cards, some of which contain game instructions and some of which are
collected by players, is hardly new or non-obvious. The well-known game
of MONOPOLY is the subject of Darrow (U.S. 2,026,082, iss. Dec. 31, 1935).
MONOPOLY features a plurality of “Chance” cards and a plurality of
“Community Chest” cards that are disposed on designated locations on the
game board. Such cards provide instructions, directions, and game related
occurrences to the players. Cards that represent real estate deeds are
collected and held by the players after being purchased from the bank. Thus,
players collect paper or card stock instrumentalities in the form of deeds and
money during the course of the game. They also collect 3-dimensional game
instrumentalities representing houses and hotels. For readers unfamiliar
with this well-known game, a historical summary of the game can be found
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at https://en.wikipedia.org/wiki/Monopoly_(game).2 Similarly, multiple
groups/types of cards are featured in Bryan (US 2002/0190466 A1 pub.
Dec. 19, 2002) and Elrod (US 4,998,736 iss. Mar. 12, 1991). Although,
Darrow, Bryan, and Elrod are not applied art in the Examiner’s obviousness
rejection, they are useful in understanding the background knowledge of a
person of ordinary skill in the art. See Randall v. Rea, 733 F.3d 1355, 1361–
1363 (Fed. Cir. 2013). An artisan is presumed to know something about the
art apart from what the references disclose. See In re Jacoby, 309 F.2d 513,
516 (CCPA 1962).
Appellant’s effort to differentiate the claimed cards from that of
Herman relies entirely on the content of what is printed on the cards.3
Appellant’s argument that such cards are “functionally related” does not
pertain to the structure of the game apparatus. See Bryan, 323 F.3d at 901
(explaining that such functionality arguments pertain to the methods or
processes of playing the game, which are irrelevant to apparatus claims).
Indeed, if we were to accept Mr. Bryan’s arguments, it seems
anyone could patent the structure of a pre-existing game simply
by changing the game’s theme without changing its structure.
Id. at 901–02 citing Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
In conclusion, Appellant’s Request does not persuade us that this
panel’s Decision overlooked or misapprehended any matter or that we erred
in affirming the Examiner’s rejection of the method claims under 35 U.S.C.
§ 101 and the apparatus claims under 35 U.S.C. § 103.

2 Last accessed August 15, 2019.
3 In our opinion, the number of cards that must be collected, e.g., two or
more (Claim 23) is a trivial, unpatentable distinction vis-à-vis Herman’s
“single alarm” card. Herman ¶ 14 (“only one”).
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DECISION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in the Request, but is
denied with respect to our making any modification to the Decision. Upon
reconsideration, the rejection of claims 23, 24, 27, 28, and 32–49 remains
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) (2011).
DENIED

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte LIZ COON, LYNN CIFKA, and JOHN DANIELS
____________
Appeal 2018-007249
Application 13/750,646
Technology Center 3700
____________

HOELTER, Administrative Patent Judge, concurring.

I concur in the above majority decision regarding matters raised by
Appellant in the Request for Rehearing. However, I maintain my original
dissent for the reasons stated in the original decision.