DAYROFA COMPANY FOR GAMES (W.L.L.)

Patent Trials and Appeals Board

Jan 24, 2020

14538738 - (D) (P.T.A.B. Jan. 24, 2020)

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.
14/538,738 11/11/2014 ALIA A. ALMUTAWA 32700.31 4090
37833 7590 01/24/2020
Richard C. Litman
Nath, Goldberg & Meyer
112 S. West Street
Alexandria, VA 22314
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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):
mbashah@nathlaw.com
uspto@4patent.com
uspto@nathlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALIA A. ALMUTAWA
Appeal 2018-005248
Application 14/538,738
Technology Center 3700

Before EDWARD A. BROWN, JAMES P. CALVE, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 19–28. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the inventor, Alia A.
Almutawa. Appeal Br. 3.
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Application 14/538,738

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BACKGROUND
Independent claims 19, 27, and 28 are pending. Claim 19, reproduced
below with certain limitations italicized, illustrates the claimed subject
matter:
19. An educational and socially interactive learning game,
comprising:
at least three separate and distinct game boards, each of
the at least three separate and distinct game boards having a
different uniquely identifiable indicia, each of the at least three
separate and distinct game boards being exposed simultaneously
on a surface for simultaneous play;
at least three sets of game pieces, each of the at least three
sets of game pieces having at least three individual game pieces
bearing the uniquely identifiable indicia of one of the at least
three separate and distinct game boards;
wherein at least one of the game pieces of each of the at
least three sets of game pieces includes a game piece having a
distinctive feature;
a die having at least three faces, each of the at least three
faces having a different uniquely identifiable indicia thereon, the
uniquely identifiable indicia displayed on each of the at least
three faces corresponding to the uniquely identifiable indicia
displayed on one of the at least three separate and distinct game
boards;
wherein each separate and distinct game board identified
by the respective uniquely identifiable indicia and each of the at
least three sets of game pieces corresponding to one of the at least
three separate and distinct game boards identified by the
respective uniquely identifiable indicia being associated as a
group independent from the remaining separate and distinct
game boards and corresponding sets of game pieces; and
a plurality of game cards including a distinct first subset
of game cards, each of the game cards of the first subset of game
cards having at least one question displayed thereon, a distinct
second subset of game cards, each of the game cards of the
second subset of game cards having a puzzle displayed thereon,
and a distinct third subset of game cards, each of the game cards
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Application 14/538,738

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of the third subset of game cards having a blank area displayed
thereon.

REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Hamilton US 4,569,526 February 11, 1986

REJECTION
I. Claims 19–28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hamilton. Final Act. 2.
ANALYSIS
Independent claims 19 and 28 recite a “learning game, comprising: at
least three separate and distinct game boards, each of the at least three
separate and distinct game boards . . . being exposed simultaneously on a
surface for simultaneous play.” Independent claim 27 provides a similar
recitation with the transition term “consisting of” rather than “comprising.”
Regarding independent claims 19, 27, and 28, the Examiner finds,
inter alia, that Hamilton discloses (1) “at least three game boards . . . , each
having distinctly different . . . identifiable indicia.” Final Act. 2. The
Examiner determines that, regarding the claimed game boards being
simultaneously exposed on a surface for simultaneous play, this limitation
“does not add any structure to the apparatus.” Id. at 4 (emphasis omitted).
During examination, claims are given their broadest reasonable
interpretation as they would be understood by a skilled artisan in light of
definitions and the written description in the specification. In re Morris, 127
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F.3d 1048, 1053–54 (Fed. Cir. 1997); PPC Broadband, Inc. v. Corning
Optical Commc’ns RF, LLC, 815 F.3d 734, 740 (Fed. Cir. 2016). “Under a
broadest reasonable interpretation, words of the claim must be given their
plain meaning, unless such meaning is inconsistent with the specification
and prosecution history.” Trivascular Inc. v. Samuels, 812 F.3d 1056, 1062
(Fed. Cir. 2016) (noting that the broadest reasonable interpretation standard
does not give the Board unfettered license to interpret the words in a claim
without regard for the full claim language and the written description).
“Construing individual words of a claim without considering the context in
which those words appear is simply not ‘reasonable.’ Instead, it is the ‘use
of the words in the context of the written description and customarily by
those of skill in the relevant art that accurately reflects both the “ordinary”
and “customary” meaning of the terms in the claims.’” Id. (citation
omitted).
Regarding the “at least three game boards” limitation, we interpret the
claim language of a “learning game, comprising: at least three separate and
distinct game boards” according to its plain meaning because Appellant’s
Specification provides no special definitions or disclaimers. When we
interpret this limitation in light of the plain, ordinary meaning of those
terms, the other language of claim 19, and the Specification, we understand
it to require that a single game is made up of, inter alia, at least three
separate and distinct game boards. The game boards are simultaneously
displayed for simultaneous play.
Hamilton does not disclose this claimed structure, configuration, or
elements, i.e., a game made up of at least three separate and distinct game
boards simultaneously displayed for simultaneous play. Rather, each
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Application 14/538,738

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“game” of Hamilton is described as comprising a single game board. The
Examiner provides no finding that Hamilton teaches a single game having at
least three separate and distinct game boards. Indeed, we find no disclosure
in Hamilton of a game having at least three separate and distinct game
boards.
Appellant argues that Hamilton additionally does not disclose a game
comprising “at least three separate and distinct game boards being exposed
simultaneously on a surface for simultaneous play” (emphasis added),
because Hamilton’s “players cannot play a game on the game matrix
representing the Olympics at the same time they are playing football on the
game matrix representing Football.” Appeal Br. 11.
The Examiner responds that the game surfaces being “simultaneously
exposed on a surface” does not add any structure to the apparatus, because
the limitations is an intended use limitation. Final Act. 4 (“Whether the
game boards are open, closed or stored in a container the structure remains
the same.”); Ans. 4 (“The examiner has the burden of searching the three
distinct game boards and not whether the appellant wants to place them
together next to each other or not.”).
We are not in agreement with the Examiner on this point. While the
functional language of simultaneous exposure may not add any structure to
the claim, it cannot be completely ignored or read out of the claim. The
question, instead, is whether this functional limitation –– asserted by
Appellant to be critical for establishing novelty in the claimed subject matter
–– is an inherent characteristic of the prior art. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997) (citing In re Swinehart, 439 F.2d 210, 213
(CCPA 1971). The Examiner makes no such inherency finding. Moreover,
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this limitation clarifies that the structure of the claimed game includes three
separate and distinct game boards that together are part of the same game
and therefore are “exposed simultaneously on a surface for simultaneous
play” of that game. See Spec. ¶ 18, Fig. 1.
“[W]hen evaluating claims for obviousness under 35 U.S.C. § 103, all
the limitations of the claims must be considered and given weight.” In re
Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (non-precedential) (citing
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); see In re
Glatt Air Techs., Inc., 630 F.3d 1026, 1030 (Fed. Cir. 2011) (holding
obviousness was not established where the prior art failed to teach the
claimed shielding).
We determine that it is not reasonable for the Examiner to find that
the mere existence of game boards from three different games satisfies a
limitation for a single game that comprises three separate and distinct game
boards displayed simultaneously to play that single game. A person of
ordinary skill in the art would not understand single game boards for
individual games of Chess, Go, Checkers, and Backgammon to form or
comprise a single game, even if displayed and played simultaneously.
Instead, a skilled artisan would understand each of those games to comprise
a separate game.
Further, the Examiner does not explain why a single game comprising
at least three simultaneously-displayed, separate, and distinct game boards
would have been obvious in view of Hamilton’s teaching of plural different
games each having a separate game board. The three game boards relied on
by the Examiner pertain to three different games. Final Act. 2–4; Ans. 4.
We are unable to discern why a skilled artisan would have been motivated to
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play a single game using the separate game boards of individual games
taught by Hamilton. Nor is it clear why a skilled artisan would have been
motivated to combine the game boards of different games into a single game
that is played by simultaneously using the different game boards of different
games.
For this reason, we do not sustain the rejection of independent claims
19, 27, and 28 as unpatentable over Hamilton. Dependent claims 20–26
depend from claim 19, and are patentable for the same reason.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19–28 103 Hamilton 19–28
REVERSED