14273765 (P.T.A.B. Jan. 30, 2018)

Ex Parte Archer et al

Patent Trial and Appeal BoardJan 30, 2018

14273765 (P.T.A.B. Jan. 30, 2018)

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. 14/273,765 05/09/2014 Michael William Archer ARC-0001-US 1383 59115 7590 BRUNET & CO. LTD. 401 Bay St. Suite 1600 Toronto, ON M5H 2Y4 CANADA EXAMINER MENDIRATTA, VISHU K ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 02/01/2018 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): patents@brunetco.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL WILLIAM ARCHER, BRENT WILLIAM MATTHEWS, and VERNON ROBERT JACKSON Appeal 2017-003189 Application 14/273,765 Technology Center 3700 Before: CHARLES N. GREENHUT, JILL D. HILL, and NATHAN A. ENGELS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 6, 20, 21, and 43. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2017-003189 Application 14/273,765 CLAIMED SUBJECT MATTER The claims are directed to a chess game. Claim 1, reproduced below, with emphasis added, is illustrative of the claimed subject matter: 1 A chess game comprising an apparatus, the apparatus comprising: a playing area for displaying only two sets of chess pieces, the playing area consisting essentially of & 10 x 10 array of 100 spaces which the pieces occupy or move through; only two sets of chess pieces, the pieces of one set distinguishable from the pieces of the other set, each set of pieces consisting of21 pieces, the 21 pieces consisting of ten pawns and eleven officers, the eleven officers consisting of a king, a queen, two rooks, two bishops, two knights, two non-standard pieces that start play on the playing area and have a movement ability permitting movement of three spaces along a rank or file or two spaces along a diagonal in any one move and permitting jumping over intervening pieces, and a wildcard piece that starts play off the playing area and may be introduced on to the playing area in a space adjacent the king by a player upon occurrence of a pre-defmed condition, the wildcard piece having a randomly determined movement ability; and, a random selection device configured to randomly determine the movement ability of the wildcard piece, the random selection device comprising a plurality of selectable tokens, each token comprising an indication of the movement ability of the wildcard piece. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kauffman Mager Grady Lyrberg US 4,129,304 Dec. 12, 1978 US 6,799,763 B2 Oct. 5, 2004 US 2008/0093802 A1 Apr. 24, 2008 US 2015/0251082 A1 Sep. 10, 2015 2 Appeal 2017-003189 Application 14/273,765 REJECTIONS Claim 1—6, 20, 21 rejected under 35 U.S.C. § 103 as being unpatentable over Grady, Lyrberg, and Mager. Claim 43 rejected under 35 U.S.C. § 103 as being unpatentable over Kauffman and Lyberg. Claim 43 rejected under 35 U.S.C. § 103 as being unpatentable over Grady and Lyrberg. OPINION Appellants correctly point out that a fundamental flaw that underlies the rejections before us is the Examiner’s failure to properly consider the claim scope according to the express instructions of MPEP § 2111.03: “When the phrase ‘consists of’ appears in a clause of the body of a claim, rather than immediately following the preamble, it limits only the element set forth in that clause.” The same is true of “consisting essentially of.” These phrases mean, contrary to the Examiner’s claim construction, that the clauses immediately following are not open-ended. See Id. The axiom that “[a]ll words in a claim must be considered in judging the patentability of that claim against the prior art” (MPEP § 2143.03 citing (In re Wilson, 424 F.2d 1382, 1385)) is no less applicable to transitional phrases. To the extent the Examiner is attempting to alter the thrust of the rejection without following proper procedure for doing so (see Ans. 10 (asserting, without designating a new grounds under 37 C.F.R. § 41.39(a)(2), any number of pieces would have been obvious)) the Examiner’s analysis still falls short of the particularized inquiry demanded by 35 U.S.C. § 103(a) in particular with respect to the precise language of the claim requiring specific numbers of spaces and pieces. See In re Ochiai, 71 F. 3d 1565, 3 Appeal 2017-003189 Application 14/273,765 1571 (Fed. Cir. 1995) (“The use of per se rules, while undoubtedly less laborious than a searching comparison of the claimed invention — including all its limitations — with the teachings of the prior art, flouts section 103 and the fundamental case law applying it.”). DECISION The Examiner’s rejections are reversed. REVERSED 4