Ex Parte Barthold et al

Patent Trial and Appeal Board

Mar 8, 2016

12726096 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/726,096 03/17/2010
27896 7590 03/10/2016
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
FIRST NAMED INVENTOR
Mark Barthold
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1389.0034Cl 1548
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/10/2016 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK BARTHOLD, TYLER B. KENNEY, BRIAN M. YU,
BENJAMIN J. BLAGG, ERICH W. WEIDETZ, SCOTT HART DERMAN,
JEANNIE B. HARDIE, and CHRISTOPHER M. LA WREN CE
Appeal 2014-001465 1,2
Application 12/726,096
Technology Center 3700
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
BRADLEY B. BAY AT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 31-39. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants' Specification ("Spec.," filed Mar. 17,
2010), Appeal Brief ("Appeal Br.," filed June 28, 2013), and Reply Brief
("Reply Br.," filed Nov. 13, 2013), as well as the Examiner's Answer
("Answer," mailed Sept. 13, 2013).
2 According to Appellants, "[t]he real party in interest[] is Mattel, Inc."
Appeal Br. 3.
Appeal2014-001465
Application 12/726,096
According to Appellants, the invention "relates to battle or war games
utilizing action figures having movement mechanisms." Spec. i-f 2.
Claim 31, which we reproduce below as representative of the appealed
claims, is the only independent claim under appeal.
31. A method for playing an action figure battle game,
the game involving a first action figure and a second action
figure, each of the first action figure and the second action figure
having its own movement function and its own attack function,
the first action figure having a mechanism that performs one of
the movement function and the attack function of the first action
figure, the method comprising the steps of:
reviewing a card identifying an objective to be performed
using the mechanism of the first action figure;
performing an action relating to the objective identified on
the card by actuating the mechanism of the first action figure;
and
determining whether the objective on the card 1s
performed using the mechanism of the first action figure.
Appeal Br. 37, Claims App.
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Appeal2014-001465
Application 12/726,096
REJECTIONS AND PRIOR ART3
The Examiner rejects the claims as follows:
claims 31-39 under 35 U.S.C. § 101 as directed to non-statutory
subject matter;
claims 31-34, 36, 38, and 39 under 35 U.S.C. § 103(a) as
unpatentable over Merritt (US 2004/0046319 Al, pub. Mar. 11, 2004) and
Wilk (US 2005/0040598 Al, pub. Feb. 24, 2005); and
claims 31-34 and 36-39 under 35 U.S.C. § 103(a) as unpatentable
over Hagen (US 2003/0020239 Al, pub. Jan. 30, 2003) and Wilk.
ANALYSIS
Section 101 rejection of claims 31-39
The Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S.Ct. 2347 (2014), explains the law as it relates to patent-eligible
subject matter. Specifically, in Alice, the Supreme Court reaffirmed the two-
part test set forth in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S.Ct. 1289 (2012), for determining whether a claim recites eligible
subject matter. See Alice, 134 S.Ct. at 2355. The first part of the test
requires a determination of whether the claim recites a patent ineligible
3 Although the Examiner rejects the claims under 35 U.S.C. §§ 102 and 112
in the Final Action, the Examiner withdraws those rejections in the Answer.
See Answer 6. Our presentation of the outstanding rejections are based on
the Examiner's restatement of the rejections. See id.at 2-5. Further, our
presentation of the rejections under 35 U.S.C. § 103 are based on the
Examiner's specific statements regarding each of the claims, inasmuch the
introductory statement for the obviousness rejection based on Hagen
(discussed below) includes a typographical error in the listing of the rejected
claims. We note in particular that the Examiner does not reject claim 35 as
anticipated or rendered obvious.
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Appeal2014-001465
Application 12/726,096
concept, such as an abstract idea. See id. In this case, the Examiner
determines that the
[c]laimed steps in playing the game are abstract ideas because
they simply instruct how business should be conducted, for
example rules that may be applied for moving or performing
actions through game pieces selected from infinite number of
possible hypothetical ways game pieces may move. In playing
the game there is no repeatable result or real world result.
Answer 3. Nonetheless, we disagree with the Examiner's conclusion that
the claims are directed to an abstract idea. We find that independent
claim 31 recites a method for playing an action figure battle game with two
physical action figures, one of the action figures including a mechanism able
to perform a movement function or an attack function. The claim further
requires actuation of the action figure's mechanism, such that an observable,
physical movement of the action figure occurs. See Appeal Br. 37, Claims
App. Based on the above discussion, we determine that the Examiner fails
to establish that claim 31 is directed to patent-ineligible subject matter; and;
thus, we do not sustain the rejection of claims 31-39 under 35 U.S.C. § 101.
Section 103 rejection of claims 31-34 and 36-39 based on
Hagen and Wilk
Appellants initially argue that the rejection is in error because,
contrary to the Examiner's finding, Hagen does not disclose an objective (as
opposed to something other than an objective) identified on a card. See
Reply Br. 4. Even assuming arguendo that Appellants' argument is directed
to descriptive material that may patentably-distinguish the claims from the
prior art, we determine that the Examiner's finding that Hagen discloses an
objective is supported by substantial evidence. See Answer 4, 10.
Appellants do not persuade us, such as by reference to evidence or by
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Application 12/726,096
technical reasoning, that the Examiner errs in determining that the data
identified on Hagen's card teaches the claimed objective. We note that a
relevant definition of "objective" is "something toward which effort is
directed" and "an aim, goal, or end of action. "4 The data identified on
Hagen's cards (which relates to attacks and power ups) appears to be related
to an aim or goal of the game player.
Appellants further argue that the rejection is in error because, contrary
to the Examiner's findings, Hagen fails to disclose actuating a mechanism.
See Reply Br. 4. We note, however, that the Examiner relies on Wilk to
disclose actuating a mechanism. See Answer 10.
With respect to Appellants' argument that Wilk does not disclose
actuating a mechanism, Appellants fail to establish, such as by reference to
evidence or by technical reasoning, that Wilk' s mechanism is not actuated in
response to action relating to an objective identified on the card. Similar to
the above discussion, even assuming arguendo that Appellants' argument is
directed to descriptive material that may patentably-distinguish the claims
from the prior art, the Examiner's finding that Wilk discloses actuating a
mechanism in response to an objective is supported by substantial evidence,
and Appellants do not persuade us that the Examiner is incorrect. See
Answer 4; see also Reply Br. 6.
4 From httn://www.men-iam-webster.com/dictionary/obiective, last visited
Feb. 19, 2016.
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Appeal2014-001465
Application 12/726,096
Section 103 rejection of claims 31-34, 36, 38, and 39 based on
Merritt and Wilk
Inasmuch as we sustain the obviousness rejection of claims 31-34 and
36-39 based on Hagen and Wilk, we do not reach the rejection of claims 31-
34, 36, 38, and 39 based on Merritt and Wilk.
DECISION
We AFFIRM the Examiner's rejection of claims 31-34 and 36-38
under 35 U.S.C. § 103(a).
We REVERSE the Examiner's rejection of claims 31-39 under
35 U.S.C. § 101.
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)(l )(iv).
AFFIRMED-IN-PART
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