Ex Parte Borer

Patent Trial and Appeal Board

Jul 28, 2016

13589488 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/589,488 08/20/2012
43935 7590 08/01/2016
FRASER CLEMENS MARTIN & MILLER LLC
28366 KENSINGTON LANE
PERRYSBURG, OH 43551
Stephen G. Borer
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.
1-41588 5891
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
clemens@fraser-ip.com
lopez@fraser-ip.com
howard@fraser-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEPHEN G. BORER
Appeal2014-008615 1
Application 13/589 ,4882
Technology Center 3700
Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 6, 9, and 11-13. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b).
We REVERSE.
1 Our decision refers to the Appellant's Appeal Brief ("Appeal Br.," filed
Mar. 21, 2014) and Reply Brief("Reply Br.," filed Aug. 5, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Oct. 16, 2013) and
Answer ("Ans.," mailed June 6, 2014).
2 According to Appellant, the real party in interest is Stephen G. Borer
(Appeal Br. 2).
Appeal2014-008615
Application 13/589,488
Introduction
Appellant's disclosure "relates to a game, and more particularly to an
apparatus and a method for playing a racing game" (Spec. i-f 2).
Claim 6, reproduced below, is the sole independent claim on appeal
and is illustrative of the subject matter on appeal:
1. A method for playing a racing game, the method comprising the
steps of:
a) establishing a gaming apparatus having a plurality of
physical and cooperating game components, the gaming apparatus
including
i) a game surface having a race track with markings
defining a start line, a finish line, and lanes, the lanes separated
into discrete spaces by additional markings oriented transverse
to the markings defining the lanes, each of the lanes having a
lane number associated therewith, and each of the lanes
defining a complete circuit on the game surface,
ii) a plurality of game pieces representing a plurality of
players, each of the game pieces capable of advancing one or
more of the discrete spaces on the race track around one of the
lanes, and each of the game pieces having a size configured to
fit entirely within each of the discrete spaces of the lanes, the
game pieces cooperating with the game surface when the game
pieces are disposed within the discrete spaces of the lanes and
abutting the game surface, and
iii) at least two random number generators configured to
each generate the lane numbers associated with the lanes;
b) determining a lane choice for each of the players by
generating the lane number using only a single one of the
random number generators, the lane choice being the same as
the lane number generated, wherein the step of determining the
lane choice for each of the players includes permitting each of
the players, in tum, to use the single one of the random number
generators,
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Application 13/589,488
wherein the lane choice is determined for a player having the
tum if the lane number generated is different from any lane
number previously generated,
wherein the lane choice is not determined for the player having
the tum if the lane number generated is the same as any lane
number previously generated, and the player having the tum
that generated the lane number the same as any lane number
previously generated is only permitted to again use the single
one of the random number generators when all of the players
have also had turns to use the single one of the random number
generators, and
wherein the use of the single one of the random number
generators by each of the players continues in tum until the lane
choices are dete I mined for all of the players;
c) subsequent to the step b ), placing the game pieces of the
players in the discrete spaces of the lanes at the start line, the
placement of the game pieces controlled by the lane choice
detemlined for each of the players in step b), the placing of the
game pieces of the players in the lanes of the game surface at
the start line defining a first state of the gaming apparatus with
the game pieces each disposed in the lanes and abutting the
game surface in a first spatial relationship relative to each other;
d) subsequent to the step c ), each of the players generating in
tum at least two of the lane numbers using the at least two
random number generators, wherein the player with the game
piece in the lane having a first lane number has a first tum at
using the at least two random number generators; and
e) advancing the game pieces around the lanes of the race
track, wherein one of the game pieces is advanced at least one
of the discrete spaces within the lane of the one of the game
pieces when the lane number associated with the lane in which
the one of the game pieces was placed is generated by at least
one of the at least two random number generators in step d),
and wherein the advancing of the game pieces around the race
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Appeal2014-008615
Application 13/589,488
track within the lanes transforms the gaming apparatus from the
first state to at least one second state with at least one second
spatial relationship of the game pieces relative to each other that
is different from the first spatial relationship, the game pieces in
the at least one second state also disposed in the lanes and
abutting the game surface; and
t) permitting the players to repeat steps d) and e) until at least
one of the game pieces completes a predetermined number of
laps around the race track and crosses the finish line.
(Appeal Br., Claims App.).
Rejection on Appeal
The Examiner maintains, and the Appellant appeals, the following
rejection:
Claims 6, 9, and 11-13 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject
matter.
ANALYSIS
The Examiner's rejection of claim 6 states that it is based on the
standard set forth in the USPTO "Interim Guidance for Determining Subject
Matter Eligibility for Process Claims in View of Bilski v. Kappas" (75 Fed.
Reg. 43,922 (July 27, 2010)). The Examiner reasons as follows:
Claimed steps in playing a board game are abstract ideas
because they simply instruct how business should be conducted,
for example rules that may be applied for moving game pieces
on a game surface selected from infinite number of possible
hypothetical ways game pieces may move. In playing this
board game there is no repeatable result or real world result.
(Final Act. 2). The Examiner further reasons:
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Appeal2014-008615
Application 13/589,488
ciam1s b, ~L, and 11]-13 do not require the method be
implemented by a particular machine and the claims do not
require the method to particularly transform a particular article.
The method as claimed involves actions through game pieces to
merely change their locations on a game mat/surface based on
hypothetical instn1ctions and abstract ideas. . . . In playing a
board game the steps are performed by individual human beings
and not by a machine. In playing the game the steps do not
demonstrate transformation of a particular article, in that the
game pieces remain as game pieces and the game surface
remains a game surface. In playing a board game there is no
repeatable result or real world result. Applicant's claimed
method, while arguably reciting a number of physical steps of
moving game pieces, is viewed here as an attempt to claim a set
of abstract ideas/rules for playing a board game. Since the
claimed method requires no machine implementation, requires
no transformation of a particular article and is seen as an
attempt to receive patent protection for an abstract idea in the
form of a new set of rules, the examiner takes the position that
the claimed method is not patent eligible.
It is noted here that several factors weighing toward and
against patent eligibility have been analyzed by the examiner,
including but not limited to the machine and transformation
factors and the abstract idea factors discussed above. It is this
examiner's subjective determination that the factors in this case
weighing against patent eligibility far outweigh the factors
weighing toward patent eligibility.
(Final Act. 5---6).
Although the Examiner discusses whether the claimed game is
directed to "abstract ideas/rules," the Examiner's analysis appears to be
largely based on the machine-or-transformation test, which was displaced by
the Court's decision in Bilski v. Kappas, 561 U.S. 593 (2010). As such, it is
not clear that the Examiner's reasoning is consistent with the "Interim
Guidance for Determining Subject Matter Eligibility for Process Claims in
View of Bilski v. Kappas," which was in place at the time of the Final Office
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Application 13/589,488
Action (Ans. 3). In any event, we proceed to analyze the question of
whether the claimed invention is directed to unpatentable subject matter
under the framework of the Court in Alice Corp. v. CLS Bank International,
134 S.Ct. 2347 (2014) which followed the two-part test set forth in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1293 (2012).
First, as to whether the claim is directed to an abstract idea, law of
nature, or natural phenomenon, see Alice, 134 S.Ct. at 2355, we do not agree
with the Examiner that the claimed racing game is directed to an abstract
idea. To the extent that the Examiner states that the abstract idea is a "new
set of rules," the Examiner does not articulate what the abstract idea is, nor
does the Examiner take into account the combination of the set of rules with
the game surface and pieces. Although the claim's reliance on a recited
random number generator is a mathematical element or tool, we do not agree
that the claim as a whole is reducible to an abstract idea.
Further, although the independent claim is broad in scope, it does not
preempt all racing games. See Mayo, 132 S.Ct. at 1294. We note that, as
with the issue of indefiniteness, breadth of claims is not dispositive of the
issue of patentable subject matter. Cf In re Gardner, 427 F.2d 786, 788
(CCP A 1970).
Because we resolve this issue after consideration of the first step of
the Alice test, we need not reach the second step of the Alice test, e.g., as to
whether there are further claim limitations that contain an "inventive
concept" sufficient to "transform" an abstract idea into a patent-eligible
application. See Alice, 134 S.Ct. at 2357; USPTO 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618, 74,621 (Dec. 16,
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Application 13/589,488
2014). For these reasons, we do not sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 6 and its dependent claims.
DECISION
The Examiner's decision to reject claims 6, 9, and 11-13 under 35
U.S.C. § 101 is reversed.
REVERSED
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