Ex Parte Riley

Patent Trial and Appeal Board

Jul 26, 2013

12213742 (P.T.A.B. Jul. 26, 2013)

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.
12/213,742 06/24/2008 Dionne Riley 689.0002 3352
25534 7590 07/26/2013
CAHN & SAMUELS LLP
1100 17th STREET NW
SUITE 401
WASHINGTON, DC 20036
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
07/26/2013 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 DIONNE RILEY
____________________

Appeal 2011-007297
Application 12/213,742
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, PATRICK R. SCANLON,
and BART A. GERSTENBLITH, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4, 5, 7, 8, 10-12, and 14-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The Invention
Appellant’s claimed invention “relates to a pathology game and
method of playing the game.” Spec., para. [0002]. Claims 1 and 23 are the
independent claims on appeal. Claim 23, reproduced below, is illustrative of
the claimed subject matter:
23. A method of playing a pathology board game,
comprising:
providing a colored game board having 1) an illustration
of the human circulatory system comprising organs, vein,
artery, and limbs; and 2) a colored circle or wheel comprising a
pie chart having a plurality of diseases, each disease having its
own color and a number to indicate how many spaces each
player moves through the illustrated circulatory system;
providing a card holder with 1) a plurality of
treatment/remedy cards, wherein each treatment/remedy card
comprises at least one treatment or remedy for a disease and is
colored to match a corresponding disease on the colored circle;
and 2) a plurality of preventative cards, wherein each
preventative card comprises at least one preventative modality
to prevent a disease and is colored to match a corresponding
disease on the colored circle;
providing a plurality of pegs corresponding to each
organ; and
providing at least one pathology booklet comprising a
plurality of tables, each table comprising 1) an explanation of a
disease on the colored circle or wheel for at least one of an
organ, vein, artery, or limb of the illustrated human circulatory
system and symptoms associated with the disease; 2) a
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diagnostic test for the disease; 3) at least one of treatment for
the disease corresponding to a treatment/remedy card, or a
preventative modality for the disease corresponding to a
preventative card,
each player choosing a cell for circulation throughout the
human circulatory system illustrated on a colored game board;
each player being dealt a plurality of treatment/remedy
cards and a plurality of preventative cards;
during a turn, each player spinning the colored circle or
wheel to indicate a disease and number;
advancing the cell the indicated number along the
circulatory system, thereby landing on an organ, vein, artery, or
limb;
locating in the at least one pathology booklet at least one
of a treatment or prevention for the indicated disease
corresponding to the organ, vein, artery, or limb on which the
player landed;
a player matching at least one of a treatment/remedy card
or preventative card corresponding to the indicated disease,
thereby avoiding the disease;
as each player successfully passes through each organ,
the player places a peg corresponding to the organ in a slot
behind the card holder;
wherein the first player to pass through the circulatory
system in any order and who has a treatment/remedy card or
preventative card for the last organ is declared the winner of the
game.

The Rejections
The following rejections are before us on appeal:
I. Claims 10-12, 14-20, 22, and 23 under 35 U.S.C. § 101.
II. Claim 23 under 35 U.S.C. § 112, second paragraph, as indefinite.
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III. Claims 1, 2, 4, 5, 7, 8, 21, and 24-26 under 35 U.S.C. § 103(a) as
unpatentable over D’Antonio
1
(US 2007/0241500A1; pub. Oct. 18,
2007) and Sulway (US 5,158,461; iss. Oct. 27, 1992).
2

OPINION
I. Non-statutory Subject Matter
The Examiner determined that a human performs all steps of claim 23,
to include the providing, drawing, instructing, and determining steps, and no
particular machine is required. Ans. 6. Further, the Examiner determined
the claimed steps do not result in the transformation of a particular article.
Id. The Examiner also stated that Appellant’s claimed method is an attempt
to claim a new set of rules for playing a board game, and “a set of rules
qualifies as an abstract idea.” Ans. 7; see also Ans. 4. For these reasons, the
Examiner concluded that independent method claim 23 is directed to non-
statutory subject matter.
Although the machine or transformation test is not the exclusive test
for deciding whether an invention is a patent-eligible “process” under §101,
it is a useful and important investigative tool. See Bilski v. Kappos, 130 S.
Ct. 3218, 3227 (2010).
Here, Appellant does not contest the Examiner’s determination that
nothing is transformed by the claimed method. See App. Br. 4-5; Reply Br.
2-3. Rather, Appellant contends that the claimed method is not drawn to

1
This opinion makes reference to the patent (US 7,597,326 B2; iss. Oct. 6,
2009) rather than the pre-grant publication.
2
The Examiner withdrew claims 10-12, 14-20, 22, and 23 from this ground
of rejection. Ans. 3.
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non-statutory subject matter because it is tied to a particular machine or
apparatus. Reply Br. 2; see also App. Br. 5.
Claim 23 calls for providing a pathology board game that includes a
colored game board having an illustration of the human circulatory system
comprising organs, vein, artery, and limbs, and a colored wheel or circle
comprising a pie chart. Claim 23 also calls for providing other elements,
such as pegs corresponding to each illustrated organ and cells that each
player utilizes for circulation throughout the human circulatory system that
is illustrated on the game board. The rejection fails to address why this
board game is not a machine or apparatus.
Further, the Examiner’s position that a human performs all the steps
of claim 23 is incomplete in that it does not analyze how performance of
those steps is tied to the pathology board game. For example, claim 23 calls
for spinning the colored wheel to indicate a disease and a number, and
advancing a player’s cell through the circulatory system that is illustrated on
the colored game board by the number indicated. These steps cannot be
carried out by a human alone, they are tied to the pathology board game.
The Examiner characterizes the process of claim 23 as an abstract
idea. See Ans. 4. However, the method of claim 23 is carried out through
steps that are tied to a particular apparatus (a game board with a particular
illustration, and its associated pegs and cells). As such, this method does not
preempt the abstract idea itself. See Reply Br. 2-3.
Accordingly, we do not sustain the rejection of claim 23 and its
dependent claims 10-12, 14-20, 22.

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II. Indefiniteness
The Examiner determined that claim 23 is indefinite for two reasons.
Ans. 4.
First, the Examiner determined that claim 23 is indefinite because the
phrase “choosing a cell” in claim 23 lacks an antecedent basis. Ans. 4.
Appellant contends claim 23 is not indefinite. App. Br. 5; Reply Br. 3.
Specifically, Appellant correctly points out that “choosing a cell” is the first
use of this phrase in claim 23 and therefore no antecedent basis is required.
The proper inquiry is “whether those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). In contrast, the rejection fails to make
reference to the Specification. See Ans. 8.
The Specification states that the pathology board game includes an
illustration of the human circulatory system, and that “[e]ach player chooses
a cell for circulation throughout a human circulatory system comprising
veins, arteries, and organs and illustrated on a colored game board.” Spec.
paras. [0007]-[0008]. A person of ordinary skill in the art, interpreting claim
23 in light of the Specification would understand what is claimed.
Consequently, claim 23
3
is not indefinite for the reason that the phrase
“choosing a cell” lacks an antecedent basis.

3
Claim 23 includes a “providing” step for the colored game board, the card
holder, the plurality of pegs, and the at least one pathology booklet.
However, claim 23 does not include a “providing” step with regard to the
cell. While this difference could be considered an inconsistency in the claim
language, consistency is not the standard for indefiniteness. Further, the
rejection does not explicitly address the lack of a “providing” step for the
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Second, the Examiner determined that claim 23 is “unclear which
cards are provided to each player, treatment card or remedy card, and
accordingly which cards are being matched, treatment card or remedy card.”
Ans. 4.
4

It appears the Examiner is reading “treatment/remedy cards,” as
recited in claim 23, as calling for two types of cards: treatment cards and
remedy cards. The plain language of the claim recites “treatment/remedy
cards” suggesting a single type of card. In parity, the Specification states,
that the game includes “a plurality of treatment/remedy cards, wherein each
card comprises at least one treatment or remedy.” Spec., para. [0007]; see
also para. [0048] (referring to “a” treatment/remedy card). The rejection is
erroneous because it is premised on a misinterpretation of claim 23.
Consequently, we agree with Appellant that claim 23 is not indefinite for the
reason given by the Examiner. See App. Br. 5-6; Reply Br. 3-4.
For these reasons, we do not sustain the rejection of claim 23 as
indefinite.

phrase “a cell.” See Ans. 4, 8. In other words, a rejection based upon the
absence of a providing step is not before us.
4
Nothing further is provided in the Response to Argument portion of the
Examiner’s Answer. See Ans. 6-8.
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III. Obviousness over D’Antonio and Sulway
Claims 1, 4, 5, 7, 8, 21, 24-26
5

Appellant argues that D’Antonio does not disclose a pathology
booklet as called for in claim 1. According to Appellant, the pathology
booklet has a functional relationship with the other game elements, and for
that reason is entitled to patentable weight. App. Br. 6-8. Similarly,
Appellant contends, “the claimed at least one pathology booklet and its
content depend on the game's other structural elements (wheel, board,
cards), and the game’s structural elements depend on the at least one
pathology booklet.” App. Br. 7-8 (citing In re Gulack, 703 F.2d 1381 (Fed.
Cir. 1983)); see also Reply Br. 4.
Appellant misapplies the test of Gulack. In Gulack, the printed matter
was given patentable weight because the printed matter was functionally
related to the substrate. In re Gulack, 703 F.2d at 1386 (in dealing with
printed matter, “the critical question is whether there exists any new and
unobvious functional relationship between the printed matter and the
substrate”).
Here, Appellant alleges a functional relationship between the printed
matter on the pathology booklet and the other game pieces, and fails to
address the critical question of whether there exists a new and unobvious
relationship between the printed matter on the pathology booklet and its
substrate. Nothing in claim 1 indicates there is a functional relationship

5
Appellant presents a single argument for claims 1, 4, 5, 7, 8, 21, and 24-26.
App. Br. 6-10; Reply Br. 4. Appellant states that claims 21 and 24-26 stand
or fall with independent claim 23. However, that cannot be the case as these
claims depend from independent claim 1, not claim 23, and claim 23 is not
subject to this ground of rejection. We select independent claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
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between the substrate and the printed matter of the pathology booklet. The
Specification states that the pathology booklet classifies diseases and
provides an explanation of each disease, but provides no indication the
pathology booklet substrate is functionally related to that printed matter.
See, e.g., paras. [0039], [0040]. We agree with the Examiner that the printed
matter on the pathology booklet does not serve to patentably distinguish the
subject matter of claim 1 from the prior art. See Ans. 5, 8.
Claim 2
Appellant argues for claim 2 based upon the colored tabs of the
pathology booklet, asserting again that this is “yet another functional and
interactive relationship between the at least one pathology booklet and the
colored wheel or circle, which must be given patentable weight.” App. Br.
8-9 (emphasis added); see also Reply Br. 5. Our analysis of this argument
with regard to claim 1, supra, as obvious over D’Antonio and Sulway, is
equally applicable here. We sustain the rejection of claim 2.

DECISION
I. We reverse the Examiner’s decision to reject claims 10-12, 14-20, 22,
and 23 under 35 U.S.C. § 101.
II. We reverse the Examiner’s decision to reject claim 23 under 35
U.S.C. § 112, second paragraph, as indefinite.
III. We affirm the Examiner’s decision to reject claims 1, 2, 4, 5, 7, 8, 21,
and 24-26 under 35 U.S.C. § 103(a) as unpatentable over D’Antonio
and Sulway.
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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)(1)(iv).

AFFIRMED-IN-PART

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