Ex Parte Saddler

Patent Trial and Appeal Board

Sep 27, 2017

13862185 (P.T.A.B. Sep. 27, 2017)

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.
13/862,185 04/12/2013 Damon R. Saddler MAT3Z193 4218
66078 7590 09/29/2017
KOLISCH HARTWELL, P.C.
Mattel Customer Number
200 PACIFIC BUILDING
520 SW YAMHILL STREET
PORTLAND, OR 97204
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
docketing @khpatent.com
chuck@khpatent.com
veronica@khpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAMON R. SADDLER
Appeal 2016-007922
Application 13/862,185
Technology Center 3700
Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and JILL D. HILL,
Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1—5, 7, and 16—28. Claims 6, and 8—15 were cancelled
during prosecution. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2016-007922
Application 13/862,185
THE INVENTION
Appellant’s claims are directed generally to “a game and method of
playing the game.” Title. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A game comprising;
a plurality of game pieces;
a plurality of game cards, the plurality of game cards
having a plurality of first cards, a plurality of second cards and a
plurality of third cards, each of the plurality of first cards having
one of a plurality of symbolic indicia, wherein each symbolic
indicium represents an action to be performed during play of the
game, each of the plurality of third cards comprise one of a
plurality of numeric indicia and one of a plurality of color indicia
and wherein each of the plurality of second cards comprise one
of a plurality of supplemental indicia in addition to at least one
of the plurality of numeric indicia and one of the plurality of
color indicia; and
wherein each one of the game pieces comprises one of a
plurality of matching indicia that corresponds to one of the
plurality of supplemental indicia located on at least one of the
plurality of second cards and wherein each game piece may be
possessed during play of the game when one of the plurality of
second cards with one of the plurality of supplemental indicia
corresponding to one of the plurality of matching indicia of one
of the plurality of game pieces is played and when possessed a
possessed game piece provides immunity to the action to be
performed when one of the plurality of first cards is played with
one of the plurality of symbolic indicia that matches the
possessed game piece.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Berkowitz US 2009/0121427 A1 May 14, 2009
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Application 13/862,185
REJECTION
The Examiner made the following rejection:
Claims 1—5, 7, and 16—28 stand rejected under 35 U.S.C. § 102(a)(1)
as being anticipated by Berkowitz. Ans. 2.
ANALYSIS
The Examiner predicates a majority of the rejection on the finding that
the various indicia found in claim 1 are merely printed matter that “is not
functionally related to the card and game pieces such that the substrate
(card) is functionally dependent on the indicia” and therefore concludes that
“the indicia of the claimed cards and game pieces will not be given
patentable weight.” Ans. 4. While it is true that such printed matter may be
essentially ignored in certain cases, we do not agree that the instant claims
present such a case. The Examiner merely finds various markings and
indicia in Berkowitz that nominally meet certain limitations of the claims
relating to lettering, numbering, or color and then concludes that
“Berkowitz’ [elements] meet each and every claimed structural limitation”
and that he “construes any indicia to be capable of ‘corresponding’ or
‘matching’ to any other indicia.” Id.
The Examiner also appears to place considerable weight on the fact
that the claims at issue “are in apparatus form, NOT METHOD” and so can
essentially ignore any aspects of the game cards and pieces relating to the
actual playing of the game. Ans. 6. The claims, however, include more than
the simple recitation of cards, game pieces, and indicia. As Appellant states,
“the claimed indicia are functionally related to the substrates” and “[t]here
are sufficient functional relationships recited in Appellant’s claims among
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Application 13/862,185
the game cards, the game pieces, and the indicia, to distinguish the pending
claims over the cited prior art.” Reply Br. 2. We further agree with
Appellant that “the claimed indicia define three sets of cards and the set of
game pieces, and the cards and game pieces are interrelated to each other by
the indicia.” Id. at 3.
We are also persuaded that the Examiner has not only given no
patentable weight to the alleged printed matter, but also ignores other
aspects of the claims, namely that the various indicia either “correspond” or
“match” with one another. We agree that the Examiner’s interpretations of
these terms “are so unreasonable and overly broad that they go well beyond
any rational interpretation” such that they “effectively remove[]
‘corresponding’ and ‘matching’ from the claims.” Reply Br. 4. The
Examiner finds, for example, “that the dark indicia ... of the Berkowitz
bonus cards match with the dark indicia of the Berkowitz poker chips,” but
as Appellant states, “the dark indicia of ‘Bonus’ clearly is not the same as, or
identical to, the dark indicia of the Berkowitz poker chips” and thus do not
match as required in the claims. Id. at 6. Furthermore, it is unclear how
these alleged indicia would allow for the explicit gameplay aspects found in
claim 1.
In the game pieces and cards of the claims, various indicia match or
correspond in a manner so as to create an interrelationship between the cards
and the game pieces that simply is not and cannot be found in Berkowitz.
The Examiner appears to take the position that any similar color or symbol
found on both the game pieces and the cards could meet the claim language
at issue, but this ignores the interrelationships that are inherent in the
matching and/or corresponding indicia. This also ignores that the various
indicia define specific sets of cards and game pieces such that there are
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Application 13/862,185
differentiated sets of cards having different kinds of indicia thereon, which is
not found in Berkowitz.
Also, as noted above, the Examiner states that the claims are
apparatus and not method claims, but appears to ignore that there are
specifically claimed game-play limitations found in claim 1. The claims not
only require matching and corresponding indicia between the cards and
game pieces but the indicia must be of the type such that:
each game piece may be possessed during play of the game
when one of the plurality of second cards with one of the
plurality of supplemental indicia corresponding to one of the
plurality of matching indicia of one of the plurality of game
pieces is played and when possessed a possessed game piece
provides immunity to the action to be performed when one of
the plurality of first cards is played with one of the plurality of
symbolic indicia that matches the possessed game piece.
As such, while the claims are apparatus claims, they also include
elements of game play that must be capable of being performed according to
the various interrelationships among the indicia found on the apparatus. We
simply do not see, nor has the Examiner explained, how this specifically
recited element of game play could be met by the cards and game pieces of
Berkowitz. We agree with Appellant that “[something more than the
conclusory statement that ‘the structure set forth above in Berkowitz is
capable of performing the intended play steps (i.e. the functional language)’
is required.” App. Br. 9 (citing Final Act. 4). The Examiner merely repeats
this same conclusory statement in the Answer. See Ans. 6.
Accordingly, we conclude that the Examiner has not given proper
patentable weight to the claimed indicia. Additionally, the Examiner has
essentially read out the terms “matching” and “corresponding” from the
claims via an overly broad interpretation, rendering these terms meaningless.
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Lastly, the Examiner, while asserting that the claims are not in method form,
has provided no explanation as to how the cards and game pieces in
Berkowitz could actually be used to perform, or are capable of performing,
the game-related aspects explicitly found in claim 1. We therefore do not
sustain the Examiner’s rejection of claim 1, which is the only independent
claim at issue. As such the rejection of the dependent claims also fails.
DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1—5, 7, and 16—28.
REVERSED
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