Ex Parte Svatovic

Patent Trial and Appeal Board

Feb 11, 2013

11397977 (P.T.A.B. Feb. 11, 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.
11/397,977 04/06/2006 Zarko Svatovic 6078
7590 02/11/2013
ZARKO SVATOVIC
250 Mercer Street
NYC, NY 10012
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
02/11/2013 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 ZARKO SVATOVIC
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Appeal 2012-011750
Application 11/397,977
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
NEIL T. POWELL, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Zarko Svatovic (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claim 6 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Claims 1-5 have been canceled.
We have jurisdiction over this appeal under 35 U.S.C. § 6.

Appeal 2012-011750
Application 11/397,977

2
THE INVENTION
Appellant’s invention relates to an extended version of the classical
chess game played on a 10 by 10, 100 square board including new Esquire
pieces. Spec. 5, paras. 10 and 12.
Claim 6, the sole claim, is representative of the claimed invention and
reads as follows:
6. A method of playing a modified chess game
by a first player against a second player,
comprising the steps of:
(a) providing a game board consisting of ten
horizontal rows and ten vertical columns of
squares having alternating light and dark colors,
squares having the same properties as the squares
of orthodox chess;
(b) providing a plurality of playing pieces,
including one set of light-colored pieces for the
first player and a set of dark-colored pieces for the
second player, each set of pieces comprising of ten
pawns, one king, one queen, two rooks, two
bishops, two knights, and two esquires;
(c) initially positioning the set of light-
colored pieces, at the start of the game, in the first
row of ten squares at a first end of the game board
from left to fight in the sequence, rook, knight,
bishop, esquire, king, queen, esquire, bishop,
knight, and rook, with the light-colored pawns
being initially positioned, one pawn in each square
of the second row often squares;
(d) initially positioning the set of dark-
colored pieces in the tenth row often squares at the
opposing end of the game board, from left to right
in the sequence, rook, knight, bishop, esquire,
king, queen, esquire, bishop, knight, and rook,
with the dark-colored pawns being initially
positioned, one pawn in each square of the ninth
row often squares;
Appeal 2012-011750
Application 11/397,977

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(e) formatting rules of movement for play
wherein each of the queens, the rooks, the bishops,
the knights have the same rule of movement as the
corresponding piece in orthodox chess;
(f) formatting rules of movement for play
wherein each of the kings have the same rule of
movement as the corresponding piece in orthodox
chess except that the kings move three squares
towards the rook instead of two during castling;
(g) formatting rules of movement for play
wherein each of the pawns have the same rules of
movement as the pawns of orthodox chess, except
that each pawn, on its first move, may move
forwardly one, two or three squares;
(h) formatting rules of promotion movement
of the pawns wherein each of the pawns have the
same rules of promotion as the pawns of orthodox
chess, except that they may now promote into one
more piece, the esquire;
(i) formatting rule of movement of the
pawns wherein the rule stays the same as rule in
orthodox chess, except that en-passant rule can
now in addition to 3rd row be applied on the 4th
row,
(j) formatting rules of movement for play
wherein each of the esquires moves to a square
two squares in either horizontal, either vertical or
either diagonal direction; and
(k) formatting rules of movement for play
wherein each of the esquires may move over other
pieces.

SUMMARY OF DECISION
We REVERSE.

Appeal 2012-011750
Application 11/397,977

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ANALYSIS1
The Examiner found that, “[c]laim 6 does not require the method be
implemented by a particular machine” and “does not particularly require
transformation of a particular article in the process.” Ans. 4. According to
the Examiner, the “method as claimed involves movement of game pieces to
merely change their locations on a game board surface based on hypothetical
instructions and abstract ideas.” Ans. 5. Moreover, the Examiner notes that
“[i]n playing a board game the steps are performed by individual human
beings and not by a machine” (see Ans. 7) and “there is no concrete
(repeatable) result or tangible (real world) result” (see Ans. 8).
In response, Appellant takes the position that “the unique chessboard
in Claim 6 with its unique pieces and rules of play definitely represents a
unique, one of a kind machine that . . . implements and limits the unique
steps as they are precisely defined in the claim.” Reply Br. 3.
At the outset, with respect to the Examiner’s mention of a “useful,
concrete and tangible result” (Ans. 8), we note that our reviewing court has
determined that the “useful, concrete, and tangible result” test associated
with State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149
F.3d 1368, 1373 (Fed. Cir. 1998) is inadequate. In re Bilski, 545 F.3d 943,
959-960 (Fed. Cir. 2008) (en banc); see also Bilski v. Kappos, 130 S. Ct.
3218, 3231 (2010). While the machine-or-transformation test is not the sole

1 This is Appellant’s second appeal before the Patent Trial and Appeal
Board. In the first appeal (2009-012060, Decision mailed June 6, 2011)
(hereafter “Decision,”), the rejection under 35 U.S.C. § 103(a) of claim 6 as
unpatentable over Lampman (US 6,095,523, issued Aug. 1, 2000) and
Pendexter (US 6,702,287 B1, issued Mar. 9, 2004) was reversed. Decision,
6.
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Application 11/397,977

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test, the machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
patentable processes under § 101. Id. at 3227. In this case, we agree with
Appellant that the steps of method claim 6 are tied to a specific apparatus,
namely, a “modified chess game,” by virtue of the claimed steps of
“providing a game board” and “providing a plurality of playing pieces.” See
App. Br., Claims App’x. and Spec. 4, para. 9. As such, claim 6 is drawn to a
method for playing a “modified chess game” that includes “providing” the
physical components of the game, i.e., game board and plurality of playing
pieces. Furthermore, because the claimed “game board” consists of “ten
horizontal rows and ten vertical columns of squares having alternating light
and dark colors, squares having the same properties as the squares of
orthodox chess” and the “plurality of playing pieces” include “one set of
light-colored pieces . . . and a set of dark-colored pieces . . . each set of
pieces comprising of ten pawns, one king, one queen, two rooks, two
bishops, two knights, and two esquires,” we agree with Appellant that the
steps of method claim 6 are tied to a “unique” (particular) machine, namely,
a “modified chess game.” See Reply Br. 3.
In conclusion, for the foregoing reasons, we do no sustain the
rejection of claim 6 under 35 U.S.C. § 101.

SUMMARY
The Examiner’s decision to reject claim 6 is reversed.

REVERSED

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