MOVING PARTS LLC

Patent Trials and Appeals Board

Jun 2, 2020

14210867 - (D) (P.T.A.B. Jun. 2, 2020)

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.
14/210,867 03/14/2014 Dane Hans Christianson MP001 1020
34399 7590 06/02/2020
GARLICK & MARKISON
100 Congress Avenue, Suite 2000
AUSTIN, TX 78701
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANE HANS CHRISTIANSON
____________

Appeal 2019-006382
Application 14/210,867
Technology Center 3700
____________

Before BRETT C. MARTIN, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1 and 5–10 under 35 U.S.C. § 112(b) as indefinite and as
unpatentable under 35 U.S.C. § 103(a) over Abu Shumays (US 4,593,907,
iss. June 10, 1986) and Li (US 5,992,850, iss. Nov. 30, 1999). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Moving Parts LLC as the applicant
and real party in interest. Appeal Br. 1.
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THE INVENTION
Appellant’s invention relates to three-dimensional logic puzzles.
Spec. 1. Claim 1, reproduced below with paragraph indentation added, is
illustrative of the subject matter on appeal.
1. A non-cubic logic puzzle comprises:
a core mechanism to provide a three-dimensional origin of the
non-cubic logic puzzle, wherein the core mechanism includes
Part 1, Part 3, and Part 10; and
a plurality of interconnecting puzzle pieces coupled to the core
mechanism, wherein the plurality of puzzle pieces includes Part 2
and Parts 4 through 9, and wherein the plurality of puzzle pieces
are arranged in:
a first non-cubic pattern in a first plane with respect to
three-dimensional origin, wherein the first non-cubic pattern
includes a first set of the puzzle pieces arranged into a cross
shape when the non-cubic logic puzzle is in a beginning state,
wherein the cross shape includes at least a first three-by-three
piece center square;
a second non-cubic pattern in a second plane with respect to
the three-dimensional origin, wherein the second non-cubic
pattern includes a second set of the plurality of puzzle pieces
arranged in a rectangular shape when the non-cubic logic
puzzle is in a beginning state, wherein the rectangular shape
includes at least a second three-by-three piece center square;
wherein the plurality of puzzle pieces change configurations
with respect to the beginning state during play and to return to a
completed state when the non-cubic logic puzzle is successfully
solved,
wherein the completed state substantially matches the
beginning state,
wherein during play, the first non-cubic pattern deviates
from the cross shape and the second non-cubic pattern deviates
from the rectangular shape,
wherein the plurality of interconnecting puzzle pieces
allows, for a given plane, a plane-row of puzzles pieces to
rotate about the three-dimensional origin in a plane-row
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direction and a plane-column of puzzles pieces to rotate about
the three-dimensional original in a plane-column direction,
wherein the plurality of interconnecting puzzle pieces
prohibits, for the given plane, an outer plane-column from
rotating about the three-dimensional origin in the plane-column
direction when the outer plane-column includes, in another
plane, less than complete rows and columns of puzzle pieces
and wherein the plurality of interconnecting puzzle pieces
prohibits, for the given plane, an outer plane-row from rotating
about the three-dimensional origin in the plane-row direction
when the outer plane-row includes, in another plane, less than
the complete rows and columns of puzzle pieces.
OPINION
Indefiniteness
The Examiner deems claim 1 to be indefinite because terms such as
“part 1,” “part 3,” etc. fail to define sufficiently specific structure. Final
Act. 2.
In traverse, Appellant refers us to Figures 30–34 as illustrating how
the parts in Figures 35–44 are put together. Appeal Br. 4. Appellant
represents that Figures 44 and 45 are merely “slightly different perspectives”
of Figures 35–44 and that Figures 47–56 are merely “slightly different
perspectives” of Figures 35–44. Id. Appellant argues that the figures clearly
illustrate the various claimed parts and how they interconnect. Id.
Appellant cites to MPEP § 608 as justifying its claiming vernacular. Id.
In response, the Examiner maintains that MPEP § 608 does not justify
Appellant’s claiming and recites well established law that, although
Appellant may rely on the Specification for support, limitations from the
Specification are not read into the claims. Ans. 6–7 citing In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993). The Examiner further cites to Ex
parte Fressola, 27 USPQ2d 1608 (BPAI 1993) for the proposition that
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incorporation by reference to a figure is permitted only in exceptional
circumstances. Id. at 1609.
Claim 1 recites to 10 different “parts” that are distinguished only by
numbering (part 1, 2, 3, etc.). Claims App. A practitioner cannot
differentiate between say “part 1” and “part 2” without incorporating details
from the Specification and the drawings. Claim 1 does not explicitly recite
that such details are incorporated into the claim by reference. Id.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). The test for definiteness under 35
U.S.C. § 112, 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)
(citations omitted). Claims are indefinite if a person of ordinary skill in the
art cannot translate the definition into meaningfully precise claim scope.
Haliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir.
2008). “[P]atentees are allowed to claim their inventions broadly, [but] they
must do so in a way that distinctly identifies the boundaries of their claims.”
Id. at 1253. Rigorous application of the statutory standard to particularly
point out and distinctly claim the subject matter regarded to be the invention
serves an important public notice function. Predicate Logic, Inc. v.
Distributive Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008).
We agree with the Examiner that the scope of claim 1 cannot be
understood without incorporating details from the Specification and the
claims. Appellant’s reliance on MPEP § 608 is misplaced. Section 608 is
directed to providing disclosure to satisfy the written description
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requirement of 35 U.S.C. § 112(a). The indefiniteness provisions of
Section 112, however, are provided in subpart (b) of the statute which
provides as follows:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the inventor or a joint inventor regards as the
invention.
35 U.S.C. § 112(b) (emphasis added). Appellant’s claiming technique of
referring to structural components by part number falls short of “particularly
pointing out” and “distinctly claiming” the invention.
Even if we were inclined to incorporate details from Appellant’s
Specification and drawings (we are not so inclined), such would also be an
improper manner of claiming. The application section of the MPEP
provides, in pertinent part, as follows.
Where possible, claims are to be complete in themselves.
Incorporation by reference to a specific figure or table “is
permitted only in exceptional circumstances where there is no
practical way to define the invention in words and where it is
more concise to incorporate by reference than duplicating a
drawing or table into the claim. Incorporation by reference is a
necessity doctrine, not for applicant’s convenience.”
MPEP § 2173.05(s), quoting Ex parte Fressola, 27 USPQ2d 1608, 1609
(BPAI 1993). The foregoing provision was recently applied under similar
facts in the case of Ex parte Maltseva, 2019-004277, 2020 WL 2473912
(PTAB, May 7, 2020). We are not inclined to incorporate Appellant’s
Specification and drawings into the claim in the absence of Appellant
reciting an explicit incorporation by reference, which Appellant has failed to
do. Claims App. Moreover, even if we were so inclined (we are not),
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Appellant has provided no justification for a “necessity” of doing so under
MPEP § 2173.05(s) and interpretive case authorities.
We sustain the Examiner’s Section 112(b) rejection of claim 1 as well
as that of claims 5–10 at least by reason of their dependency from claim 1.
Unpatentability of Claims 1 and 5–10
over Abu-Shumays and Li
Appellant argues claims 1 and 5–10 as a group. Appeal Br. 4–6. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Our
analysis of the art rejection is made by applying Appellant’s claim language
as best understood, keeping in mind that we consider the claim to be
indefinite as discussed above.
The Examiner finds that the combination of Abu-Shumays and Li
discloses or suggests all of the limitations of claim 1 and that it would have
been obvious to combine their respective teachings to achieve the claimed
invention. Final Act. 2–4.2
Appellant argues that one cannot simply modify a 3x3x3 cube with a
face including an extension. Appeal Br. 5. Appellant argues that its
invention distinguishes over the prior art by providing a 3x3x3 center cube
that has first and second non-cubic patterns in first and second planes. Id.
at 6.
In response, the Examiner takes the position that Appellant is
attacking the cited prior art references individually, rather than considering
their teachings taken together. Ans. 8. The Examiner finds that reciting a

2 The Final Action incorporates by reference findings and conclusions from
previous Office Actions dated June 21, 2017; November 22, 2016; April 6,
2016; September 29, 2015; and February 25, 2015. Final Act. 2.
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cross-shape in a first plane with a 3x3 center and a non-cubic pattern in a
second plane in a rectangular shape is an obvious extension of the teaching
of Abu-Shumays in view of the teachings of Li. Id. at 9.
The instant invention, as well as Abu-Shumays and Li, are variations
on the well-known amusement instrumentality known as Rubik’s Cube.
Spec. 1; Abu-Shumays, Abstract; Li, col. 3, ll. 4–5, Fig. 1. Rubik’s Cube is
a three-dimensional puzzle. See U.S. Patent 4,378,116 to Rubik, iss.
Mar. 29, 1983. The commercial version(s) of Rubik’s Cube known in the
prior art presented logic puzzles in a 2x2x2 configuration and a 3x3x3
configuration.3 Abu-Shumays is directed to variations and extensions to the
2x2x2 cube. Abu-Shumays, Abstract. Among other things, Abu-Shumays
discloses puzzles that assume a variety of non-cubic shapes. Id. Figs. 4–9.
One of the non-cubic shapes is that of a cross. Id. Fig. 8. Li is directed to
a 4x4x4 cube puzzle. Li, col. 4, ll. 50–60.
The argument section of Appellant’s brief devoted to the Section 103
rejection is less than two pages in length and is remarkably cursory and
conclusory. See generally Appeal Br. The brief summarizes Appellant’s
observations on Abu-Shumays and then asks a series of seemingly rhetorical
questions. Appeal Br. 4–5. Appellant makes no effort to discuss the Li
reference or respond to the Examiner’s findings that Abu-Shumays could
have been successfully combined with Li to achieve the claimed invention.
There is no discussion or analysis of the mechanics involved in twisting and
turning the puzzle to arrive at the claimed configuration. Id. Appellant
presents neither evidence nor persuasive technical reasoning that arriving at

3 See https://en.wikipedia.org/wiki/Rubik%27s_Cube. Last Accessed
May 21, 2020.
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the particular configuration of claim 1 requires more than ordinary skill or
produces unexpected results. Under the circumstances, Appellant’s
arguments are not sufficient to apprise us of Examiner error.
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded. We
sustain the Examiners’ unpatentability rejection of claims 1 and 5–10.
CONCLUSION
In summary:
Claims
Rejected
§ Reference(s)/Basis Aff’d Rev’d
1, 5-10 112 Indefinite 1, 5-10
1, 5-10 103 Abu-Shumays, Li 1, 5-10
Overall
Outcome
1, 5-10

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED