SMART, naamloze vennootschap et al.

Patent Trials and Appeals Board

Aug 18, 2020

2019004929 (P.T.A.B. Aug. 18, 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.
15/108,652 06/28/2016 Rolf VANDOREN 9031-1104 8192
466 7590 08/18/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD
11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/18/2020 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):
pair_nixon@firsttofile.com
ptomail@nixonvan.com
yandtpair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROLF VANDOREN
____________

Appeal 2019-004929
Application 15/108,652
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
JILL D. HILL, 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 1–11, 14, and 16–18. We have jurisdiction under 35
U.S.C. § 6(b).2
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Smart NV as the Applicant and real
party in interest. Appeal Br. 2.
2 This case came before the Board for a regularly scheduled telephonic oral
hearing on July 28, 2020. Citations to the Hearing Transcript are indicated
by the prefix “Tr.”
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THE INVENTION
Appellant’s invention relates to game boards and associated games.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A game comprising:
a variable gameboard (10);
a plurality of game pieces (11),
wherein the gameboard (10) comprises;
at least two gameboard parts (1) with sides that can be
coupled to each other,
wherein the least two gameboard parts (1) can be positioned
with respect to one another in different orientations to form at
least two variants of a partial or complete gameboard (10),
whereby the gameboard parts (1) are each provided with at
least one coupling means (6, 8) on at least one of the sides (2)
to enable the reverse coupling of the gameboard part (1) in the
said different orientations,
whereby the at least one coupling means (6, 8) of an above-
mentioned gameboard part (1) are arranged such that they can
form a coupling with identical coupling means (6, 8) of at least
one other of said gameboard parts (1),
the at least two game board parts (1) having a top (3) and a
bottom (4) and being provided on the top (3) and/or bottom (4)
with fields (5) for placing the game pieces (11),
whereby these fields (5) are arranged in rows and columns
extending in two directions, the central points of the fields (5)
having a regular distance (A) between them, the coupling
means (6, 8) and fields (5) being so arranged that for the at least
two variants of the gameboard, at least one column or row
continues over the adjacent parts of the gameboard parts (1);
and
wherein at least some of the game pieces (11) comprise
more than one element (13), whereby each element (13) is
complementary in dimensions and/or form to a field ( 5), and
whereby the mutual core distance ( S) of the elements (13) is
equal to the regular distance (A) between the fields (5).
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Floden US D545,379 S June 26, 2007
Skoger US D601,206 S Sept. 29, 2009
Appelblatt US 8,505,918 B1 Aug. 13, 2013
Sniderman GB 1,512,943 June 1, 1978
The following rejections are before us for review:
1. Claims 1–7, 9–11, 14, and 16–18 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Appelblatt and either of (1) Floden; or (2)
Skoger.
2. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable
over Appelblatt, Sniderman, and either of (1) Floden; or (2) Skoger.
OPINION
Unpatentability of Claims 1–7, 9–11, 14, and 16–18
over Appelblatt and either Floden or Skoger
Appellant argues claims 1–7, 9–11, 14, and 16–18 as a group. Appeal
Br. 3–11. Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Appelblatt discloses the invention
substantially as claimed except for possibly teaching fields arranged in two
directions, for which the Examiner relies on either of Floden or Skoger.
Final Act. 2–3. The Examiner concludes that it would have been obvious to
a person of ordinary skill in the art at the time of the invention to create a
game board with fields arranged in rows and columns. Id. at 3. According
to the Examiner, a person of ordinary skill in the art would have done this as
such is commonly known in playing a wide variety of games. Id.
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Appellant first argues that claim 1 requires that each gameboard part
accommodate at least two game pieces. Appeal Br. 5–6. In essence,
Appellant alleges that Appelblatt lacks this requirement because each
module only has one field that accommodates only one game piece.3 Id.
This argument requires construction of the term “fields” as it appears in the
claim.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Construing claims broadly
during prosecution is not unfair to the applicant, because the applicant has
the opportunity to amend the claims to obtain more precise claim coverage.
Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364.
A claim construction analysis begins with, and is centered on, the
claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323, 1331 (Fed. Cir. 2001). Furthermore, claim language must be
construed in the claim in which it appears. IGT v. Bally Gaming Int’l, Inc.,
659 F.3d 1109, 1117 (Fed. Cir. 2011). Extracting a single word from a
claim divorced from the surrounding limitations can lead construction
astray. Id. Here, claim 1 merely recites that the “game board parts” have

3 Actually, Appellant’s modules can accommodate a plurality of game pieces
owing to the fact that game pieces can be stacked vertically on top of one
another. See e.g., Appelblatt, Fig 1. However, the decision we reach here
does not depend on this fact.
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“fields” for placing game pieces thereon. Claims App. Thus, “fields” is
construed in relation to the plural “game board parts.” However, whereas
“game board parts” is clearly intended to refer only to the plural (“at least
two”), there is no analogous limitation on the number of field(s) for each
game board part. Thus, even if each game board part has only one field, the
“at least two game board parts” of claim 1 would have, in the aggregate, at
least two fields, thereby satisfying Appellant’s contention that “fields” is
limited to the plural form of the word. Id.
Appellant does not direct us to any language in the Specification that
limits “fields” to more than one field per game board part. See generally
Appeal Br. Appellant’s Specification, in one instance, refers to “the”
(arguably singular) game board part as possessing “fields” in the plural.
Spec. 4. However, this is mentioned merely as a preferred embodiment.4 Id.
Statements regarding a preference are not definitive on whether a preferred
embodiment limits the scope of a claim. Polaris Indus., Inc. v. Arctic Cat,
Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018). Indeed, we are admonished that
it is improper to read a limitation from the specification into the claims.
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed.
Cir. 2003). In context, the plural form of a term in a claim can describe a
universe ranging from one to some higher number, rather than requiring

4 Appellant’s Specification also informs us that:
The present invention is by no means limited to the
embodiments described as an example and shown in the
drawings, but a gameboard part, a gameboard and game
according to the invention can be reali[z]ed in all kinds of
forms and dimensions, without departing from the scope of the
invention.
Spec. 10.
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more than one item. Versa Corp. v. Ag-Bag Int’l Ltd., 392 F.3d 1325, 1330
(Fed. Cir. 2004). Appellant presents nothing from the record that
necessarily restricts the number of fields in a game board part to more than
one.
Appellant next argues that Appelblatt fails to disclose game board
parts that each have a plurality of fields arranged in rows and columns
extending in two directions. Appeal Br. 6. This argument runs afoul of the
same singular versus plural issue that we discussed in the previous paragraph
regarding fields and game board parts. Versa, 392 F.3d at 1330.
Appellant’s game board part limitation, broadly but reasonably construed, is
satisfied by Appelblatt’s module 14, which contains a single “field.” Am.
Acad. of Sci. Tech Ctr., 367 F.3d at 1364. Otherwise, as can be readily seen,
for example, in Figures 1 and 21, Appelblatt’s modules 14 (214) are
arranged in rows and columns. Appelblatt Figs. 1, 21. As long as
Appelblatt’s modules (fields) are arranged in rows and columns on the
“game board,” there is no separate requirement in the claim that each
module contains multiple fields in a row and column arrangement. Here
again, Appellant is trying to import a limitation from the preferred
embodiment in the Specification where no such limitation appears in the
body of the claim. Arlington Indus., 345 F.3d at 1327.
Furthermore, Appellant erroneously insists that each individual
module is the only structure in Appelblatt that may be considered to be a
“game board part.” Appellant fails to consider that Appelblatt’s modules
can be assembled into game boards parts comprised of a plurality of
modules, which parts, nevertheless, are less than the complete game board.
For Example, Appelblatt’s individual modules can be assembled into 2x2
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game board part arrays which, in turn, can then be assembled into a 4x4 (or
larger) game board. Viewed in this way, Appelblatt is seen to have game
board parts with a plurality of fields that are arranged in rows and columns
in precisely the manner Appellant argues that the claim should be construed.
Id.
Appellant next argues that Appelblatt fails to disclose a variable
gameboard with at least two variants as claimed. Appeal Br. 3–4. In
response, the Examiner points to Appelblatt’s plurality of interconnected
modules 214 and explains that Appelblatt teaches that such modules can be
connected to form an infinite numbers of arrays. Ans. 3; Appelblatt col. 7,
ll. 23–36; col. 9, ll. 13–27, Fig. 21. During oral argument, Appellant
attempted to raise a new argument that a “variant” is required to exhibit an
offset, such as illustrated in Figures 10 and 11. Tr. 5:9–22. However, there
is no requirement in claim 1 that a variant exhibit such an offset. Claims
App. Our comments below about Appellant raising new arguments after the
Answer is filed applies, in equal force, to this issue.
Appellant next argues that Appelblatt fails to disclose “variants” of
the gameboard where rows and columns continue over adjacent parts of the
gameboard parts. Appeal Br. 6. Appellant provides no explanation or
discussion as to what is meant by this conclusory assertion. Id. Appellant
offers no proposed construction of “variant” and does not direct to us to any
language in the Specification that offers an operational definition of
“variant.” Under the circumstances, a broad but reasonable construction of
“variant” is in order. Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364. We
construe a game board “variant” to be any second game board configuration
that varies from a first game board configuration. Appelblatt’s modules are
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designed to be arranged in rows and columns. See Appelblatt Figs. 1, 2, 5,
and 15–21. The modules can be connected to form an infinite number of
arrays. Id. at col. 9, ll. 24–27. Thus, we are at a loss to understand how
Appellant’s cursory, conclusory argument about variants distinguishes the
invention from Appelblatt and is supposed to apprise us of Examiner error.
In the Reply Brief, Appellant raises a new argument that, even if
Appelblatt discloses an infinite number of arrays, it is, nevertheless, limited
to having each module oriented in the same direction as every other module.
Reply Br. 1. Appellant further argues that:
By specifying a requirement for a change in “orientation”
with “respect to each other”, Applicant intends to capture the
fundamental difference between the variability disclosed in
Appelblatt, which is limited to differently sized square/
rectangle arrays, or partial arrays such as L shapes, and the type
of variability shown in Applicant's figures, which includes
gameboard parts configured to form variants wherein the
orientations of the parts with respect to each other are different.
Id. With respect to Appellant’s – “Applicant intends to capture” – comment,
Appellant is reminded that claim language is construed from the perspective
of someone of ordinary skill in the art, not any point of view unique to the
inventor. Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364. Appellant bears the
burden of precise claim drafting so that the person of ordinary skill in the art
understands the scope of what – “Appellant intends to capture.” In re
Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997).
Secondly, we have a rule governing raising new arguments, for the
first time, in a reply brief.
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in
the examiner’s answer . . . will not be considered by the Board
for purposes of the present appeal, unless good cause is shown.
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37 C.F.R. § 41.41(b)(2). Nothing in the Reply Brief regarding “orientation”
purports to be responsive to an argument raised in the Examiner’s Answer or
otherwise establishes “good cause” for not raising this issue in the Appeal
Brief.
However, even if we were to consider this new argument (we do not),
it is not persuasive. Appellant does not direct us to any language in the
Specification that mandates a narrow interpretation of “orientation” so as to
require rotation in the X-plane. Appelblatt teaches that modules 14 feature
an elongated stand-off 22 and a corner foot 24. Appelblatt col. 5, ll. 19–32.
Two stand-offs 22 are positioned proximate the side edges of each of two
consecutive sides of modules 14. Id. Elongated tab 26 is formed in each of
stand-offs 22. Id. Tabs 26 protrude outwardly from stand-offs 22 in a plane
that is oriented parallel to and below the plane of the top of the module 14.
Id. Tabs 26 are inserted in the grooves formed between foot 24 and stand-
offs 22 of adjacent modules 14. Id. Appelblatt’s modules can be
repositioned with respect to which sides of the respective modules are
connected as long as the connection is between a tab and a groove.
Moreover, contrary to Appellant’s position, Appelblatt’s modules are
readily capable of connecting to each other in more than one rotational
orientation. A connection between modules requires a single tab on a
module to be connected to a single groove on another module. It is
elemental that, as each module has two tabs and two grooves, a module can
be rotated in orientation so that either of the two tabs can be connected to
either of the two grooves. We are confident that the Examiner could have
made these observations in the Answer had Appellant followed our rules and
given the Examiner a fair opportunity to respond. In any event, Appellant’s
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belatedly asserted argument is not supported by the record before us. The
Examiner’s finding that Appelblatt discloses a variable gameboard with at
least two variants is supported by a preponderance of the evidence.
Finally, Appellant argues that it would not have been obvious to
modify Appelblatt to achieve the claimed invention. Appeal Br. 9–11. In
advancing this argument, Appellant does not dispute the Examiner’s finding
that arranging gameboard fields in arrays of rows and columns is
“commonly known in the art.” Id.; Final Act. 3. Neither does Appellant
deny that Floden and Skoger each disclose gameboards with fields arranged
in rows and columns. Id.
Appellant’s arguments are predicated on the assumption that the
allegedly required “modifications” mentioned in this section of the Appeal
Brief are necessary to satisfy the “arranged in rows and columns” language
of the claim. For reasons previously discussed with respect to the individual
claim limitations placed in issue, we do not accept Appellant’s underlying
premise. The Examiner’s proposed modification of Appelblatt by Floden or
Skoger is a contingency that only becomes necessary if we, in the first
instance, decide that Appelblatt does not teach fields that are arranged in two
directions. Final Act. 3. Inasmuch as we find that Appelblatt should be
construed as teaching fields arranged in two directions, such contingency to
modify with Floden/Skoger does not come into play in our analysis.
However, were we to consider that such modification is necessary, we deem
it to be well within the ambit of ordinary skill in the art and, furthermore,
determine that the Examiner’s stated rationale (“as commonly known in the
art”) to be sufficient to support the rejection. Contrary to Appellant’s
conclusory and factually unsupported argument, it is a simple matter,
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requiring less than even ordinary skill, to assemble Appelblatt’s modules
into, for example, a plurality of 2x2 arrays and then assemble such 2x2
arrays into a 4x4 square array or an L-shaped array.
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is well-
founded. Accordingly, we sustain the Examiner’s unpatentability rejection
of claims 1–7, 9–11, 14, and 16–18.
Unpatentability of Claim 8
over Appelblatt, Sniderman, and either Floden or Skoger
Claim 8 depends directly from claim 6 and indirectly from claim 1.
Claims App. Appellant does not separately argue the rejection of this claim.
See generally Appeal Br. We sustain the rejection of claim 8. See 37 C.F.R.
§ 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of
arguments for separate patentability).
CONCLUSION
Claims
Rejected
§ References Affirmed Reversed
1-7, 9-11,
14, 16-18
103 Appelblatt, Floden, Skoger 1-7, 9-11,
14, 16-18

8 103 Appelblatt, Sniderman,
Floden, Skoger
8
Overall
Outcome
1-11, 14,
16-18

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