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Section 101 Board Decision Analysis 12/033,641

Jim Ruttler, Patent Attorney

Posted Friday, October 23, 2015 by Jim Ruttler

In a preceding post, I summarized some Patent Board decisions regarding subject matter eligibility where the examiner was reversed. Here I am exploring one of those cases in greater detail.

In application 12/033,641, the applicant appealed on a number of grounds including subject matter eligibility. The examiner had rejected the following claim as being an unpatentable abstract idea in view of the Supreme Court Alice decision.

  1. A method of teaching comprising:arranging a plurality of cards on a base to indicate a path of movement, wherein said base comprises a plurality of compartments, sized and shaped to receive and retain each card in place for the duration of a game after said cards have been arranged in one of a plurality of different configurations;playing a game on said base in accordance with predetermined rules; andretaining each card in place for the duration of a game;wherein a game piece is advanced along said path of movement from one of said plurality of cards arranged on said base to another of said plurality of cards arranged on said base.

The Board agreed that the claim was directed to an abstract idea because it was essentially a set of rules for playing a game. However, the Board went on to say that the test is two-part and even if the claim is directed to an abstract idea, it may nonetheless be eligible under the second part. The second part of the test is whether the language separately or in combination adds something more to the abstract idea. Interestingly, the Board revived the machine-or-transformation test via Ultramercial v. Hulu, saying that that the inclusion of structure is an important clue as to whether the claim includes something more under the second part of the test. Here, the Board pointed to the following language as structure: “wherein said base comprises a plurality of compartments, sized and shaped to receive and retain each card in place for the duration of a game”. This minimal structure was sufficient in the Board’s mind to convert the claim into patent eligible subject matter.

Accordingly, based on this decision, it would be good practice to make sure there is ample disclosure of structure in your application and include that structure in the claims.

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