Method of playing a pathology board game in Ex parte Riley

The appellant won on 101 and 112 P 2, but lost on 103 in Ex parte Riley

The claim in question


23. A method of playing a pathology board game, comprising:

providing a colored game board having 1) an illustration of the human circulatory system comprising organs, vein, artery, and limbs; and 2) a colored circle or wheel comprising a pie chart having a plurality of diseases, each disease having its own color and a number to indicate how many spaces each player moves through the illustrated circulatory system;
(...)



As to 35 USC 101:

The Examiner also stated that Appellant’s claimed method is an attempt to claim a new set of rules for playing a board game, and “a set of rules qualifies as an abstract idea.” Ans. 7; see also Ans. 4. For these reasons, the Examiner concluded that independent method claim 23 is directed to non- statutory subject matter. (...)



But


The Examiner characterizes the process of claim 23 as an abstract idea. See Ans. 4. However, the method of claim 23 is carried out through steps that are tied to a particular apparatus (a game board with a particular illustration, and its associated pegs and cells). As such, this method does not preempt the abstract idea itself. See Reply Br. 2-3.
Accordingly, we do not sustain the rejection of claim 23 and its dependent claims 10-12, 14-20, 22.



As to the rejection under 112 P 2

The proper inquiry 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). In contrast, the rejection fails to make reference to the Specification. See Ans. 8.

The Specification states that the pathology board game includes an illustration of the human circulatory system, and that “[e]ach player chooses a cell for circulation throughout a human circulatory system comprising veins, arteries, and organs and illustrated on a colored game board.” Spec. paras. [0007]-[0008]. A person of ordinary skill in the art, interpreting claim 23 in light of the Specification would understand what is claimed.
Consequently, claim 233 is not indefinite for the reason that the phrase “choosing a cell” lacks an antecedent basis.


As to the rejection under 103:

Appellant argues that D’Antonio does not disclose a pathology
booklet as called for in claim 1. According to Appellant, the pathology booklet has a functional relationship with the other game elements, and for that reason is entitled to patentable weight. App. Br. 6-8. Similarly, Appellant contends, “the claimed at least one pathology booklet and its content depend on the game's other structural elements (wheel, board, cards), and the game’s structural elements depend on the at least one pathology booklet.” App. Br. 7-8 (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)); see also Reply Br. 4.

Appellant misapplies the test of Gulack. In Gulack, the printed matter was given patentable weight because the printed matter was functionally related to the substrate. In re Gulack, 703 F.2d at 1386 (in dealing with printed matter, “the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate”).

Here, Appellant alleges a functional relationship between the printed matter on the pathology booklet and the other game pieces, and fails to address the critical question of whether there exists a new and unobvious relationship between the printed matter on the pathology booklet and its substrate. Nothing in claim 1 indicates there is a functional relationship between the substrate and the printed matter of the pathology booklet. The Specification states that the pathology booklet classifies diseases and provides an explanation of each disease, but provides no indication the pathology booklet substrate is functionally related to that printed matter. See, e.g., paras. [0039], [0040]. We agree with the Examiner that the printed matter on the pathology booklet does not serve to patentably distinguish the subject matter of claim 1 from the prior art. See Ans. 5, 8.