                       NOTE: This disposition is nonprecedential.

  United States Court of Appeals for the Federal Circuit

                                        2008-1461
                                 (Serial No. 09/871,349)




                                 IN RE PAUL J. BRYAN




      Paul J. Bryan, of Raleigh, North Carolina, pro se.

      Raymond T. Chen, Solicitor, Office of the Solicitor, United States Patent and
Trademark Office, of Alexandria, Virginia, for the Director of the United States Patent and
Trademark Office. With him on the brief were Joseph G. Piccolo, and William LaMarca,
Associate Solicitors.


Appealed from: United States Patent and Trademark Office
               Board of Patent Appeals and Interferences
                        NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit

                                        2008-1461
                                 (Serial No. 09/871,349)



                                 IN RE PAUL J. BRYAN



      Appeal from the United States Patent and Trademark Office, Board of
      Patent Appeals and Interferences.

                             _________________________

                             DECIDED: March 31, 2009
                             _________________________


Before MICHEL, Chief Judge, SCHALL, and LINN, Circuit Judges.

PER CURIAM.


                                       DECISION

      Paul J. Bryan appeals from the decision of the United States Patent and

Trademark Office (“PTO”) Board of Patent Appeals and Interferences (“Board”) affirming

the rejection of claims 1-11 and 13-15 of his patent application, Serial No. 09/871,349,

as obvious. Ex parte Bryan, No. 2007-1590, 2008 WL 1057622 (B.P.A.I. April 9, 2008).

Because substantial evidence supports the Board’s underlying factual findings and

because the ultimate conclusion of obviousness based on those findings is not

erroneous, we affirm.
                                     DISCUSSION

                                           I.

      Mr. Bryan’s patent application describes a “game board and game having a

touring band theme.” During the game, players attempt to assemble a music band, as

well as move their “player” tokens along a path outlined on the game board from a

starting point to an end point, i.e., “the performing stage.” The patent application also

explains that players must draw from several decks of cards—namely, decks labeled as

“Consequence,” “Band Member,” and “Band Equipment”—at various times during the

game. Independent claim 1 is illustrative of the claims on appeal:

      1. A game board and game, comprising:
      (a) a game board having a starting area, a network of irregular paths that
      lead from the starting area; and a central performing stage located
      generally centrally on the game board and connected to at least one
      segment of the network of paths;
      (b) the network of paths including a series of segments wherein each
      segment is broken down into increments and wherein at least some of the
      increments include indicia formed thereon that dictate an action for landing
      on a particular increment;
      (c) a series of tokens provided with the game board wherein a token may
      be assigned to one player and during the course of a game the token is
      advanced along one or more of the segments of the network of paths;
      (d) at least one die that is used to determine the number of increments
      that a player's token can be advanced during the course of the game;
      (e) a supply of money that during the course of the game is distributed to
      the players;
      (f) a deck of “Consequence” cards that are keyed to certain increments on
      the network of paths, each “Consequence” card having indicia thereon
      that sets forth a consequence and wherein a player landing on an
      increment that calls for drawing a consequence card must comply with the
      directive set forth on the drawn consequence card;
      (g) a deck of “Band Member” cards with the deck being divided into a
      series of groups with each group of “Band Member” cards designating
      members of a band;




2008-1461                                  2
      (h) a series of “Band Equipment” cards with each card designating band
      equipment; and
      (i) wherein the object of the game is for each player to advance his or her
      token along the network of paths and reaches the central stage with a
      predetermined number of one group of “Band Member” cards and a “Band
      Equipment” card.

      The PTO examiner to whom the application was assigned rejected claims 1-11

and 13-15 as obvious under 35 U.S.C. § 103(a). Specifically, the examiner rejected

claims 1-5, 7-11, and 13-15 as obvious in view of U.S. Patent No. 4,998,736 (“Elrod”)

and claim 6, which is dependent upon claim 1, as obvious in view of Elrod combined

with U.S. Patent No. 6,279,908 (“Hunsberger”). Subsequently, Mr. Bryan appealed the

examiner’s rejections to the Board.

      On appeal, the Board found that Elrod discloses a musical band-themed board

game with nearly the exact structure that Mr. Bryan claimed—including decks of labeled

game cards and a network of game paths—except for the specific printed matter on the

game cards, e.g., cards labeled as “Consequence” cards. Ex parte Bryan, 2008 WL

1057622, at *4-5. The Board, however, determined that the specific printed matter—

e.g., “Consequence”—could not patentably differentiate the claimed structure from the

prior art because the printed matter was not functionally related to the claim elements.

Regarding dependent claim 6, which adds the limitation of color-coding the game cards,

the Board found that Hunsberger teaches color-coding cards to distinguish one deck of

cards from another. Id. at *6-7. The Board therefore sustained the examiner’s decision

that Elrod rendered claims 1-5, 7-11, and 13-15 obvious, and that Elrod in combination

with Hunsberger rendered dependent claim 6 obvious. Id. at *7. Mr. Bryan timely

appeals the Board’s decision.         We have jurisdiction pursuant to 28 U.S.C. §

1295(a)(4)(A).


2008-1461                                   3
                                             II

       A claimed invention is unpatentable if the differences between it and the prior art

are such that the subject matter as a whole would have been obvious at the time the

invention was made to a person having ordinary skill in the art. See 35 U.S.C. § 103(a).

The ultimate determination of obviousness is a legal conclusion based on underlying

findings of fact. See, e.g., In re DBC, 545 F.3d 1373, 1377 (Fed. Cir. 2008). We review

the Board’s ultimate determination of obviousness de novo and its underlying factual

findings for substantial evidence. See, e.g., id.

       On appeal, Mr. Bryan does not appear to argue that Elrod fails to disclose the

majority, if not all, of the structural elements in the claims. Rather, he reiterates the

same primary argument that he made to the Board—that the various “printed matter”

indicia on his game cards and game board are functionally related to the structural

elements of his claimed game apparatus. On this basis, Mr. Bryan argues that Board

consequently erred in ultimately determining that the printed matter could not patentably

distinguish his claimed invention from the prior art. Specifically, according to Mr. Bryan,

the printed matter on his game cards allow the cards to be “collected, traded, and

drawn”; “identify and distinguish one deck of cards from the other”; and “enable[ ] the

cards to be traded and blind drawn.”

       Because there is no “new and unobvious functional relationship between the

printed matter and the substrate,” we agree with the Board that the printed matter in Mr.

Bryan’s claims cannot render his claimed structure unobvious. In re Ngai, 367 F.3d

1336, 1338 (Fed. Cir. 2004) (quoting In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.

1983)).   We therefore affirm the Board’s decision that claims 1-11 and 13-15 are




2008-1461                                    4
obvious. Mr. Bryan emphasizes that the printed matter set out in the claims—e.g., the

“Consequence,”     “Band    Member,”     and     “Band   Equipment”     language—is     the

distinguishing feature over the prior art. This language and the substance of the printed

matter, however, cannot impart patentability, as it is “‘useful and intelligible only to the

human mind.’” In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart,

417 F.2d 1395, 1399 (CCPA 1969)). Indeed, the printed matter does not depend on the

game’s structural elements, and the game’s structural elements do not depend on the

printed matter. See Ngai, 367 F.3d at 1339 (“[T]he printed matter in no way depends on

the kit, and the kit does not depend on the printed matter.”). Thus, the printed matter

does not exploit, or interrelate with, the underlying structural elements and, therefore, is

not “functionally related to the substrate.” See id. Importantly, Mr. Bryan does not

contend either that his claimed game apparatus is structurally different from the game

apparatus in Elrod or that applying various labels to game cards is a new relation of

printed matter to a structure. Thus, the claimed structural features are old and the

relationship of the printed matter to those structural features is also old. Accordingly,

because Mr. Bryan claims neither a new physical structure nor a new relation of printed

matter to physical structure, and because the distinction between the claims and the

prior art is nonfunctional printed matter, Mr. Bryan’s claims are not patentable over the

prior art.

        While Mr. Bryan asserts that the printed matter is functionally related because,

for example, it allows the cards to be “collected, traded, and drawn” during game play,

these types of arguments do not pertain to what he claims and seeks to patent—the

structure of the game apparatus. Rather, these arguments pertain to the patentability of




2008-1461                                    5
methods or processes of playing the game, which are irrelevant to the apparatus claims

at issue. Indeed, if we were to accept Mr. Bryan’s arguments, it seems anyone could

patent the structure of a pre-existing game simply by changing the game’s theme

without changing its structure. See Ngai, 367 F.3d at 1339 (“If we were to adopt [the

applicant’s] position, anyone could continue patenting a product indefinitely provided

that they add a new instruction sheet to the product.”).

       Nor do the only other slight claim distinctions noted by Mr. Bryan—three decks of

game cards and color-coding the game cards—sufficiently render his claimed invention

nonobvious. Although Elrod explicitly discloses only two decks of game cards, the

addition of a third deck is nothing more than a “predictable use of prior art elements

according to their established functions” and, as such, is not a patentable distinction.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 1740 (2007). Likewise

regarding claim 6, combining Elrod and Hunsberger to show color-coding the game

cards is simply the “combination of familiar elements according to known methods . . .

yield[ing a] predictable result[ ].” Id. at 1739. In fact, not only is it well known in the art

to use different colors to differentiate game items, but Elrod itself teaches differentiating

between game pieces by using different colors. See Elrod col.14 ll.5-6.

       For the foregoing reasons, the decision of the Board is affirmed.

       No costs.




2008-1461                                     6
