NOTE: This disposition is nonprecedential.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from: United States Patent and Trademark Office Board of Patent Appeals and InterferencesNOTE: This disposition is nonprecedential.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 Pat ent 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 Un ited States Patent and Trademark Office (“PTO”) Board of Patent A ppeals 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 obvi ousness based on those findings is not

erroneous, we affirm

.DISCUSSION
I. Mr. Bryan’s patent application descri bes 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 alo ng a path outlined on the game board from a starting point to an end point, i.e., “the per forming stage.” The patent application also explains that players must draw from se veral decks of cards—namely, decks labeled as “Consequence,” “Band Member,” and “Band Eq uipment”—at various times during the game. Independent claim 1 is illus trative 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 boar d 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 increment s 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 wi th the game board wh erein 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 segm ents 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 advanc ed during the course of the game; (e) a supply of money that during the c ourse 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 “Cons equence” card having indicia thereon that sets forth a consequence and wherein a player landing on an increment that calls for drawing a c onsequence 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” ca rds 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 cent ral stage with a predetermined number of one group of “B and Member” cards and a “Band Equipment” card. The PTO examiner to whom the applicat ion was assigned rejected claims 1-11 and 13-15 as obvious under 35 U. S.C. § 103(a). Specifical ly, the examiner rejected claims 1-5, 7-11, and 13-15 as obvious in vi ew 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 rejecti ons to the Board. On appeal, the Board found that Elrod discloses a musical band-themed board game with nearly the exact struct ure that Mr. Bryan claimed— including decks of labeled game cards and a network of game paths—excep t 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, de termined that the specific printed matter— e.g., “Consequence”—could not patentably different iate the claimed structure from the prior art because the printed matter was not f unctionally related to the claim elements. Regarding dependent claim 6, which adds the lim itation of color-codi ng the game cards, the Board found that Hunsberge r 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 d ependent 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 3II A claimed invention is unpatentable if t he 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 havi ng ordinary skill in the art. See 35 U.S.C. § 103(a). The ultimate determination of obviousnes s is a legal conclu sion 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 obvi ousness de novo and its underlying factual findings for substantial evidence. See, e.g. , id. On appeal, Mr. Bryan does not appear to ar gue that Elrod fails to disclose the majority, if not all, of the structural elemen ts 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 a pparatus. On this basis, Mr. Bryan argues that Board consequently erred in ultimately determining that the printed matte r could not patentably distinguish his claimed inventi on from the prior art. Specific ally, according to Mr. Bryan, the printed matter on his game cards allow the cards to be “collected, traded, and drawn”; “identify and distinguis h one deck of cards from th e 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 pr inted 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 4obvious. Mr. Bryan emphasizes that the printed ma tter set out in the claims—e.g., the “Consequence,” “Band Member,” and “B and Equipment” language—is the distinguishing feature over t he prior art. This language and t he 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 19 69)). 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 print ed matter.”). Thus, the printed matter does not exploit, or interrelate with, the underlying structural element s 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 diffe rent from the game apparatus in Elrod or that appl ying various labels to game ca rds 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 struct ural features is also old. Accordingly, because Mr. Bryan claims neither a new physica l structure nor a new relation of printed matter to physical structure, and because t he distinction between the claims and the prior art is nonfunctional prin ted 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 “c ollected, traded, and draw n” 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 perta in to the patentability of

2008-1461 52008-1461 6 methods or processes of playing the game, whic h 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 pr e-existing game simply by changing the game’s theme without changing it s structure. See Ngai , 367 F.3d at 1339 (“If we were to adopt [the applicant’s] position, anyone co uld continue patenting a pr oduct indefinitely provided that they add a new instructi on sheet to the product.”). Nor do the only other slight claim distin ctions noted by Mr. Bryan—three decks of game cards and color-coding the game cards—su fficiently render his claimed invention nonobvious. Although Elrod explicitly disc loses only two decks of game cards, the addition of a third deck is nothing more t han 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, combinin g Elrod and Hunsberger to s how color-coding the game cards is simply the “combination of familia r 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 us ing different colors. See Elrod col.14 ll.5-6. For the foregoing reasons, the decisi on of the Board is affirmed. No costs.