DECISION OF THE COMMISSIONER
STATUTORY: New Arrangement of Printed or Design Matter
UNOBVIOUS: In view of Several Citations
A new arrangement of printed or design matter which imparts
functional limitations as on the elements of a true combina-
tion, and which does not rely for novelty solely on the
intellectual connotations of the printed or design matter,
may be patentable.
The Commissioner was satisfied that the prior art did not
suggest the particular arrangement of claimed subject matter.
FINAL ACTION: Reversed; Directed policy changed.
* * * * * * * * * *
IN THE MATTER OF a request for a review by the
Commissioner of Patents of the Examiner's Final Action
under Section 46 of the Patent Rules.
AND
IN THE MATTER OF a patent application serial
number 055,210 filed June 24, 1969 for an invention
entitled:
GOLF GAME
Agent for Applicant
Messrs. Smart & Biggar
Ottawa, Ontario.
* * * * * * * * * *
This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
July 27, 1971 on application 055,210. This application was
filed in the name of Louis Boileau and refers to "Golf Game".
In the prosecution terminated by the Final Action the
examiner refused to allow the application and the grounds for
refusal are:
(a) That the disclosure of this application is
directed to a game without restriction to any
novel structural features. Games and game boards
which do not involve novel structures are
unstatutory matter, and (b) that the subject
matter disclosed does not involve any inventive
step over the following applied references.
The references applied are as follows :
United States Patents:
1,529,598 Mar. 10, 1925 Lee
1,638,365 Aug. 9, 1927 Ryan
2,180,049 Nov. 14, 1939 Hall
In this action the examiner stated: (in part)
The Ryan reference describes a similar game wherein
sets of dice are used instead of the single die used
in Lee's game, and as in the present game a different
die is used for different shots. Also, Ryan provides
for both premiums and penalties, as in the present
game, rather than penalties only, as in Lee.
The sole concept not shown, by either Lee or Ryan lies
in the separate sets of indicia adjacent the tee and
the green respectively, the sets being visually distin-
guishable from each other. However, there is no
defined cooperation between these sets of indicia other
than that provided by the players in placing play pieces
in accordance with the rules of play. Such an arrange-
ment per ae is shown in the Hall reference, in any case.
While it is conceded that a true combination may not
be rejected on the basis of a mosaic of references, it
is held that no such combination is disclosed herein.
A game board which has no cooperating mechanical elements,
but only an arrangement of printed matter, is not patent-
able merely because no single prior reference shows all
of the features claimed. A design registration may be
made of such subject matter, but a patent may not be
obtained. It is held that no inventive ingenuity is
involved in combining well known features of prior art
game boards into an arrangement of printed matter merely
because it is different from any single reference.
In applicant's response of October 26, 1971 he stated: (in part)
The present invention is directed to a novel game
which includes the combination of three components
which cooperate to produce a unitary result, namely
a game board having a particular marking thereon,
game pieces adapted to be moved manually in a unique
manner, and a plurality of dice which are adapted to
cooperate with the game board to provide a unitary result.
Applicant also objected to the ground that the invention
is not directed to a novel and proper combination in that he
maintains the claims refer to a true combination producing a
unitary result. Applicant also expressed the view that he is
not claiming the golf course simulation and indicia in the form
of printed matter nor is he claiming the method of playing the
game. Applicant also maintained that the element of a combination
need not cooperate in a mechanical way to produce a unique
result and finally the applicant strongly objected to the stand
of the examiner with respect to lack of an inventive step over
the prior art.
This application refers to a "Golf Game". Claim 1 reads as
follows:
A golf game, comprising the combination of the following
elements:
(a) a game board laid out as a scaled-down facsimile
replica of a "real" golf course and including
thereon two sets of indicia disposed adjacent
the tee and the green respectively, the indicia
in each set being visually distinguishable from
each other, the indicia of each set having a
common characteristic which renders them visually
distinguishable from the indicia of the other
set, thereby to provide a plurality of positively
premarked and predetermined positions represent-
ative of the positions of a golf ball during
"real" play of the game of golf, and designating
unique positions for the disposition of all
game pieces;
(b) game pieces representative of golf balls adapted
to be moved manually to be disposed at a unique
directed one of said plurality of positively
premarked and predetermined positions on said
game board in a manner analogous to that of
the disposition of golf balls during the "read"
play of the game of golf; and
(c) a plurality of dice, each die bearing indicia
on the faces thereof different from those on
conventional dice but being identical with
those of a different one of said sets of indicia
on said game board, the casting of a single
selected die directing the manual placing of
the game pieces to a position which is repre-
sentative of a "real" golf stroke.
Having considered the first ground of refection; "the
disclosure of this application is directed to a game without
restriction to any novel structural features", I find that
this stand was generally in conformance with Patent Office
guidelines at the Final Action was written. However,
it has since been decided that a new arrangement of printed
or design matter may form the subject matter of a patent if it
performs a mechanical function or purpose in consequence of use.
Therefore, under the circumstances, this is not a proper ground
of refection since I am satisfied that if a new arrangement of
printed matter imports some functional limitation in a combin-
ation so as to produce a unitary result, which is useful in
some practical way, as opposed to solely intellectual, literary
or artistic connotations, it may be considered as suitable
subject matter for a patent.
The second ground of rejection is based on the premise that
the subject matter disclosed does Mot involve any inventive
step over the cited prior references. First, I find that
applicant has claimed the subject matter in a true combination
and it is clearly established that the essence of any patentable
combination may reside in the combination itself, and not in
the individual slements of which it is composed. The focus of
attention must be directed to the whole, and not to the parts.
In line with this I find the examiner has not applied a
basic reference, that is, a reference which substantially
teaches the subject matter as claimed. The reference to Lee
does not disclose, "a game board which includes two sets of
indicia disposed adjacent the tee and the green respectively,
the indicia in each set being visually distinguishable from
each other". Further, Lee does not, "provide a purality of
dice, each die bearing indicia on the faces thereof different
from those on conventional dice but being indentical with those
of a different one of the sets of indicia on the game board".
The reference to Tyan does not include, on his game board,
"two sets of indicia disposed adjacent the tee and the green
respectively". Ryan does not disclose, "a plurality of dice,
each die bearing indicia on the faces thereof different from
those on conventional die but being identical with those of a
different one of the sets of indicia on the game board."
Furthermore, the dice are used in sequential order as opposed
to that disclosed by Ryan where the three dice are used at the
same time.
The examiner stated that the sole concept not shown by
either Lee or Ryan lies in the separate sets of indicia adjacent
the tee and the green respectively, the sets being visually
distinguishable from each other. It is true that Hall shows
two sets of indicia, however, these are really the same type
of indicia except one is measured in yards from the tee and the
other measured in yards from the green. Therefore, I am of the
opinion that this is not equivalent to the separate sets of
indicia used in the present application. It is also noted
that different sets of dice are used by applicant for the
different indicia, whereas in Hall the same set of dice is
used in continual play for each set of indicia which also
indicates the indicia is substantially the same.
I am satisfied that the references do not suggest the
particular arrangement of claimed subject matter. I also find that
applicant is not relying solely on the intellectual connotations
of the printed matter for novelty since the form of play restrictions
in the claims imparts a functional cooperation of the elements in
the combination.
I recommend that the decision of the examiner, to refuse
the application on the grounds stated, be withdrawn.
R. E. Thomas,
Chairman, Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and
withdraw the Final Action and return the application to the
examiner for resumption of prosecution.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 22nd day of December,
1971.