Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In view of the brief filed on 07/15/2025, PROSECUTION IS HEREBY REOPENED. A new grounds of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
Claim Objections
Claim 13 is objected to because of the following informalities: claim 13 depends upon canceled claim 12. Appropriate correction is required. Accordingly, no meaningful and reasonable prior art can be to claim 13 because it may be depended upon any combination of claims.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered anew ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
3. Claims 1-4, 6, 7,9, 15, 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bear et al U.S. Patent 5,393,074 in view of Cristiani et al (20190373704) and Elias US 2008/0205046.
Claim 1, Bear et al discloses a modular structure which may be reconfigured to play a variety of participatory games (see abstract) and such modular structure can be reasonably characterized as a portable structure for use as an escape room; the structure comprising a plurality of portable side walls (22) defining an interior space; an entrance way (door 42) in at least one side wall and an exit (door 42) in another of said side walls, wherein the entrance way leading to one of the physical spaces and another interior space leading to the exit; wherein the interior Space is adapted for hosting at least one escape room challenge (a variety of participatory games) and allowing an escape room participant to exit the interior space when the challenge has been met, wherein the escape room challenge is comprising of at least one predetermined puzzle (col. 4, lines 49-58) required to be solved by the participant in order to meet the challenge. The interior space includes a barrier (lockable door 42) which prevents the user from leaving the interior space.
It is noted that Bear et al fails to specifically disclose the overhead lighting or above the interior space as claimed. However, Cristiani et al disclose a plurality of spaced apart light sources above an interior space to collectively define a plurality of corresponding non-overlapping physical spaces as shown in Fig. 5. Cristiani et al disclose that the light sources can be localized so that the light sources can define non-overlapping spaces. Therefore, it would have been obvious to one of ordinary skill to modify the challenge areas with overhead lighting fixtures as taught by Cristiani et al to control smart lighting in an indoor environment (paragraph 3 of Cristiani et al).
Regarding the limitation “depicting a predetermined game theme’ in claim 1, itis also noted that Bear et al fails to specifically disclose the side walls depicting a predetermined game theme. Since there is no specific structural features recited and even if it were, such decorative features/images are considered ornamentation and it has been held that matters relating ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. /n re Seid, 73 USPQ 431 (CCPA 1947). However, Elias discloses it is well known in the art to provide an amusement attraction including an artistic theme throughout the attraction and other components such as mirrors/walls, columns/pillars with artistic look depicting a predetermine theme (see [0011] and [(0012]). Therefore, it would have been obvious to one of ordinary skill in the art to modify the side walls (22) of Bear et al with a certain artistic decoration/look depicting a predetermined game theme as taught by Elias for the advantage of enhancing the game environment aesthetically.
As for the limitation “a set of game rules which govern the movement of a user through said game structure”, such game rules do not have any structural significance other than rules or instructions how to play a game. It is submitted that most if not all commercially available games come with a set of instructions/rules for playing a game; and the above explanations above met all of the structural features of the portable game structure.
As for the limitation “a plurality of portable side walls adapted to be transported from one location to another for assembly to create said game structure and to define an interior space within said game structure’, as explained above, Bear et al discloses a modular game system and modular defines as “composed of standardized units or sections for easy construction or flexible arrangement”. It is submitted that the modular side walls (22) can reasonably be characterized as “adapted to being transported from one location to another location” in view of the definition of “modular” above. Furthermore, the examiner notes that it has been held that a claimed device that is portable or movable is not sufficient by itself to patentably distinguish over a device unless there are new or unexpected results.
As for “a challenge station located within each of said physical spaces, each said challenge stations including at least one game puzzle’, such challenge station’ also does not contain any structural significance and the game puzzle of Bear et al as explained above can reasonably be characterized as a challenge station. Furthermore, the limitation “wherein the last of said challenge stations leading to said exit” is considered rearrangement of parts and it has been held that shifting the position of the starting switch would not have modified the operation of the device. /n re Japikse, 86 USPQ 70 (CCPA 1950). In this case, by rearranging the last of the challenge stations/game puzzles leading to the exit would be a logical position of the last game puzzle so that a participant may easily exit the physical space.
Claim 2, the interior space is divided into a plurality of challenge areas (game rooms 24), each of the areas hosting an escape room challenge. The limitation “wherein each of said physical spaces hosting a different said game puzzle” is merely an intended use of the physical spaces and the operator may position the game puzzle is any particular arrangement to accommodate any game rules and/or environment.
Claim 3, the structure includes a ceiling (not illustrated) over the interior space (col. 6, lines 7-8).
Claim 4, the ceiling is adapted to define the challenge areas.
Regarding claims 6-7, it is noted that Bear et al fails to specifically disclose the walls and ceiling are decorated as claimed. However, since there is no specific decorative features recited and even if it were, such decorative features are considered ornamentation and it has been held that matters relating ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. /n re Seid, 73 USPQ 431 (CCPA 1947).
Claim 9, each of the area of challenge is enclosed and includes an entrance and an exit (see Figs. 1 and 4).
Claim 15, the game puzzle of Bear is a computerized/interactive electronic game which can reasonably be characterized as perception which is within the recited group.
Claims 17 and 18, the light sources of Bear et al modified by Savage as explained above in claim 1 projecting an ambiance into its corresponding physical space. By design the ambiance in accordance with the predetermined game theme of Elias as explained above is considered aesthetic design and it has been found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 73 USPQ 431 (CCPA 1947).
Claim(s) 10, 16, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bear et al in view of Elias.
Claim 10, Bear et al discloses a modular structure which may be reconfigured to play a variety of participatory games (see abstract) and such modular structure can be reasonably characterized as a portable structure for use as an escape room; the structure comprising a plurality of portable side walls (22) defining an interior space; a plurality of portable interior walls (16) (Fig. 2); (an entrance way (door 42) in at least one side wall and an exit (door 42) in another of said side walls, wherein the entrance way leading to one of the physical spaces and another interior space leading to the exit; wherein the interior Space is adapted for hosting at least one escape room challenge (a variety of participatory games) and allowing an escape room participant to exit the interior space when the challenge has been met, wherein the escape room challenge is comprising of at least one predetermined puzzle (col. 4, lines 49-58) required to be solved by the participant in order to meet the challenge. The interior space includes a barrier (lockable door 42) which prevents the user from leaving the interior space.
Regarding the limitation “depicting a predetermined game theme’ , it is also noted that Bear et al fails to specifically disclose the side walls depicting a predetermined game theme. Since there is no specific structural features recited and even if it were, such decorative features/images are considered ornamentation and it has been held that matters relating ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 73 USPQ 431 (CCPA 1947). However, Elias discloses it is well known in the art to provide an amusement attraction including an artistic theme throughout the attraction and other components such as mirrors/walls, columns/pillars with artistic look depicting a predetermine theme (see [0011] and [(0012]). Therefore, it would have been obvious to one of ordinary skill in the art to modify the side walls (22) of Bear et al with a certain artistic decoration/look depicting a predetermined game theme as taught by Elias for the advantage of enhancing the game environment aesthetically.
As for the limitations “a set of game rules which govern the movement of a user through said game structure” and “said set of game rules prevents the user from leaving said interior space until at least one predetermined condition is satisfied’, such game rules do not have any structural significance other than rules or instructions how to play a game. It is submitted that most if not all commercially available games come with a set of instructions/rules for playing a game; and the above explanations above met all of the structural features of the portable game structure.
As for the limitation “a plurality of portable side walls adapted to be transported from one location to another for assembly to create said game structure and to define an interior space within said game structure”, and “a plurality of portable interior walls adapted to being transported with said plurality of side walls for assembly within the interior space to create a plurality of non- overlapping physical spaces within said interior space, whereas the assembly of said plurality of interior walls depicting a predetermined game theme for said amusement device” as explained above, Bear et al discloses a modular game system and modular defines as “composed of standardized units or sections for easy construction or flexible arrangement”. It is submitted that the modular side walls (22) can reasonably be characterized as “adapted to being transported from one location to another location” in view of the definition of “modular” above. Furthermore, the examiner notes that it has been held that a claimed device that is portable or movable is not sufficient by itself to patentably distinguish over a device unless there are new or unexpected results.
Claim 16, the game puzzle of Bear is a computerized/interactive electronic game which can reasonably be characterized as perception which is within the recited group.
Claims 19 and 20, the interior walls (16) of Bear et al projecting an ambiance into its corresponding physical space. By design the ambiance with a certain function of the color of each of the interior walls in accordance with the predetermined game theme of Elias as explained above is considered aesthetic design and it has been found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 73 USPQ 431 (CCPA 1947).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE LEE KIM whose telephone number is (571)272-4463. The examiner can normally be reached Monday to Thursday 6am-4pm.
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/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711