DETAILED ACTION
Election/Restrictions
1. Applicant’s election without traverse of Invention I (claims 1-10) in the reply filed on 7/17/25 is acknowledged.
Claim Interpretation
2. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations use the word “means” and is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: “a means of chance” in claim 1. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application also includes one or more claim limitations that use the word “means” but is nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “a manual, a mechanical, or an electrical means” in claim 9. Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof. If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Drawings
3. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “dropping mechanism” (claim 7), a “manual” means (claim 7) and a “manual” component (claim 9) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
4. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim limitation “a means of chance” in claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure fails to properly delineate the permitted components corresponding to the “means of chance”, simply indicating it is “preferably a die”. Therefore, claims 1-10 are indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The recitation in claim 2 of “wherein an accessory is comprised of at least one attachment node” renders the scope unascertainable because it is unclear if this is a distinct component from the previously recited claim 2 limitation of “an accessory or a plurality of accessories”. It is recommended to amend to “wherein [[an]]the accessory is comprised of at least one attachment node”. For examining purposes, the scope will be construed commensurate with this suggested language, as this appears to comport with the intended scope in view of the specification as a whole.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The recitations in claim 3 to “wherein at least one accessory” renders the scope unascertainable because it is unclear if this is a distinct component from the previously recited claim 2 limitation of “a plurality of accessories”. It is recommended to amend to “wherein at least one accessory of the plurality of accessories”. For examining purposes, the scope will be construed commensurate with this suggested language, as this appears to comport with the intended scope in view of the specification as a whole.
Claims 4-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The recitation in claim 4 of “a projection” renders the scope unascertainable because it is unclear if this is a distinct component from the previously recited claim 4 limitation of “a projection or a plurality of projections”. It is recommended to amend to “the[[a]] projection”. For examining purposes, the scope will be construed commensurate with this suggested language, as this appears to comport with the intended scope in view of the specification as a whole.
The recitations in claim 4 to “at least one attachment node” renders the scope unascertainable because it is unclear if this is a distinct component from the previously recited claim 1 limitation of “a plurality of attachment nodes”. It is recommended to amend to “at least one attachment node of the plurality of attachment nodes”. For examining purposes, the scope will be construed commensurate with this suggested language, as this appears to comport with the intended scope in view of the specification as a whole.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The recitations in claim 5 to “a projection” renders the scope unascertainable because it is unclear if this is a distinct component from the previously recited claim 4 limitation of “a projection or plurality of projections”. It is recommended to amend to “[[a]]the projection”. For examining purposes, the scope will be construed commensurate with this suggested language, as this appears to comport with the intended scope in view of the specification as a whole.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The recitations in claim 6 to “a deck of playing” renders the scope unascertainable because it is unclear if this is a distinct component from the previously recited claim 6 limitation of “at least one deck”. It is recommended to amend to “[[a]]the at least one deck of playing cards”. For examining purposes, the scope will be construed commensurate with this suggested language, as this appears to comport with the intended scope in view of the specification as a whole.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The recitation therein of “a dropping mechanism which may be operated by a manual, a mechanical, or an electrical means, or by any combination thereof” is unclear, overly confusing and indefinite. A person ordinary skill in the art cannot properly ascertain the metes and bounds of this claim. Applicant should provide clarity to the scope and structure of the dropping mechanism. Additionally, applicant should provide additional guidance of the scope of “a manual” means.
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The recitation therein of “a manual, a mechanical, or an electrical component that causes the frustum board, and any projection, accessories, playing character, or any combination thereof located on the frustum board to move or vibrate” is unclear, overly confusing and indefinite. A person ordinary skill in the art cannot properly ascertain the metes and bounds of this claim. Applicant should provide clarity to the scope, including what features are being positively recited. Additionally, applicant should provide additional guidance of the scope of “a manual” component.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The recitations in claim 10 to “wherein at least one playing character” renders the scope unascertainable because it is unclear if this is a distinct component from the previously recited claim 1 limitation of “at least one set of playing characters”. It is recommended to amend to “wherein at least one playing character of the set of playing characters”. For examining purposes, the scope will be construed commensurate with this suggested language, as this appears to comport with the intended scope in view of the specification as a whole.
Claim Rejections - 35 USC § 103
5. 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 of this title, 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.
6. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenwinkel (US Pat. No. 4,569,527) in view of Howell et al. (US Pat. No. 10,758,828).
With respect to claim 1, Rosenwinkel teaches a game apparatus 20 comprising: a board 32 having a plurality of attachment nodes 48, 50; a plurality of playing currency 172; at least one set of playing characters 24, 26; and, a means of chance 80 (Fig. 1; column 7, lines 5-12).
Admittedly, Rosenwinkel does not expressly teach wherein the board is comprised of rectangularly shaped boards, and not a frustrum board. However, analogous art reference Howell et al. teaches that it is known for a game apparatus to comprise a frustrum board – column 6, lines 4-10. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to make the board a frustrum board. The rationale to combine is to utilize a known shape for the board. This will expectantly provide an ergonomic shape, easily manipulated by the players, and also allow convenient stacking.
Examiner notes the claims are directed to an apparatus, not a method claim. As such, limitations pertaining to game rules are being treated as intended use / functional limitations. Per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). The structure of Rosenwinkel set forth above is considered capable of being used as recited. For example, the plurality of chests 172 can be used as currency.
With respect to claims 2-3, Rosenwinkel teaches wherein the game is further comprised of an accessory 36 or a plurality of accessories, wherein an accessory is comprised of at least one attachment node 48, wherein at least one accessory 36 is an active accessory and at least one accessory 34 is a passive accessory. See MPEP 2114 - In re Schreiber. See also MPEP 2131 - when a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art. Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001).
With respect to claims 4-5, Rosenwinkel teaches wherein the game is further comprised of a projection 36 or a plurality of projections 34, 36; and, wherein a projection is comprised of at least one attachment node 48, wherein a projection includes, or multiple projections include, a functional element 52 or multiple functional elements 52, 170. See MPEP 2114 - In re Schreiber. See also MPEP 2131 - Brown v. 3M.
With respect to claim 6, Rosenwinkel teaches wherein the game is further comprised of at least one deck of playing cards 120, 130; and, wherein a deck of playing cards includes positive playing cards and negative playing cards. See MPEP 2114 - In re Schreiber
With respect to claim 7, Rosenwinkel teaches wherein the game is further comprised of a dropping mechanism 52 which may be operated by a manual, a mechanical, or an electrical means, or by any combination thereof. See MPEP 2114 - In re Schreiber
With respect to claim 8, Rosenwinkel teaches wherein the game is further comprised of a non-player 170 or character or of multiple non-player characters. See MPEP 2114 - In re Schreiber.
With respect to claim 9, Rosenwinkel teaches components 52, 170, which are construed as a manual or mechanical component that is capable of causing the board, any projection, accessories, playing character, or any combination thereof located on the frustum board to move or vibrate. See MPEP 2114 - In re Schreiber.
With respect to claim 10, Rosenwinkel teaches wherein at least one playing character 26 is a specialized playing character. See MPEP 2114 - In re Schreiber.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711