DETAILED ACTION
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 .
This action is in response to applicant’s remarks and amendments dated 06/03/2025. Claims 1 and 31 have been amended. Claims 1-10 and 28-31 are currently pending.
Claim Rejections - 35 USC § 103
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.
Claims 1-10 and 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Robillard (US Patent No. 1,957,078) in view of Waldron (US Patent No. 4,258,920).
In Reference to Claim 1-10 and 28-31
Robillard teaches (Claim 1) A method for producing a puzzle comprising a plurality of puzzle pieces which, in an assembled state, form the puzzle, the method comprising: (a) [] a carrier plate [] defines [a] plane on the carrier plate and punching the puzzle pieces out of the [] carrier plate (item A, fig’s 1-3, page 1 lines 82-88); or (b) punching the carrier plate and printing an image on the punched carrier plate so that the image defines an image plane on the carrier plate (note this is recited in the alternative and is, therefore, not required by the claim); wherein all puzzle pieces are detached and separated from the punched carrier plate in a predetermined way by a controlled movement of at least one puzzle piece transverse to the image plane (page 1 lines 88-93) so that all puzzle pieces are, and each puzzle piece is, arranged in a defined orientation after separation into single puzzle pieces but before the assembled state (after detaching, puzzle pieces are arranged as pressed onto item 11; note “defined orientation” is extremely broad, since a user controls this action, the user defined orientation of the pieces after being detached onto item 11 can be considered a “defined orientation”; further, the step of separating each puzzle piece / separating into single puzzle pieces is performed by items 32/33 after the pressing step, see page 1 lines 100-105; and, after this step the puzzle pieces would also be in another “defined orientation” i.e. oriented within discharge chute or within packaging);
(Claim 2) wherein the controlled movement is performed perpendicular to the image plane (fig’s 1-3, page 1 lines 84-93; from upper supporting frame 40 to conveyor 11 is perpendicular to plane of item A);
(Claim 3) wherein one or more puzzle pieces are simultaneously and/or successively detached from the punched carrier plate (page 1 lines 84-93, detached in groups, which are simultaneous, while each group is also successive);
(Claim 4) wherein a plurality of sub-segments is defined for the puzzle, wherein each sub-segment comprises specific puzzle pieces and respectively at least one puzzle piece is simultaneously detached from the punched carrier plate for all sub-segments or all puzzle pieces of one or more sub-segments are simultaneously detached from the punched carrier plate (page 1 lines 84-93, again, detached in groups, which can be considered sub-segments);
(Claim 5) wherein the puzzle pieces of a sub-segment are defined by at least one characteristic of the puzzle pieces selected from a number of characteristics comprising the association with one or more rows of the puzzle, the association with part of one or more rows of the puzzle, the association with one or more columns of the puzzle, the association with part of one or more columns of the puzzle, the association with an arbitrary local area of the puzzle (page 1 lines 84-93; detached groups can be considered associated arbitrary local area of the puzzle), one or more primary colours or colour components of the puzzle pieces, the edge pieces of the puzzle, the number of recesses or projections of the puzzle pieces, and combinations thereof;
(Claim 6) wherein at least one puzzle piece adjacent to the puzzle piece to be detached or all puzzle pieces adjacent to the puzzle piece to be detached or all puzzle pieces adjacent to the puzzle piece to be detached which have a common section line are fixed during the movement of the puzzle piece to be detached (page 1 lines 84-93; puzzle pieces are only partially cut through, they are fixed until detached manually by pressing, those not detached remain fixed);
(Claim 7) wherein the controlled movement for detaching the at least one puzzle piece is a linear translational movement (page 1 lines 84-93, pressing down).
(Claim 8) wherein the detached puzzle pieces are disposed in a common plane (fig’s 1-3, on conveyor 11).
(Claim 9) following the controlled movement for detaching the at least one puzzle piece, the at least one puzzle piece is placed in a storage container (page 1 lines 72-79; receptacle);
(Claim 10) wherein the puzzle pieces of a sub-segment are placed and/or stacked in a common storage container (page 1 lines 72-79; receptacle);
(Claim 28) wherein up to half of the puzzle pieces of the puzzle are simultaneously detached from the punched carrier plate or all puzzle pieces are separated simultaneously (page 1 lines 82-93; a group of two or more is “up to half” of the puzzle);
(Claim 29) wherein, in case of a detached sub-segment, a further separation of the puzzle pieces of the sub-segment is carried out (fig’s 1-3; page 1 lines 93-110, via items 25, 32, and 33);
(Claim 30) wherein the controlled movement for detaching the at least one puzzle piece is a pushing or pulling movement (page 1 lines 88-89, pressing down is pushing);
(Claim 31) wherein the common plane is parallelly offset relative to the image plane of unmoved puzzle pieces after the detachment from the punched carrier plate (fig. 3, page 1 lines 86-88, plane of item 40 and of item 11 are parallelly offset).
Robillard fails to teach laminating or printing an image onto a carrier plate.
However, the examiner notes that in the art of puzzles, it is well known that the surface of the puzzle typically has an image printed thereon.
Regardless, Waldren teaches printing an image onto a carrier plate when making a puzzle (fig. 1 and column 2 lines 15-19).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the puzzle making system of Robillard with the feature of printing an image on the plate as taught by the puzzle making system of Waldren for the purpose of customizing the puzzle made, as well as for the purpose of making a wider variety of puzzles with the system, making the system more versatile, more tailored to a specific user / audience, and more interesting and attractive to the users.
Further, the examiner notes that it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of puzzle does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. printed image indicia and the substrate e.g. carrier plate, which is required for patentability.
The examiner further notes that it appears the limitations regarding separating the puzzle pieces in claim 1 are taught, broadly interpreted, by the method of Robillard, since, the transverse detaching step is taught, and, since further separation into single pieces is taught. However, in the event that the separation step is intended to be performed all at one time into single pieces, and that this claimed step is somehow distinct from what is taught in Robillard, an alternate rejection is set forth:
It has been held that selection of any order of performing process steps is obvious in the absence of new or unexpected results. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959); In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Since the all of the steps of punching and then separating puzzle pieces into both groups and then individual pieces are taught in Robillard, merely claiming a different or more specific order of achieving this result would not produce any new or unexpected results since the end result of detached single puzzle pieces which could be grouped is taught in Robillard. Merely consolidating steps to achieve the same result is an obvious matter of engineering design choice, and is not a patentable distinction.
Response to Arguments
Applicant's arguments filed 06/03/2025 have been fully considered but they are not persuasive.
Applicant’s argument that Robillard does not allow to “stack groups of puzzle pieces in separate containers” is noted but is not persuasive.
First, “stacking groups of puzzle pieces in separate containers” is not found in the claim language, therefore, this argument is largely moot. It is noted that the features upon which applicant relies are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Second, Robillard teaches all of the features of separating puzzle pieces in a transverse plane which are arranged in “defined orientations” in groups, as well as then being separated into single puzzle pieces to be put into a container. This appears to meet all of applicant’s claimed limitations. However, even in the event that this was intended to be somehow performed in a slightly different order than is taught in Robillard, an alternate rejection has been set forth using case law. See above for details. Since the end result of separated puzzle pieces for packaging is performed by Robillard, merely rearranging or consolidating the order of steps to accomplish this result is not a patentable advance.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711