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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 14, 2025 has been entered.
Status of Claims
This office action is in response to arguments and amendments entered on August 14, 2025 for the patent application 17/466,653 filed on September 3, 2021. Claims 1, 5, and 10 are amended. Claims 15-17 are new. Claims 1-17 are pending. The first office action of November 6, 2024 and the second office action of April 14, 2025 are fully incorporated by reference into this Office Action.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-17 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is directed to “a method” (i.e. a process), claim 5 is directed to “a system” (i.e. a machine), and claim 10 is directed to “a system” (i.e. a machine), hence these claims are each directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
However, the claims are drawn to the abstract idea of “a learning game system” in the form of “certain methods of organizing human activity,” in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions).
Independent claim 1, analyzed as representative of the claimed subject matter, is reproduced below. The limitations determined to be abstract ideas are shown in italics. The additional elements recited at a high level of generality are shown in bold. The limitation(s) determined to be extra-solution activity are underlined.
“1… providing the mathematics learning game system comprising: a deck of creature cards, wherein each creature card displays a unique animal figure, a name corresponding to each of the unique animal figures, a randomized number of a set of randomized numbers and three color spots, each of the three color spots having a different color and a random number on each of the three color spots;
and two 20-sided dice, wherein each side has a number from 1 to 20 corresponding to a total number of the set of randomized numbers, and each side is of one of three colors corresponding to the three color spots of the creature card;
providing a portion of the deck of creature cards to each player of the mathematics learning game system, wherein the portion of the deck of creature cards are placed face down;
initiating a round by placing three cards from each portion of the deck of creature cards face up on a playing surface by each player; rolling the two 20-sided dice, wherein a sum of the numbers rolled on the two 20-sided dice is designated a "Target Number" and the color of the highest number rolled is designated a "Target Color";
within a predetermined amount of time determined by a timer, arranging each of the three face up cards by each player in an order and combining each adjoining card by an arithmetic operator indicator, wherein the number on a front face of each creature card displayed within the color spot of the color of the Target Color is used in combination with the corresponding arithmetic operator indicators to arrive at a non-negative whole number solution that is as close as possible to the Target Number;
and designating a winner of the round as the player with the non-negative whole number solution that is closest to the Target Number.”
The “providing”, “initiating”, “arranging”, and “designating a winner” limitations may be characterized under broadest reasonable interpretation as managing personal behavior or relationships or interactions between people, including social activities, teaching, and following rules or instructions. See In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of "rules for playing games", which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011. Hence, these limitations are directed to or recite a certain method of organizing human activity which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Furthermore, the applicants claimed additional elements of “a deck of creature cards”, “two 20-sided dice”, and “a timer” are merely claimed to generally link the use of a judicial exception to a particular (2) field of use, per MPEP §2106.05(h). In other words the claimed recited additional elements do not integrate the aforementioned judicial exceptions into a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. ““a deck of creature cards”, “two 20-sided dice”, and “a timer” are claimed, these are generic, well-known, and conventional game playing elements. As evidence that these are generic, well-known, and a conventional game playing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the claimed “a deck of creature cards” and “two 20-sided dice” as described in para. [0005] disclose the following: “a deck of creature cards, wherein each creature card displays a unique figure, such as an image of an animal and a name corresponding to each unique figure. Also displayed on each creature card are three color spots of 3 different colors and a random number on each color spot. The system may also comprise a pair of 20-sided dice, wherein each side has a number from 1 to 20, and each side is of one of the three colors of the creature card color spots.” This broadly describes an off the shelf, commercially available deck of cards and 20-sided dice, and as such, the limitations are reasonably understood as generic, well-known, and conventional game playing elements.
Furthermore, the claimed “a timer” as described in para. [0027] discloses the following: “In some embodiments, the system may further comprise a timing device, such as a sand timer. In some embodiments the sand timer may be a 1- or 2-minute sand timer, for example.” This broadly describes an off the shelf, commercially available timer, and as such, the limitations are reasonably understood as generic, well-known, and conventional game playing elements.
As such, these elements are reasonably interpreted as elements of a generic game having which provides no details of anything beyond ubiquitous standard equipment and are reasonably understood as not providing anything significantly more. Therefore, Step 2B of the subject-matter eligibility analysis is “No.”
Claim 5 is reproduced below. The limitations determined to be abstract ideas are shown in italics. The additional elements recited at a high level of generality are shown in bold. The limitation(s) determined to be extra-solution activity are underlined.
“5… a user computing device having a memory storing creature card information for a predetermined number of creature cards, wherein each creature card displays a unique animal figure, a name to each of the unique animal figures, a randomized number of a set of randomized numbers and three color spots, each of the three color spots having a different color and a random number on each of the three color spots, and
an application providing executable programmed instructions, wherein the user computing device is programmed to:
display a user interface in response to operating the application, the user interface displaying three creature cards in response to user input on the user computing device, wherein the user input comprises selection of a button for beginning a level of play;
display on the user interface a randomly selected Target Number, a randomly selected Target Color, and a timer for a predetermined amount of time, the timer automatically initiating a count down for the predetermined amount of time in response to user input on the user computing device to initiate play of the mathematical learning game;
in response to user input on the user interface, arrange each of the three creature cards in an order and combine each adjoining creature card by an arithmetic operator indicator, wherein the number on a front face of each creature card displayed within the color spot of the color of the Target Color is used in combination with the corresponding arithmetic operator indicators to arrive at a non-negative whole number solution that is as close as possible to the Target Number;
and determine and display a score in response receiving user input to submit the non- negative whole number solution and comparing the submitted non- negative whole number solution with a stored correct solution.”
The “display”, “arrange”, “determine”, and “display a score” limitations simply describe a process of data gathering and manipulation, which is sufficiently analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Furthermore the same limitations may be characterized under broadest reasonable interpretation as managing personal behavior or relationships or interactions between people, including social activities, teaching, and following rules or instructions. See In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of "rules for playing games", which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011. Hence, these limitations are directed to or recite a mental process and a certain method of organizing human activity which have been identified among non-limiting examples to be an abstract idea. Dependent claim 2 incorporates the abstract idea of claim 1 with further additional elements. In other words, based on claim 2’s dependency to independent claim 1, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes”.
Furthermore, the applicants claimed additional elements of “a user computing device”, “a memory”, and “a button” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words the claimed recited additional elements do not integrate the aforementioned judicial exceptions into a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a user computing device”, “a memory”, and “a button” are claimed, these are generic, well-known, and conventional data gathering computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the claimed “a user computing device” as described in para. [0034] discloses the following: “Some embodiments of the system may comprise an app operating on a user computing device having a user interface that displays a home screen 10 as shown in FIG. 1. The user computing device may be any of a desktop computer, a laptop, a tablet, a smartphone, a wearable device, or the like.” This broadly describes a plurality of generic computer devices, and as such, the “a user computing device” is reasonably understood as a generic, well-known, and conventional computing device.
Furthermore the claimed “a memory” as described in para. [0050] discloses the following:
“Any combination of one or more computer readable medium(s) may be utilized. The computer readable medium may be a computer readable signal medium or a computer readable storage medium. A computer readable storage medium may be, for example, but not limited to, an electronic, magnetic, optical, electromagnetic, infrared, or semiconductor system, apparatus, or device, or any suitable combination of the foregoing. More specific examples (a non-exhaustive list) of the computer readable storage medium would include the following: an electrical connection having one or more wires, a portable computer diskette, a hard disk, a random access memory (RAM), a read-only memory (ROM), an erasable programmable read-only memory (EPROM or Flash memory), an optical fiber, a portable compact disc read-only memory (CD-ROM), an optical storage device, a magnetic storage device, or any suitable combination of the foregoing.” This broadly describes a well-known and conventional computer memory, and as such, the “a memory” above is reasonably understood as generic, well-known, and conventional computing element.
Finally, the claimed “a button” as described in para. [0034] discloses the following:
“The user computing device may be any of a desktop computer, a laptop, a tablet, a smartphone, a wearable device, or the like. The home screen 10 may include selectable soft buttons for a user to select various difficulty levels of play. For example, the home screen 10, as shown in FIG. 1, displays soft buttons labeled "JOURNEY", "ADVENTURE", "SAFARI", and "EXPEDITION", for beginning levels of play at difficulty levels of "BEGINNER", "INTERMEDIATE", "ADVANCED", and "EXPERT", respectively. This broadly describes a well-known and conventional button that is used with ubiquitous computers, laptops, tablets, smartphones, wearable devices, or the like, and as such, the “a button” above is reasonably understood as generic, well-known, and conventional element.
As such, these elements are reasonably interpreted as elements of a generic computer having generic data gathering components which provides no details of anything beyond ubiquitous standard equipment and are reasonably understood as not providing anything significantly more. Therefore, Step 2B of the subject-matter eligibility analysis is “No.”
Claim 10 is reproduced below. The limitations determined to be abstract ideas are shown in italics. The additional elements recited at a high level of generality are shown in bold. The limitation(s) determined to be extra-solution activity are underlined.
“10… a user computing device;
a server coupled to the user computing device, the server having a memory storing creature card information for a predetermined number of creature cards corresponding to a deck of creature cards, wherein each creature card displays a unique animal figures, a name corresponding to each of the unique animal figures, a randomized number of a set of randomized numbers and three color spots, each of the three colors spots having a different color and a random number on each of the three color spots, and
wherein the user computing device is programmed to:
receive a signal from the user computing device accessing the system by selecting a button for beginning a level of play and automatically send a user interface for display on the user computing device, the user interface displaying three creature cards;
receive a signal from the user computing device to initiate game play and automatically send for display on the user interface a randomly selected Target Number, a randomly selected Target Color, and a timer for a predetermined amount of time, the timer automatically initiating a count down for the predetermined amount of time;
in response to user input on the user interface, arrange each of the three creature cards in an order and combine each adjoining creature card by an arithmetic operator indicator, wherein the number on a front face of each creature card displayed within one color spot of the color of the Target Color is used in combination with the corresponding arithmetic operator indicators to arrive at a non-negative whole number solution that is as close as possible to the Target Number;
and determine and display a score in response receiving user input to submit the non- negative whole number solution and comparing the submitted non- negative whole number solution with a stored correct solution.
The “receive”, “arrange”, “determine”, and “display a score” limitations simply describe a process of data gathering and manipulation, which is sufficiently analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Furthermore the same limitations may be characterized under broadest reasonable interpretation as managing personal behavior or relationships or interactions between people, including social activities, teaching, and following rules or instructions. See In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of "rules for playing games", which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011. Hence, these limitations are directed to or recite a mental process and a certain method of organizing human activity which have been identified among non-limiting examples to be an abstract idea. Dependent claim 2 incorporates the abstract idea of claim 1 with further additional elements. In other words, based on claim 2’s dependency to independent claim 1, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes”
Furthermore, the applicants claimed additional elements of “a user computing device”, “a server”, “a memory”, and “a button” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words the claimed recited additional elements do not integrate the aforementioned judicial exceptions into a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. a user computing device”, “a server”, “a memory”, and “a button are claimed, these are generic, well-known, and conventional data gathering computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the claimed “a user computing device” as described in para. [0034] discloses the following: “Some embodiments of the system may comprise an app operating on a user computing device having a user interface that displays a home screen 10 as shown in FIG. 1. The user computing device may be any of a desktop computer, a laptop, a tablet, a smartphone, a wearable device, or the like.” This broadly describes a plurality of generic computer devices, and as such, the “a user computing device” is reasonably understood as a generic, well-known, and conventional computing device.
In addition the claimed “a server” as described in para. [0044] discloses the following: “the system may include user computing devices and a computer server, wherein each user computing device is coupled to the server. This coupling may be a network connection, such as through an Internet connection, a Wi-Fi connection, a Bluetooth connection or the like, wherein the user computing devices may communicate with and receive communication from the server. The user computing device may be a desktop computer, a laptop, a tablet, a smartphone, or the like. The server, in some embodiments, may be a cloud-based infrastructure architecture.” This broadly describes a generic computer server, and as such, the “a server” is reasonably understood as a generic, well-known, and conventional computing device.
Furthermore the claimed “a memory” as described in paras. [0050] discloses the following:
“Any combination of one or more computer readable medium(s) may be utilized. The computer readable medium may be a computer readable signal medium or a computer readable storage medium. A computer readable storage medium may be, for example, but not limited to, an electronic, magnetic, optical, electromagnetic, infrared, or semiconductor system, apparatus, or device, or any suitable combination of the foregoing. More specific examples (a non-exhaustive list) of the computer readable storage medium would include the following: an electrical connection having one or more wires, a portable computer diskette, a hard disk, a random access memory (RAM), a read-only memory (ROM), an erasable programmable read-only memory (EPROM or Flash memory), an optical fiber, a portable compact disc read-only memory (CD-ROM), an optical storage device, a magnetic storage device, or any suitable combination of the foregoing.” This broadly describes a well-known and conventional computer memory, and as such, the “a memory” above is reasonably understood as generic, well-known, and conventional computing element.
Finally, the claimed “a button” as described in para. [0034] discloses the following:
“The user computing device may be any of a desktop computer, a laptop, a tablet, a smartphone, a wearable device, or the like. The home screen 10 may include selectable soft buttons for a user to select various difficulty levels of play. For example, the home screen 10, as shown in FIG. 1, displays soft buttons labeled "JOURNEY", "ADVENTURE", "SAFARI", and "EXPEDITION", for beginning levels of play at difficulty levels of "BEGINNER", "INTERMEDIATE", "ADVANCED", and "EXPERT", respectively. This broadly describes a well-known and conventional button that is used with ubiquitous computers, laptops, tablets, smartphones, wearable devices, or the like, and as such, the “a button” above is reasonably understood as generic, well-known, and conventional element.
As such, these elements are reasonably interpreted as elements of a generic computer having generic data gathering components which provides no details of anything beyond ubiquitous standard equipment and are reasonably understood as not providing anything significantly more. Therefore, Step 2B of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-4, 6-9, 11-17 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-4, 6-9, 11-17 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claims 1, 5, and 10. Therefore, claims 1-17 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 5-14 are rejected under 35 U.S.C. 103 as being unpatentable over Myles (US 20020101034) in view of Costa (US 20180012455) and in further view of Villarreal-Reyes (US 9278278).
Regarding claim 1, Myles discloses a method of using a mathematics learning game system, the method comprising: providing the mathematics learning game system comprising: a … deck of cards (see para. [0006]: An object of this invention is to provide a game for strengthening multiplication, addition and subtraction skills through card play), wherein each … card displays … colors, (see fig. 1a-1b, para. [0011]: the cards in the deck display different equations having the same product; and wherein the cards in the deck are grouped into one of multiple color-coded categories); providing a portion of the deck of … cards to each player of the game system (see para. [0024]: the dealer or first player 19 shuffles the 124-card deck 1 (FIG. 1), which includes both the multiplication factor cards 3 and the strategy cards 14, and deals a selected number of multiplication factor cards 3, along with the randomly-interspersed FREE cards 15 and SUBTRACT cards 17, to each of the players), wherein the portion of the deck of creature cards are placed face down (see para. [0023]: Referring next to FIGS. 2-7 of the drawings, according to a typical method of play of the multiplication, addition and subtraction card game of this invention, a dealer or first player 19 is initially determined from among multiple players typically by shuffling and placing the card deck 1 in a face-down position); initiating a round by placing cards from each portion of the deck of creature cards face up on a playing surface by each player (see para. [0024]: the top multiplication Actor card 3, FREE card 15 or SUBTRACT card 17 in the card deck 1 is turned face-up to begin a discard pie 28. When his or her turn arrives, each player plays a selected one of his or her dealt multiplication factor cards 3, SUBTRACT cards 17 or FREE cards 15 in a discretionary manner hereinafter described, and places it in the face-up position designated a "Target Number" (see para. [0009]: each player for maximum point gain calculates the products of the equations displayed on his or her respective dealt cards in an attempt to find a card which displays an equation the product of which is the same as the product of the equation displayed on the card played by the previous player) and the color is designated a "Target Color" (see para. [0011]: each player may play a card which has the same color as the card played by the previous player); arranging each of the face up cards by each player in an order and combining each adjoining card by an arithmetic operator indicator, wherein the number on a front face of each creature card displayed within the color spot of the color of the Target Color is used in combination with the corresponding arithmetic operator indicators to arrive at a non-negative whole number solution that is as close as possible to the Target Number; and designating a winner of the round as the player with the non-negative whole number solution that is closest to the Target Number (see para. [0025]: the top multiplication factor card 3 on the discard pile 28 displays the equation "4x1", the product of which is "4". From his or her set of dealt cards 26, the first player 19 attempts to select a multiplication factor card 3 of any color and which displays an equation the product of which equals the product of the equation displayed on the face-up multiplication factor card 3 on the discard pile 28. Accordingly, the first player 19 selects and plays a multiplication factor card 3 having the equation "2x2" displayed thereon, the product of which is "4" and equals the product "4" of the equation displayed on the multiplication factor card 3 on the discard pile 28. The initial score of the first player 19 is calculated by adding the product of the equation displayed on the played multiplication factor card 3 with the product of the equation displayed on the face-up multiplication factor card 3 on the discard pile 28, which score in this case is 8, since 4+4=8. After the first player 19 places his or her played multiplication factor card 3 in the face-up position on the discard pile 28, play resumes to the second player 20, as illustrated in FIG. 3. From among his or her dealt cards 26, the second player 20 attempts to select a card 3 which displays an equation the product of which equals the product of the equation displayed on the card 3 placed in the face-up position on the discard pile 28 (which product in this case equals 4, since the face-up multiplication factor card 3 placed on the discard pile 28 by the first player 19 displays the equation "2x2" in FIG. 3). Because the second player 20 does not have a multiplication factor card 3 which displays an equation the product of which is "4", the second player 20 selects and plays a multiplication factor card 3 having the equation "7x7" displayed thereon, the color of which multiplication factor card 3 is blue, the same color as the multiplication factor card 3 lying face-up on the discard pile 28. Accordingly, the initial score of the second player 20 is "4", the product of the equation "2x2" displayed on the multiplication factor card 3 lying face-up on the discard pile 28. Play next resumes to the third player 21 who, as illustrated in FIG. 4, plays a SUBTRACT card 17 from among his or her set of dealt cards 26. Accordingly, since the multiplication factor card 3 on the discard pile 28 displays an equation (7x7) the product of which is "49", the previous, second player 20 must subtract 49 points from his or her score, resulting in a negative score for the second player 20 (4-49=-45), and the third player 21 places the SUBTRACT card 17 on the discard pile 28. As illustrated in FIG. 5, play next resumes to the fourth player 22, who selects and plays the multiplication factor card 3 of all colors having the highest product from among his or her dealt cards 26, which multiplication factor card 3 in this case is the multiplication factor card 3 which displays the equation "9x6". Accordingly, the initial score of the fourth player 22 is "54", the product of the equation "9x6").
Myles does not explicitly disclose, but Costa teaches wherein each creature card displays a unique… figure, a name corresponding to each of the unique … figures (see fig. 2, para. [0015-0016]: one card from the thirteen different value cards will be used to determine the best five-card hand. The thirteen cards are Ace, King. Queen, Jack, Ten, Nine, Eight, Seven, Six, Five, Four, Three, and a Deuce. Each of these thirteen cards (known as the wagering cards) will be represented once for each of the four suites. The four suites are hearts, diamonds, clubs, and spades. [0016] Therefore, irrespective of what the community board may be, one of the above named cards. It is reasonably understood that the cards as disclosed by Costa display a unique figure (i.e. in fig. 2, A, K, Q or in other decks a depiction of a King or Queen) and a name corresponding to each figure (i.e. Ace, King, Queen)), a randomized number of a set of randomized numbers (see para. [0489]: the group will consist of ten numbers. This group on numbers will then gain points each time one of these numbers has been called on either a live roulette or through an random number generator (RNG)); and two … dice, wherein each side is of one of several colors corresponding to the several colors spots of the card (see para. [0011]: a deck of dice whereas there are six cards in a set (from ace through to six), two colors and two suits, also see para. [0513]: By color-coding two of three dice on the mechanical device, player and house maybe allotted three dice via the RNG and two dice from the mechanical device to form a five-dice poker hand); rolling the dice, wherein a sum of the numbers rolled on the two dice is designated the target number (see para. [0534-0535]: the object is to score closest to nine in showdown between the player and the house. This points score must be obtained from a roll of three dice, but with both player and house using just two of the three dice to create the highest score to nine. Also see para. [0556]: Players place two matching wagers in a showdown versus the dealer. One wager is for a blackjack hand closest to eleven, the second wager on a two-card poker hand). It is reasonably understood from the target number being nine or eleven in different games, and obtaining points score from rolling dice, that the target number can be any number rolled on the two dice), and the color of the highest number rolled is designated the Target Color (see para. [0513]: By color-coding two of three dice on the mechanical device. Also see para. [0186]: Depending on the math, the pair may have to be suited/same color in order for the player to remain in the game. Depending on the math, an unsuited pair may or may not be a bust or a player may lose 50% of the stake and may or may not be bust. Therefore, after the first two cards have been dealt, the game reverts to the rules stated above, whereas the highest card will play first); within a predetermined amount of time (see para. [0371]: will conclude when the expiration of a time limit is reached. Also see para. [0471]: By setting a time limit, cash tournaments are seen as speed tournaments without reducing the skill factor. They also offer flexibility in terms of how they are presented to players).
Myles and Costa do not explicitly teach, but Villarreal-Reyes teaches a predetermined amount of time determined by a timer (see col. 4, lines 41-61: the designated judge will start a timer and turn over or reveal either a math operation “question” from the first deck, or a math operation result “question” from the second deck, depending upon which mode of play is selected... the other players will have an opportunity to answer the question correctly, until the timer runs out, typically in about ten to fifteen seconds per round; col. 11, lines 52-56: Timing device 40 may be an hourglass or sand timer style timer such as shown in FIGS. 1 and 4, or alternatively may be another suitable type of timing device such as a mechanical or digital clock, stopwatch or the like).
Myles is considered analogous to the claimed invention because it is in the same field of providing a mathematics learning system using arithmetic operations and cards. Costa is also considered analogous to the claimed invention because it is in the same field of card and dice games. Even if Costa was not in the same field of endeavor, Costa is reasonably pertinent the problem of providing dice and mechanics of popular well-known card games and is thus considered analogous to the claimed invention. Furthermore, Villarreal-Reyes is considered analogous to the claimed invention because it is in the same field of a mathematics learning game using arithmetic operations and cards. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the modification of Myles in view of Costa and in further view of Villarreal-Reyes as taught above to teach a mathematics learning game system using cards and dice to teach arithmetic operations, with creature cards displaying a unique figure and having a name, a randomized set of numbers, and a predetermined amount of time determined by a timer. There is clear motivation to do so to provide an enjoyable and entertaining method of strengthening multiplication, addition, and subtraction skills, with unique cards to reinforce memory, randomness to ensure fairness and variety of mathematical equations, and a set time to increase the speed of mathematics learning. There is clear motivation to do so to apply features of conventional card games such as fairness, uniqueness, and speed, to a mathematics learning game.
Myles, Costa, and Villarreal-Reyes do not explicitly disclose/teach wherein the creature card displays a unique animal figure … the dice are 20-sided dice, or wherein each card displays three color spots, each of the three color spots having a different color and a random number on each of the three color spots. However, the claimed differences of a unique animal figure… three color spots, each of the three color spots having a different color and a random number on each of the three color spots are only found in the nonfunctional descriptive material and is not functionally involved in the elements (or steps) recited. The elements of the structure (or steps of the method) would perform the same on the mathematics learning game regardless of having a unique animal figure… three color spots, each of the three color spots having a different color and a random number on each of the three color spots. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP 2111.05: “[An] example in which a product merely serves as a support would occur for a deck of playing cards having images on each card (i.e. . See In re Bryan, 323 Fed. App'x 898 (Fed. Cir. 2009) (unpublished). In Bryan the applicant asserted that the printed matter allowed the cards to be "collected, traded, and drawn"; "identify and distinguish one deck of cards from another"; and "enable[] the card to be traded and blind drawn". However, the court found that these functions do not pertain to the structure of the apparatus and were instead drawn to the method or process of playing a game. See also Ex parte Gwinn, 112 USPQ 439, 446-47 (Bd. Pat. App. & Int. 1955), in which the invention was directed to a set of dice by means of which a game may be played. The claims differed from the prior art solely by the printed matter in the dice. The claims were properly rejected on prior art because there was no new feature of physical structure and no new relation of printed matter to physical structure.” In the present case, “a unique animal figure… three color spots, each of the three color spots having a different color and a random number on each of the three color spots” is merely printed matter and has no functional relationship to the elements (or steps) of the Applicant’s mathematics learning game. Therefore, the lack of a functional relationship to the Applicant’s mathematics learning game fails to provide a new and nonobvious improvement of the mathematics learning game.
Therefore, it would have been obvious to one of ordinary skill in the art based on the teachings of Myles, Costa, and Villarreal-Reyes at the time of filing to modify Myles, Costa, and Villarreal-Reyes to improve a mathematics learning game with a unique animal figure… three color spots, each of the three color spots having a different color and a random number on each of the three color spots” There is clear motivation to do so to provide a mathematics learning game where the playing cards contain figures and bright colors that are interesting to children, to retain their attention while teaching them mathematics. Further, it has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack 217 USPQ 401, (CAFC 1983) and In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862. The content of the printed matter used does not alter or provide a functional relationship with the substrate. 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 and the substrate which is required for patentability.
Furthermore, wherein the creature card displays a unique animal figure … the dice are 20-sided dice, or wherein each card displays three color spots, each of the three color spots having a different color and a random number on each of the three color spots are obvious design choices. Applicant has not disclosed that 20-sided dice, or color spots solves any state problem or is for any particular purpose beyond that of conventional 6-sided dice as disclosed by Costa. Moreover, it appears that using the dice provided by Myles and Costa or the Applicant would perform equally well. Therefore, it would have been prima facie obvious to modify Myles and Costa to obtain the cards or dice as specified in claim 1, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Myles and Costa. Furthermore, regarding the 20-sided dice, it would have been obvious to modify Costa’s six-sided dice by having a different shape with more sides, since applicants have presented no explanation that the 20-sided dice are significant or are anything more than one of numerous configurations a person of ordinary skill in the art would find obvious for the purpose of providing a target number. A change in shape (in this case, from a cube to an icosahedron) is generally recognized as being within the level of ordinary skill in the art. See In re Dailey, 149 USPQ 47 (CCPA 1976). Finally, regarding the color spots and a random number one each color spot, it would have been obvious to modify Myles and Costa with cards displaying three color spots, each displaying a random number, because the color spots are merely including more numbers on each card, which could be accomplished by drawing more cards instead with a conventional deck of cards, and rolling based on suit rather than color, for example.
Regarding claim 5, and substantially similar limitations in claim 10, Myles discloses a mathematics learning game system comprising: …arranging each of the three cards in an order and combine each adjoining creature card by an arithmetic operator indicator, wherein the number on the front face of each card displayed within the color spot of the color of the Target Color is used in combination with the corresponding arithmetic operator indicators to arrive at a non-negative whole number solution that is as close as possible to the Target Number (see para. [0025]: the top multiplication factor card 3 on the discard pile 28 displays the equation "4x1", the product of which is "4". From his or her set of dealt cards 26, the first player 19 attempts to select a multiplication factor card 3 of any color and which displays an equation the product of which equals the product of the equation displayed on the face-up multiplication factor card 3 on the discard pile 28. Accordingly, the first player 19 selects and plays a multiplication factor card 3 having the equation "2x2" displayed thereon, the product of which is "4" and equals the product "4" of the equation displayed on the multiplication factor card 3 on the discard pile 28. The initial score of the first player 19 is calculated by adding the product of the equation displayed on the played multiplication factor card 3 with the product of the equation displayed on the face-up multiplication factor card 3 on the discard pile 28, which score in this case is 8, since 4+4=8. After the first player 19 places his or her played multiplication factor card 3 in the face-up position on the discard pile 28, play resumes to the second player 20, as illustrated in FIG. 3. From among his or her dealt cards 26, the second player 20 attempts to select a card 3 which displays an equation the product of which equals the product of the equation displayed on the card 3 placed in the face-up position on the discard pile 28 (which product in this case equals 4, since the face-up multiplication factor card 3 placed on the discard pile 28 by the first player 19 displays the equation "2x2" in FIG. 3). Because the second player 20 does not have a multiplication factor card 3 which displays an equation the product of which is "4", the second player 20 selects and plays a multiplication factor card 3 having the equation "7x7" displayed thereon, the color of which multiplication factor card 3 is blue, the same color as the multiplication factor card 3 lying face-up on the discard pile 28. Accordingly, the initial score of the second player 20 is "4", the product of the equation "2x2" displayed on the multiplication factor card 3 lying face-up on the discard pile 28. Play next resumes to the third player 21 who, as illustrated in FIG. 4, plays a SUBTRACT card 17 from among his or her set of dealt cards 26. Accordingly, since the multiplication factor card 3 on the discard pile 28 displays an equation (7x7) the product of which is "49", the previous, second player 20 must subtract 49 points from his or her score, resulting in a negative score for the second player 20 (4-49=-45), and the third player 21 places the SUBTRACT card 17 on the discard pile 28. As illustrated in FIG. 5, play next resumes to the fourth player 22, who selects and plays the multiplication factor card 3 of all colors having the highest product from among his or her dealt cards 26, which multiplication factor card 3 in this case is the multiplication factor card 3 which displays the equation "9x6". Accordingly, the initial score of the fourth player 22 is "54", the product of the equation "9x6").
Myles does not explicitly disclose, but Costa teaches a user computing device having a memory storing card information for a predetermined number of cards corresponding to a deck of cards (see para. [0843]: In some examples, as illustrated in FIGS. 3A and 3B, the computing devices 302 and 306 include at least one processor or processing unit 308 and system memory 312. The processor 308 is a device configured to process a set of instructions. In some embodiments, system memory 312 may be a component of processor 308; in other embodiments system memory 312 is separate from the processor 308. Depending on the exact configuration and type of computing device, the system memory 312 may be volatile (such as RAM), non-volatile (such as ROM, flash memory, etc. It is reasonably understood that the memory stores information about the cards discussed throughout Costa, for example, see figs. 2 [the card information] and 3 [the memory storing card information]) …and an application providing executable programmed instructions (see para. [0847]: the various