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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/08/2025 has been entered.
Applicant’s submission of a Response
Applicant’s submission of a response was received on 10/08/2025. Presently, claims 1 and 3-25 are now pending.
Response to Arguments
Applicant's arguments filed 10/08/2025 have been fully considered but they are not persuasive. Applicant’s representative asserts that the amended claims limitations are not met. However, the rejection of claims 1 and 3-25 is maintained as presented below. There is no response for the Double patenting rejection. Moreover, in light of the amendments to the claims, new rejection(s) under 35 U.S.C. 103 have been presented, as discussed in detail below.
Applicant’s representative alleges the following:
Regarding amended claim 1, applicant respectfully submits that the combination of cited references is not understood to disclose a self-emotion defining device of amended independent claim 1.
Regarding point (1), the examiner notes that there is a new combination of cited references relied upon to teach or disclose this limitation in the instant rejection.
Applicant’s representative argues that the newly added claim limitations requiring a “wherein the plurality of emotion state identifiers further includes a self-emotion defining device configured to allow a user to identify their own emotional state" is not met. Thus, the combination of cited references fails to teach or suggest the feature of a self-emotion defining device of claim 1. However, the office action relies on a newly found prior art reference of Marilyn Lewis (US 20090239203 A1; hereinafter Lewis) (necessitated by applicant’s amendment) to teach a self-emotion defining device configured to allow a user to identify their own emotional state. (See office action below).
Regarding claims 13 and 23, since they recite similar features to claim 1, they will be rejected with the newly found prior art as stated above. Therefore, the rejection is maintained as present below.
The Applicant respectfully argues Claims 1-2, 4-5, and 8-10 were provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 1, 3-6, and 9-10 of co-pending Application No. 17/489,073. As the subject application has not yet been held to claim allowable subject matter, Applicant respectfully requests that this rejection be held in abeyance pending the holding of allowable claims. At such time, Applicant is amenable to filing any terminal disclaimers as may be appropriate.
The Examiner respectfully disagrees. A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional, per MPEP § 804 (B)(1).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-2, 4-5, and 8-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-6, and 9-10 of copending Application No. 17/489,073. Although the claims at issue are not identical, they are not patentably distinct from each other because the published claims are more narrow than that of the instant application and thus fully encompass the claimed subject matter.
Pending US App. 17/489,097
Co-pending US App. 17/489,073
Claim 1: An emotion-indication board system comprising: an emotion identifier storage area configured for storing a plurality of emotion state identifiers corresponding to a plurality of emotional states, wherein the plurality of emotion state identifiers includes a plurality of emotional state definition cards corresponding to the plurality of emotional states, and wherein the plurality of emotional state definition cards include an opening ring assembly for coupling the plurality of emotional state definition cards, and wherein the plurality of emotion state identifiers further includes a self-emotion defining device configured to allow a user to identify their own emotional state; a participant identifier storage area configured for storing a plurality of participant identifiers corresponding to a plurality of participants; an emotion indication area configured to allow one or more of the plurality of participants to indicate their emotional state via one or more of the plurality of participant identifiers and one or more of the plurality of emotional state identifiers.
Claim 1: An emotional learning system comprising: a plurality of emotion state identifiers that includes at least one common character configured to visually define a plurality of emotional states; a self-emotion defining device configured to allow a user to identify their own emotional state so that it may be compared to the plurality of emotional states; and an emotion indication board including: an emotion identifier storage area configured for storing at least a portion of the plurality of emotion state identifiers; a participant identifier storage area configured for storing a plurality of participant identifiers corresponding to a plurality of participants; and an emotion indication area configured to display a combination of at least one of the plurality of emotion state identifiers and at least one participant identifier of the plurality of participant identifiers; wherein the combination of the at least one of the plurality of emotion state identifiers and the at least one participant identifier communicate an emotional state associated with a participant corresponding to the at least one participant identifier; wherein the plurality of emotion state identifiers includes a plurality of emotional state definition cards corresponding to the plurality of emotional states, and wherein the self-emotion defining device has a generally similar form factor as the plurality of emotional state definition cards; and wherein the plurality of emotional state definition cards and the self-emotion defining device include an opening ring assembly for coupling the plurality of emotional state definition cards and the self-emotion defining device.
Claim 4: The emotion-indication board system of claim 1 wherein the plurality of emotional state definition cards includes: a plurality of double-sided emotional state definition cards.
Claim 9: The emotional learning system of claim 1 wherein the plurality of emotional state definition cards includes: a plurality of double-sided emotional state definition cards.
Claim 5: The emotion-indication board system of claim 4 wherein: a first side of each of the plurality of double-sided emotional state definition cards corresponds to a first gender; and a second side of each of the plurality of double-sided emotional state definition cards corresponds to a second gender.
Claim 10: The emotional learning system of claim 9 wherein: a first side of each of the plurality of double-sided emotional state definition cards corresponds to a first gender; and a second side of each of the plurality of double-sided emotional state definition cards corresponds to a second gender.
Claim 8: The emotion-indication board system of claim 6 wherein the at least one common character includes: a facial character portion configured to illustrate a facial component of the plurality of emotional states; and a body character portion configured to illustrate a body component of the plurality of emotional states.
Claim 3: The emotional learning system of claim 1 wherein the at least one common character includes: a facial character portion configured to illustrate a facial component of the plurality of emotional states; and a body character portion configured to illustrate a body component of the plurality of emotional states.
Claim 9: The emotion-indication board system of claim 6 wherein the at least one common character includes: a first common character; and a second common character.
Claim 4: The emotional learning system of claim 1 wherein the at least one common character includes: a first common character; and a second common character.
Claim 10: The emotion-indication board system of claim 9 wherein: the first common character corresponds to a first gender; and the second common character corresponds to a second gender.
Claim 5: The emotional learning system of claim 4 wherein: the first common character corresponds to a first gender; and the second common character corresponds to a second gender.
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, 3-25 are rejected under 35 U.S.C. 103 as being unpatentable over Alison Nguyen (US 20150287327 A1; hereinafter Nguyen) in view of Marilyn Lewis (US 20090239203 A1; hereinafter Lewis) in view of Kang et al. (US 20050097801 A1; hereinafter Kang).
Regarding claims 1, 13, and 23, Nguyen discloses an emotion-indication board system (mounting surface 106; Fig 1) comprising: an emotion identifier storage area (any place on the board can be used to hold tokens 110, 110’, or 110” such as the bottom left side of the board; See Fig 1) configured for storing a plurality of emotion state identifiers corresponding to a plurality of emotional states (tokens 110' can be used as emotion state identifiers because they display a picture representing an emotion; ¶28), a participant identifier storage area configured for storing a plurality of participant identifiers corresponding to a plurality of participants (names section on the top left side use names to identify participants or a token 110; Fig 1); an emotion indication area (feelings section on the top right side; Fig 1) configured to allow one or more of the plurality of participants to indicate their emotional state via one or more of the plurality of participant identifiers (names of the participants as shown in Fig 1) and one or more of the plurality of emotional state identifiers (tokens 110' display a picture representing an emotion and they can be placed in the feelings section; ¶28). Nguyen does not explicitly disclose wherein the plurality of emotion state identifiers includes a plurality of emotional state definition cards corresponding to the plurality of emotional states, and wherein the plurality of emotional state definition cards include an opening ring assembly for coupling the plurality of emotional state definition cards, and wherein the plurality of emotion state identifiers further includes a self-emotion defining device configured to allow a user to identify their own emotional state.
However, Lewis teaches wherein the plurality of emotion state identifiers includes a plurality of emotional state definition cards corresponding to the plurality of emotional states (cards can be used to represent emotions; Fig 2A and ¶27), and wherein the plurality of emotion state identifiers further includes a self-emotion defining device (mirror 115; Fig 1A) configured to allow a user to identify their own emotional state (child exhibits facial expression in mirror and selects the emotion card associated with the emotion activity center; ¶33).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Lewis because having a tool to allow the user to reflect their own facial expression will help the user to compare their own facial expressions with the emotions on the emotional state definition cards and match them.
Kang teaches wherein the plurality of emotional state definition cards include an opening ring assembly for coupling the plurality of emotional state definition cards (Fig 8 shows a hang loop 11 with a plurality of cards)
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Kang for the benefit of organizing and storing the cards as mentioned in paragraph 0001.
Furthermore, for additional limitations of claims 13 and 23, Nguyen does not explicitly disclose wherein the plurality of participant identifiers includes a plurality of participant identifier cards corresponding to the plurality of participants (Nguyen discloses identifiers through names or tokens in Fig 1 but not specifically with cards), and allow one or more of the plurality of participants to indicate their emotional state via one or more of the plurality of participant identifier cards and one or more of the plurality of emotional state definition cards (Nguyen discloses participants indicating their emotional states in the feelings section with tokens 110’’ but not specifically with cards).
However, Lewis teaches that cards can be used as identifiers to indicate emotional states in the form of text and picture (Fig 2A), instead of tokens from Nguyen.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Lewis because most cards, by design, can have different type of content on them to describe something. The content here can show participants and identify them, which helps the user understand emotional states in regards to each participant.
Lewis does not teach using cards as identifiers for participants, but this belongs to printed matter. Regarding the plurality of participant indicating their emotional state and the plurality of emotion state identifiers (the text and image of the cards) corresponding to a plurality of emotional states (sad, joy, etc.) conveys information about an emotional state and the plurality of participant identifiers (pictures of children) corresponding to a plurality of participant identifier cards (group of children) conveys information about the identity of the participant, and such limitations are directed to printed matter. Printed matter such as text or graphics that merely convey information is generally not patentable. Per MPEP 2111.05, If a new and unobvious functional relationship between the printed matter and the substrate does not exist, USPTO personnel need not give patentable weight to printed matter. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations that include printed matter. See Id. at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). The first step of the printed matter analysis is the determination that the limitation in question is in fact directed toward printed matter. "Our past cases establish a necessary condition for falling into the category of printed matter: a limitation is printed matter only if it claims the content of information." See In re DiStefano, 808 F.3d 845, 848, 117 USPQ2d 1265, 1267 (Fed. Cir. 2015). "[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268. Where a product merely serves as a support for printed matter, no functional relationship exists. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product. For example, a hatband with images displayed on the hatband but not arranged in any particular sequence was found to only serve as support and display for the printed matter. See Gulack, 703 F.2d at 1386, 217 USPQ at 404. Another example in which a product merely serves as a support would occur for a deck of playing cards having images on each card. 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.
Regarding claims 4 and 15, Nguyen discloses using tokens for emotional states, but does not explicitly disclose wherein the plurality of emotional state definition cards includes: a plurality of double-sided emotional state definition cards.
However, Lewis teaches wherein the plurality of emotional state definition cards includes: a plurality of double-sided emotional state definition cards (cards always have 2 sides, a front side and a back side; Fig 2A).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Lewis because most cards, by design, have double sides. Double sides are effective because you have more space to have content on both sides.
Regarding claims 5 and 16, Nguyen does not disclose a first side of each of the plurality of double-sided emotional state definition cards corresponds to a first gender; and a second side of each of the plurality of double-sided emotional state definition cards corresponds to a second gender.
However, Lewis teaches a first side of each of the plurality of double-sided emotional state definition cards corresponds to a first gender; and a second side of each of the plurality of double-sided emotional state definition cards corresponds to a second gender (front side of card can correspond to a gender and second side of a card can correspond to a second gender; Fig 2A).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Lewis because most cards, by design, have double sides. Double sides are effective because you have more space to have content on both sides.
Furthermore, the first side corresponding to a first gender and a second side corresponding to a second gender for the plurality of double-sided emotional state definition cards belongs to printed matter because they only convey information about gender and do not enhance the structural characteristics or the functionality of the cards themselves.
"[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268. Where a product merely serves as a support for printed matter, no functional relationship exists. The cards can still be stored in different areas of the board and they can still attach and detach magnetically following the rules of the game regardless of the information conveyed in the cards. Therefore, the printed matter does not have a functional relationship with the cards.
Regarding claims 6 and 17, Nguyen does not disclose wherein the plurality of emotional state definition cards corresponding to the plurality of emotional states include: at least one common character configured to visually define the plurality of emotional states.
However, Lewis teaches wherein the plurality of emotional state definition cards corresponding to the plurality of emotional states include: at least one common character configured to visually define the plurality of emotional states (emoticon 215; Fig 2B).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Lewis because most cards, by design, can have different type of content on them to describe something. The content here can show emotional states, which helps the user understand emotional states visually.
Furthermore, the at least one common character configured to visually define the plurality of emotional states is printed matter. "[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268. Where a product merely serves as a support for printed matter, no functional relationship exists. At least one common character is printed matter because it can be a facial character portion or a body character portion used to convey information about the plurality of emotional states and do not enhance the structural characteristics or the functionality of the cards themselves. The cards can still be stored in different areas of the board and they can still attach and detach magnetically following the rules of the game regardless of the information conveyed in the cards. Therefore, the printed matter does not have a functional relationship with the cards.
Regarding claims 7 and 18, Nguyen does not disclose wherein the plurality of emotional state definition cards is configured to visually and textually define the plurality of emotional states.
However, Lewis teaches wherein the plurality of emotional state definition cards is configured to visually and textually define the plurality of emotional states (Fig 2A).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Lewis because most cards, by design, can have different type of content on them to describe something. The content here can show emotional states, which helps the user understand emotional states visually.
Furthermore, emotional state definition cards is configured to visually and textually define the plurality of emotional states belongs to printed matter."[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268. Where a product merely serves as a support for printed matter, no functional relationship exists. The cards can still be stored in different areas of the board and they can still attach and detach magnetically following the rules of the game regardless of the information conveyed in the cards. Therefore, the printed matter does not have a functional relationship with the cards.
Regarding claims 8 and 19, Nguyen does not disclose wherein the at least one common character includes: a facial character portion configured to illustrate a facial component of the plurality of emotional states; and a body character portion configured to illustrate a body component of the plurality of emotional states.
However, Lewis teaches wherein the at least one common character includes: a facial character portion configured to illustrate a facial component of the plurality of emotional states (Fig 2A).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Lewis because most cards, by design, can have different type of content on them to describe something. The content here can show emotional states, which helps the user understand emotional states visually.
Furthermore, Lewis does not teach a body character portion configured to illustrate a body component of the plurality of emotional states. However, the “at least one common character includes: a facial character portion configured to illustrate a facial component of the plurality of emotional states; and a body character portion configured to illustrate a body component of the plurality of emotional states” belongs to printed matter. "[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268. Where a product merely serves as a support for printed matter, no functional relationship exists. As previously stated in claim 6, the at least one common character is printed matter because it includes a facial character portion and a body character portion to convey information about the plurality of emotional states and does not enhance the structural characteristics or the functionality of the cards themselves. The cards can still be stored in different areas of the board and they can still attach and detach magnetically following the rules of the game regardless of the information conveyed in the cards. Therefore, the printed matter does not have a functional relationship with the cards.
Regarding claims 9 and 20, Nguyen does not disclose wherein the at least one common character includes: a first common character; and a second common character.
However, Lewis teaches wherein the at least one common character includes: a first common character (emoticon 215; Fig 2B)
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Lewis because most cards, by design, can have different type of content on them to describe something. The content here can show emotional states, which helps the user understand emotional states visually.
Furthermore, Lewis does not teach a “second common character”. However, “the at least one common character includes: a first common character; and a second common character” belongs to printed matter. "[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268. Where a product merely serves as a support for printed matter, no functional relationship exists. It was previously stated in claim 6 that the at least one common character is printed matter. Therefore, the limitation of a first common character and a second common character belongs to printed matter because the first and second common character also convey information about the plurality of emotional states. The first and second common character do not enhance the structural characteristics or the functionality of the cards themselves. The cards can still be stored in different areas of the board and they can still attach and detach magnetically following the rules of the game regardless of the information conveyed in the cards. Therefore, the printed matter does not have a functional relationship with the cards.
Regarding claims 10 and 21, Nguyen does not disclose wherein: the first common character corresponds to a first gender; and the second common character corresponds to a second gender.
However, Lewis teaches the first common character corresponds to a first gender (emoticon 210 corresponds to a first gender; Fig 2B).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Lewis because most cards, by design, can have different type of content on them to describe something. The content here can show emotional states of a gender, which helps the user understand emotional states visually.
Furthermore, Lewis does not teach a “the second common character corresponds to a second gender”. However, “the first common character corresponds to a first gender; and the second common character corresponds to a second gender” belongs to printed matter. "[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268. Where a product merely serves as a support for printed matter, no functional relationship exists. It was previously stated in claim 9 that the first common character and the second common character is printed matter. Therefore, the limitation of a first gender and a second gender belongs to printed matter because the first and second gender convey information about the gender of the cards representing the plurality of emotional states. The first and second gender do not enhance the structural characteristics or the functionality of the cards themselves. The cards can still be stored in different areas of the board and they can still attach and detach magnetically following the rules of the game regardless of the information conveyed in the cards. Therefore, the printed matter does not have a functional relationship with the cards.
Regarding claim 11, Nguyen does not disclose wherein the plurality of participant identifiers corresponding to the plurality of participants includes: a plurality of participant identifier cards corresponding to the plurality of participants.
However, Lewis teaches that cards can be used as identifiers to indicate emotional states in the form of text and picture (Fig 2A), instead of tokens from Nguyen.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Lewis because most cards, by design, can have different type of content on them to describe something. The content here can show participants and identify them, which helps the user understand emotional states in regards to each participant.
In regards to using cards as identifiers for participants, this belongs to printed matter. A plurality of participant identifier cards is printed matter because they convey information about the plurality of participants and do not enhance the structural characteristics or the functionality of the cards themselves. "[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268. Where a product merely serves as a support for printed matter, no functional relationship exists. The cards can still be stored in different areas of the board and they can still attach and detach magnetically following the rules of the game regardless of the information conveyed in the cards. Therefore, the printed matter does not have a functional relationship with the cards.
Claims 3, 12, 14, 22, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen in view of Lewis in view of Kang in view of Smith (US20200094129A1; hereinafter Smith).
Regarding claims 3, 14 and 24, Nguyen discloses the tokens on the board representing emotions to be detachable affixed to the board (¶27-28). But does not explicitly disclose wherein the plurality of emotional state definition cards corresponding to the plurality of emotional states are magnetic and configured to be releasably attachable to the emotion identifier storage area and/or the emotion indication area and configured to be releasably attachable to the emotion identifier storage area and/or the emotion indication area.
However, Smith teaches wherein the plurality of emotional state definition cards corresponding to the plurality of emotional states are magnetic and configured to be releasably attachable to the emotion identifier storage area and/or the emotion indication area (magnetic board to prevent cards from falling; ¶44).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Smith for the benefit of better organization and stability. By using magnetism the pieces can stay firmly in place and it’s easier to move and organize the pieces on the board. Nguyen already discloses having tokens detachably fixed to the board in ¶27, but Smith takes it a step further to have any pieces and cards detachably fixed through magnetism.
Regarding claims 12, 22, and 25, Nguyen does not disclose wherein the plurality of participant identifier cards corresponding to the plurality of participants are magnetic and configured to be releasably attachable to the participant identifier storage area and/or the emotion indication area.
However, wherein the plurality of participant identifier cards corresponding to the plurality of participants are magnetic and configured to be releasably attachable to the participant identifier storage area and/or the emotion indication area (magnetic board to prevent cards from falling; ¶44).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nguyen to implement the teachings of Smith for the benefit of better organization and stability. By using magnetism the pieces can stay firmly in place and it’s easier to move and organize the pieces on the board. Nguyen already discloses having tokens detachably fixed to the board in ¶27, but Smith takes it a step further to have any pieces and cards detachably fixed through magnetism.
Lastly, regarding claims 1 and 3-25, it is noted the claims are directed to apparatus claims. Limitations pertaining to game rules are treated as intended use, or functional limitations. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. If a prior art structure is capable of performing the intended use as recited, then it meets the claim. See MPEP 2114, In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, the structure taught by Nguyen – board and tokens – is capable of being used as intended by the claim. For example, the emotion identifier storage area on the bottom left side of the board is sizable enough to allow storing, attaching, and detaching the plurality of emotional state definition cards. Similarly, the participant identifier storage area on the top left side of the board is capable of storing, attaching, and detaching the plurality of participant identifier cards. Also, the emotion indication area on the top right side of the board is sizable enough to attach or detach the magnetic playing cards (emotional state definition cards and participant identifier cards) in various arrangements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE ANGELES whose telephone number is (703)756-5338. The examiner can normally be reached Mon-Fri 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE ANGELES/Examiner, Art Unit 3715 /DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715