DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 10/21/25. Claims 23-27 are cancelled; claims 1 and 18 are amended; claims 28-32 are withdrawn. Claims 1-22 are examined below.
Claim Rejections - 35 USC § 103
2. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
3. Claims 1-22 are rejected under 35 U.S.C. 103 as being unpatentable over David (US Pub. No. 2006/0244212) in view of Burgio (US Pat. No. 5,989,033).
With respect to claims 1-22, David teaches a game board system comprising: a game board 12 (paragraph [0021]) and first and second plurality of cards 16, wherein said cards are magnetic and configured to be releasably attachable to the game board 12 (paragraphs [0022]-[0023]), and first and second self-emotion defining devices 14. Game board 12 can be sub-divided into various areas, including a conflict indication area, and a first and second identifier emotion storage areas, wherein the first emotion identifier storage area includes a region on a first side (i.e. left side) and wherein the second emotion identifier storage area includes a region on a second side (i.e. right side) generally opposite relative the first side. The cards 16 comprise structure construed as a first plurality of emotion state identifiers and second plurality of emotion state identifiers.
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Regarding the claimed indicia on the game board and game cards, such limitations are directed to printed matter. 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. 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). Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). The physical configuration of the claimed apparatus in the Gulack invention comprised three key elements: (1) a band, ring, or set of concentric rings; (2) a plurality of individual digits imprinted on the band or ring at regularly spaced intervals; and (3) an algorithm by which the appropriate digits are developed. The court noted that the claims required a particular sequence of digits to be displayed on the outside surface of a band. These digits were functionally related to the band in two ways: (1) the band supports the digits; and (2) there is an endless sequence of digits — each digit residing in a unique position with respect to every other digit in an endless loop. The digits exploit the endless nature of the band, and notably, these features are critical to the invention, thus constituting a functional relationship between the digits and the band. The product performed some function with respect to the printed matter it is associated because the claimed algorithm would not be satisfied without certain physical relationships of the string of numbers. In Miller, the printed indicia on a measuring device for use in fractioning recipes was at issue. Specifically, volumetric indicia on the measuring receptacle indicated volume in a certain ratio to actual volume. This relationship was held to constitute a functional relationship between the indicia and the substrate. The printed matter performs some function with respect to the product to which it is associated. Evidence against a functional relationship exists where a product merely serves as a support for printed matter. See MPEP 2111.05. 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. 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 where 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. For example, a claimed measuring tape having electrical wiring information thereon, or a generically claimed substrate having a picture of a golf ball thereupon, would lack a functional relationship as the claims as a whole are directed towards conveying wiring information (unrelated to the measuring tape) or an aesthetically pleasing image (unrelated to the substrate) to the reader. Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists. For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864. Unlike the fact situations in Miller and Gulack, the substrate (card and game board surface) does not support the printed indicia and the indicia is not arranged such that it's positioned in a unique position with respect to the functionality of the substrate. Moreover, the printed matter is directed towards conveying a game rule-based meaning to a human reader independent of the supporting product. There is not a new and unobvious functional relationship therebetween. Instead, the indicia areas are akin to the images on a playing card in In re Bryan and the dice indicia of Ex parte Gwinn, neither of which were determined to establish a new and unobvious functional relationship with the substrate. As such, no patentable weight is given to the claimed printed matter.
It is noted the claims are directed to apparatus claims. Limitations pertaining to game rules are treated as intended use, or functional limitations. Per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, the structure taught by David – game board and game cards – is capable of being used as intended by the claim. For example, the conflict indication area is configured to receive the playing cards (i.e., the first and second emotion state identifiers) in various arrangements. The first emotion identifier storage area first side region is sizable enough to allow arraying and displaying of the first plurality of emotion state identifiers. Similarly, the second emotion identifier storage area second side region is capable of arraying and displaying the second plurality of emotion state identifiers. Game tokens 14 are capable of being used as a self-emotion defining device. Examiner notes the structure of the self-emotion defining device is not claimed.
Lastly, David fails to expressly teach wherein the game cards (i.e. first and second plurality of emotion state identifies) further include first and second ring assemblies as claimed. However, analogous art reference Burgio teaches wherein it is known for emotion state identifiers (i.e. cards) to include ring assemblies for coupling the identifiers together via a ring assembly (Fig.’s 10-12; column 4, lines 14-29). At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to incorporate a ring assembly for each of the subgroup of cards (i.e. subdecks 22, 30, 29, 104). The motivation to make the modification is to provide a known means to couple cards together and provide convenience access to the coupled cards. Moreover, the ring will expectantly prevent cards from being lost and allow for the game to be easily transported and stowed, and easy game set up. The proposed modification is considered to have a reasonable expectation of success as the functionality of the game of David is not frustrated by the combination.
Response to Arguments
4. Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
5. 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 MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711