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 .
Response to Amendment
The examiner acknowledges receipt of amendments/arguments filed 10/27/25. The arguments set forth are addressed herein below. Claims 1-6 are pending and currently amended.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In regards to Claim 2, which recites both an apparatus and method steps of using the apparatus, the claim requires the board game including a game display including a game board, general cards, environment cards, disaster cards, convention cards, and earth money cards and requires the steps to which “wherein based on rules of the board game and general cards turned over by the players from among the general cards arranged on the floor card locations, an earth money card from among the earth money cards is provided to the player who turned over a general card having a highest number from among the turned over general cards”, wherein the italicized claim limitations is not directed toward the system (board game including a game display including a game board, general cards, environment cards, disaster cards, convention cards, and earth money cards), but rather the actions of the players. Such limitations causing confusion with regard to when direct infringement occurs rendering the claim indefinite e.g. whether infringement occurs when one creates the system or when players actually use the system rendering the claim indefinite (See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)).
In regards to Claim 3, which recites both an apparatus and method steps of using the apparatus, the claim requires the board game including a game display including a game board, general cards, environment cards, disaster cards, convention cards, and earth money cards and requires the steps to which “wherein based on the game rules, a submitted disaster card, a submitted convention card, and sets of four general cards respectively submitted and turned over by the players from among the players, a player who submitted and turned over the set of four general cards having a sum of numbers which does not exceed the carbon emission target indicated on the carbon emission target indicating part and which is highest among the sets of four general cards, becomes the winner, wherein based on a case in which two or more players each submitted and turned over a set of four general cards having a sum of numbers which does not exceed the carbon emission target indicated on the carbon emission target indicating part the player who submitted a general card having a highest number among general cards included in the sets of four general cards is the winner, and wherein the earth money card is provided to the winner”, wherein the italicized claim limitations is not directed toward the system (board game including a game display including a game board, general cards, environment cards, disaster cards, convention cards, and earth money cards), but rather the actions of the players. Such limitations causing confusion with regard to when direct infringement occurs rendering the claim indefinite e.g. whether infringement occurs when one creates the system or when players actually use the system rendering the claim indefinite (See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)).
In regards to Claim 4, which recites both an apparatus and method steps of using the apparatus, the claim requires the board game including a game display including a game board, general cards, environment cards, disaster cards, convention cards, and earth money cards and requires the steps to which “wherein based on the game rules and the case in which the general cards turned over by the players from among the general cards, arranged on the floor card locations, an earth money card is to be provided from a player who submitted and turned over a set of four general cards having a sum of numbers which exceeds the carbon emission target to another player, wherein the other player is: the player who submitted and turned over the set of four general cards having the sum of numbers which does not exceed the carbon emission target and which is the highest among the sets of four general cards; or the player who submitted a general card having a lowest number among the general cards included in the sets of four general cards, based on the case in which the two or more players each submitted and turned over a set of four general cards having a sum of numbers which does not exceed the carbon emission target indicated on the carbon emission target indicating part and which is highest among the sets of four general cards submitted by the players”, wherein the italicized claim limitations is not directed toward the system (board game including a game display including a game board, general cards, environment cards, disaster cards, convention cards, and earth money cards), but rather the actions of the players. Such limitations causing confusion with regard to when direct infringement occurs rendering the claim indefinite e.g. whether infringement occurs when one creates the system or when players actually use the system rendering the claim indefinite (See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)).
In regards to Claim 5, which recites both an apparatus and method steps of using the apparatus, the claim requires the board game including a game display including a game board, general cards, environment cards, disaster cards, convention cards, and earth money cards and requires the steps to which “wherein based on the game rules, the submitted disaster card, the submitted convention card, and the sets of four general cards respectively submitted and turned over by the players from among the players, a player who submitted and turned over the set of four general cards having a sum of numbers which exceeds the carbon emission target is to return one earth money card”, wherein the italicized claim limitations is not directed toward the system (board game including a game display including a game board, general cards, environment cards, disaster cards, convention cards, and earth money cards), but rather the actions of the players. Such limitations causing confusion with regard to when direct infringement occurs rendering the claim indefinite e.g. whether infringement occurs when one creates the system or when players actually use the system rendering the claim indefinite (See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)).
In regards to Claim 6, which recites both an apparatus and method steps of using the apparatus, the claim requires the board game including a game display including a game board, general cards, environment cards, disaster cards, convention cards, and earth money cards and requires the steps to which “wherein based on the game rules: the game is over after a predetermined number of rounds, a player who has a highest number of the earth money cards when the game is over is a winner, all players lose if the level of global warming indicated on the global warming level indicating part exceeds 4 degrees, a player who has no earth money cards but has to return an earth money card due to the submitted disaster card or excess of the carbon emission target is defeated, or a player among the players is to submit an earth money card for the player who has no earth money card”, wherein the italicized claim limitations is not directed toward the system (board game including a game display including a game board, general cards, environment cards, disaster cards, convention cards, and earth money cards), but rather the actions of the players. Such limitations causing confusion with regard to when direct infringement occurs rendering the claim indefinite e.g. whether infringement occurs when one creates the system or when players actually use the system rendering the claim indefinite (See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)).
Appropriate correction is required.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
The claim(s) recite(s) “A board game for carbon neutrality education comprising: a game display including a game board, general cards having carbon cards on which carbon emission quantities are indicated and environment cards on which carbon absorption quantities are indicated, disaster cards on which climate crisis disasters are indicated, convention cards on which rights to change greenhouse gas target amounts are indicated, and earth money cards on which scores are indicated; wherein the game board comprises: card locations on which the general cards, the disaster cards, the convention cards, or the earth money cards, are placed by players; a carbon emission target indicating part on which a carbon emission target is indicated; a global warming level indicating part on which a global warming level is indicated; general card locations on which the general cards before and after use of the general cards are arranged; disaster card locations on which the disaster cards before and after use of the disaster cards are arranged; an earth money card location on which the earth money cards are arranged; convention card locations on which the convention cards before and after the use are arranged; and floor card locations on which the general cards submitted by the players are arranged, wherein based on rules of the board game, general cards turned over by the players from among the general cards arranged on the floor card locations, and the carbon emission target, a winner is determined from among the players (Claim 1). Each of the above underlined portions are related to an abstract idea of Certain Methods of Organizing Human Activity particularly managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions of a board game such that via general cards turned over by the players from among the general cards arranged on the floor card locations, and the carbon emission target, a winner is determined from among the players. Such steps pertaining to organizing human activity.
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a game board using cards as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (including the field of game board art) (MPEP 2106.05 (h)).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. Additionally, the recitations of utilization of a “game display”, “game board”, “general cards”, “disaster cards”, “convention cards”, and/or “earth money cards”) are recited at a level of generality and are merely invoked as tool to perform the used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility (the use of generic components is merely illustrating the environment in which the abstract idea is practiced). The recited generic elements are a mere means to implement the abstract idea e.g. fail to provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such the claims amount to significantly more than the abstract idea.
It is settled law that adding physical elements to an abstract idea will not amount to an “inventive concept" if the physical elements are well-known, routine and conventional elements and they perform their well-known, routine and conventional functions. TLI Communications LLC v. AV Automotive, L.L.C. (Fed Cir 2016):
Turning to the second step in our analysis, we find that the claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294). We agree with the district court that the claims’ recitation of a “telephone unit,” a “server”, an “image analysis unit,” and a “control unit” fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability. (Emphasis added by Examiner.)
On the question of preemption, the Federal Circuit has stated in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of DNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
Nor do the dependent claims 2-6 add “significantly more” since they merely add to the claimed concepts relating to managing personal behavior or relationships or interactions between people including following rules or instructions (particularly, game rules or instructions) for a game board with the use of different cards to determine a winner under the grouping of Certain Methods of Organizing Human Activity. The dependent claims failing to place the claimed invention into a practical applicant or additional generic components of the dependent claims failing to amount to “significantly more” for the same reasons noted above.
Consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claim are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chambers (US 3,785,654).
Claim 1: Chambers teaches a board game comprising: a game display including a game board (Fig. 1 element (11)), general cards having carbon cards, environment cards, disaster cards, convention cards, earth money cards (Col. 2:15-Col. 3:15), wherein the game board comprises card locations on which the general cards, the disaster cards, the convention cards, or the earth money cards, a carbon emission target indicating part (Fig. 1 locations 24 and/or 75) and a global warming level indicating part (Fig. 1 locations 12-23); general card locations on which the general cards before (location 27) and after (location in front of location 27 or location 38) the use are arranged; disaster card locations on which the disaster cards before (location 30) and after (location in front of location 30 or location 33) the use are arranged; an earth money card location (location 36) on which the earth money cards are arranged; convention card locations on which the convention cards before (location 28) and after (location in front of location 28 or location 48) the use are arranged; and floor card locations (locations 42-47) on which the general cards submitted by the players are arranged (Figs. 1-3, Col. 2:15-Col. 3:15, Col. 4:44-Col. 5:65).
Chambers discloses the claimed invention except for the specific arrangement and/or content of indicia (printed matter) set-forth in the claim(s). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the general cards having carbon cards on which carbon emission quantities are indicated and environment cards on which carbon absorption quantities are indicated, disaster cards on which climate crisis disasters are indicated, convention cards on which rights to change greenhouse gas target amounts are indicated, earth money cards on which scores are indicated; a carbon emission target indicating part on which a carbon emission target is indicated; a global warming level indicating part on which a global warming level is indicated since it would only depend on the intended use of the assembly (system) and the desired information to be displayed. 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 USPZ 401, (CAFC 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of content and/or arrangement does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. cards having the carbon emission quantities, carbon absorption quantities, climate crisis disasters, rights to change greenhouse gas target amounts, and/or scores are indicated; and/or indicating parts on which a carbon emission target is indicated and/or a global warming level is indicated and the substrate e.g. cards and/or indicating part which is required for patentability.
The examiner takes the position that recitations of the intended use of the claimed invention such as, for example, wherein based on rules of the board game, general cards turned over by the players from among the general cards arranged on the floor card locations, and the carbon emission target, a winner is determined from among the players must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The proper weight to be given to rules of play associated with a game is discussed in Ex Parte Gwinn, 112 USPQ 439. A game board apparatus can be used to meet each of the rules even by simple agreement of players. The distinction created by associating a particular set of rules with a game board or pieces is not the one that changes the structure of the game board or piece, but only in the mind of the players. Those instructions do not change the structure of the game board.
Claims 2-5: Chambers discloses the claimed invention except for the specific arrangement and/or content of indicia (printed matter) set-forth in the claim(s). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made modified the general cards to include numbers since it would only depend on the intended use of the assembly (system) and the desired information to be displayed. Examiner takes the position that the rules pertaining thereto do not add any structure to the system in the claim, see claim 1.
Claim 6: Chambers discloses the claimed invention except for the specific arrangement and/or content of indicia (printed matter) set-forth in the claim(s). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made modified the global warming indicating part to indicate degrees since it would only depend on the intended use of the assembly (system) and the desired information to be displayed. Examiner takes the position that the rules pertaining thereto do not add any structure to the system in the claim, see claim 1.
Response to Arguments
Claim Rejections Under 35 U.S.C. §112
The examiner has amended to rejection to reflect any claimed amendments and/or issues previously introduced irrespective of antecedent basis.
Claim Rejections Under 35 U.S.C. §101
The examiner has amended to rejection to reflect any claimed amendments corresponding to game rules thereof.
Claim Rejections Under 35 U.S.C. §103
Applicant’s arguments with respect to claim(s) 1-6 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see attached PTO-892.
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 TRAMAR HARPER whose telephone number is (571)272-6177. The examiner can normally be reached 7:30am to 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at (571) 270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRAMAR HARPER/Primary Examiner, Art Unit 3715