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 .
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, 3-10, 18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eyler et al US 3,206,887 (“Eyler”).
As per claim 1, Eyler discloses maze game system with storytelling (book 10)(Figs. 1-3; 1:11-2:72), the maze game system comprising: a plurality of connectible pieces collectively representing a maze when connected to each other (pages 12-15 connected to each other)(Fig. 2; 2:15+), wherein the plurality of connectible pieces comprises a first connectible piece and a second connectible piece (such as pages 12, 13, 14 and 15)(Fig. 2; 2:15+), the first connectible piece comprises a first illustration including a first path segment, a first character, and a first plot representing a first partial story describing the first character performing action in the first path segment (page 12 includes road/s segments 24 and 25; character (related to airport) and a plot of story “let’s go to the airport”)(Fig. 2; 2:15+), the second connectible piece represents (such as page/sheet 13), comprising a second illustration including a second path segment representing a of the maze, a second character, and a second plot representing a second partial story describing the second character performing an action at the (include roads 26 and 27; character related to farm; and a plot of a story “let’s go to the farm”)(Fig. 2; 2:15+) when the first connectible piece is placed to next to the second connectible piece by aligning a first edge of the first connectible piece with a second edge of the second connectible piece (Fig. 2): the first path segment is connected to the second path segment to form at least a part of the maze (road 25 connected to road 27)(Fig. 2; 2:34+), the first plot continues to the second plot (Fig. 2), and iteratively connecting subsequent connectible pieces of the plurality of connectible pieces causes iteratively connecting additional path segments to the first path segment connected to the second path segment to form additional parts of the maze (Fig. 2); and an actor piece (vehicle 36)(Fig. 3; 2:64+), wherein the actor piece is movable across respectively connected connectible pieces of the plurality of connectible pieces, causing generation of the storytelling for enacting, the storytelling comprises describing the first plot followed by the second plot as parts of a story of an actor of the actor piece encountering the first character and the second character, as the actor piece iteratively moves from a start point toward an end point of the maze through the first connectible piece and the second connectible piece (the vehicle to travel between the pages upon the paths/roads, while representing the plot, as “let’s go to the airport” to “let’s go to the farm”).
Eyler is not specific regarding the second connectable piece represents a cul-de-sac. Such limitations amount to mere printed matter, and as set forth in the previous office action, 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. See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983), In Miller (In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969).), and In re Bryan (In re Bryan, 323 Fed. App'x 898 (Fed. Cir. 2009).
In this case, there is not a new and unobvious functional relationship therebetween. Instead, the printed matter is akin to the images on the connectable pieces. Therefore, 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 to form Eyler’s second connectable piece represents a cul-de-sac for the reason that a skilled artisan would have been motivated to print a cul-de-sac upon the second connectible piece as user’s preference to form any desire path to allow the actor piece to travel following the path/maze thereon for children’s amusement.
Additionally, if there is any doubt regarding the examiner interpretation with respect to the story plots (i.e., “let’s go to the airport” and “let’s go to the farm), it is further noted that it has been held that 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. Exparte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The examiner takes the position that Eyler’s apparatus, with the printed characters and rods upon the sheet/pages, and the vehicle (i.e., actor piece), is fully capable to include “a story plot”, for children’s amusement as the vehicle travel thereupon.
As per claim 3, with respect to wherein the plurality of connectible pieces comprises a third connectible piece that represents at least a type of: a start point piece or an end point piece, wherein the start point piece represents a starting point of the path, and wherein the end point piece represents a final terminal point of the path, construed as page 14 (e.g., a starting point) and page 15 (e.g., an end point)(Fig. 2).
As per claim 4, with respect to wherein the plurality of connectible pieces comprises a third connectible piece that represents at least a type of a prop piece, wherein the prop piece includes an illustration of an item to be picked up or claimed by a player as a plot of the story, construed as the characters printed upon page 14 (regarding a zoo) and/or upon page 15 (regarding “fun places”) in Fig. 2. With regard to “an item to be picked up”, as no “picked up item” was claimed as part of the claimed device, but only printed matter, as mentioned above, 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. The examiner maintains his position that Eyler’s apparatus, with the printed characters is fully capable to include “a pick up item”, for children’s amusement.
As per claim 5, with respect to wherein the plurality of connectible pieces comprises a third connectible piece that represents at least a type of a location piece, wherein the location piece includes an illustrated piece of object for traveling as a plot associated with the third connectible piece, construed as the characters printed upon page 14 (“let’s go to the zoo”) and/or upon page 15 (“let’s go to fun places”) in Fig. 2.
As per claim 6, with respect to wherein the plurality of connectible pieces comprises a third connectible piece that represents at least a type of a portal piece, wherein the portal piece represents a portal for jumping from the one of the plurality of connectible pieces to another portal piece, although Eyler’s is not specific regarding such printed matter upon sheet/s 14 and 15 (i.e., a third connectible piece), as mentioned above, printed matter not accorded much patentability weight as there exists any new and unobvious functional relationship between the printed matter and the substrate. Therefore, 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 to form Eyler’s with such printed matter as claimed for the reason that a skilled artisan would have been motivated as user’s preference to form any desire character for children’s amusements.
As per claim 7, with respect to wherein the plurality of connectible pieces comprises a third connectible piece that represents at least a type of a location piece, wherein the location piece represents a place for visiting in a plot of story, construed as the characters printed upon page 14 (“let’s go to the zoo”) and/or upon page 15 (“let’s go fun places”) in Fig. 2
As per claim 8, with respect to wherein the second connectible piece of the plurality of connectible pieces represents a type of a cul-de-sac piece, wherein the cul-de-sac piece comprises illustration of a dead-end of a path, as mentioned above, printed matter not accorded much patentability weight as there exists any new and unobvious functional relationship between the printed matter and the substrate. Therefore, 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 to form Eyler’s with such printed matter as claimed for the reason that a skilled artisan would have been motivated as user’s preference to form any desire path to allow the actor piece to travel following the path/maze for children’s amusement.
As per claim 9, Eyler discloses wherein the firs path segment represents a multi- way junction of the path (page/sheet 12)(Fig. 2).
As per claim 10, Eyler discloses wherein respective connectible pieces of the plurality of connectible pieces indicate a four- sided shape (rectangular pages/sheets 12-15)(Fig. 2; 2:15+).
As per claim 18, since the claim’s limitations are very similar to claim 1, the examiner states that claim 18 is rejected over Eyler for the same reasons discussed above with respect to claim 1. Since there is no apparent different structural and/or functional limitations of the device of claim 1 and the device of claim 18, it is important to note that such statement by the examiner is not merely to “ignore” the claim’s limitations, rather, the examiner attempts to simplify the above rejection, and not “paste and copy” similar limitations, thus to create unnecessary lengthy Office action.
As per claim 20, with respect to wherein the first path segment of the path on the second connectible piece includes a multi-way junction of the path, as mentioned above, printed matter not accorded much patentability weight as there exists any new and unobvious functional relationship between the printed matter and the substrate. Therefore, 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 to form Eyler’s with such printed matter as claimed for the reason that a skilled artisan would have been motivated as user’s preference to form any desire path to allow the actor piece to travel following the path/maze for children’s amusement.
Claim(s) 2 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eyler as applied to claims 1 and 18 above, and further in view of Eckard et al US 8,764,508 (“Eckard”).
As per claim 2, Eyler is not specific regarding wherein the plurality of connectible pieces includes a sheet with a magnetized surface. However, in the field of toys with connectable pieces, Eckard discloses wherein a plurality of connectible pieces includes a sheet with a magnetized surface (such as sheets 100 and sheets 110)(Figs. 1-2 and 4:43-5:55). Therefore, 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 to form Eyler’s wherein the plurality of connectible pieces includes a sheet with a magnetized surface as taught by Eckard for the reason that a skilled artisan would have been motivated by Eckard’s suggestions to use magnetic material while forming a toy with connectible sheets to be combine together side-by-side (Fig. 2; 5:30-33).
As per claim 19, with respect and wherein the plurality of connectible pieces further comprises a third connectible piece representing at least a type of: a start point piece or an end point piece, wherein the start point piece represents a starting point of the path, and wherein the end point piece represents a final terminal point of the path (construed as page 14 (e.g., a starting point) and page 15 (e.g., an end point)(Fig. 2) of Eyler), or a location piece, wherein the location piece represents a place for visiting at least in the plot of the story (construed as the characters printed upon page 14 (“let’s go to the zoo”) and/or upon page 15 (“let’s go to fun places”) in Fig. 2 of Eyler).
Eyler is not specific wherein the plurality of connectible pieces includes a sheet with a magnetized surface. However, Eckard discloses wherein a plurality of connectible pieces includes a sheet with a magnetized surface (such as sheets 100 and sheets 110)(Figs. 1-2 and 4:43-5:55). Therefore, 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 to form Eyler’s wherein the plurality of connectible pieces includes a sheet with a magnetized surface as taught by Eckard for the same reasons discussed above with respect to claim 2.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-10 and 18-20 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
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.
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/A.A.K/Examiner, Art Unit 3711 10/15/2025 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711