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 .
This action is in response to applicant’s remarks and amendments dated 10/17/2025. Claims 1, 5, 6, 7, 10, 11, 14, 15, 16, 17, and 18 have been amended. Claim 20 was previously withdrawn. Claims 1-20 are currently pending.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 line 3 recites “upon which of the.” Presumably this was intended to recite “upon which the.” Appropriate correction is required.
Claim 3 now recites the same subject matter that was added to claim 1, which now appears to be duplicate subject matter. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: Claim 10 line 2 recites “for filing for filing,” which appears to be a duplicate / type. Appropriate correction is required.
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 1-19 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.
The steps of claims 1 and 11 are now unclear. Claims 1 and 11 line 2 recite “accessing an online form for at least two players to access and execute,” and then the end of each of these claims recites “uploading at least one created pitch online.” However, the remainder of the method appears to be a game played with physical elements. Therefore, it is unclear what these online steps are intended to be, and how they tie into the physical game. It is unclear what the “access and execute” step is intended to be. Does this step somehow work within the game? What is being executed? Is the step of uploading a pitch related to this “form”? Is the pitch put into the form? It is unclear why a player would access an online form, when this form is not used anywhere within the method steps. There is also nothing tied to the “execute” step. These steps are currently unclear and indefinite. 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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1-19 are directed to an idea in the form of rules for playing a game. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a board / cards / indicia on the cards do not add a meaningful limitation to the abstract idea because they are routine in any card game and are also routine in most board games. These claims are essentially an abstract idea in the form of rules for participating in/playing a game.
Claims 1-19 recite accessing an online form, providing a board, providing cards, creating a pitch, uploading a pitch, and determining a winner. These steps describe the concept of steps and rules for playing/participating in a game. This is similar to the concepts held to be abstract by the courts in In re Brown, 645 Fed. Appx. 1014 (Fed Cir. 2016). Non-precedential with opinion. In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016), and In re Webb, 609 Fed. Appx. 643 (Fed. Cir. 2015), where steps for performing a task and steps for playing a game were held to be patent ineligible.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The additional elements of a board, cards with indica, and the internet are recited at a high level of generality and perform generic functions. Thus, taken alone, the additional elements do not amount to significantly more than the above identified judicial exception (the abstract idea). Looking at the additional elements in an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is nothing particular to the board, the cards, the internet, how they interact, or that makes them specific to this method. They are simply conventional board game and word / indicia card elements along with a general recitation of the internet which is also conventional.
The dependent claims add no additional elements not already in the independent claims. The dependent claims simply add further abstract steps in the form of players performing further game steps, various additional indicia, and a board with tokens, which are also conventional board game components. The claims, as a whole, are directed to the abstract concept of rules for participating in/playing a game. These abstract concepts are not patent eligible.
Drawings
Photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color / that is a photograph. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(1)/(b)(2). Black and white line drawings are typically required.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ernest 2011 (The Big Idea Rulebook) in view of Ernest 2000 (“Cheapass Games Presents: The Big Idea”), Ryan et al. (US Patent No. 5,005,839), Raj (US PGPub. No. 2016/0166923 A1), and Aaltonen et al. (US PGPub. No. 2019/0199733 A1)
In Reference to Claims 1-3, 5, and 6
Ernest 2011 teaches (Claim 1) A method for playing an entrepreneurial game comprising: [] providing cards with at least three different types of cards (Item, Description, and Vote cards, under “Content” heading), wherein a first type of the three different types of cards indicates a product (Item cards), wherein a second type of the three different types of cards indicates an asset (Vote cards), wherein a third type of the three different types of cards indicates a modifier (Description cards); distributing the cards to the at least two players (under “Getting Started”), wherein each of the at least two players receives at least one of the first type of the three different types of cards and at least one of the third type of the three different types of cards (under “Getting Started”); wherein each of the at least two players creates a pitch using the [cards] (under “Creating Inventions” and “Presenting inventions”); []; determining a winner using created pitches of the at least two players (under “Votes and Rewards,” and “End of Game”).
(Claim 2) further comprising accumulating more than one of the second type of the three different cards to acquire a predetermined number of points (under “Votes and Rewards” and “End of Game,” note predetermined number of points is broad, the “most points at the end of the game” could be could be considered the “predetermined number”).
(Claim 6) further comprising instituting a challenge process by at least one of the two players (under “Votes and Rewards,” players voting can be considered a challenge process, note this is broad).
Ernest 2011 fails to teach specifically using at least one product and one modifier card, the internet steps claimed, and providing a board of claim 1.
Earnest 2000 teaches (Claim 1) using the at least one of the first type of the three different types of cards and at least one of the third type of the three different types of cards (under “Phase One, Seed”);
Raj teaches (Claim 1) accessing an online form for at least two players to access and execute (paragraphs 0023 and 0024);
Aaltonen teaches (Claim 1) uploading at least one created pitch online (paragraph 0219);
Ryan teaches (Claim 1) providing a board upon which of the at least two players move tokens (items 10 and 32, fig’s 1 and 2 and column 3 lines 26-32);
(Claim 3) further comprising a board upon which the at least two players move tokens (items 10 and 32, fig’s 1 and 2 and column 3 lines 26-32);
(Claim 5) wherein the board comprises concentric circles of areas (fig. 1).
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 game of Ernest 2011 include using at least one of both types of cards as taught by the game of Ernest 2000 for the purpose of ensuring a more unique product, making the game more interesting and attractive to the users. Further, the examiner notes that using any variety of numbers of cards to make up the product are obvious variants based on the art, and is not a patentable distinction. See Ernest 2000, “Variant.”
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Ernest with the feature of accessing the internet as taught by the game of Raj for the purpose of providing a quick way to obtain more game information as well as for providing a wider range of game information as taught by Raj (paragraph 0010) making the game easier to use, more comprehensive, and more attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of Ernest with the feature of uploading a pitch online as taught by the method of Aaltonen for the purpose of adding an easy and safe way to file for intellectual property rights to the method as taught by Aaltonen (background), making the method more comprehensive, and more interesting and attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Ernest with the feature of a board and tokens as taught by the game of Ryan for the purpose of both adding a more visual indicator of movement / scoring, as well as adding additional elements of chance into the game, making the game more visually appealing as well as more complex and interesting to the users.
In Reference to Claim 4
The modified game of Ernest 2011 teaches all of claim 1 as discussed above.
Ernest 2011 fails to teach the fate cards of claim 4.
Ryan teaches (Claim 4) further comprising a fourth type of card, wherein the fourth type of card indicates a fate (fig. 3, item 30, column 2 line 66 – column 3 line 3 could be considered a “fate” card).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Ernest with the feature of additional cards as taught by the game of Ryan for the purpose of both adding additional elements of chance into the game, making the game more complex and interesting to the users.
In Reference to Claim 7
The modified device of Ernest teaches all of claims 1 and 5 as discussed above.
Ernest fails to teach the feature of claim 7.
Raj teaches (Claim 7) searching online to see if a[n answer is correct] (paragraph 0023).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Ernest with the feature of checking answers on the internet as taught by the game of Raj for the purpose of providing an objective standard by which to judge the game, making the game fair, and more attractive to the users.
Further, the examiner notes that it has been held that nonfunctional descriptive material that is not non-obviously functionally related to a physical substrate is owed no patentable weight. 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); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The content of the answers and the specific types of answers being looked up are not patentable distinctions.
In Reference to Claims 8 and 9
The modified game of Ernest 2011 teaches all of claim 1 as discussed above.
Ernest further teaches (Claim 8) wherein the first type of the three different types of cards indicates a product selected from a group comprising [] products (Item cards).
(Claim 9) wherein the first type of the three different types of cards indicates a product selected from a group comprising [] products (Item cards).
Ernest fails to teach the specific types of products claimed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific types of product cards claimed simply as a matter of engineering design choice, since, it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. 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); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 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 playing card 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. kitchen / Christmas indicia and the substrate e.g. playing card, which is required for patentability.
In Reference to Claim 10
The modified game of Ernest 2011 teaches all of claim 1 as discussed above.
Ernest 2011 fails to teach the feature of claim 10.
Aaltonen teaches (Claim 10) wherein uploading at least one created pitch online comprises placing the at least one created pitch into a form for filing for filing (paragraph 0219 and 0224).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of Ernest with the feature of uploading to a service adapted to file for intellectual property as taught by the method of Aaltonen for the purpose of adding an easy and safe way to file for intellectual property rights to the method as taught by Aaltonen (background), making the method more comprehensive, and more interesting and attractive to the users.
Claims 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ernest 2011 (The Big Idea Rulebook) in view of Ryan et al. (US Patent No. 5,005,839), Raj (US PGPub. No. 2016/0166923 A1), and Aaltonen et al. (US PGPub. No. 2019/0199733 A1).
In Reference to Claims 11-15 and 17
Ernest 2011 teaches (Claim 11) A method for playing a game comprising:[]; []; providing a plurality of cards, wherein the plurality of cards has a plurality of product cards and a plurality of modifier cards (Item, Description, and Vote cards, under “Content” heading), wherein at least some of the plurality of product cards lists a type of product (Item cards), wherein at least some of the plurality of modifier cards lists adjectives (Description cards); distributing some of the plurality of cards to the plurality of players (under “Getting Started”), wherein each of the plurality of players receives at least one product card and at least one modifier card (under “Getting Started”); wherein each of the plurality of players creates a pitch using distributed cards (under “Creating Inventions” and “Presenting Inventions); using created pitches to determine which of the plurality of players wins the game (under “Votes and Rewards” and “End of Game”) [];
(Claim 12) wherein the plurality of cards further comprises a plurality of asset cards (Vote cards, under “Content”);
(Claim 13) wherein a round of the game ends when a predetermined number of points is obtained through the acquisition of some of the plurality of asset cards (under “Votes and Rewards” and “End of Game,” note predetermined number of points is broad, the “most points at the end of the game” could be could be considered the “predetermined number”);
(Claim 15) wherein at least some of the plurality of cards comprise an aural component (this is extremely broad, simply reading a card would provide an aural component, any content could be considered aural).
(Claim 17) further comprising instituting a challenge process by at least one of the plurality of players (under “Votes and Rewards,” players voting can be considered a challenge process, note this is broad).
Ernest 2011 fails to teach the internet steps and a board of claim 11.
Raj teaches (Claim 11) accessing an online form for at least two players to access and execute (paragraphs 0023 and 0024);
Aaltonen teaches (Claim 11) uploading at least one created pitch online (paragraph 0219)
Ryan teaches (Claim 11) providing a board upon which the plurality of players move tokens (items 10 and 32, fig’s 1 and 2 and column 3 lines 26-32);
(Claim 14) wherein the board comprises concentric circles of areas (item 10, fig. 1, fig. 9, paragraphs 0041 and 0044).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Ernest with the feature of accessing the internet as taught by the game of Raj for the purpose of providing a quick way to obtain more game information as well as for providing a wider range of game information as taught by Raj (paragraph 0010) making the game easier to use, more comprehensive, and more attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of Ernest with the feature of uploading a pitch online as taught by the method of Aaltonen for the purpose of adding an easy and safe way to file for intellectual property rights to the method as taught by Aaltonen (background), making the method more comprehensive, and more interesting and attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Ernest with the feature of a board and tokens as taught by the game of Ryan for the purpose of both adding a more visual indicator of movement / scoring, as well as adding additional elements of chance into the game, making the game more visually appealing as well as more complex and interesting to the users.
In Reference to Claim 16
Ernest 2011 teaches all of claim 11 as discussed above.
Ernest 2011 fails to teach the feature of claim 16.
Raj teaches (Claim 16) further comprising searching online to determine if the at least one [answer] is valid (paragraph 0023).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Ernest with the feature of checking answers on the internet as taught by the game of Raj for the purpose of providing an objective standard by which to judge the game, making the game fair, and more attractive to the users.
Further, the examiner notes that it has been held that nonfunctional descriptive material that is not non-obviously functionally related to a physical substrate is owed no patentable weight. 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); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The content of the answers and the specific types of answers being looked up are not patentable distinctions.
In Reference to Claim 18
Ernest 2011 teaches all of claim 11 as discussed above.
Ernest 2011 fails to teach the feature of claim 18.
Raj teaches (Claim 18) determining if a[n answer is correct] online (paragraph 0023).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Ernest with the feature of checking answers on the internet as taught by the game of Raj for the purpose of providing an objective standard by which to judge the game, making the game fair, and more attractive to the users.
Further, the examiner notes that it has been held that nonfunctional descriptive material that is not non-obviously functionally related to a physical substrate is owed no patentable weight. 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); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The content of the answers and the specific types of answers being looked up are not patentable distinctions.
In Reference to Claim 19
Ernest 2011 teaches all of claim 11 as discussed above.
Ernest 2011 further teaches (Claim 19) wherein at least some of the plurality of product cards indicate a product selected from a group comprising [] products (Item cards).
Ernest fails to teach the specific types of products claimed.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific types of product cards claimed simply as a matter of engineering design choice, since, it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. 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); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 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 playing card 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. kitchen indicia and the substrate e.g. playing card, which is required for patentability.
Response to Arguments
Applicant's arguments filed 10/17/2025 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the outstanding 101 rejection are not persuasive.
Applicant specifically argues that since applicant has provided a “new and original deck of cards,” the claims provide significant additional elements that overcome the judicial exception of the abstract idea, in the form of rules for playing a game.
This is not found persuasive since the cards claimed are simply word cards, which are generic to a variety of games. Cards containing a variety of words / indicia, in this case within categories of “products,” “assets,” and “modifiers” are not the type of significant additional elements required to overcome a 101 rejection. Word cards are generic to a variety of games, therefore, the word cards claimed do not overcome the rejection.
Further, this argument is also indirectly tied to the content of the cards, i.e. the indicia, which is not a unique physical element. The examiner notes that it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. 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); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 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 playing card 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. word / category indicia and the substrate e.g. playing card, which is required for patentability. Applicant appears to be attempting to argue that the content of indicia on cards provides significant structure which would overcome the 101 rejection, however, this content is simply nonstructural indicia, which is not significant. There is no physical structure claimed to the cards that would make them a significantly “new and original” deck of cards.
Applicant’s argument regarding the 102 rejection is noted, but is moot in view of the new grounds of rejection necessitated by the amendments.
Applicant’s arguments regarding the previous 103 rejections are noted, but are moot in view of the new grounds of rejection necessitated by the amendments.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711