DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 10/20/25. Claims 1-13 are cancelled; claims 14, 17-18 and 21 are amended; claims 14-21 are pending.
Claim Rejections - 35 USC § 101
2. 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.
3. Claims 14-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a set of rules to conduct a method of playing a game. Specifically, the rules comprise “playing” rules with specific movement and capture rules (i.e. “movable one space at a time”, “can capture any piece”, providing “denominated” nomenclature), which is grouped under: 1) Certain Methods of Organizing Human Activity, subgroup ‘Managing Personal Behavior or Relationships or Interactions between People’, including following rules or instructions - MPEP 2106.04(a)(2)(II)C; and/or 2) Fundamental Economic Practices or Principles, including rules for conducting a wagering game –MPEP 2106.04(a)(2)(II)A.
4. This judicial exception is not integrated into a practical application. Under Step 2A: Prong Two, additional limitation(s) or a combination of additional elements are evaluated to determine if those elements integrate the judicial exception into a practical application of the exception. MPEP 2106.04(d).
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a);
Applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g); and
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Here, the Abstract idea (i.e. judicial exception) is not integrated into a practical application because the rules to the game are applied using general gaming technology as opposed to a particular machine. There is no improvement to any functioning of computer technology. No transformation or reduction of a particular article occurs. The rules are generally linked to gaming technology elements. Regarding the game spaces, such limitations are directed to printed matter on the surface of the playing surface. Printed matter generally falls outside the scope of patent-eligible subject matter under § 101. See In re Marco Guldenaar Holding B.V., 911 F.3d at 1157, 1160, and 1161 (Fed. Circ. 2018). The PTAB, in Ex parte Snow (Appeal 2017-001891) affirmed the examiner’s position that the card table indicia does not transform the abstract idea of a set of rules to a game into patent eligible subject matter (See pages 13-14). Similarly in Ex parte Tang (Appeal No. 2017-009438), the PTAB held that the game markings merely represent wagering game rules and indicate where cards and tokens should be placed, and does not find them to provide “an advance in gaming technology” (See page 8). “Such printed matter on an otherwise generic gaming table used to play a wagering game with standard game cards and wagering elements does not impose a meaningful limitation on the abstract idea recited in claim 1 to integrate those abstract ideas into a practical application.” Id.
With respect to the claimed five additional game pieces, examiner considers the specific “appearance” of the additional limitations (i.e. “winged dragon”, “two-legged beast”, “humanoid wizard”, “giant humanoid” and “humanoid warrior”) to be directed towards ornamentations, and is considered insignificant extra-solution activity that is merely incidental to the primary game. Examiner emphasizes that weight is being given to additional game pieces with distinguishing physical characteristics, as this feature is necessary for players to visually distinguish game pieces and execute the game. However, the specific ornamentation or “appearance” of the “additional” game pieces is not significant to the game. The appearance is merely an extension of a game theme. There are numerous other “appearance” designs that could be substituted for the claimed appearance without fundamentally changing game play.
5. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered separately and in ordered combination, and within the context and character of the claims as a whole, the claimed additional elements (listed below) are conventional and widely prevalent in the gaming art. MPEP 2106.05 – “Eligibility Step 2B: Whether a Claim Amounts to Significantly More”. The claimed additional elements other than the limitations pertaining to the abstract idea include:
- game board, “standard” chess pieces (i.e., King, Queen, pawns, bishops, knights, rooks), and five “additional” game pieces having distinguishing appearances.
The question of whether certain claim limitations represent well-understood, routine and conventional is a question of fact. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Circ. 2018). In view of the references of the record, there is ample factually supported evidence that these additional limitations are conventional and widely prevalent in the gaming art, most notably in traditional “Checkers” and “Chess”. See also applicant’s Specification at page 1, lines 13-26. See also Gardner (US Pub. No. 2012/0326389) at paragraph [0003]; Ryff (US Pat. No. 6,382,626) at column 1; Latham (US Pub. No. 2016/0236072) at paragraph [0005]; Thomas (US Pub. No. 2015/0174495) at paragraph [0003], Spurgeon (US Pub. No. 2015/0157946) at paragraphs [0005]-[0014]; Rusha (US Pub. No. 2014/0333023) at paragraphs [0001]-[0003]; Fisher (US Pub. No. 2014/0203506) at paragraphs [0005]-[0009]); “Four Handed Chess by Capt. George Hope Verney”, published at https://www.chessvariants.com/books.dir/4handed/index.html by Hans Bodlaender on 9/25/1999; “Four-player chess” Wikipedia page published at https://en.wikipedia.org/wiki/Four-player_chess.
With respect to the claimed five additional game pieces, the prior art is replete with game board figurines or miniatures with physically distinguishable features. For example, Monopoly and Dungeons and Dragons – See Borne et al. (US Pub. No. 2006/0033273) at paragraph [0003], Hersey (US Pat. No. 3,902,724) at column 1, lines 14-33; Darrow (US Pat. 2,026,082) at Fig. 2; Thornton (U Pat. No. 4,397,467) at column 2, lines 19-24; and Kost (US Pub. No. 2003/0141662) at paragraph [0002]. Examiner considers the specific “appearance” of the additional limitations (i.e. “winged dragon”, “two-legged beast”, “humanoid wizard”, “giant humanoid” and “humanoid warrior”) to be directed towards ornamentations, and is considered insignificant extra-solution activity that is merely incidental to the primary game. Examiner emphasizes that weight is being given to additional game pieces with distinguishing physical characteristics, as this feature is necessary for players to easily distinguish game pieces and execute the game. This is a conventional feature of games – monopoly, dungeons and dragons. However, the specific ornamentation or “appearance” of the “additional” game pieces is not significant to the game. The appearance is merely an extension of a game theme. There are numerous other “appearance” designs that could be substituted for the claimed appearance without fundamentally changing game play.
Additionally, and regarding the printed matter (spaces) under step 2b analysis, the examiner reiterates the reasoning from above in step 2A, Prong Two. From Ex parte Tang:
“the fact that the gaming table may include a physical layout design (printed matter) that merely reflects the abstract rules of the wagering game does not provide an inventive concept. See Appeal Br. 21. The design merely reflects the abstract wagering game rules in much the same way as a generic computer may implement abstract ideas without providing an inventive concept to transform the abstract ideas into a patent eligible application. See Alice, 573 U.S. at 223 (holding that the “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention” merely by stating an abstract idea and adding the words “apply it” on a computer); see Smith, 815 F.3d at 819. Appellant presents no evidence that printed matter markings on an otherwise generic gaming table represents a technological advance in the gaming arts or that it facilitates a non-abstract process or even a wagering game beyond the obvious abstract idea of merely organizing human activity and personal interactions between people using wagering items and game cards by indicating the locations for these standard items on a game table. We are not persuaded that printed indicia relating to wagering game rules on a game table surface represents an innovation in the gaming industry” Appeal No. 2017-009438 at page 11
Response to Arguments
6. Applicant's arguments filed 10/20/25 have been fully considered but they are not persuasive.
Applicant argues the present claims should also be considered to comport with 35 USC 101 because of the “distinct appearance and denomination” of the additional game pieces. Examiner respectfully disagrees. First, a “denomination” of a game piece is an abstract limitation, and not pertinent to Step 2A, prong ii or Step 2B. Secondly, the prior art is replete with game board figurines or miniatures with physically distinguishable features. For example, Monopoly and Dungeons and Dragons – See Borne et al. (US Pub. No. 2006/0033273) at paragraph [0003], Hersey (US Pat. No. 3,902,724) at column 1, lines 14-33; Darrow (US Pat. 2,026,082) at Fig. 2; Thornton (U Pat. No. 4,397,467) at column 2, lines 19-24; and Kost (US Pub. No. 2003/0141662) at paragraph [0002]. Examiner considers the specific “appearance” of the additional limitations (i.e. “winged dragon”, “two-legged beast”, “humanoid wizard”, “giant humanoid” and “humanoid warrior”) to be directed towards ornamentations, and is considered insignificant extra-solution activity that is merely incidental to the primary game. Examiner emphasizes that weight is being given to additional game pieces with distinguishing physical characteristics, as this feature is necessary for players to easily distinguish game pieces and execute the game. This is a conventional feature of games – monopoly, dungeons and dragons. However, the specific ornamentation or “appearance” of the “additional” game pieces is not significant to the game. The appearance is merely an extension of a game theme. There are numerous other “appearance” designs that could be substituted for the claimed appearance without fundamentally changing game play. Lastly, and as applicant recognizes, In re Smith is not binding. Examiner is unaware of any caselaw that transforms an Abstract idea into an inventive concept based on the use of non-traditional game piece appearances.
Conclusion
7. 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