DETAILED ACTION
In claim 11, line 3, “positioned” should be corrected.
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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the frame engaged with the top surface of the game board (claim 11) must be shown or the feature(s) canceled from the claim(s). Further, the drawings do not show both a support member and a frame as set forth in claim 11. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended”. If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Applicant is advised that should claims 2-10 be found allowable, claims 12-20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 6, 7, 16 and 17 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.
Regarding claims 6, 7, 16 and 17, “home run wall” is recited functionally in claims 6 and 16 but further limited in claims 7 and 17. As such, it is unclear if the home run wall is intended to be a structural limitation of the claims.
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 1-5, 8-15 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2017/0173428 (Wolters) in view of U.S. Patent Application Publication Number 2018/0049547 (Wasserman).
Regarding claims 1-5 and 8-10, Wolters shows a bean bag tossing game or cornhole game with a game board having a plurality of at least twelve differently sized cutouts 2-19. See Wolters, Figure 1; paragraph [0006]. The cutouts are labelled with indicia (e.g., single, home run, sacrifice, etc.) that correspond to the recited consequences. See Wolters, Figure 1.
Although Wolters does not explicitly show two cornhole game boards, Wasserman discloses that cornhole games are known in the art to be played having two game boards positioned at a distance apart from one another. See Wasserman, Figure 1B; paragraph [0005]. Wasserman further discloses that cornhole games are well-known in the art to have support members 30 at one position of the game board to angle the top surface of the game board above a ground surface. See Wasserman, Figure 1B; paragraph [0039]. Therefore, the use of two game boards as well as support members in cornhole games was made part of the ordinary capabilities of one skilled in the art based upon the teaching of Wasserman. Accordingly, one of ordinary skill in the art would have been capable of applying this known improvement technique in the same manner to the prior art cornhole game of Wolters and the results would have been predictable to one of ordinary skill in the art, namely, one skilled in the art would have readily recognized that cornhole games are played with two separate and spaced-apart game boards having an elevated end via a support member.
With further regard to claims 1 and 11, to the extent that Wolters does not explicitly describe an offensive game board and a defensive game board, such limitations are considered to be functional recitations. Functional statements do not define any structure and accordingly cannot serve to distinguish the claims, which are not method claims, from the reference.
With further regard to claims 3 and 5 and the specific indicia/consequences, Wolters discloses the consequences of home run, double play, double, triple, strike, single, flyout, base hit, ground out and ball. See Wolters, Figure 1. The teachings of Wolters as modified above disclose the recited structure and recited printed matter-to-structure relationship and it would have been an obvious matter of design choice to one of ordinary skill in the art to label the cutouts with other baseball consequences such as ground out, stolen base and fielding error or any other well-known baseball occurrences in order to better simulate baseball situations. The claims distinguish over the references only in terms of the meaning attributed to the indicia. Such a distinction, absent a novel functional relationship of printed matter-to-structure or a novel exploitation of printed matter-to-structure is without patentable effect. See In re Miller, 164 USPQ 46, In re Gulack, 217 USPQ 401.
With further regard to claim 11 and insofar as the claim scope can be ascertained, the Wasserman support members 30 correspond to the frame located on the bottom surface of the game board.
Claims 6, 7, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Wolters and Wasserman as applied above in view of U.S. Patent Application Publication Numbers 2012/0193873 (Sindaco) and 2008/0042360 (Veikley).
Regarding claims 6, 7, 16 and 17, Wolters does not show the recited groove or wall. Figure 1 of Sindaco shows another bag tossing game with a wall 34 adjacent to a row of target holes to adjust the difficulty of the game. See Sindaco, paragraph [0013]. It would have been obvious to provide the game board of Wolters with the wall of Sindaco in order to add an element of difficulty when tossing the bean bags toward the target holes. Such a wall is considered to correspond to the recited home run wall as the term “home run” is not considered to provide any structural difference between the claimed invention and the prior art.
Although Sindaco does not explicitly describe a groove, Veikely discloses that bag tossing game boards are well-known in the art to be made from wood. See Veikely, paragraph [0023]. To provide the Wolters game with a wooden wall attached to a wooden game board using a dado or groove would have been obvious to one of ordinary skill in the art, in view of well-known woodworking techniques, since the use of dadoes or grooves to attach wooden components were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention, i.e., one skilled in the art would have recognized that the wooden wall and game board could be attached together using any well-known wood attaching technique such as grooves or dadoes. Further, it would have been an obvious matter of choice to modify the Wolters game as modified above by attaching the wooden wall to the wooden game board using a groove or dado, since applicant has not disclosed that having this specific attachment method solves any stated problem or is for any particular purpose and it appears that the wall would perform equally well with any well-known woodworking attachment technique.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Raleigh Chiu whose telephone number is (571) 272-4408. The examiner can normally be reached on Monday-Tuesday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim, can be reached on (571) 272-4463.
The fax number for the organization where this application or proceeding is assigned is (571) 273-8300.
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It is noted that all practice before the Office is in writing (see 37 C.F.R. § 1.2) and the proper authority for action on any matter in this regard are the statutes (35 U.S.C.), regulations (37 C.F.R.) and the commentary on policy (MPEP). Therefore, no telephone discussion may be controlling or considered authority of Petitioner’s/Caller’s action(s).
/RALEIGH W CHIU/ Primary Examiner, Art Unit 3711