DETAILED ACTION
Examiner’s Remarks
Regarding the amendment filed 11/26/2025:
The amendments to claims 1, 4, 15, 19 and 20 are acknowledged and accepted.
The addition of new claim 21 is acknowledged and accepted.
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 .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/26/2025 has been entered.
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 gaming chip having both “a body member that is injection molded to enclose the enclosing member” and “an intermediate member interposed between the enclosing member and the decal member” must be shown or the feature(s) canceled from the claim(s). 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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-18 and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 1, the claim recites “a body member that is injection molded to enclose the enclosing member” and “the gaming chip comprises an intermediate member interposed between the enclosing member and the decal member”. The specification does not appear to describe an intermediate member (no recitation of an intermediate member in the specification), and thus does not appear to describe the chip having both “a body member that is injection molded to enclose the enclosing member” and “intermediate member interposed between the enclosing member and the decal member”. Additionally, since the claim language appears to indicate that these are two separate members, the specification does not appear to describe these two members, nor an interpretation of an intermediate member between the enclosing member and the body member (it appears the claim would be implying an intermediate member is between the enclosing member and the body member since the body member encloses the enclosing member, and the intermediate member is external to the enclosing member). As such, this limitation is considered new matter.
Claims not specifically addressed fail to comply with the written description requirement due to their dependency.
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, 4-18, 20 and 21 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.
Claim 1 recites” a body member that is injection molded to enclose the enclosing member” and “the gaming chip comprises an intermediate member interposed between the enclosing member and the decal member”. It is unclear how the body member and the intermediate member are related with respect to each other. More specifically, it is unclear how the intermediate member is structurally related to the body member since both are related to the enclosing member. For example, is the intermediate member inside the body member (between a surface of the enclosing member and a surface of the body member) since the body member encloses the enclosing member? Please clarify.
Claim 20 recites “an enclosing member having a predetermined shape that encloses the RFID tag” and “a first part and a second part are combined to form a hollow enclosure, the RFID tag is disposed within the hollow enclosure formed by the first part and the second part”. It is unclear if the enclosing member is the same as, or different than, the hollow enclosure. It is not clear how the enclosing member relates to the hollow enclosure, or if it does at all, since both the enclosing member and the hollow enclosure enclose the RFID tag. Please clarify. For examination purposes, the claim language will be interpreted as “an enclosing member having a predetermined shape that encloses the RFID tag...the enclosing member consists of a first part and a second part, wherein the first part and the second part are combined to form a hollow enclosure, the RFID tag is disposed within the hollow enclosure formed by the first part and the second part” (similar to claim language of claim 1).
Claims not specifically addressed are indefinite due to their dependency.
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.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (KR 20150138481) (see machine translation) in view of Jeon (US 2008/0210761) and Shigeta (US 2018/0336757).
With respect to claim 19, Park et al. discloses a method for manufacturing a gaming chip comprising:
a first process of applying a radio frequency identification (RFID) tag to a first part (100) wherein the first part has a flat surface (pg. 4 of translation; Fig. 5);
a second process of covering the first part having the RFID tag with a second part (300) to construct a hollow enclosing member that encloses the sticker-type RFID tag (RFID tag is in a groove in plate 100 and is covered with lid 300, and Fig. 5 illustrates there is a gap with respect to the groove and the lid that covers it, thus considered to form a hollow enclosing member) (pg. 4 of translation; Fig. 5);
a third process of constructing a main body (400) that encloses the hollow enclosing member that encloses the RFID tag by using the hollow enclosing member as an insert part and performing insert molding, wherein the hollow enclosing member that encloses the RFID tag is located in a central portion of the gaming chip (pg. 5 of translation; Fig. 5); and
a fourth process of attaching a decal member (410) to the main body or the hollow enclosing member, wherein an entire surface of the hollow enclosing member is covered by the main body or by the main body and the decal member (pg. 5 of translation; Fig. 5).
Park et al. fails to expressly disclose the radio frequency identification (RFID) tag is a sticker-type RFID tag comprising a film that has an adhesive surface, and adhering the sticker-type radio frequency identification (RFID) tag to flat surface of the first part; and information to identify the RFID tag is indicated on a surface of the hollow enclosing member.
Jeon teaches it is well known in the art for an RFID label to include a film that has an adhesive surface (e.g. two-sided tape) and to adhere the RFID tag to a flat surface of a depression in a disc of a token coin via the adhesive surface of the RFID label ([0051], [0052]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the RFID tag to be a sticker-type RFID tag that comprises a film that has an adhesive surface, and to adhere the sticker-type radio frequency identification (RFID) tag to flat surface of the first part, in order to allow the RFID tag to be affixed to the groove of the plate of the hollow enclosure to prevent movement of the RFID tag within the groove, and thereby preventing the RFID tag from making noise due to movement.
The combined teachings of Park et al. and Jeon disclose the invention set forth above, however they fail to expressly disclose information to identify the RFID tag is indicated on a surface of the hollow enclosing member.
Shigeta teaches it is well known in the art for a gaming chip to have information to identify a RFID tag is indicated on a surface of the chip (code information is on a surface of the chip, and the code information is the same information as information of an RFID tag in the chip) ([0063]-[0073], [0093], [0094]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try to include information to identify the RFID tag is indicated on a surface of the hollow enclosing member, in order to be used to determine if the gaming chip is genuine during an inspection (information on a surface of a genuine gaming chip will be the same as information from the RFID tag), as taught by Shigeta ([0093], [0094]).
Allowable Subject Matter
Claim 20, based on the interpretation described in the 112(b) rejection above, would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 20, based on the interpretation described in the 112(b) rejection, prior art fails to teach or reasonably suggest, either singly or in combination, a body member that is injection-molded to enclose the enclosing member enclosing the RFID tag and an entire surface of the enclosing member is covered by the body member or by the body member and the decal member, in addition to the other limitations of the claim.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4-18 and 21 have been considered but are moot in view of new grounds of rejection in view of the amendment to claim 1 (i.e. the gaming chip further comprises an intermediate member interposed between the enclosing member and the decal member).
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
With respect to claim 19, Park is considered to teach the new limitation “the hollow enclosing member that encloses the RFID tag is located in a central portion of the gaming chip”. More specifically Park illustrates in Fig. 5 the hollow enclosing member (plate with groove in plate 100 and cover 300) is located in a central portion of the gaming chip. Furthermore, even if the applicant disagrees with respect to the hollow enclosing member being located in a central portion with respect to a length of the gaming chip, Fig. 5 illustrates the hollow enclosing member is located in a central portion with respect to a thickness of the gaming chip. Therefore, the applicant’s argument is not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chapet (US 2007/0278314) discloses a gaming chip having an enclosing member having a first part (41) and a second part (43) that are combined to form a hollow enclosure, a RFID tag (27, 28) is disposed within the hollow enclosure formed by the first part and the second part, and the first part includes a first convex portion, the second part includes a second convex portion, and a portion of the RFID tag is sandwiched between the first convex portion and the second convex portion ([0055], [0058], Fig. 3). Chapet does not teach a body member that is injection-molded to enclose the enclosing member enclosing the RFID tag and an entire surface of the enclosing member is covered by the body member or by the body member and the decal member.
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/SUEZU ELLIS/Primary Examiner, Art Unit 2876