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 .
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.
Claim(s) 1 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Norpoth (US 1,230,317).
Re claim 1, Norpoth discloses a set of playing cards comprising: base cards and augmentation cards (figs. 1-3). Each base card has an image (p), value (a), base description (e.g. “HOME RUN”), and other various printings. The augmentation cards are similar, containing names, descriptions, and other printed values similar to the base cards. While the cards do not contain the exact same markings, these elements are considered nonfunctional descriptive material in the form of printed matter. As discussed in the MPEP § 2111.05, where a product merely serves as a support for printed matter, no functional relationship exists. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product.
Another example in which a product merely serves as a support would occur for a deck of playing cards having images on each card. See In re Bryan, 323 Fed. App'x 898 (Fed. Cir. 2009) (unpublished). In Bryan the applicant asserted that the printed matter allowed the cards to be "collected, traded, and drawn"; "identify and distinguish one deck of cards from another"; and "enable[] the card to be traded and blind drawn". However, the court found that these functions do not pertain to the structure of the apparatus and were instead drawn to the method or process of playing a game. See also Ex parte Gwinn, 112 USPQ 439, 446-47 (Bd. Pat. App. & Int. 1955), in which the invention was directed to a set of dice by means of which a game may be played. The claims differed from the prior art solely by the printed matter in the dice. The claims were properly rejected on prior art because there was no new feature of physical structure and no new relation of printed matter to physical structure.
As such, because the claimed invention is wholly directed to playing cards with printed matter, it would have been obvious to produce a set of playing cards as taught by Norpoth due to also being directed to playing cards entirely capable of supporting the printed matter (i.e. the substrate of the cards of Norpoth could instead have the designs and details of the claimed invention without changing the cards’ physical structure).
Re claims 8-13, see the rejection to claim 1. As Norpoth teaches cards with printed elements, the cards teach the claimed limitations as the claims are merely directed to printed matter. Norpoth teaches a game winner being related to points scored (p. 2, ll. 45-57).
Claim(s) 2-7 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Norpoth in view of Yu (US 2011/0084451).
Re claim 2, Norpoth does not explicitly disclose the total number of cards combined being one hundred and twenty. Yu teaches a card game wherein each deck of cards contains one hundred and twenty game cards (par. [0017]). It would have been obvious to include as many cards as necessary in the deck of cards for the game in order to provide a suitable number of cards for whatever game needs to be played using the cards.
Re claims 3-7, see the rejection to claim 1. As Norpoth teaches cards with printed elements, the cards teach the claimed limitations as the claims are merely directed to printed matter.
Re claims 14-15, as Norpoth and Yu have taught decks of cards of varying sizes, creating decks of any size would have been obvious to one of ordinary skill as it would be a matter of design choice, with different deck sizes leading to the predictable result of a larger or smaller deck.
Response to Arguments
Applicant's arguments filed 9/25/25 have been fully considered but they are not persuasive. In response to applicant's argument that the system creates “broader applicability beyond sports and encompassing generalized mechanics adaptable to fantasy, science, or educational contexts,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Furthermore, Applicant argues that the augmentations cards modify or enhance the values of base cards, with which the Examiner does not disagree. However, Applicant argues that these changes are functional and establishes patentable differences in structure, which is false. Regardless of whatever the augmentation cards are designed to do, all of their differences when compared to any other cards, whether in the same deck of the invention or the prior art, would be in the nonfunctional descriptive material. In other words, any text, images, or other decorations could be printed on the card, but nothing would change the fact that the substrate is still simply a card with indicia.
Conclusion
THIS ACTION IS MADE FINAL. 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 Kevin Y Kim whose telephone number is (571)270-3215. The examiner can normally be reached Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN Y KIM/Primary Examiner, Art Unit 3715