DETAILED ACTION
Election/Restrictions
1. Applicant's election with traverse of Invention I (claims 1-9, 11-14) in the reply filed on 2/3/26 is acknowledged. No arguments are presented, and claim 10 has been cancelled. The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
2. Claim 13 is objected to because of the following informalities: “said circumferential grooves” should be amended to “said multiple circumferential grooves”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
3. 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
4. Claims 1-2, 4, 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Terry (US Pub. No. 2012/0170293).
With respect to claim 1, Terry teaches an elevated movement for TTRPG board game pieces system for placing game pieces at varying elevations above a game board, the elevated movement for TTRPG board game pieces system comprising: (i) at least one elevation unit providing a rod base and a vertical rod; and (ii) at least one platform unit providing a platform clamp (ring clamps shown in Fig. 1) mounted on said vertical rod and a platform adapted to support a game piece (Fig. 1). See MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, Terry teaches wherein the stand is a utility station that stores and uses various accessories and appliances, and thus is considered capable of supporting a game piece.
For the embodiment shown in Fig. 1, Terry does not expressly disclose the clamps to be adapted to be movably mounted on vertical rod 1. However, in reference to Fig. 5, Terry teaches clamps 40 to be movably mounted on vertical rod 1 (paragraph [0062]). A person ordinary skill in the art at time of applicant’s effective filing would have found it obvious to make the clamps movable along the vertical rod. This will permit customization of the platform height suitable to the user’s preference.
With respect to claim 2, Terry teaches in an embodiment wherein the vertical rod comprises an integrated rod (i.e. not made of separable components) (paragraph [0057]). A person ordinary skill in the art would have found it obvious to provide an integrated rod. This will provide durability to the system and convenient assembly of the system.
With respect to claims 4 and 8, Terry teaches at least one additional rod (i.e. additional ring clamp shown in Fig. 1 connecting lamp to vertical rod). Regarding the limitation of a rod marking, such limitations are directed to printed matter. Per MPEP 2111.05, If a new and unobvious functional relationship between the printed matter and the substrate does not exist. USPTO personnel need not give patentable weight to printed matter. 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). Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). The physical configuration of the claimed apparatus in the Gulack invention comprised three key elements: (1) a band, ring, or set of concentric rings; (2) a plurality of individual digits imprinted on the band or ring at regularly spaced intervals; and (3) an algorithm by which the appropriate digits are developed. The court noted that the claims required a particular sequence of digits to be displayed on the outside surface of a band. These digits were functionally related to the band in two ways: (1) the band supports the digits; and (2) there is an endless sequence of digits — each digit residing in a unique position with respect to every other digit in an endless loop. The digits exploit the endless nature of the band, and notably, these features are critical to the invention, thus constituting a functional relationship between the digits and the band. The product performed some function with respect to the printed matter it is associated because the claimed algorithm would not be satisfied without certain physical relationships of the string of numbers. In Miller, the printed indicia on a measuring device for use in fractioning recipes was at issue. Specifically, volumetric indicia on the measuring receptacle indicated volume in a certain ratio to actual volume. This relationship was held to constitute a functional relationship between the indicia and the substrate. The printed matter performs some function with respect to the product to which it is associated. Evidence against a functional relationship exists where a product merely serves as a support for printed matter. See MPEP 2111.05. 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 where 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. For example, a claimed measuring tape having electrical wiring information thereon, or a generically claimed substrate having a picture of a golf ball thereupon, would lack a functional relationship as the claims as a whole are directed towards conveying wiring information (unrelated to the measuring tape) or an aesthetically pleasing image (unrelated to the substrate) to the reader. Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists. For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864. Unlike the fact situations in Miller and Gulack, the substrate (rod surface) does not support the printed indicia and the indicia is not arranged such that it's positioned in a unique functional position with respect to the substrate. Moreover, the rod markings are directed towards conveying an abstract game related meaning to a human reader independent of the supporting product functionality. There is not a new and unobvious functional relationship therebetween. Instead, the rod markings areas are akin to the images on a playing card in In re Bryan and the dice indicia of Ex parte Gwinn, neither of which were determined to establish a new and unobvious functional relationship with the substrate. As such, no patentable weight is given to the claimed printed matter.
With respect to claim 6, Terry expressly teaches in an additional embodiment a base stabilizer (“water or sand”) adapted to provide additional stability for said rod base 4 (paragraph [0059]). A person ordinary skill in the art at time of applicant’s effective filing would have found it obvious to add a base stabilizer to ensure stability to the system.
With respect to claim 7, Terry teaches at least one additional rod mounted to said vertical rod 1 through a rod-to-rod mount (i.e. additional ring clamp shown in Fig. 1 connecting lamp to vertical rod).
5. Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Terry (US Pub. No. 2012/0170293) in view of Jackson et al. (US Pub. No. 2020/0016465).
With respect to claim 3, Terry does not expressly teach a rod mount upon said rod base adapted to mount said vertical rod. However, Jackson teaches this feature to be known in the art – rod mount 15, positioned on base 10, mounting vertical rod 20 (paragraph [0021]-[0022]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a rod mount as taught by Jackson. The rationale to combine is to facilitate attachment of the vertical rod using a known attachment means. As disclosed in Jackson, the rod mount 15 holds rods In an upright position”.
With respect to claim 5, Terry fails to expressly teach a base magnet as claimed. However, analogous art reference Jackson teaches that it is known to facilitate removable connection between a flat base portion and its vertically extending column using a base magnet (paragraph [0022]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a base magnet as taught by Jackson into the stand system of Terry. The rationale to combine is to facilitate removable connection between a planer support base and its column. This will aid in assembly, and promote convenient portability and stowability.
6. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Terry (US Pub. No. 2012/0170293) in view of Bohomoletz (US Des. Pat. No D240,583).
With respect to claim 9, Terry does not expressly teach where said platform of said platform unit further comprises recesses and protrusions adapted to accommodate secure placement of game pieces. However, Bohomoletz teaches this feature to be known in the art (Fig.’s 1-2 showing platforms with recesses and protrusions). At time of applicants’ effective filing, a person ordinary skill in the art would have found it obvious to modify the platform of Terry to include recesses and protrusions as taught by Bohomoletz. The rationale to combine is to provide a platform structure suitable to store a pot type structure. Examiner notes the recesses and protrusions are considered to be adapted to accommodate secure placement of game pieces. First, the recesses and protrusions provide rim type boundary that can physically confine a game place. Moreover, a securing means can be wrapped around the recesses and protrusions to secure the game piece. See MPEP 2114 - In re Schreiber.
7. Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Terry (US Pub. No. 2012/0170293) in view of Baxter (US Pat. No. 5,601,197) and further in view of Appleman (US Pat. No. 5,839,704).
With respect to claims 11 and 13, Terry teaches a multi-full-motion unit for an elevated movement for TTRPG board game pieces system for placing game pieces at varying elevations above a game board, the full-motion unit comprising:(i) a rod 41 adapted to support game pieces (via platform portion at end portion of rod 41 as shown in Fig 5); (ii) a multi-full-motion base having a central column 1.
Terry does not expressly disclose wherein central column 1 has multiple circumferential grooves, or wherein multi-ring clamp 40 has a protruding segment adapted to engage the circumferential grooves as claimed. However, it is known to provide a circumferential groove and annular protrusion mating between cylindrical couplings as evidenced by Baxter – Fig. 9 showing circumferential groove 420 on annular column 400, and corresponding annular protrusion 460 on an inner circumference of ring 450. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to incorporate an annular protrusion on an interior circumference of the clamp and a corresponding circumferential annual groove of the column of Terry. The rationale to combine is set forth in Baxter – to permit rotation therebetween (column 2, lines 48-53). Examiner notes Terry presents multiple ring clamps – Fig. 5. As such, the combination of Terry and Baxter teaches multiple circumferential grooves about column 1 of the base portion. Examiner considers Baxter to be directed to the analogous art of clamping devices. Should applicant traverse this position, examiner also considers Baxter as being reasonably pertinent to the particular problem with which the inventor was concerned, See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992) since the circumferential groove and protrusion in both applicant’s invention and Baxter are used to permit rotation about a column structure.
Terry further teaches wherein the rod 41 can be “hingedly or rotatably attached to” clamp 40 (paragraph [0062]), but fails to teach an adjustable rod mount as claimed. However, Appleman, directed to vertical stands, teaches that it is known to provide (iv) a multi-adjustable rod mount 46 (at joint 34) adapted to mount to an open portion of ring clamp 30 and mountable to a rod portion 40 at its other end (Fig. 2). Appleman further teaches wherein in use the rod mount mounted to the ring clamp 30 when loosened (via screw 36) allows positioning of rod 40, and when tightened (via screw 36) fixes the rod in place (column 6, lines 15-40; See also - MPEP 2114 - In re Schreiber). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add the joint structure 34 of Appleman to the system of Terry. The rationale to combine is to provide vertical pivoting of the rod about the clamp ring and column.
8. Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Terry (US Pub. No. 2012/0170293) in view of Baxter (US Pat. No. 5,601,197) and further in view of Appleman (US Pat. No. 5,839,704) and further in view of Jackson et al. (US Pub. No. 2020/0016465).
With respect to claims 12 and 14, Terry fails to expressly teach a base magnet as claimed. However, analogous art reference Jackson teaches that it is known to facilitate removable connection between a flat base portion and its vertically extending column using a base magnet (paragraph [0022]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a base magnet as taught by Jackson into the stand system of Terry. The rationale to combine is to facilitate removable connection between a planer support base and its column. This will aid in assembly, and promote convenient portability and stowability.
Conclusion
9. 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571) 272 4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711