DETAILED ACTION
Claim Objections
1. Claim 1 is objected to because of the following informalities: “and is comprised:”, “a pair of a target receivers cup” appear to be typographical errors. Appropriate correction is required using language as follows: “and is comprised of:” and “a pair of [[a]] target receivers cup”.
Claim 10 is objected to because of the following informalities: “and is comprised:”, “a pair of a target receivers cup”, and “(55” appear to be typographical errors. Appropriate correction is required using language as follows: “and is comprised of:”, “a pair of [[a]] target receivers cup” and “(55)”.
Claim 14 is objected to because of the following informalities: “a firm surfaces” and “(50” appear to be typographical errors. Appropriate correction is required using language as follows: “a firm surface[[s]]”, “a pair of [[a]] target receivers cup” and “(50)”.
Claim Rejections - 35 USC § 112
2. 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 1-20 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 1 and 10, the phrase "preferably" in element (c) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 1 and 10 recite the limitation "the outdoor beach game" in element (c). There is insufficient antecedent basis for this limitation in the claim. It is recommended to amend to "the special outdoor [[beach]] game"
In claims 1 and 10, element (e), the recitation to “an aperture (51A) or equal” is unclear, overly vague, and indefinite. A person ordinary skill in the art cannot properly ascertain the metes and bounds of this phrasing. It is recommended to amend to “an aperture (51A) or [[equal]]opening”.
Claims 2-9 and 11-20 are rejected based on their respective dependency to 1 and 10.
Claims 6-9 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 6 depends from itself, thus rendering its scope unascertainable. For examining purposes, claim 6 will be construed as depending from claim 1. Further, claim 6 recites the limitation "the durable materials”. There is insufficient antecedent basis for this limitation in the claim. It is recommended to amend to "the durable material[[s]]”. Claims 7-9 are rejected based on their dependency to 6.
Claims 14-15 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 14 recites the limitation "the two measuring sticks”. There is insufficient antecedent basis for this limitation in the claim. It is recommended to provide proper antecedent basis. Claim 15 is rejected based on its dependency to 14.
Claim 15 is 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 15 recites the limitation "the alternative measuring device”. There is insufficient antecedent basis for this limitation in the claim. It is recommended to change its dependency to claim 12 to ensure proper antecedent basis.
Claims 17-20 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 17 recites the limitation "the durable materials”. There is insufficient antecedent basis for this limitation in the claim. It is recommended to amend to "the durable material[[s]]”. Claims 18-20 are rejected based on their dependency to 17.
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.
4. Claims 1-13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nuessle (US Pub. No. 2015/0321060) in view of Tsiopanas et al. (US Pub. No. 2013/0017897) and further in view of Chernk (US Pat. No. 5,209,493).
With respect to claims 1-2, 4-5, 10-13, 16, Nuessle teaches a special outdoor game that combines corn hole, bocce ball, and horseshoes as a beach game that is made of a resilient and durable material and is comprised:; (b) two sets of golf balls 12, each set being a different color or marked design and each set consisting of two balls (paragraph [0031]); (c) a pair of target stakes 14, structured as a round stake or tube with a length and diameter configured to be used as a primary target for the game (Fig. 2; paragraph [0027]); (d) a carrying bag or container 50 (Fig. 2); (e) an identification and measurement flag 10; and (f) a card 53 with a front and a back side (inherent), wherein the special outdoor game can be played on a play area with the target receivers 14; and an alternative measuring device 60.
Nuessle does not expressly disclose (a) a pair of a target receiver cups with a depth, height. However, analogous art reference Tsiopanas teaches that it is known to use a pair of target receiver cups with a depth and a height for special outdoor games that utilize golf balls (Fig.’s 2-4; paragraph [0016]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add target receiver cups to the game kit of Nuessle. The rationale to combine is to provide a known target means suitable to receiver balls. This will provide game players the chance to “hole” their golf balls. The proposed modification has a reasonable expectation of success as the primary functionality of the game of Nuessle is not frustrated.
Regarding element, b), and as stated above, Nuessle teaches two sets of golf balls (35), each set being a different color or marked design and each set consisting of four 2 balls, as opposed to four. However, the number of balls provided for each player has not been set forth as critical by applicant and is considered an obvious game design choice. A person ordinary skill in the art would have found it obvious to select a number of balls for each player based on the desired game duration and number of players/teams. By using two sets of four balls, as opposed to two, the player will have additional attempts each turn, adding to the duration of the game.
Nuessle teaches wherein the (e) identification and measurement flag (51) is positioned on the upper part of the pole/stakes, but does disclose how the flag attached thereto, thus failing to teach wherein the flag comprises an aperture (51A) or equal. However, analogous art reference Chernek teaches that it is known to provide a flag 4 with an aperture 42. A person ordinary skill in the art would have found it obvious to add an aperture to the flags of Nueesle (Fig.’s 1, 3; column 2). As Chernek teaches, the apertures allow for convenient attachment of the flag to a pole/stake and help ensure the flag remains visible to the game players Id.
Regarding the claimed indicia of the card, 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 (card) does not support the printed indicia and the indicia is not arranged such that it's positioned in a unique position with respect to the substrate. The indicia explaining the rules and scoring are towards conveying information to a human reader independent of the supporting product. There is not a new and unobvious functional relationship therebetween. As such, no patentable weight is given to the claimed printed matter.
Lastly, and per 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, the combined art teaches a game kit that is capable of performing the intended use. Specifically, the structure can be used to carry out an outdoor game on a play area, including a player area of a turf field, sand field, sand beach, backyard as claimed.
With respect to claim 3, Nuessle teaches wherein the alternative measuring device is a tape measurer 60 with a flexible measuring tape 61. Nuessle does not expressly teach wherein the measuring tape 61 is metal. However, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) per MPEP 2144.07. Here, it is known that metal is durable, flexible and easy to print measuring ticks on. A person ordinary skill in the art would have found it obvious to utilize a metal material for the measuring tape to ensure its durability and functionality as a tape measuring device that can bend for stowage inside the casing.
With respect to claims 6-9 and 17-20, Nuessle does not expressly teach wherein the durable material is selected from the group consisting of metals, plastics, and composite materials, wherein the metals are selected from the group consisting of alloy steel, a stainless steel, an aluminum, or a brass, wherein the alloy steel is treated by the group consisting of chroming, galvanizing, powder coating and painting, wherein the plastics are selected from the group consisting of urethane, nylon, reinforced nylon, polyvinyl chloride (PVC), silicone, Pebax Elastomers (RTM), and thermoplastic elastomers (TPE). However, analogous art reference Tsiopanas teaches that it is known to utilize the claimed durable material in an outdoor game kit (paragraph [0017]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a material, as taught by Tsiopanas. The rationale to combine is to provide a durable, but also lightweight and low cost. Examiner notes, per MPEP 2131, when a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art. Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001).
5. Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nuessle (US Pub. No. 2015/0321060) in view of Tsiopanas et al. (US Pub. No. 2013/0017897) and further in view of Chernk (US Pat. No. 5,209,493) and further in view of Mattson (US Pat. No. 2006/0097454).
With respect to claim 14, Nuessle teaches two measuring sticks 13, but does not expressly teach a set of four flat bases for placing on the two measuring sticks and the two target stakes when the measuring sticks and target stakes are placed on a firm surface of a playing area. However, analogous art reference teaches that it is known to provide flat bases 42, 50 to receive measuring sticks and target stakes pole like structures (Fig.’s 5-6; paragraphs [0029]-[0030]). At the time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add the flat bases to the game of Nuessle. The rationale to combine is to provide a stanchion for the sticks/stakes when piercing the ground is undesirable, for example, when surface of the play area is too hard. Since Nueelse teaches four measuring sticks and target stakes, the combination would provide an equal number of flat bases. See also – MPEP 2114, In re Schreiber.
With respect to claim 15, Nuessle teaches wherein the alternative measuring device is a tape measurer 60 with a flexible measuring tape 61. Nuessle does not expressly teach wherein the measuring tape 61 is metal. However, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) per MPEP 2144.07. Here, it is known that metal is durable, flexible and easy to print measuring ticks on. A person ordinary skill in the art would have found it obvious to utilize a metal material for the measuring tape to ensure its durability and functionality as a tape measuring device that can bend for stowage inside the casing.
Conclusion
6. 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