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 § 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.
Claim 4 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.
In line 3, “the slot” lacks a proper antecedent basis. For the purposes of applying the prior art, it is assumed that the claim depends from claim 3 which claims a slot.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 2 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. Patent Number 5,419,566 (Byrd).
Regarding claim 1, Figures 1 and 2 of Byrd show first and second cans 13 of a given height and diameter and aligned with each other at a given distance from opposite ends of a score zone 10. While Figures 1-4 of Byrd only shows one can, Byrd discloses that the game is played with opposing score zones placed at a specific distance apart in a straight line and each score zone is used as boundary lines. See Byrd, column 1, lines 12-15. Byrd also notes that one can is a predetermined distance from the opposite can and that components comprising score zone 10 and cans 13 are placed on the ground and the opposite components of the same are anchored at a specified distance of 26 feet apart to indicate there are two cans. See Byrd, column 1, lines 42-46; lines 57-62. The cans are also angled with respect to the ground playing surface; cans 13 are open at one end and closed at the other end by virtue of being placed on the ground. Also, see Byrd, column 1, lines 42-66. Figures 3 and 4 of Byrd show the recited disks of a given diameter and thickness. Byrd also discloses the concept of designating a point value for the cans 13. See Byrd, column 2, lines 20-27.
To the extent that Figures 1-4 of Byrd only shows one can, it would have been an obvious matter of design choice to provide two Byrd cans, since such a modification would have involved a mere duplication of parts. To duplicate parts for a multiple effect is generally recognized as being within the level of ordinary skill in the art. See St. Regis Paper Co. v. Bemis Co., Inc., 193 USPQ 8.
Regarding claim 2, Figure 4 of Byrd shows the diameter of cans 13 being larger than the diameter of disk 15.
Regarding claim 5, playing the Byrd game as intended meets the steps of providing a plurality of players, providing first and second cans and positioning them at a given distance from each other and designating point values and scoring points.
Regarding claim 7, Byrd discloses the players each having four disks. See Byrd, column 1, line 62 to column 2, line 5.
Regarding claim 8, Byrd discloses that at least one point can be scored when 100% of the disk lands in cup 13. See Byrd, column 2, line 20.
Allowable Subject Matter
Claims 3 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 4 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not anticipate, nor make obvious, a slot in the closed end of the cans wherein the height of the slot is greater than the disk thickness and width of the slot is greater than the disk diameter.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
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