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 .
This action is in response to applicant’s remarks and amendments dated 01/10/2024. Claims 1, 12, 13, and 18 have been amended. Claims 1-20 are currently pending.
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.
Claims 1, 2, 4, 5, 6, 7, 9, 13, 14, 16, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Melashenko (US Patent No. 5,743,404) in view of Goodwin (US Patent No. 2,784,512), and further in view of Franklin et al. (US Patent No. 7,942,421 B1).
In Reference to Claims 1, 2, 4, 5, 6, 7, and 9
Melashenko teaches (Claim 1) A method for playing game comprising: hiding a capsule [] (column 1 lines 10-12), wherein the capsule comprises a non-edible (column 2 lines 17-21 and 50-63; note the organic material is mixed with latex or acrylic paint, rendering it non-edible) first portion having a first exterior surface and a first interior surface (exterior and interior of one half of items 102 and 104, fig’s 1-3 and column 2 lines 13-29), [], a non-edible (column 2 lines 17-21 and 50-63; note the organic material is mixed with latex or acrylic paint, rendering it non-edible) second portion having a second exterior surface and a second interior surface (exterior and interior of the other half of items 102 and 104, fig’s 1-3 and column 2 lines 13-29), [], wherein when the first portion is [put] together with the second portion a spherical capsule is formed (column 2 lines 13-29), wherein the interior of the spherical capsule is adapted to hold an item (column 1 line 66 – column 2 line 10), wherein the first portion and the second portion have a pattern formed on the first exterior surface of the first portion and the second exterior of the second portion, wherein the pattern formed is a [natural] pattern (column 2 line 50 – column 3 line 3); searching for the capsule during the [game] (column 1 lines 10-12); locating the capsule during the[game] (column 1 lines 10-12; note a “game of finding” hidden objects necessarily includes searching and locating, these are similar if not the same step); and opening the capsule to obtain the item (column 2 lines 7-10);
(Claim 2) wherein the item is placed within the capsule during a manufacturing process (column 2 lines 22-27; also column 2 lines 38-49);
(Claim 4) wherein the first exterior surface is textured with indentions (column 2 line 50 – column 3 line 30, textured surface inherently has indentations and ridges)
(Claim 5) further comprising a third portion, wherein the first portion, the second portion and the third portion snap and interlock together to form a sphere (column 2 lines 23-25; may be made of two or more pieces, more than two pieces is inherently at least three pieces).
(Claim 6) wherein the first exterior surface is textured with raised bumps (column 2 line 50 – column 3 line 30, textured surface inherently has indentations and ridges / bumps);
(Claim 9) wherein opening the capsule comprises breaking a frangibly secured connection between first portion and second portion to access the interior of the capsule (column 2 lines 7-10, 19-21, and 27-29).
Melashenko fails to teach the features of the engaging ridges, specific exterior indicia, and the game being played during a Passover Seder of claim 1 and the feature of claim 7.
The examiner notes, however, that Melashenko does teach that halves of the device are connectable / separable as in “commercially available plastic eggs,” (column 2 lines 19/21) which the examiner believes typically include mating ridges, which would meet these limitations.
However, singe ridges are not explicitly shown by Melashenko, Goodwin teaches (Claim 1) wherein [a] first portion comprises a first ridge (interior ridge along edge 7 and edge 7, fig’s 1-5); wherein the second portion comprises a second ridge (items 8 and 6, fig’s 1-5); wherein the first ridge of the first portion is adapted to be snapped together with the second ridge of the second portion so that the first ridge and the second ridge are not visible from an exterior of the capsule (fig. 2).
Franklin teaches playing a game (Claim 1) during a Passover Seder (column 5 lines 14-21 and 37-39; note that a “Passover Seder” is interpreted as a meal, which is broad; and, that a meal can be a large range of time periods which is also broad);
(Claim 7) wherein the Passover Seder does not end until the opening of the capsule (column 5 lines 14-21 and 37-39; note that a “Passover Seder” is interpreted as a meal, which is broad; and, that a meal can be a large range of time periods which is also broad).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the two-part container of Melashenko with the feature of engaging ridges as taught by the two-part container of Goodwin for the purpose of more reliably retaining the parts of the device together as taught by Goodwin (column 1 lines 32- 39), making the device more reliable and more attractive to the users. The examiner also notes that mating ridges in container toys are common features and commercially available two-part containers are disclosed to be used in Melashenko (column 2 lines 19-21), which would typically include these features.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the exterior of the device with variable sized circles and dots merely as a matter of engineering design choice, since it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. In re Gulack 217 USPQ 401, (CAFC 1983); and, since it has also been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of toy does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. pattern indicia and the substrate e.g. capsule, which is required for patentability.
Further, since there is no mechanical function to the circle and dot pattern or random rough pattern, and since this is merely a matter of ornamentation, this feature cannot be relied upon to patentably distinguish the claimed invention from the prior art. This is further evidenced by both Melashenko and Goodwin, which teach that the exterior of the capsule can be decorated or designed with any desirable patterns and decorations (column 2 lines 1-12 and 44-49, Melashenko; and, column 1 lines 30-32 and 56-58, Goodwin).
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Melashenko with the feature of playing the game during a meal as taught by the game of Franklin for the purpose of providing further stimulation for social interaction as taught by Franklin (background), making the game more interesting and attractive to the users.
Further, the examiner notes that since the time period or setting of the method does not appear to materially affect the method, merely claiming the method takes place “during a Passover Seder” would appear to be a matter of design choice, and not a patentable advance. This is supported with case law holding that selection of any order of performing process steps is obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); and Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). Since the method would be performed substantially the same way regardless of whether or not it is performed during a meal, before a meal, after a meal, or within any time period separate from a meal, merely claiming this particular setting is an obvious matter of design choice and is not a patentable distinction. This is further evidenced by applicant’s specification which teaches that the method can be performed “during a holiday meal or throughout the holiday as part of the game” (abstract), indicating the time period of a meal does not change the operation of the method.
In Reference to Claims 13, 14, 16, 17, and 19
Melashenko teaches (Claim 13) A method for playing a game comprising: []; hiding a capsule (column 1 lines 10-12) that is frangibly secured (column 2 lines 7-10, 19-21, and 27-29), the capsule comprising: a first portion having a first exterior surface and a first interior surface (exterior and interior of one half of items 102 and 104, fig’s 1-3 and column 2 lines 13-29), []; a second portion having a second exterior surface and a second interior surface (exterior and interior of the other half of items 102 and 104, fig’s 1-3 and column 2 lines 13-29), wherein []; [], wherein when the first portion is [put] together with the second portion a spherical capsule is formed (column 2 lines 13-29), [] wherein the interior of the spherical capsule is adapted to hold an item (column 1 line 66 – column 2 line 10); wherein the first portion has a pattern formed on the first exterior surface of the first portion, wherein the pattern formed on the first exterior surface of the first portion is adapted to have a pattern of [natural texture] (column 2 line 50 – column 3 line 3); wherein the second portion has the pattern formed on the second exterior surface of the second portion (column 2 line 50 – column 3 line 3); hiding the capsule during the [game] (column 1 lines 10-12); searching for the capsule during the [game] (column 1 lines 10-12); locating the capsule during the [game] (note a “game of finding” hidden objects necessarily includes searching and locating, these are similar if not the same step); opening the capsule by breaking the frangibly secured capsule; and obtaining the item (column 2 lines 7-10);
(Claim 14) wherein the item within the capsule is placed therein during a manufacturing process (column 2 lines 22-27; also column 2 lines 38-49);
(Claim 16) wherein the first exterior surface is textured with indentions (column 2 line 50 – column 3 line 30, textured surface inherently has indentations and ridges);
(Claim 17) wherein the first exterior surface is textured with raised bumps (column 2 line 50 – column 3 line 30, textured surface inherently has indentations and ridges / bumps).
Melashenko fails to teach the features of the engaging ridges, specific exterior indicia, and the game being played during a Passover Seder of claim 13 and the feature of claim 19.
The examiner notes, however, that Melashenko does teach that halves of the device are connectable / separable as in “commercially available plastic eggs,” (column 2 lines 19/21) which the examiner believes typically include mating ridges, which would meet these limitations.
However, singe ridges are not explicitly shown by Melashenko, Goodwin teaches (Claim 13) wherein [a] first portion comprises a first ridge (interior ridge along edge 7 and edge 7, fig’s 1-5); the second portion comprises a second ridge (items 8 and 6, fig’s 1-5), wherein the first ridge of the first portion is adapted to snap together with the second ridge of the second portion after the frangibly secured capsule is opened; the first ridge and the second ridge are not visible from the exterior of the capsule (fig. 2).
Franklin teaches playing a game (Claim 13) starting a Passover Seder (column 5 lines 14-21 and 37-39; note that a “Passover Seder” is interpreted as a meal, which is broad; and, that a meal can be a large range of time periods which is also broad);
(Claim 19) wherein the Passover Seder does not end until the opening of the capsule (column 5 lines 14-21 and 37-39; note that a “Passover Seder” is interpreted as a meal, which is broad; and, that a meal can be a large range of time periods which is also broad).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the two part container of Melashenko with the feature of engaging ridges as taught by the two part container of Goodwin for the purpose of more reliably retaining the parts of the device together as taught by Goodwin (column 1 lines 32- 39), making the device more reliable and more attractive to the users. The examiner also notes that mating ridges in container toys are common features and commercially available two part containers are disclosed to be used in Melashenko (column 2 lines 19-21), which would typically include these features.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the exterior of the device with variable sized circles and dots merely as a matter of engineering design choice, since it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. In re Gulack 217 USPQ 401, (CAFC 1983); and, since it has also been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of toy does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. pattern indicia and the substrate e.g. capsule, which is required for patentability.
Further, since there is no mechanical function to the circle and dot pattern or random rough pattern, and since this is merely a matter of ornamentation, this feature cannot be relied upon to patentably distinguish the claimed invention from the prior art. This is further evidenced by both Melashenko and Goodwin, which teach that the exterior of the capsule can be decorated or designed with any desirable patterns and decorations (column 2 lines 1-12 and 44-49, Melashenko; and, column 1 lines 30-32 and 56-58, Goodwin).
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Melashenko with the feature of playing the game during a meal as taught by the game of Franklin for the purpose of providing further stimulation for social interaction as taught by Franklin (background), making the game more interesting and attractive to the users.
Further, the examiner notes that since the time period or setting of the method does not appear to materially affect the method, merely claiming the method takes place “during a Passover Seder” would appear to be a matter of design choice, and not a patentable advance. This is supported with case law holding that selection of any order of performing process steps is obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); and Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). Since the method would be performed substantially the same way regardless of whether or not it is performed during a meal, before a meal, after a meal, or within any time period separate from a meal, merely claiming this particular setting is an obvious matter of design choice and is not a patentable distinction. This is further evidenced by applicant’s specification which teaches that the method can be performed “during a holiday meal or throughout the holiday as part of the game” (abstract), indicating the time period of a meal does not change the operation of the method.
Claims 3 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Melashenko in view of Goodwin, Franklin et al., and further in view of Glass (US Patent No. 9,994,384 B2).
In Reference to Claim 3
The modified device of Melashenko teaches all of claims 1 and 2 as discussed above.
Melashenko fails to teach the feature of claim 3.
Glass teaches (Claim 3) wherein [an] item is a gift code that can be redeemed at a later point (item 150, fig. 22; column 1 lines 21-26).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the encapsulated prize system of Melashenko with the feature of a gift code as taught by the encapsulated prize device of Glass for the purpose of providing a higher value prize to the system as taught by Glass (column 1 lines 36-53), making the device more interesting and attractive to the users.
In Reference to Claim 15
The modified device of Melashenko teaches all of claims 13 and 14 as discussed above.
Melashenko fails to teach the feature of claim 15.
Glass teaches (Claim 15) wherein [an] item is a gift code (item 150, fig. 22; column 1 lines 21-26).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the encapsulated prize system of Melashenko with the feature of a gift code as taught by the encapsulated prize device of Glass for the purpose of providing a higher value prize to the system as taught by Glass (column 1 lines 36-53), making the device more interesting and attractive to the users.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Melashenko in view of Goodwin, Franklin et al., and further in view of Karman (US Patent No. 4,756,530).
In Reference to Claim 8
The modified device of Melashenko teaches all of claim 1 as discussed above.
Melashenko fails to teach the feature of claim 8.
Karman teaches (Claim 8) furthering comprising solving a puzzle to open [a] capsule (abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the container system of Melashenko with the feature of adding a puzzle aspect to the container as taught by the container system of Karman for the purpose of providing additional hours of entertainment for the user as taught by Karman (column 1 lines 5-8), making the system more interesting and attractive to the users.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Melashenko in view of Goodwin, Franklin et al., and further in view of Brown, Sr. (US PGPub. No. 2017/0246546 A1).
In Reference to Claim 10
The modified device of Melashenko teaches all of claim 1 as discussed above.
Melashenko fails to teach the feature of claim 10.
Brown teaches (Claim 10) wherein at least one of [a] portion [] is filled with a wax material (paragraph 0010; container can house candle; note first and second portions already taught in Melashenko above).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the container system of Melashenko with the feature of providing the container with wax as taught by the container system of Brown for the purpose of providing a user with a particular useful item as taught by Brown (paragraph 0010), customizing the system to a particular user or event, making the system more interesting and attractive to a particular type of user.
In Reference to Claim 20
The modified device of Melashenko teaches all of claim 13 as discussed above.
Melashenko fails to teach the feature of claim 20.
Brown teaches (Claim 20) wherein at least one of [a] portion [] is filled with a wax material (paragraph 0010; container can house candle).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the container system of Melashenko with the feature of providing the container with wax as taught by the container system of Brown for the purpose of providing a user with a particular useful item as taught by Brown (paragraph 0010), customizing the system to a particular user or event, making the system more interesting and attractive to a particular type of user.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Melashenko in view of Goodwin, Franklin et al., and further in view of Ko et al. (US PGPub. No. 2012/0311928).
In Reference to Claim 11
The modified device of Melashenko teaches all of claim 1 as discussed above.
Melashenko fails to teach the feature of claim 11.
Ko teaches (Claim 11) further comprising planting at least one of [a] first portion and [a] second portion that is fabricated from a biodegradable material (abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the container system of Melashenko with the feature of planting the capsule after use as taught by the container system of Ko for the purpose of more easily disposing of the device, as well as providing valuable plants and nutrients to the soil as taught by Ko (paragraph 0031), making the device easier to dispose of, environmentally friendly, and more attractive to the users.
Claims 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Melashenko in view of Goodwin, Franklin et al., Ko, and further in view of Martin (US PGPub. No. 2015/0319562).
In Reference to Claim 12
The modified device of Melashenko teaches all of claims 1 and 11 as discussed above.
Melashenko fails to teach the feature of claim 12.
Martin teaches (Claim 12) wherein [a] capsule further comprises a wireless signal emitter (item 49, fig. 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the container system of Melashenko with the feature of a bluetooth emitter as taught by the container system of Martin for the purpose of more easily locating a lost container as taught by Martin (paragraph 0009), making the system easier to use, more reliable, and more attractive to the users.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Melashenko in view of Goodwin, Franklin et al., and further in view of Martin (US PGPub. No. 2015/0319562).
In Reference to Claim 18
The modified device of Melashenko teaches all of claim 13 as discussed above.
Melashenko fails to teach the feature of claim 18.
Martin teaches (Claim 18) wherein the capsule further comprises a wireless signal emitter (item 49, fig. 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the container system of Melashenko with the feature of a bluetooth emitter as taught by the container system of Martin for the purpose of more easily locating a lost container as taught by Martin (paragraph 0009), making the system easier to use, more reliable, and more attractive to the users.
Response to Arguments
Applicant’s arguments, see Remarks, filed 01/10/2024, with respect to the claim objections and 112 rejections have been fully considered and are persuasive. The claim objections and 112 rejections have been withdrawn.
Applicant's remaining arguments filed 01/10/2024 have been fully considered but they are not persuasive.
Applicant’s argument that Melashenko does not teach a spherical capsule is not persuasive. Column 2 lines 13-16 specifically discloses that the device can be round instead of egg shaped. A three-dimensional round object is a sphere.
Applicant’s argument that none of the references disclose playing a game “during a Passover Seder,” is noted, but is not persuasive. The examiner notes here that USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations appearing in the specification but not recited in the claim should not be read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily). In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-551 (CCPA 1969). See also In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). As best understood, the broadest reasonable interpretation of a Passover Seder is “a meal”. Since Franklin teaches playing a game during a meal (column 5 lines 14-21 and 37-39), this limitation is met. It is unclear what additional limitations applicant is attempting to impart into the term “a Passover Seder” that would not be met by “a meal.” Structurally, the claim term simply implies a time period where a meal takes place, which is extremely broad. There are no physical structure or physical steps defined in the term that would obviate the rejection. This term is broad and, in the examiner’s opinion, is met by the teaching of playing a game during a meal.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melba Bumgarner can be reached on 571-272-4709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711