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 § 102
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 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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Frieman (US 6,786,485).
Regarding claim 1, Frieman teaches a counter system for a game comprising:
at least one first die including a first plurality of faces (Col. 2, line 62-64)
at least one second die including a second plurality of faces (Col. 2 line 66 – Col. 3 line 1); and
at least one third die including a third plurality of faces (Col. 3 line 4-6)
Regarding claim 2, Frieman teaches the at least one first die includes a cube shape and wherein the first plurality of faces includes six faces. (Fig 12, element 900)
Regarding claim 6, Frieman teaches the at least one second die includes a cube shape and wherein the second plurality of faces includes six faces. (Fig 13, element 1,000)
Regarding claim 10, Frieman teaches the at least one third die includes a cube shape and wherein the third plurality of faces includes six faces. (Fig 14, element 1,100)
Regarding claim 12, Frieman teaches a counter system for a game comprising:
at least one first cube die including six faces (Fig 12, element 900).
at least one second cube die including six faces (Fig 13, element 1,000); and
at least one third cube die including six faces (Fig 14, element 1,100).
Regarding claim 15, Frieman teaches a game kit comprising:
a dice game (abstract)
at least one first die including a first plurality of faces (Col. 2, line 62-64)
at least one second die including a second plurality of faces (Col. 2 line 66 – Col. 3 line 1); and
at least one third die including a third plurality of faces (Col. 3 line 4-6).
Regarding claim 16, Frieman teaches the at least one first die includes a cube shape, wherein the first plurality of faces includes six faces (Fig 12, element 900).
Regarding claim 18, Frieman teaches the at least one second die includes a cube shape, wherein the second plurality of faces includes six faces (Fig 13, element 1,000).
Regarding claim 20, Frieman teaches the at least one third die includes a cube shape, wherein the third plurality of faces includes six faces (Fig 14, element 1,100).
Further it is noted that the limitations of claims 1, 3-5, 7-9, and 11-20 relate to the meaning and information conveyed by the printed matter on the pieces. The examiner cites MPEP 2111.05 in pertinent part regarding to limitations directed towards printed matter:
“To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated, see Lowery, 32 F.3d at 1584, 32 USPQ2nd at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404).” Moreover “where a product merely serves as a support for printed matter, no functional relationship exists... 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, 2009 U.S. Appl. LEXIS 6667 (Fed. Cir. 2009) ... 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… Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists.” However, “once a functional relationship between the product and associated printed matter is found, the investigation shifts to the determination of whether the relationship is new and unobvious.... The claim may, however, be anticipated by prior art that reads on the claimed invention, or by a combination of prior art that teaches the claimed invention”.
The examiner finds that the printed matter does not perform some function with respect to the substrate and thus, the printed matter is not given patentable weight. Without the printed matter, the substrate still functions as a substrate, and without the substrate, the indica could be printed on any other substrate. In this case, the dice merely serve as support for the printed matter found on them, and therefore are found to not have a functional relationship.
Further, assuming a functional relationship did exist between the printed matter and the substrate, the examiner finds that this relationship is not new and unobvious given the teachings of Frieman. As noted above, Frieman teaches that is known in the art of dice games to provide hexahedral numerical dice bearing different indica of numerical value from 0 to 6 on a plurality of its faces (Col 3. Lines 62-64). Frieman also teaches that is known in the art of dice games to provide hexahedral dice bearing different indica of mathematical operators. To merely define an alternative arrangement of indica on a die does not define a new and unobvious functional relationship between the substrate and the printed matter, but is merely an obvious extension on the teachings of Frieman. There is no new and unobvious functional relationship between the first, second, or third dice and the printed matter printed across all of claims 1, 3-5, 7-9, and 11-20. Thus, any differences in printed matter between the invention and the teachings of Frieman reside in the meaning and information conveyed by the printed matter. These differences are not considered to be patentable differences and instead obvious changes in the indica applied to the substrate. As noted supra, the examiner notes that no patentable weight is given to the actual contents of the printed matter since there is no functional relationship between the printed matter nor any unobvious functional relationship between the printed matter and the substrate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KALYN G YOUNGER whose telephone number is (571)272-0733. The examiner can normally be reached Monday-Friday 8 AM-5 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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/K.G.Y./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711