DETAILED ACTION
Election/Restrictions
1. Applicant's election with traverse of Invention I in the reply filed on 2/2/26 is acknowledged. The traversal is on the grounds that the species share a common inventive core. This is not found persuasive. Applicant does not admit that the variations in orientation and construction of the species are obvious variants. Moreover, applicant fails to address or traverse examiner’s position that the species recite mutually exclusive structure. Applicant further argues that no serious search burden would exist if the species were examined together. This is unpersuasive. A serious search and examination burden would exist because it would require employing different search strategies and search queries.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1, 7-8, 11-21 and 24-25 are elected and examined below. Claims 2-6, 9-10 and 22-23 are withdrawn.
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.
Claim 24 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 24 recites the limitations "the first, second and third flexible, light transmissive materials of the first end portion” and “the first, second and third flexible, light transmissive materials of the second end portion". There is insufficient antecedent basis for these limitations in the claim.
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, 7-8, 11-13, 15-21 and 24-25 rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Pub. No. 2022/0047937) in view of Carroll (US Pat. No. 10,857,449) and further in view of Persson et al. (US Pat. No. 10,540,853).
With respect to claim 1, Brown teaches a casino dice table comprising: a play field 102 positioned substantially horizontally, the play field comprising: a first end portion 101 comprising: a substantially flat top surface upon which physical dice may roll and stop, and a thickness, a second end portion 101 opposite the first end portion, the second end portion comprising: a substantially flat top surface upon which physical dice may roll and stop, and a thickness, and a middle portion 103 disposed between the first end portion 101 and the second end portion 101, the middle portion comprising: a substantially flat top surface upon which physical dice may roll and stop, and a thickness (Fig. 1; paragraphs [0006], [0016]).
Brown teaches these portions to be of the same height. However, analogous art reference Carroll teaches that it is known to provide a defined scoring area with a larger thickness than the rest of a play field (column 3, lines 3-24). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to make the thickness of first and second end portions 101 to be elevated from the middle portion 103. The rationale is set forth in Carroll – so dice may not slide into the scoring area Id. This will add a level of skill to the game and force players to employ a tumbling dice roll, preventing rolling onto the high scoring areas 101.
Lastly, Brown fails to expressly teach wherein the first end, second end and middle portions comprise a flexible, light transmissive material, and at least one electronic display device positioned under the play field, the at least one electronic display device configured and arranged so that images displayed by the at least one electronic display device are viewable on, or through, the play field. However, analogous art reference Persson et al. teaches such features to be known in the art of dice games – Fig. 5; columns 9-10 teaching “field display device 530”, “flexible protective layer 545 should be comprised of flexible, with moderate to high light-transmissivity, material”. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to combine these teachings of Fujita into the game of Brown. The rationale to combine is to incorporate the game within an electronic table game environment. This will permit various images and/or multimedia displays to be viewable on or through the play field. Game and entertainment information can thus be viewed by players and onlookers.
With respect to claims 7-8, the combination of Brown and Carroll is considered to teach wherein the first and second end portions sit on top of a unitary play field as shown in Fig. 6 of Carroll. Tertiary reference Persson et al. teaches the feature of the middle portion, first and second end portions to be flexible, light transmissive columns 9-10 teaching. The rationale to combine is the same as stated above. Thus, the combined art fails to teach wherein: (i) the middle portion comprises: a bottom surface opposite the substantially flat top surface of the middle portion, a first end face, and a second end face opposite the first end face,(ii) the first end portion comprises: a bottom surface opposite the substantially flat top surface of the first end portion, and an end face, (iii) the second end portion comprises: a bottom surface opposite the substantially flat top surface of the second end portion, and an end face,(iv) the first end face of the middle portion abuts the end face of the first end portion, and (v) the second end face of the middle portion abuts the end face of the second end portion; the integral piece extending longitudinally from the first end face of the middle portion to the second end face of the middle portion; wherein the first and second pieces comprise integral pieces. However, per MPEP 2144.04, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) when the only difference between the prior art and claimed invention is a particular arrangement that would not modify the operation of the device, such differences were held unpatentable. Here, no criticality is given to the claimed arrangement. In the applied art and applicant’s invention, there is a step from the middle portion to the end portions, and the particular arrangement used to provide the step is not considered to modify the operation of the game. Moreover, game of Brown would operate as intended using claimed arrangement. As such, the difference in arrangement of Brown as modified by Carroll is considered obvious in view of MPEP 2144.04, In re Japikse.
With respect to claim 11, Brown teaches wherein: (i) the first end portion comprises a length, (ii) the second end portion comprises a length, (iii) the play field comprises a length. From Fig. 1, the first and second end portions 101 appear to be less than 20% of the length of the play field. As such, Brown fails to expressly teach wherein (iv) the length of the first end portion is between 20% and 35% of the length of the play field, and (v) the length of the second end portion is between 20% and 35% of the length of the play field. However, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart, 531 F.2d 1048, 1053 189 USPQ 143 (CCPA 1976). In reviewing applicant’s specification, the specification does not provide criticality to the claimed range, indicating that the lengths of the first and second end portions “may” be within the claimed range (paragraph [28]). Moreover, increasing the length of the end portions 101 with respect to the overall length would not adversely affect the intended purpose of Brown. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to scale up the length of the first and second end portions, including within the claimed range. The rationale to do so is make it easier for players to score a high roll. Predictably, a shorter length of the end portions will require more skill to land the dice therein. Conversely, a larger length of end portions 101 will make it easier.
With respect to claims 12-13, Brown teaches wherein the first end portion 101 and the second end portion 101 extend from one lateral edge of the play surface 102 to another other lateral edge of the play surface 102 (Fig. 1); wherein:(i) the first end portion 101 is located at a first longitudinal end portion of the casino dice table, and(ii) the second end portion 101 is located at a second longitudinal end portion of the casino dice table Id.
With respect to claim 15, Carroll, cited above for the raised scoring section 20, teaches wherein the thickness of the first and second scoring sections 20 are substantially equal (Fig. 6; column 3, lines 20-22). The rationale to apply this feature to the first and second end portions 101 is the same as stated above. Moreover, equal heights will create fairness for the competing players.
With respect to claims 16-17, Brown as modified by Carroll teaches wherein: (i) the thickness of the first end portion is at greater than the thickness of the middle portion, and (ii) the thickness of the second end portion is at greater than the thickness of the middle portion, but fails to expressly disclose the explicit difference in height between the end portions and middle portions. However, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart, 531 F.2d 1048, 1053 189 USPQ 143 (CCPA 1976). In reviewing applicant’s specification, the specification does not provide criticality to the claimed range, indicating that the thicknesses of the first and second end portions “may” be within the claimed range (paragraph [23]). Moreover, increasing the thickness of the end portions 101 with respect to the middle thickness would not adversely affect the intended purpose of Brown. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to scale up the length of the first and second end portions, including within the claimed range. The rationale selectively scale the heigh to the elevated end portions is to provide a prescribed difficulty level for the players. At heights too small, the player will very easily roll dice that ends up in the scoring regions 101. At heights too large, the player will expectantly be less likely to roll the dice in the scoring regions using a normal rolling motion as the end portions would effectively act as a barrier.
With respect to claim 18, Brown as modified by Carroll teaches wherein scoring portions 101 are raised with respect to the middle portion. Thus, the combination is considered to teach the following: (i) the thickness of the first end portion is substantially uniform from a first lateral edge of the surface to an opposite lateral edge of the play surface, and (ii) the thickness of the second end portion is substantially uniform from a first lateral edge of the play surface to an opposite lateral edge of the play surface – See Fig. 1 of Brown. The rationale to combine Brown and Carroll is the same as stated above.
With respect to claim 19, Persson, cited above for the flexible materials of the middle portion and first and second end portions, expressly teaches wherein said flexible materials may be comprised of an “elastomer” or “plastic” (column 9, lines 62-67; column 10, lines 1-8). The rationale to combine is the same as stated above
With respect to claims 20-21 and 24, examiner considers the structure of the applied art combination to have a uniform play field area with elevated end portions placed upon the play field area at the first and second end portions (See Fig. 6 of Carroll), wherein each of these portions comprise the same flexible, light transmissive material contemplated by Persson (e.g. an elastomer) (column 9, lines 62-67; column 10, lines 1-8). The rationale to combine is the same as stated above. As such, the combined art is considered to teach: wherein the flexible, light transmissive material of the first end portion is the same as the flexible, light transmissive material of the second end portion and the flexible, light transmissive material of the middle portion, wherein a hardness of at least a portion of the middle portion including the substantially flat top surface of the middle portion is the same as (a) a hardness of the first end portion, and (b) a hardness of the second end portion; wherein a hardness of the flexible, light transmissive material of the middle portion is the same as (a) a hardness of each of the first, second and third flexible, light transmissive materials of the first end portion, and (b) a hardness of each of the first, second and third flexible, light transmissive materials of the second end portion.
With respect to claim 25, based on the examiner’s interpretation of the combined art set forth above in the rejection of claims 20-21 and 24, the combination fails to teach wherein a hardness of at least a portion of the middle portion including the substantially flat top surface of the middle portion is greater than (a) a hardness of at least a portion of the first end portion, and (b) a hardness of at least a portion of the second end portion. However, tertiary reference Persson teaches that it is known to provide different materials at different parts of the play field (column 11, lines 21-23). Persson further teaches that it is known to utilize plastic, which is generally harder than an elastomer. Furthermore, 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, a semi-rigid plastic such as polypropylene is known to be suitable for its balance of flexibility and structural integrity. Whereas, an elastomer such as silicone rubber or polyurethane are softer than a semi rigid plastic like polypropylene, but provide improved damping properties. A person ordinary skill in the art would have found it obvious to select plastic material like polypropylene for the middle section. This will expectantly promote a ricochet effect of the dice due to the semi-rigid nature and hardness of the material. For the end portions, an elastomer material will provide a frictional effect to the dice, increasing the likelihood the dice will finish in the scoring zone.
5. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Pub. No. 2022/0047937) in view of Carroll (US Pat. No. 10,857,449) and further in view of Persson et al. (US Pat. No. 10,540,853) and further in view of Hartzell (US Pat. No. 3,370,077)
With respect to claim 14, Persson, cited above for the flexible materials of the middle portion and first and second end portions, expressly teaches wherein said flexible materials may be comprised of “urethane” or “elastomer” or “plastic” (column 9, lines 62-67; column 10, lines 1-8). The rationale to combine is the same as stated above. Admittedly, Persson does not expressly disclose the shore hardness for these flexible materials. However, Hartzell teaches that it is known for a flexible elastomer to comprise a shore A hardness of 24 (Example 5, column 3). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select a low shore A hardness elastomer for the flexible materials of the middle and end portions. This will expectantly reduce noise when the dice are thrown.
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