DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 6/5/26. Claims 1 and 24 are amended; claims 2-6, 9-10 and 22-23 are withdrawn. Claims 1, 7-8, 11-21 and 24-25 are examined below.
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 15 and 18 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. Claims 15 and 18 recite the limitations "the thickness of the first end portion" and “the thickness of the second end portion”. There is insufficient antecedent basis for these limitations in the claim.
Claims 16-17 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. Claims 16-17 recites the limitations "the thickness of the first end portion" , “the thickness of the middle portion”, and “the thickness 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, 11-13, 15, 18-21 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Pub. No. 2022/0047937) 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 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, wherein a thickness of the flexible, light transmissive material at the first and second end portions is greater than a thickness of the flexible, light transmissive material at the middle portion. However, analogous art reference Persson et al. teaches the following to be known in the art: a playfield comprising a first and second end comprising a flexible, light transmissive material 535 with a thickness, and a middle portion comprising a flexible, light transmissive material with a thickness, wherein (i) the thickness of the flexible, light transmissive material of the first end portion is greater than the thickness of the flexible, light transmissive material of the middle portion (Fig. 5; column 12, lines 1-4 teaching surface 535 to abut the display device), and (ii) the thickness of the flexible, light transmissive material of the second end portion is greater than the thickness of the middle portion Id., and at least one electronic display 530 device positioned under the play field, the at least one electronic display device 530 configured and arranged so that images displayed by the at least one electronic display device are viewable on, or through, the play field (columns 9-11; Fig. 5; See also column 12, lines 1-5 – “the play surface 535 both overlays and abuts the field display device 530”); and column teaching an electronic display device - “field display device 530”). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to combine these teachings of Persson into the game of Brown. The rationale to combine is to incorporate the game within an electronic table game environment and create “a more finished appearance” to players. This will permit various images and/or multimedia displays to be viewable on or through the play field while continuing providing a surface conducive to dice rolling. Game and entertainment information can thus be viewed by players and onlookers.
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, Brown as modified above is construed as teaching wherein the thickness of the first and second end portions are substantially equal because they each teach a level playing field.
With respect to claim 18, Brown teaches 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.
With respect to claim 19, Persson, cited above for the flexible material of the middle portion, teaches wherein said materials is comprised of a plastic (i.e. polypropylene - column 10, lines 42-43). The rationale to combine is the same as stated above
With respect to claims 20, Persson teaches wherein the flexible, light transmissive material 535 of the first end portion is the same as the flexible, light transmissive material 535 of the second end portion and the flexible, light transmissive material 535 of the middle portion (Fig. 5).
With respect to claim 21, both Brown and Persson teach a playfield having a middle portion with the same material of the first and second end portions. As such, they are each considered 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 the same as (a) a hardness of the first end portion, and (b) a hardness of the second end portion.
With respect to claim 24, Persson teaches wherein the flexible, light transmissive material of each of the first and second end portions and middle portion are of the same material (Fig. 5 showing these portions being integrally formed). As such, Persson teaches wherein a hardness of the flexible, light transmissive material of the middle portion is the same as (a) a hardness of the flexible, light transmissive materials of the first end portion, and (b) a hardness of each of the flexible, light transmissive materials of the second end portion. The motivation to combine is the same as stated above.
With respect to claim 25, Brown as modified by Persson 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. Persson teaches that it is known to provide different materials at different parts of the play field (column 11, lines 21-23). 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 lightweight and structural integrity. Whereas, a softer textile material such as “felt, linen, polyester blends”, “cotton blends” (See Persson at column 10) are known to be softer than a semi rigid plastic like polypropylene, but provides improved damping properties and more friction. 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, a textile will expectantly provide a frictional effect to the dice, increasing the likelihood the dice will finish in the scoring zone.
5. Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Pub. No. 2022/0047937) in view of Persson et al. (US Pat. No. 10,540,853) and further in view of Doepner et al. (US Pat. No. 6,581,931)
With respect to claim 7, Brown as modified by Persson et al. is construed as providing a play area that comprises layers stacked upon each other, each layer being integrally formed. As such, the combined teaching 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. However, Doepner, directed to the analogous art of game playing surfaces 20, teaches the following to be known in the art: (i) a middle portion 21 comprises: a bottom surface opposite a substantially flat top surface of the middle portion 21, a first end face, and a second end face opposite the first end face, (ii) a first end portion 22 comprises: a bottom surface opposite a substantially flat top surface of the first end portion, and an end face, (iii) a second end portion 23 comprises: a bottom surface opposite a substantially flat top surface of the second end portion, and an end face, (iv) the first end face of the middle portion 21 abuts the end face of the first end portion 22, and (v) the second end face of the middle portion abuts the end face of the second end portion 23 (Fig.’s 1-2C; column 3, lines 1-3, 28-32). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to make the play area of Brown as modified above as a segmented assembly with the middle portion abutting the two end portions. The rationale to combine is set forth in Doepner – “quickly and easily assembled together to form the rigid board game structure” and “can be disassembled and put away” (column 3, lines 28-32). The proposed modification has a reasonably expectation of success as the Personn expressly teaches embodiments where the flexible, transmissive portions can be segmented.
With respect to claim 8, the combination of Brown with Persson and Doepner are considered to teach wherein: the middle portion comprises an integral piece of the flexible, light transmissive material of the middle portion, the integral piece extending longitudinally from the first end face of the middle portion to the second end face of the middle portion, the first end portion comprises an integral piece of the flexible, light transmissive material of the first end portion, and the second end portion comprises an integral piece of the flexible, light transmissive material of the second end portion. The rationale to combine is the same as stated above.
6. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Pub. No. 2022/0047937) 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, 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 34 (Example 6, 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 material for the flexible materials of the middle and end portions. This will expectantly reduce noise when the dice are thrown.
7. Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Pub. No. 2022/0047937) in view of Persson et al. (US Pat. No. 10,540,853) and further in view of Carroll (US Pat. No. 10,857,449).
With respect to claims 16-17, Brown teaches wherein the first and second end portions and middle portions comprise the same thickness. 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. Regarding the claimed numerical value for the difference in height between the end portions and middle portions, 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 to 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.
Response to Arguments
8. Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
9. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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
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