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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Canada on 1 April 2023. It is noted, however, that applicant has not filed a certified copy of the CA 3194828 application as required by 37 CFR 1.55.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application the drawings contain deficient line quality. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. Refer to 37 CFR 1.84(l). See numbered game board positions in Figures 1-2 which are illegible. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Objections
Claims 1-4 are objected to because of the following informalities: Regarding claim 1, line 8, at should be added before “least one.” Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 3-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 3-4 are directed to an idea in the form of rules for playing a game. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a game board, playing cards, playing pieces, indicators, and a die do not add a meaningful limitation to the abstract idea because they are routine in any board game. These claims are essentially an abstract idea in the form of rules for participating in/playing a board game.
Claims 3-4 recite setting up a board game, playing a game, and advancing a playing piece along a path. These steps describe the concept of steps and rules for playing/participating in a game. An example of a claim reciting following rules or instructions is In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of "rules for playing games," which the court characterized as a certain method of organizing human activity. See MPEP 2106.04(a)(2) II C.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The additional elements of a game board, playing cards, playing pieces, indicators, and a die are recited at a high level of generality and perform generic functions. Thus, taken alone, the additional elements do not amount to significantly more than the above identified judicial exception (the abstract idea). Looking at the additional elements in an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is nothing particular to the game board, playing cards, playing pieces, indicators, and die, or how they interact, that makes them specific to this method. They are simply conventional game board elements present in nearly all board games. The claims, as a whole, are directed to the abstract concept of rules for participating in/playing a board game. These abstract concepts are not patent eligible.
Claim Rejections - 35 USC § 103
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 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 are rejected under 35 U.S.C. 103 as being unpatentable over Willis et al. (US 4,682,778; hereinafter Willis).
Regarding claim 1, Willis discloses a Hindu-themed board game (Figure 1) comprising: a game board [1] comprising a path of numbered positions (see numbers 2-12 on game board [1]), a plurality of playing cards [15, 16, 17] comprising: a plurality of “Awareness” cards [16], each having an action cost, indicating least one awareness point value (see dollar values of Legislation cards [16] in col. 2 lines 18-38); a plurality of “Command” cards [15], each having a text command (see office position of Election cards [15] in col. 2 lines 42-67); and a plurality of “Play Anytime” cards [17], each having a text command (see categories of Politics cards in col. 3 lines 5) ; a plurality of playing pieces [21]; a plurality of unlocked avaranam indicators [12]; and an 8-sided die [11] (col. 2 line 4 – col. 4 line 38 and Figures 1-10). Regarding the recitations of a Hindu-themed board game, “Awareness” cards, “Command” cards, “Play Anytime” cards, and unlocked avaranam indicators, these recitations do not result in a structural difference over the prior art. Although Willis does not disclose the path passing through eight avaranams sequentially and terminating at a central Bindu, the first avaranam arranged as a set of rectilinear tracks at corners of the game board, the second to eighth avaranams in the form of progressively concentric rings as they near the Bindu, the “Awareness” cards indicating the number of matching “Awareness cards needed for each of the at least one awareness point value, or the “Command” cards having an action cost, such instructions, descriptions or indicia only serve to communicate the rules of the game to the players. These rules merely describe those elements in a manner that conveys intelligence to the players. They are instructions or indications of how to play the game and one cannot continue patenting a product indefinitely provided that they associate a new set of rules with known game boards and pieces. Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product. See MPEP 2112.01. The indicia on the game board and playing cards are functional limitations, rules, or instructions that have no physical tie to the substrate. Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. See MPEP 2111.05. Any differences residing in meaning and information conveyed by printed matter are not considered patentable subject matter. No patentable weight is given to the printed matter unless there is an unobvious functional relationship between the printed matter and the substrate. Assuming, for the sake of argument, that there is a functional relationship between the printed matter and the substrate, the examiner does not find there to be an unobvious functional relationship between the printed matter and the substrate as the printed matter is merely conveying information to the players in the game in an obvious and routine matter. Additionally, in order to convey a desired message, it would have been obvious to print any suitable printing on the game articles. A person having ordinary skill in the art before the effective filing date of the claimed invention would have suggested printing any suitable instructional indicia to convey a desired message.
Regarding claim 2, Willis discloses the Hindu-themed board game of claim 1 wherein the unlocked avaranam indicators [12] each comprise: eight avaranam tokens, and one (col. 3 lines 46-55 and Figure 5). Although Willis does not disclose the tokens uniquely identifying a different one of the avaranams on the game board or identifying the Bindu, such instructions, descriptions or indicia only serve to communicate the rules of the game to the players and would have been obvious as outlined in paragraph 12 above.
Additional Subject Matter
Claims 3-4 are not rejected under art; however, they are rejected under 35 U.S.C. 101 as outlined above and are therefore not allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Coovert (US 2024/0316442 A1) and Martukovich, Jr. (US 5,158,301) which both disclose similar board games comprising a game board, a plurality of playing cards, a plurality of playing pieces and/or indicators, and a die.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY B. WALTER whose telephone number is (571)270-5286. The examiner can normally be reached Monday - Friday: 8:30 am - 4:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUDREY B. WALTER/Primary Examiner, Art Unit 3711