DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
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 5 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 5 includes limitations directed towards "5. The system of claim 5, wherein said tabletop further comprises a plurality of dimples that protrude inward or outward in relation to said playing surface"
The claim appears to be dependent upon itself which is improper. The examiner assumes that the correct dependency of claim 5 is to claim 1 for purposes of the examination. 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 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Each of the claim(s) has/have been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A, Prong 1
The claim(s) recite(s):
Claim 17 includes limitations directed towards "17. A method for playing beer dice in an aquatic environment comprising placing a floatable gaming table in an aquatic environment, wherein said floatable gaming table comprises "
These limitations are directed towards Certain Methods of Organizing Human Activity such as following rules for game play which is an abstract idea.
Claim 17 includes limitations directed towards "playing a game using said floatable gaming table, said game comprising bouncing one or more dice off said playing surface of said floatable gaming table, said one or more dice each having a density less than the density of water."
These limitations are directed towards Certain Methods of Organizing Human Activity such as following rules for game play which is an abstract idea.
Claim 18 includes limitations directed towards "18. The method of claim 17 further comprising the step of detaching said tabletop from said buoyancy layer after said game."
These limitations are directed towards Certain Methods of Organizing Human Activity such as following rules for game play which is an abstract idea.
Claim 19 includes limitations directed towards "19. The method of claim 17 further comprising the step of folding said tabletop at a hinge of said floatable gaming table."
These limitations are directed towards Certain Methods of Organizing Human Activity such as following rules for game play which is an abstract idea.
Claim 20 includes limitations directed towards "20. The method of claim 17 further comprising the step of inflating said buoyancy layer prior to playing said game."
These limitations are directed towards Certain Methods of Organizing Human Activity such as following rules for game play which is an abstract idea.
Accordingly, each of the claim(s) recited above recite an abstract idea.
Further, the dependent claim(s), if present, merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2
Prong Two Considerations
This/these judicial exception(s) is/are not integrated into a practical application because the examiner does not find one of the following to exist:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Furthermore, limitations that are not indicative of integration into a practical application include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
The above-identified abstract idea in each of the claims indicated above (and their respective dependent Claims) is/are not integrated into a practical application under 2019 PEG because the additional elements, either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. The claims indicated above (and their respective dependent claims) do not improve the functioning of a computer, or any other technology or technical field. Nor do the additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. For at least these reasons, the abstract idea identified above in the above identified claim(s) (and their respective dependent claims) is/are not integrated into a practical application under 2019 PEG.
Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Moreover, these claims are merely directed to an abstract idea wherein if computer elements are claimed they are additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Thus, for these additional reasons, the abstract idea(s) identified above (and their respective dependent claims) is/are not integrated into a practical application under the 2019 PEG.
Accordingly, each of the claims identified above (and their respective dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
None of the claim(s) indicated above (or their dependents) include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the additional elements in the claim(s) identified above (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements (if any are present) nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. As such, the above-identified additional elements, when viewed as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the Prong Two Considerations (as indicated above) are not met and the examiner does not find a specific limitation other than what is well-understood, routine, conventional activity in the field (see MPEP 2106.05(d)) to exist in the claim(s) to render the claim(s) significantly more than the abstract idea. Therefore, none of the claim(s) amount to significantly more than the abstract idea itself. Accordingly, the claim(s) indicated above (and their dependent claims) are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. V. CLS Bank International, et al. and 2019 PEG.
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 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 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.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Rieman (US 20140252718 A1) in view of Boyd (US 20090194941 A1).
Regarding claim 1, Rieman teaches 1. A system for playing a game in an aquatic environment comprising See [0093+], a floatable gaming table comprising a tabletop comprising a playing surface, See Fig. 15; [0093+], a cup holder or a cup at each corner of said tabletop. See Fig. 5; (114)(116), said playing surface comprising a line that divides said playing surface into a first territory and a second territory See Fig. 15 noting the connecting line formed between the 104 annotations which may be consider to divide the territories for the two players.
Boyd does teach what the primary reference is silent on including a buoyant layer that supports said tabletop, said buoyant layer having a density sufficiently low enough such that said playing surface can float above a surface of water when said floating gaming table is placed within aquatic environment; and See [0017+]; (4) wherein the table top of Rieman could easily be utilized with the inflatable buoyant member or layer of Boyd.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Boyd to provide easy storage and transport of the system. (See [0025+]).
Regarding claim 2, Rieman teaches 2. The system of claim 1, wherein said floatable gaming table divides into a plurality of interlocking planks, such that when said planks are interconnected, said planks form said floatable gaming table. See Fig. 5; (108) wherein the protrusion interlock the pieces together.
Regarding claim 3, Rieman teaches 3. The system of claim 1, wherein said top playing surface of said tabletop is substantially flat. See Fig. 15 which shows the flatness of the playing surface.
Regarding claim 4, Rieman teaches 4. The system of claim 1 wherein said tabletop further comprises a plurality of small drain orifices intermittently placed across said playing surface, each said drain orifice passing through said tabletop. See [0081+].
Regarding claim 5, Rieman teaches 5. The system of claim 5, wherein said tabletop further comprises a plurality of dimples that protrude inward or outward in relation to said playing surface See Fig. 5; (120).
Regarding claim 6, Rieman teaches 6. The system of claim 1, wherein said playing surface further comprises a plurality of channels, said channels allow water to drain from said playing surface. See Fig. 5; (124).
Regarding claim 7, Boyd teaches 7. The system of claim 1 wherein said tabletop attaches and detaches from said buoyant layer by fasteners. See [0026+] the inserts may be considered fasteners to hold the table top(s). A single table top can easily be implemented such as that shown in Rieman through the use of a single insert.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Boyd to provide means to hold a tabletop in place on a buoyant layer.
Regarding claim 8, Boyd teaches 8. The system of claim 7 wherein said buoyant layer is inflatable and deflatable. See [0017+]; (4) wherein the table top of Rieman could easily be utilized with the inflatable buoyant member or layer of Boyd.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Boyd to provide easy storage and transport of the system. (See [0025+]).
Regarding claim 9, Boyd teaches 9. The system of claim 8 wherein said buoyant layer comprises a plurality of discrete segments, said discrete segment together capable of supporting said table top. See Fig. 1 noting the different segments of the buoyant layer 4. Additionally, reference In Re Dulberg in which it was held that if it were considered desirable for any reason to remove one item from another, it would be obvious to make that item removable for that purpose. (In reDulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961)) As such, using multiple physically separate or standalone buoyant layers of Boyd would be obvious. Such may aid in the transport and storage of the buoyant layer.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Boyd to provide easy storage and transport of the system. (See [0025+]).
Regarding claim 10, Rieman teaches 10. The system of claim 1 wherein said tabletop further comprises one or more secondary cup holders, said one or more secondary cup holders away from said playing surface. See Fig. 5; (120) the additional cupholders 120 can be considered dimples as well.
Regarding claim 11, Boyd teaches 11. The system of claim 1 further comprising an anchor and an anchor line, wherein said floatable gaming table attaches to said anchor line, said anchor line also attaching to said anchor. See [0043+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Boyd to allow anchoring against lateral or sideways movement. (See [0043+]).
Regarding claim 12, Boyd teaches 12. The system of claim 11 wherein a length of said anchor line is adjustable. See [0043+] which teaches the use of an anchor line. Reference In Re Stevens where it was held that adjustability, where needed, is not a patentable advance. (In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954)) As such, adjusting an anchor line length is well known in the art and not a patentable advance.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Boyd.
Claims 13-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Rieman (US 20140252718 A1) in view of Boyd (US 20090194941 A1) and Rickett (US 20140097570 A1).
Regarding claim 13, Rickett teaches 13. The system of claim 1 further comprising one or more dice, each of said dice comprising a plurality of flat faces, a plurality of edges, and a plurality of corners. See [0006+].
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Rickett to facilitate enjoyment of the game in water. (See [0053+]).
Regarding claim 14, Rickett teaches 14. The system of claim 13, wherein said plurality of edges, said plurality of corners of said die are beveled. See [0006+] which teaches the use of floating dice. The specific shape of the dice isn't considered a patentable advance over the cited art of record and the shape claimed in well known to a person of ordinary skill in the art. Additionally, the court held that “the configuration of a claimed apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus was significant”. (See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)) The examiner finds no persuasive evidence on the record that the specific shaped claimed is significant to the inventive concept.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Rickett to facilitate enjoyment of the game in water. (See [0053+]).
Regarding claim 15, Rickett teaches 15. The system of claim 13, wherein said plurality of edges and said plurality of corners are rounded. See [0006+] which teaches the use of floating dice. The specific shape of the dice isn't considered a patentable advance over the cited art of record and the shape claimed in well known to a person of ordinary skill in the art. Additionally, the court held that “the configuration of a claimed apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus was significant”. (See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)) The examiner finds no persuasive evidence on the record that the specific shaped claimed is significant to the inventive concept.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Rickett to facilitate enjoyment of the game in water. (See [0053+]).
Regarding claim 16, Rickett teaches 16. The system of claim 13 wherein said one or more dice each have a density less than the density of water. See [0006+] wherein the floating dice are considered to have a density less than water to allow them to float.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Rickett to facilitate enjoyment of the game in water. (See [0053+]).
Regarding claim 17, Rieman teaches 17. A method for playing beer dice in an aquatic environment comprising placing a floatable gaming table in an aquatic environment, wherein said floatable gaming table comprises See Fig. 15; [0093+], a tabletop comprising a playing surface, said playing surface comprising a line that divides said playing surface into a first playing area and a second playing area See Fig. 15 noting the connecting line formed between the 104 annotations which may be consider to divide the territories for the two players. a cup holder or cup at each corner of said tabletop, and See Fig. 5; (114)(116).
Boyd does teach what the primary reference is silent on including a buoyant layer having a density sufficiently low enough such that said playing surface can float above a surface of water when said floating gaming table is placed within the water; and See [0017+]; (4) wherein the table top of Rieman could easily be utilized with the inflatable buoyant member or layer of Boyd.
Rickett does teach what the primary reference is silent on including playing a game using said floatable gaming table, said game comprising bouncing one or more dice off said playing surface of said floatable gaming table, said one or more dice each having a density less than the density of water. See [0006+] wherein the floating dice are considered to have a density less than water to allow them to float.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Boyd to provide easy storage and transport of the system. (See [0025+]). It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Rickett to facilitate enjoyment of the game in water. (See [0053+]).
Regarding claim 18, Boyd teaches 18. The method of claim 17 further comprising the step of detaching said tabletop from said buoyancy layer after said game. See [0026+] as shown the inserts can allow for detaching of the tabletop from the buoyant layer.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Boyd to provide means to hold a tabletop in place on a buoyant layer.
Regarding claim 20, Boyd teaches 20. The method of claim 17 further comprising the step of inflating said buoyancy layer prior to playing said game. See [0017+]; (4) wherein the table top of Rieman could easily be utilized with the inflatable buoyant member or layer of Boyd.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Boyd to provide easy storage and transport of the system. (See [0025+]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Rieman (US 20140252718 A1) in view of Boyd (US 20090194941 A1) and Dahl (US 9782666 B2) and Rickett (US 20140097570 A1).
Regarding claim 19, Dahl teaches 19. The method of claim 17 further comprising the step of folding said tabletop at a hinge of said floatable gaming table. See 2:32+ which speaks of a foldable unit.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Rieman with Dahl to allow two table halves to be folded on each other reducing the size of the table for storage.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wilson US 20180333624 A1 - which teaches a floating beer pong table with anchors.
Lundstrom US 3858877 A - which teaches a floating table for games in a pool with anchors.
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711