DETAILED ACTION
1. This action is made Final in response to applicant’s Amendments / Request for Reconsideration filed 2/10/26. Claims 1-9 are cancelled; claim 10 is amended; claims 19-21 are added. Claims 10-21 are pending.
Claim Objections
2. Claim 20 is objected to because of the following informalities: “the first and second portions of the intermediate connector” should be amended to “the first and second protruding portions of the intermediate connector. Appropriate correction is required.
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.
4. Claim 10-13 and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Bach (US Pat. No. 6,736,691) in view of Yang et al. (US Pub. No. 2017/0072331) and further in view of Ringle et al. (US Pub. No. 2020/0257135).
With respect to claim 10, 12-13, and 17-21 Bach teaches a game set comprising: a set of game piece assemblies, each of the game piece assemblies comprising: an intermediate connector 20 including a first protruding portion and a second protruding portion (Fig.’s 3-4); a first game piece part 15A including a first opening 18 configured to receive the first protruding portion, and a second game piece part 15B including a second opening 18 configured to receive the second protruding portion (Fig.’s 3-4), wherein the intermediate connector 20 defines a lumen extending therethrough such that when the first protruding portion is inserted into the first opening 18 and the second protruding portion is inserted into the second opening 18, the first game piece part 15A, the intermediate connector 20, and the second game piece part 15B form an interference fit connection and defines a single hollow space therein (single hollow space shown in Fig. 4; See also column 3); wherein, for each game piece assembly, the first game piece 15A includes a first front surface portion and the second game piece 15B includes a second front surface portion (Fig.’s 3-4); wherein, for each game piece assembly, the first and second portions of the intermediate connector 20 terminate with male connectors (Fig.’s 3-4), and the first and second openings 18 each define a female connector, each female connector engageable with a male connector of the intermediate connector (Fig.’s 3-4).
Bach does not expressly disclose the number of game piece assemblies. However, analogous art reference Yang et al. teaches that it is known to provide 28 game piece assemblies – paragraph [0055] teaching 64 units, or 32 game piece assemblies. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to use at least 28 game piece assemblies for the play system of Bach. The motivation to combine is to provide enough game pieces to allow diverse game piece assembly. The proposed modification has a reasonable expectation of success as the functionality of Bach is not frustrated.
Bach as modified by Yang fails to expressly teach wherein the protruding portions of the connector comprises a magnetic material and the first and second game piece part includes first and second magnets disposed on an inner surface of the first and second game piece parts. However, Ringle et al. teaches the following features to be known in the art: a protrusion 814 comprising a magnetic material and a first piece part 808 includes a first magnet 807 disposed on an inner surface, and a perimeter of an opening (Fig. 8) to receive the magnetic protrusion 814 (paragraph [0053]; Fig. 8). At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to incorporate the magnetic coupling teachings of Ringle et al. to the game piece assembly of Bach. The motivation to combine is to facilitate improved releasable connection between the two parts of the assembly. The proposed modification is considered to have a reasonable expectation of success. The functionality and intended purpose Bach is not frustrated by the combination. The combination is considered to teach wherein the first magnet is disposed along a perimeter of the first opening as this is shown in Fig. 8 of Ringle. Admittedly, Ringle et al. is not analogous art. However, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the magnetic coupling is considered reasonably pertinent to the problem with which applicant is concerned. The magnetic coupling provides additional connection strength to avoid unwanted disconnection between the coupled parts.
Per MPEP 2114 - a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Here, the combined teachings of the applied prior art produces an interference fit as claimed, wherein the first game piece part is releasably connected with the intermediate connector, and the second game piece part is releasably connected with the intermediate connector, by magnetic attractive force.
Regarding the claimed pips and graphic images, such limitations are directed to printed matter. Per MPEP 2111.05, If a new and unobvious functional relationship between the printed matter and the substrate does not exist. USPTO personnel need not give patentable weight to printed matter. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). 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 …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). The physical configuration of the claimed apparatus in the Gulack invention comprised three key elements: (1) a band, ring, or set of concentric rings; (2) a plurality of individual digits imprinted on the band or ring at regularly spaced intervals; and (3) an algorithm by which the appropriate digits are developed. The court noted that the claims required a particular sequence of digits to be displayed on the outside surface of a band. These digits were functionally related to the band in two ways: (1) the band supports the digits; and (2) there is an endless sequence of digits — each digit residing in a unique position with respect to every other digit in an endless loop. The digits exploit the endless nature of the band, and notably, these features are critical to the invention, thus constituting a functional relationship between the digits and the band. The product performed some function with respect to the printed matter it is associated because the claimed algorithm would not be satisfied without certain physical relationships of the string of numbers. In Miller, the printed indicia on a measuring device for use in fractioning recipes was at issue. Specifically, volumetric indicia on the measuring receptacle indicated volume in a certain ratio to actual volume. This relationship was held to constitute a functional relationship between the indicia and the substrate. The printed matter performs some function with respect to the product to which it is associated. Evidence against a functional relationship exists where a product merely serves as a support for printed matter. See MPEP 2111.05. 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. 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, 323 Fed. App'x 898 (Fed. Cir. 2009) (unpublished). In Bryan the applicant asserted that the printed matter allowed the cards to be "collected, traded, and drawn"; "identify and distinguish one deck of cards from another"; and "enable[] the card to be traded and blind drawn". However, the court found that these functions do not pertain to the structure of the apparatus and where instead drawn to the method or process of playing a game. See also Ex parte Gwinn, 112 USPQ 439, 446-47 (Bd. Pat. App. & Int. 1955), in which the invention was directed to a set of dice by means of which a game may be played. The claims differed from the prior art solely by the printed matter in the dice. The claims were properly rejected on prior art because there was no new feature of physical structure and no new relation of printed matter to physical structure. For example, a claimed measuring tape having electrical wiring information thereon, or a generically claimed substrate having a picture of a golf ball thereupon, would lack a functional relationship as the claims as a whole are directed towards conveying wiring information (unrelated to the measuring tape) or an aesthetically pleasing image (unrelated to the substrate) to the reader. Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists. For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864. Unlike the fact situations in Miller and Gulack, the substrate (game piece surfaces) does not support the printed indicia and the indicia is not arranged such that it's positioned in a unique position with respect to the substrate. Moreover, the indicia are directed towards conveying an abstract game related meaning to a human reader independent of the supporting product. There is not a new and unobvious functional relationship therebetween. Instead, the indicia is akin to the images on a playing card in In re Bryan and the dice indicia of Ex parte Gwinn, neither of which were determined to establish a new and unobvious functional relationship with the substrate. As such, no patentable weight is given to the claimed printed matter.
With respect to claim 11, Bach utilizes a generally rectangular prism shape game piece assembly, which admittedly is not a coffin, hourglass, dog-bone or Y-shape as claimed. However, per In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), the Federal Courts have held where the configuration of the claimed shape was a matter of design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. MPEP 2144.04. In the instant case, the claimed shapes have not been set forth as critical. Rather it is directed to ornamentation, not functionality. Further, a person ordinary skill in the art would recognize that utilizing one of the claimed shapes for the game piece assembly would have a reasonable expectation of success as Bach would operate as intended if shaped as claimed. As such, the shapes of the predetermined shape are considered to be a matter of design choice.
5. Claim 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bach (US Pat. No. 6,736,691) in view of Yang et al. (US Pub. No. 2017/0072331) and further in view of Ringle et al. (US Pub. No. 2020/0257135), or in the alternative, in further view of Klemm (US Pub. No. 2020/0261785).
With respect to claims 14-16, Bach does not expressly teach wherein the side surface includes a machine-readable code. However, such limitations are directed to matter. Per MPEP 2111.05, If a new and unobvious functional relationship between the printed matter and the substrate does not exist. USPTO personnel need not give patentable weight to printed matter. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). 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 …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). The machine readable code is not considered to be functionally related to the game piece. The substrate (game piece surface) does not support the printed indicia and the indicia is not arranged such that it's positioned in a unique position with respect to the substrate. As such, no patentable weight is given to the machine-readable code.
In the alternative, examiner cites to Klemm, directed to the analogous art of game pieces. Klemm teaches such features as incorporating machine readable code, including a barcode and QR code, onto a surface of the game piece is known in the art – “readable optical data 12” (Fig. 1; paragraphs [0015] – [0016]). At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to add a readable code to the game piece of Bach. The motivation to combine is to allow users to scan with a smartphone to access relevant website content – See paragraphs [0015], [0018]. The proposed modification is considered to have a reasonable expectation as it can be conveniently applied via known printing techniques. Regarding the location of the code, Klemm teaches wherein it can be applied at “any ... surface” of the game piece (paragraph [0015]). One ordinary skill in the art would have found it obvious to apply it to a side surface to ensure that the code is viewable when the first and second parts are connected with the connector.
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
7. Claim 10-14 and 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-8 of U.S. Patent No. 11,745,092. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the patented claims reads on the present claims.
Regarding the limitations of the connector defining a lumen extending therethrough and defining a single hollow space therein, the first magnet being disposed along a perimeter of the opening, and the openings defining a female connector engageable with a male connector of the intermediate connector, examiner cites to MPEP 2144.04, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) for its teaching of the following: 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, the patented claims teach that in the closed configuration, the game piece comprises “a hollow space … configured to hold a prize therein” (claim 5), “first and second protruding portions of the intermediate connector comprise a magnetic material” (claim 5), first and second magnets disposed “on an inner surface” of first and second game pieces, and wherein “the first game piece part, the second game piece part, and the intermediate connector are releasably connected and the connection is maintained by a magnetic attractive force” (claim 5). As such, the differences in the arrangement of the single hollow space, male/female connectors and magnet position as claimed and the patented invention is considered obvious in view of MPEP 2144.04, In re Japikse.
Regarding the claimed pips, the patented claims teach a predetermined number of pips on a front surface, as opposed to first and second predetermined number of pips on first and second front surface portions of the first and second game piece parts, respectively, as claimed. However, such limitations are directed to printed. Applying the same legal analysis as above, no patentable weight is given to the claimed printed matter in view of MPEP 2111.05.
8. Claims 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-8 of U.S. Patent No. 11,745,092, or in the alternative, in further view of Klemm (US Pub. No. 2020/0261785).
With respect to claims 8-9 and 15-16, the patented claims teach machine-readable code on a side of the game pieces, but do not expressly disclose that the machine-readable code is a QR code or barcode as claimed. However, such limitations are directed to matter. Per MPEP 2111.05, If a new and unobvious functional relationship between the printed matter and the substrate does not exist. USPTO personnel need not give patentable weight to printed matter. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). 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 …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). The machine readable code is not considered to be functionally related to the game piece. The substrate (game piece surface) does not support the printed indicia and the indicia is not arranged such that it's positioned in a unique position with respect to the substrate. As such, no patentable weight is given to the machine-readable code.
In the alternative, examiner cites to Klemm, directed to the analogous art of game pieces. Klemm teaches such features as incorporating machine readable code in QR/barcode onto a surface of the game piece is known in the art – “readable optical data 12” (Fig. 1; paragraphs [0015] – [0016]). At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to utilize the machine-readable code species (i.e. QR code and barcode) provided by Klemm for the patented machine-readable code. The motivation to combine is to allow users to scan with a smartphone to access relevant website content – See paragraphs [0015], [0018].
Response to Arguments
9. Applicant’s arguments with respect to claim(s) 2/10/26 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
10. 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