DETAILED ACTION
1. This action is made Final in response to applicants Amendments / Request for Reconsideration filed 3/16/26. Claims 1-23 and 26 are cancelled; no claims are amended; claims 24-25 and 27-28 are pending.
Claim Rejections - 35 USC § 102
2. 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
3. Claims 24-25 and 27-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Almarashda (US Pub. No. 2019/0351316).
With respect to claims 24-25 and 27-28, Almarashda teaches the following structure – a deck of physical cards 12 comprising of at least one sub-deck 18 of a number of physical cards and each face side of the physical cards bears an English letter (paragraph [0054]), wherein the physical cards of each sub-deck include a first set of non-zero number of cards and a second set of a non-zero number of physical cards, each physical card including a face side and a non-face side opposite the face side (Fig. 4; Table 1; paragraphs (Fig.’s 1-9; paragraphs [0050]-[0067]).
It is noted the claims are directed to apparatus claims, not method. As such, limitations directed to game rules will be treated as intended use / functional language. 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). The deck 12 of Almarashda can be arranged as intended, and can represent various categories, items as claimed.
Lastly, and regarding the claimed indicia of the cards, 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). 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. 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. Here, the substrate (the card 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 functionality of the substrate. The indicia are directed toward conveying game rules to a human reader independent of the functionality or structure of the supporting product (i.e. card surface). The card and indicia do not depend upon each other from a functional standpoint. There is not a new and unobvious functional relationship therebetween. Instead, the indicia are substantially analogous to the images on a playing card in In re Bryan, which failed to establish a new and unobvious functional relationship with the substrate. As such, no patentable weight is given to the aforementioned claimed printed matter.
Response to Arguments
4. Applicant's arguments 3/16/26 have been fully considered but they are not persuasive.
On pages 1-2, applicant provides a summary of the prosecution history, alleging that examiner “ignored” applicant’s request for reconsideration. This is simply untrue. The non-final rejection dated 11/29/23 explicitly addresses applicant’s request for reconsideration in paragraph 1.
Regarding applicant’s Table on pages 3-4, examiner and applicant have fundamental differences on structural versus nonstructural limitations. Examiner maintains the only structure being recited by the claims is the deck of physical cards comprising at least one sub-deck. The indicia on the cards are not structural limitations, but rather printed matter. The cells are not structural limitations. As applicant has conceded in Section Il of the Appeal Brief filed 7/30/25, a cell is merely an "organization" or "a grouping of the physical cards". See Page 3 of the Appeal Brief. Thus, applicant’s arguments pertaining to cells is merely intended use.
As set forth above in the rejection, the claims are directed to apparatus claims, not method. As such, limitations directed to game rules will be treated as intended use / functional language. 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). The deck 12 of Almarashda can be arranged as intended, and can represent various categories, items as claimed. Applicant is treating claim limitations directed to what the cards represent, and their category types as one would in a method claim. However, again examiner emphasizes the claims are not directed to method claims. Any card could represent a letter or category. Any card could belong to any type of arbitrary category. This appears to be the overriding fundamental differences or misunderstanding between applicant and examiner.
Regarding the claimed number of cards, examiner notes the applied reference Almarashida has a deck of physical cards 12 with a sub-deck 18 that can be arranged as claimed by the intended use, including being divided into groups of 26 cards. Further, the claims do not actually specify that each group comprise 26 cards.
Applicant argues that item physical cards and letter physical cards are structural limitations, examiner concedes that the cards are structure, but there is not structural difference between an item physical card(s) and a letter physical card(s). The differences are limited to their intended use and indicia printed thereon. MPEP 2111.05 require a non-obvious functional relationship between the printed matter. Examiner maintains that there is no unobvious functional relationship between the printed matter and the substrate. Applicant’s arguments do not attempt to establish a new and unobvious functional relationship between the printed matter and the substrate. Here, the substrate (the card 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 functionality of the substrate. The indicia are directed toward conveying game rules to a human reader independent of the functionality or structure of the supporting product (i.e. card surface). The card and indicia do not depend upon each other from a functional standpoint. Instead, the indicia are substantially analogous to the images on a playing card in In re Bryan, which failed to establish a new and unobvious functional relationship with the substrate. As such, no patentable weight is afforded to the printed matter limitations.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Jackson (US Pub. No. 2019/0168107).
THIS ACTION IS MADE FINAL. 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.
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.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711