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 .
Drawings
The drawings were received on 18 August 2023. These drawings are not accepted.
The drawings are objected to because the drawings have a line and shading quality that is too dark distinguish between different features and too dark to be reproduced. Refer to 37 CFR1.84(l). See Figures 3-6. The applicant has submitted color drawings for Figures 3-6. Color drawings are not accepted in utility application filed under 35 U.S.C. 111 unless a petition filed under 37 CFR 1.84(a)(2) or (b)(2) is granted. Color drawings are permitted on rare occasions in a utility patent application only if the color drawings are of sufficient quality such that all the details in the drawings are reproducible in black and white in the printed patent. See 37 CFR 1.84(a). In the present application, the color drawings are not of sufficient quality. In corresponding US 2024/0058687 A1, Figures 3-6 have a line and shading quality that is too dark to distinguish between different features. It is suggested to use labels, patterns, or shading to distinguish between the four different colors. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: The references to the color drawings on page 2 of the specification are objected to since the color drawings are not accepted as outlined in paragraph 3 above.
Appropriate correction is required.
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 1 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.
Regarding claim 1, lines 8-12, “eye” is indefinite. The specification depicts the “eyes” in Figure 6 and describes that a player may choose to purchase “eyes” during their turn but it is unclear if the term “eye” is structural or functional. It is unclear how “eye” limits the claim. Clarification is required.
Claim Rejections - 35 USC § 103
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Aharonian (US 4,915,391).
Regarding claim 1, Aharonian discloses a puzzle board [11] comprising: a. One pair of dice [19]; b. One pack of non-legal tender currency [13] no less than $10,000 US dollars (col. 5 lines 58-59 and col. 6 lines 12-14; wherein each player receives $12,000 at the start of the game and there are up to four players); c. One red game token [23]; d. One blue game token [23]; e. One green game token [23]; f. One yellow game token [23]; g. Ten red eye game pieces [25-1]; h. Ten blue eye game pieces [25-2]; i. Ten green eye game pieces [25-3]; j. Ten yellow eye game pieces [25-5]; and k. Four pink eye game pieces [15] (col. 2 lines 25-31, col. 4 line 56, col. 5 line 37- col. 6 line 14, and Figures 1-2; wherein the player markers [23] and property tile markers [25] are color coded). Aharonian teaches all the structural limitations of the claim. Aharonian further teaches that the player markers [23] and property tile markers [25] are color coded with four different colors, one for each player (col. 5 lines 46-58). Aharonian is silent as to the color of the Destiny Cards [15]. However, regarding the italicized limitations pertaining to color, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include any ornamentation or decoration depending on a user's preference, and it should be noted that matters pertaining to ornamentation which have no mechanical function cannot be relied upon to patentable distinguish the claimed invention from the prior art. See MPEP 2144.04 I. Swapping one color for another doesn’t alter the fundamental function of the game pieces or create a new technical effect and amounts to a simple substitution of one known color for another to obtain predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Also see Brown (US 2018/0353843 A1), Smolka (US 2012/0319352 A1), and “How to Play Monopoly Junior” which all disclose similar board games comprising dice and color-coded game pieces.
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.
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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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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711