DETAILED ACTION
Priority
1. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosure of the prior-filed application, Application No. 17/224875, fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for claims 1-10 of this application.
With respect to claim 1, the following limitations are not supported by the parent application – “A game system comprising: an at least one electronic computing device comprising a processor, one or more databases, and a screen, said processor controlled by software programmed to implement and display virtual representations of … ”
With respect to claim 6, the following limitations are not supported by the parent application – “A virtual game system comprising software that is configured to be loaded as an app on a portable electronic device or loaded directly onto a computer system that is configured to be enabled by said device or system's inherent processor and provide a virtual game system comprising: virtual representations on said device or system's inherent screen or a separate screen of …”.
Claim Rejections - 35 USC § 112
2. 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.
Claims 1-10 are 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.
Claims 1 and 6 recite the limitation "the changing of inserts”. There is insufficient antecedent basis for this limitation in the claim. Moreover, it is unclear which insert is being changed. Applicant should establish proper antecedent basis and clarify which insert or inserts, is being referenced.
Claims 1 and 6 recite the limitation "the desired game structure”. There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 1 and 6, the phrase “said engagement process "may" comprise …” renders the claim indefinite because it is unclear whether the limitation(s) following the “may” are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a set of instructions for a “game”. Specifically, the instructions comprise players “engaging in a preliminary engagement process”, “developing a set of games rules” and making “in-game game board modifications” which is grouped under: 1) Certain Methods of Organizing Human Activity, subgroup ‘Managing Personal Behavior or Relationships or Interactions between People’, including following rules or instructions - MPEP 2106.04(a)(2)(II)C; and/or 2) Fundamental Economic Practices or Principles, including rules for conducting a wagering game –MPEP 2106.04(a)(2)(II)A.
5. This judicial exception is not integrated into a practical application. Under Step 2A: Prong Two, additional limitation(s) or a combination of additional elements are evaluated to determine if those elements integrate the judicial exception into a practical application of the exception. MPEP 2106.04(d).
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a);
Applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and
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
Limitations that are not indicative of integration into a practical application:
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); and
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Here, the Abstract idea (i.e. judicial exception) is not integrated into a practical application because the instructions to the game are applied using general gaming technology as opposed to a particular machine. There is no improvement to any functioning of computer technology. No transformation or reduction of a particular article occurs. The rules are generally linked to gaming technology elements. Regarding the game related printed matter, or “virtual” representations, such limitations are directed to non-functional descriptive material, which generally falls outside the scope of patent-eligible subject matter under § 101. See In re Marco Guldenaar Holding B.V., 911 F.3d at 1157, 1160, and 1161 (Fed. Circ. 2018).
6. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered separately and in ordered combination, and within the context and character of the claims as a whole, the claimed additional elements (listed below) are conventional and widely prevalent in the gaming art. MPEP 2106.05 – “Eligibility Step 2B: Whether a Claim Amounts to Significantly More”. The claimed additional elements other than the limitations pertaining to the abstract idea include:
- electronic computing device, processor, database, screen (claims 1-5)
- no additional elements are present in claims 6-10 as the claims are directed to software.
The question of whether certain claim limitations represent well-understood, routine and conventional is a question of fact. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Circ. 2018). Here, applicant’s specification at paragraphs [0003], [0005], applicant recognizes that it has been well established that games have been presented in a digital or virtual manner, and enabled playable on a computer, tablet phone and the like, as electronic versions of the same physical board. Moreover, examiner takes OFFICIAL NOTICE that the aforementioned additional elements are routing and convention in the gaming art.
Claim Rejections - 35 USC § 101
7. 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.
8. Claims 6-10 are also rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does not fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter) because: claims are directed to software per se.
Claim Rejections - 35 USC § 103
9. 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.
10. 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.
11. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Peterson (US Pub. No. 2021/0316207) in view of Haussila et al. (US Pub. No. 2013/0275868).
With respect to claims 1-10, Peterson teaches a physical version of a therapeutic customizable game board system comprising various embodiments each usable with the game board, wherein the embodiments are expressly disclosed to be “not mutually exclusive” (paragraph [0091]).
With respect to claims 1-10, Peterson teaches embodiments comprising a customizable, hinged 2, foldable blank board 1 wherein, said board further comprises attachment mechanisms including at least, magnets and hook and loop fasteners (paragraph [0034]), and wherein said customization includes at least: an at least one individually sized space 3, wherein said at least one space is attachable and detachable to the board, comprising at least one playing space that is individually alignable and arrangeable in any non- preconfigured and non-preguided orientation or path and configured to attach and detach from said board before, during, and after game play (paragraph [0095]; See also Fig.’s 1-2 showing unique space paths; See also “wherein said spaces … are individually alignable, attachable to, a detachable from, said board, and arrangeable in a desired configuration” – claim 1), structure inserts 21, wherein said structure inserts are attachable and detachable housings configured to attach and detach from said board 1 and further configured to receive inserts comprising images or other content wherein said inserts are configured to be aesthetic or act as procedural game prompts and configured to allow for the changing of inserts before, during, and after game play (Fig. 16; paragraphs [0064] – “structure inserts … may simply be adaptable housings”; See also [0114]), space inserts, wherein said space inserts comprise either a housing configured to accept an image and is attachable and detachable to any space or an image configured to be directly attachable to any space wherein when said space insert is utilized with any space, it is configured to be aesthetic or act as a procedural game prompt (paragraphs [0019], [0114], [0118]), an at least one customizable spinner 5 wherein said spinner 5 comprises four quadrants configured as a housing to accept individual images (Fig. 1; paragraph [0036]), content cards 6 wherein said content cards comprise subject matter that act as game prompts (claim 1; Fig. 1; paragraph [0048], [0095]), content markers 12, wherein said content markers comprise game components to house specific pre-chosen game concept constructs comprising an emotion to be described, an action to be taken, or a term to be discussed and are configured to allow for interchangeable components and writeable and erasable surfaces configured to allow for adaptability and development before, during, and after game play (paragraphs [0098], [0072], [0079]-[0080]), marking inserts 15, wherein said marking inserts comprise a housing area configured to accept, interchangeably, customizable question cards 14 and a response area 16 configured to allow a writeable and erasable answer to said question card 14, wherein play is always prefaced by and predicated upon a first and a second player engaging in a preliminary engagement process to determine the desired game structure and game elements according to the foregoing and developing a set of game rules in connection with each of the chosen said spaces, structure inserts, space inserts, spinner, content cards, content markers, and marking inserts and wherein said engagement process may comprise ongoing in- game game board modifications (paragraph [0049] – “engagers are encouraged to modify and develop the engagement structure; [0064]; claim 1; ); reflection cards, wherein said reflection cards comprise expressive images and specific characters configured as an engagement prompt (paragraph [0045]); wherein the structure inserts are configured to be face-off inserts wherein said face-off inserts substantially alter game play by superseding said at least one playing game space and space inserts within the game board (Fig. 23; paragraph [0129]);
further comprising game components chosen from the group of: game pieces (paragraph [0118]), game currency 22 (paragraph [0116]), game decisional means (claim 1), and gaming cards (claim 1; paragraph [0130]); and further comprises game components chosen from the group of: sports trading cards (paragraph [0124]), pre-existing gaming cards (paragraph [0033]), artwork Id., pictures Id., outside activity games, at least one of a specific spinner type (claim 5), face-off structure inserts (paragraph [0129]; claim 5), and storylines (claim 5).
As stated above, the teachings of Peterson set forth above are derived from numerous embodiments usable with base game board 1, as opposed to a single disclosed embodiment. However, Peterson expressly teaches that they are “not mutually exclusive” (paragraph [0091]) and that the invention is “customizable” such that “many combinations of game play can be obtained” Id. Thus, a person ordinary skill in the art would have found it obvious to provide each of the embodiments within a larger customizable game-board system. A large customizable game system, comprising each of the disclosed embodiments, will expectantly allow a user to pick and choose which features they play for each use. This will expectantly induce creativity and avoid becoming bored with the same game component. Moreover, the rationale to combine is to add diversity to the game rules and allow each user to develop and explore new avenues of game play.
Admittedly, Peterson does not expressly teach the digital components of the game. However, analogous art reference Haussila teaches the following to be known in the art: a game system comprising: an at least one electronic computing device comprising a processor, one or more databases, and a screen, said processor controlled by software programmed to implement and display virtual representations (Fig.’s 9-10; paragraphs [0029]-[0034]); and a virtual game system comprising software that is configured to be loaded as an app on a portable electronic device or loaded directly onto a computer system that is configured to be enabled by said device or system's inherent processor and provide a virtual game system comprising: virtual representations on said device or system's inherent screen or a separate screen Id. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to incorporate the customizable game system of Peterson into a digital embodiment comprising the specific electronic device components as claimed and taught by Huassila. The rationale to combine is allow convenient game play on common devices like smart phones, tablets and/or computers.
Conclusion
12. 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