DETAILED ACTION
This Office action is responsive to the following communication received:
07/28/2023 – application papers received;
09/26/2023 – power of attorney;
10/10/2023 – IDS; and
11/15/2023 – preliminary amendment, including amendments to claims, specification and abstract.
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 .
Continuation Data
This application is a 371 of PCT/DE2022/200014 02/01/2022.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-14 have been canceled.
Claims 15-34 remain pending.
Drawings
The drawings were received on 07/28/2023. These drawings are acceptable.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 112(b)
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 15-34 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.
As to claims 15-24, 26-28 and 30-33, the frequent use of the phrase “and/or” throughout the claim set is confusing, as it appears that the applicant is attempting to identify multiple embodiments of varying scope within the boundaries and scope of the claims. The applicant is urged to clarify the phrases containing “and/or” so that a specific embodiment is distinctly recited. Note the following instances of “and/or” identified in the claims:
Claim 15 – lines 9, 13, 14, 24;
Claim 16 – lines 4 and 9;
Claim 17 – lines 2, 7, 9, 12, 13;
Claim 18 – line 4;
Claim 19 – lines 2, 7, 10,
Claim 20 – line 3;
Claim 21 – lines 5, 8;
Claim 22 – line 2,
Claim 23 – lines 2, 4, 6;
Claim 24 – lines 2, 5;
Claim 26 – line 4;
Claim 27 – lines 4, 10, 11;
Claim 28 – line 2;
Claim 30 – line 2;
Claim 31 – line 2;
Claim 32 – lines 2, 4; and
Claim 33 – line 2.
More specific to independent claim 15, line 15, the language “as the case might be” is indefinite. In line 18, “comprises/comprise” is confusing.
As to claim 18, line 1, should “receiving” instead read --receiving contour--?
As to claim 21, line 8 “is/are” is confusing.
As to claim 22, line 3, “is/are” is confusing.
As to claim 23, lines 5, 7 and 8-9, the language “as the case might be” is indefinite.
As to claim 24, line 3, “comprises/comprise” is confusing and “is/are” is confusing. In line 5, the language “as the case might be” is indefinite.
As to claim 25, this claim shares the indefiniteness of claim 15.
As to claim 26, lines 2-3, the language “as the case might be” is indefinite.
As to claim 27, lines 2-3, 8 and 11-12, the language “as the case might be” is indefinite. Also, in lines 4-8, comparison of the claimed “receiving elevation above the playing area plane” as compared to “a height of the movable game element” is not clear, as the movable game element has not been positively recited as a part of the game set. Note that the preamble in independent claim 15 sets forth that the game set includes a “stationary playing area which is arranged in a playing area plane for a movable game element” (emphasis added). The movable game element is recited as part of a functional phrase.
As to claim 28, line 3, “is/are” is confusing. Also, the term “designed” in line 3 is indefinite.
As to claim 29, this claim shares the indefiniteness of claim 28.
As to claim 32, line 5, “has/have” is confusing. Also, in lines 3-4, “the third receptacle, the fourth receptacle and/or the further receptacle” lacks proper antecedent basis. Note that the third receptacle, fourth receptacle and/or further receptacle are first recited in claim 16.
As to claim 33, line 3, “the movable game equipment” lacks proper antecedent basis.
As to claim 34, this claim shares the indefiniteness of claim 33, which depends from claim 15.
The Office has made every effort to identify all instances of indefiniteness in the current claim set. To the extent that any remaining occurrences of indefiniteness may exist in the claims, the applicant is respectfully asked to thoroughly review the claims and to amend the claims to capture and to correct any remaining instances of indefiniteness of which the applicant may become aware of during the preparation of a response to this Office action.
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 (i.e., changing from AIA to pre-AIA ) 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, 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 for establishing a background for determining obviousness under 35 U.S.C. 103 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 Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 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. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
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.
Claims 15 and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2019/0118074 to Heringer in view of USPN 7,905,489 to Cornfield.
As to independent claim 15, Heringer discloses a playing area plane (2) wherein a movable game element is capable of being moved within the boundary of the playing area plane. It is noted that the movable game element is only recited in a functional clause and has not been definitively recited in the claim. Heringer shows a first edge element, a second edge element and a further edge element, along with a connection element, with the first edge element detachably connected to the second edge element through the connection element and with the first edge element and the second edge element comprising a strip-shaped main body having a bistable arrangement, and exhibiting a stretched and a rolled-up position, with the strip-shaped body of each of the first edge element and the second edge element connecting in the first receptacle and the second receptacle, respectively, as broadly as claimed. Note that paragraphs [0032] – [0034] in Heringer explain the bistable characteristics of the spring band (7), along with an explanation of spring band including a curved cross-section which has a curvature contour. The further edge element identified herein may include the same material as the first and second edge elements (i.e., see paragraph [0029]. Also, the “receptacle” may include a snap-fit arrangement at element (11), as described in paragraph [0030]). See annotated FIG. 1 of Heringer, below (top of next page).
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Heringer discloses a snap fit arrangement for securing the identified first and second edge elements to the connection element, but does not clearly show that the curvature contour of the curved cross section of the strip-shaped body is received in the receptacle, insofar as either the first edge element or the second edge element. Cornfield shows it to be old in the art to connect plural elements of a game set that is used to outline a border of a playing area for a movable element (i.e., a horseshoe), wherein a snap fit arrangement occurs within a receptacle, as explained in col. 6, lines 51-65 and as shown in FIG. 3. The arrangement in Cornfield provides a releasably engageable, yet sturdy connection among the various game elements. In view of the teaching in Cornfield, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the device in Heringer by providing first and second receptacles, respectively, for the first and second edge elements, the motivation being to provide a more secure attachment among the components.
As to claim 30, the first edge element and the second edge element are a spring band, which clearly functions as the claimed “slap band” or “snap band”, and differing only in terminology. Again, see paragraphs [0032] – [0034] in Heringer.
As to claim 31, the first edge element and the second edge element are connected by a plurality of connection elements (i.e., considering the alternative language “or by a plurality of connection elements”, note that each corner of the playing area includes a connection element or snap fit), along with the playing area being completely surrounded (i.e., see FIG. 1 in Heringer).
As to claim 32, although Heringer does not disclose specifics of a height for the edge elements or receptacle identified herein, Heringer is directed towards providing a playing surface within a confined perimeter and as such it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have sized the edge elements and the receptacles to a height that enables any game elements situated within the playing area (2) from becoming misplaced or scattered outside of the playing area.
Claims 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over US PUBS 2019/0118074 to Heringer in view of USPN 7,905,489 to Cornfield and also in view of USPN 3,679,209 to Wexstaff.
As to claims 33-34, Heringer, as modified by Cornfield, lacks “the movable game element is a ball, a sphere or a disc, and/or the movable game equipment is a bat, a pusher or a playing handle” (claim 33) and “the disc has a round cross-section” (claim 34). It is noted that the movable game element is only first recited in a functional clause in independent claim 15. Moreover, the Heringer device is clearly capable of containing a movable ball element that itself may be manipulated or moved within the perimeter of the playing surface or field (2).
Here, Wexstaff shows it to be old in the art of simulated games to provide a game club, which may serve as the claimed “pusher or playing handle” along with a disc-shaped projectile that includes “a round cross-section” (i.e., see FIGS. 5 and 7 along with col. 1, line 42 identifying club 11, and col. 2, line 5 identifying playing piece P). The club is used to navigate the projectile along a playing surface (i.e., col. 1, lines 1-5 and lines 29-35 in Wexstaff). Thus, in view of the teaching in Wexstaff, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the device in Heringer by providing a pusher or playing handle along with a disc-shaped projectile having a round cross-section in order to provide game implements that are routinely associated with games simulating common activities such as golf and hockey. The game club and disc in Wexstaff provide additional realism to the game.
Allowable Subject Matter
Claims 16-29 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Figs. 12C-12D in Lewis;
Figs. 7 and 9 in Hsu;
Fig. 2 in Ralli;
Fig. 3d and 4a in Lessack;
Figs. 1, 2 and 4 in Chen;
Figs. 7-9 in Trifonov;
Fig. 3 in Richards;
Figs. 1A and 2E-3 in Simunek;
Fig. 1 in Denney;
Fig. 3 in McEwan;
Fig. 22 in Falzarano;
Fig. 1 in Fitzgerald;
Fig. 1 in Hudon;
Figs. 1-2 in Ciarfello;
Fig. 3 in Robertson;
Fig. 1 in Nehl;
Fig. 1 in Stokes; and
Fig. 1 in Cairns.
Conclusion
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711