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 .
Claim Objection
The examiner notes that claim 9 is being interpreted as an independent claim. The reference to claim 8 in the body of the claim is not in proper form if the applicant intended to have claim 9 depend on claim 8 (an apparatus claim). The examiner suggests applicant to delete the reference to claim 8 in claim 9 as the dependency should be set forth in the preamble.
Claim Rejections - 35 USC § 101
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.
Claims 9 and 10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception, specifically an abstract idea, without significantly more. Claims 9 recites a method of “inculcating cannabis culture” using a boardgame, which falls under the abstract idea of “methods of organizing human activity”, such as teaching and following rules or instructions. See MPEP Ch. 2106.04(a)(2): “An example of a claim reciting following rules or instructions is In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of “rules for playing games”, which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011.” Claim 10 merely recites further limitations of the rules of Claim 9, such as including other aspects of cannabis culture. Regarding Step 2(a)(ii) of the two-part framework of the Alice/Mayo test, this judicial exception is not integrated into a practical application because the additional elements of Claims 9 and 10, rules of a game, are methods of organizing human activity, which are well-understood, routine, and conventional. The claimed method does not improve another technology, nor the function of another device. Therefore, the claimed subject matter does not integrate the abstract idea into a practical application as the claims are merely providing rules to the game or how the game is played.
Regarding step 2(b), Claims 9 and 10 do not include additional elements that are sufficient to amount to significantly more than the judicial except. The only additional element is the “boardgame” which indirectly includes a “game board” (claim 10). The game board is not even positively defined in Claim 9. Assuming arguendo that the game board is claimed in Claim 9, the examiner takes official notice that gameboards are conventional or routine means to play board games. Therefore, the additional element of a game board does not significantly add more to the abstract idea so that both Claims 9 and 10 are not directed to patent-eligible subject matter.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Agarwal (WO 2018109569).
Regarding Claim 1, Agarwal teaches a boardgame comprising: a start space (pg.8, paragraph 35, “Play begins on square number 1”; Figure 3); a finish space (pg.8, paragraph 35, “finishes at square 100”; Figure 3); a plurality of defined spaces between said start and finish spaces (pg.8, paragraph 35; Figure 3), said spaces provide sequential numbering for directing movement of a player’s game piece from said start to said finishing point (pg.8, paragraph 35, “100 squares numbered 1 to 100”; Figure 3) based on randomly generated numbers (pg. 9, paragraph 37, “players take turns to roll a score dice number”); directional indicia on preselected spaces for moving a player's game piece when a player's turn ends with the player landing on one of said preselected directional indicia containing spaces (pg. 9, paragraph 37, lines 1-3; Figure 3), so that the player’s game piece is moved sequentially forward or backward to a distal end of the respective directional indicia (pg. 9, paragraph 37, ladder indicates upward movement and snakehead indicates downward movement; Figure 3); and a direction associated with each directional indicum physically touches at least a portion of an indicum represented on the respective preselected spaces (pg. 9, paragraph 37, “if a player lands on a square that has the head of a snake…”) and wherein a direction of the directional indicum corresponds with a specific direction (pg. 9, paragraph 37, “ If a player lands on a square that has the base of a ladder upon it then they automatically advance their position by moving up to the top of the ladder. Similarly, if a player lands on a square that has the head of a snake or earthworm or centipede or any other hurdle described in this patent application, upon it then the player must automatically follow down to the tail of the snake thereby losing position”). Agarwal does not disclose a cannabis-related indicum represented on the respective preselected spaces, wherein a direction of the directional indicum corresponds with a psychoactive direction, as ascribed by cannabis culture. However, Agarwal discloses a ladder and snakehead to indicate forward and backward movement. A mere replacement of printed matter, such as substituting a snakehead and ladder for cannabis-related indicia, does not hold patentable weight (see below).
All of the limitations in the body of the claims for Claims 1-8, 10 are directed towards printed matter including the start space, finish space, directional indicia, gameboard design, etc. See MPEP 2111.05, Section I, Subsection A: “to be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated. See Lowry, 32 F.3d at 1584, 32 USPQ2d at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404).” Furthermore, MPEP 2111.05, Section II also states “Once a functional relationship between the product and associated printed matter is found, the investigation shifts to the determination of whether the relationship is new and nonobvious. The claim may, however, be anticipated by prior art that reads on the claimed invention, or by a combination of prior art that teaches the claimed invention”. The functional relationship between the printed matter (cannabis-related indicum) and associated product (boardgame) of the instantly claimed invention is not new and unobvious. All of the printed matter as claimed are merely the contents of the printed matter which are related to the game board. The examiner finds that the printed matter has an obvious functional relationship with the substrate (game board which is not even positively claimed in claims 1-8) as the printed matter is providing instructions to players for playing the intended game.
Regarding Claim 8, Agarwal shows a poster of rules as claimed (Claim 8 and Fig. 7).
Regarding Claim 9, Agarwal teaches a method of playing a boardgame; generating a random number (paragraph 37, line 1, “players take turns to roll a score on a dice”); moving the player’s game piece sequentially (35, line 6, “all player will make his path movement step by step”), based on the generated random number (paragraph 37, first sentence), to a landing space (paragraph 37, line 2, “if a player lands on a square…”); and moving the player’s game piece to the distal end of the directional indicia associated with the landing space (paragraph 37, lines 2-6).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SABA ALI whose telephone number is (571)272-0268. The examiner can normally be reached 8:00 a.m. - 5 p.m..
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/SABA N. ALI/Patent Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711