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 .
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 6-7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Huley (US20040080108).
Regarding claim 1, Huley teaches a game board environment for a sport having two opponents (claim 1) with at least one die (claim 7) strategy cards (claim 8), and team tiles (claim 8).
Regarding claim 2, Huley teaches that the game simulation is either a physical game or electronically digitized (paragraph 182).
Printed Matter
In regard to claims 1, the Examiner cites MPEP 2111.05 in pertinent part regarding to limitations directed towards printed matter:
“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 Lowery, 32 F.3d at 1584, 32 USPQ2nd at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404).” Moreover “where a product merely serves as a support for printed matter, no functional relationship exists... 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, 2009 U.S. Appl. LEXIS 6667 (Fed. Cir. 2009) ... 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… Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists.” However, “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 unobvious.... 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 Examiner finds that there is no new and unobvious functional relationship between the game board simulation and the associated printed matter, e.g. “representing game play elements,” “representing unique abilities for each of the two opponents.” None of these additions to the corresponding strategy cards or team tiles change the function of the shooting target system itself. The printed matter is merely directed towards contents that are related to the visual of the system and therefore has no obvious functional relationship between the printed matter and substrate.
Intended Use
With regards to claim 1 there are many recitations of intended use, e.g. “for random selection of a number,” “combining random selection of a number using the at least one die, the strategy cards, and the team tiles to simulate game play of a sport.”
With regards to claim 3, it does not impart any structural limitation, it merely further defines the intended use set forth in claim 1.
With regards to claim 4, “execution” is an intended use of a die.
With regards to claim 5, there is recitation of intended use e.g. “for receiving the team tiles in different locations corresponding to each of the two components.”
With regards to claim 6, there is recitation of intended use e.g. “wherein the values of rolled dice of both components are compared to one other for gameplay action.”
With regards to claim 7, there is recitation of intended use e.g. “wherein each opponent has a fixed number of turns or possessions in each game event.”
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 1836 USPQ 458, 459 (CCPA 1963). In this case, the intended use does not result in a structural difference between the claimed invention and prior art. Huley teaches the structural limitations including the game board, dice, strategy cards, and tiles, and intended use of these components do not distinguish over the applied prior art.
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huley (US20040080108) in view of Keener (US20220339529). Huley teaches a game board environment for a sport having two opponents (claim 1) with at least one die (claim 7) strategy cards (claim 8), and team tiles (claim 8), but does not teach the game board including a recess. Keener teaches a game board in which “Each space can include a notch for receiving bumps from each of the hexagonal letter tiles that are placed to rest on the gameboard during gameplay. As with each notch formed in each of the stackable hexagonal letter tiles, the notches formed on each space assure that the hexagonal letter tiles as game pieces can stay firmly stacked during gameplay” (paragraph 13). It would have been obvious to a person having ordinary skill in the art at the effective time of filing to modify Huley’s game board by adding a notch or recess to receive the tiles as taught by Keener to allow for pieces to firmly stay.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RENEE FLORENCIA NERENBERG whose telephone number is (571)272-9599. The examiner can normally be reached M-F 7:30-5.
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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/R.F.N./Patent Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711