DETAILED ACTION
This Office action is in response to amendments received 10 March 2026.
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 Objections
Claims 10-20 are objected to because of the following informalities: Regarding claim 10, line 6, “a play markers” should be changed to a play marker. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mullenbach (US 11,173,385 B2).
Regarding claim 1, Mullenbach discloses a travel game board [14] comprising: a first planar surface [40] (specifically, see top surface of printed layer [40] in Figure 8) imprinted with a gaming pattern [18, 19, 20], wherein the first planar surface [40] (specifically, see top surface of printed layer [40] in Figure 8) is foldable from a playing position to a folded storage position (col. 3 line 48: “folded and unfolded”) and rollable from the playing position to a rolled storage position (col. 3 line 48: “rolled and unrolled”); wherein the gaming pattern [18, 19, 20] comprises at least one playing element [19] dimensioned to receive a standard playing card (wherein the largest concentric circle [19] is capable of receiving a standard playing card) (col. 2 lines 7-23, col. 3 line 34 – col. 4 line 30, col. 6 lines 6-9, and Figures 1-3 and 8-9). Regarding the italicized claim language, although disclosed by Mullenbach, the claim language amounts to printed matter. Such instructions, descriptions, or indicia only serve to communicate the rules of the game to the players. These rules merely describe those elements in a manner that conveys intelligence to the players. They are instructions or indications of how to play the game and one cannot continue patenting a product indefinitely provided that they associate a new set of rules with known game boards and pieces. Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product. See MPEP 2112.01. The indicia on the game board are functional limitations, rules, or instructions that have no physical tie to the substrate. Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Any differences residing in meaning and information conveyed by printed matter are not considered patentable subject matter. No patentable weight is given to the printed matter unless there is an unobvious functional relationship between the printed matter and the substrate. See MPEP 2111.05. Assuming, for the sake of argument, that there is a functional relationship between the printed matter and the substrate, the examiner does not find there to be an unobvious functional relationship between the printed matter and the substrate as the printed matter is merely conveying information to the players in the game in an obvious and routine matter. As such, no patentable weight is given to the claimed printed matter. Additionally, it should be appreciated that the applicant’s functional language in the claim (dimensioned to receive a standard playing card) does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, Mullenbach’s game board is capable of receiving a standard playing card.
Regarding claim 2, Mullenbach discloses the game board of claim 1, wherein the first planar surface [40] (specifically, see top surface of printed layer [40] in Figure 8) is washable (see col. 3 line 62 – col. 4 line 15; wherein the printed layer [40] is fabric, i.e., washable, or wherein the game board includes water resistance lamination layer [41] and can thus be wiped clean).
Regarding claim 3, Mullenbach discloses the game board of claim 1, wherein the first planar surface [40] (specifically, see top surface of printed layer [40] in Figure 8) is water resistant (see lamination layer [41]) (col. 3 line 62 – col. 4 line 15 and Figure 8).
Regarding claim 4, Mullenbach discloses the game board of claim 1, wherein the first planar surface [40] (specifically, see top surface of printed layer [40] in Figure 8) has a coating [41] (col. 4 lines 3-15 and Figure 8).
Regarding claim 5, Mullenbach discloses the game board of claim 1, wherein the first planar surface [40] (specifically, see top surface of printed layer [40] in Figure 8) comprises a fabric (col. 3 lines 63-65 and Figure 8).
Regarding claim 6, Mullenbach discloses the game board of claim 1, wherein the gaming pattern [18, 19, 20] comprises ink (col. 3 lines 55-61 and Figures 1-3).
Regarding claim 8, Mullenbach discloses the game board of claim 1, further comprising: a second planar surface [40] (specifically, see bottom surface of printed layer [40] in Figure 8) opposite the first planar surface [40] (specifically, see top surface of printed layer [40] in Figure 8); and a thickness between the first planar surface [40] (specifically, see top surface of printed layer [40] in Figure 8) and the second planar surface [40] (specifically, see bottom surface of printed layer [40] in Figure 8) (col. 3 lines 63-65 and Figure 8).
Claims 1-2, 5-6, and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Raasch (DE 202013006340 U1 using machine translation and translated image).
Regarding claim 1, Raasch discloses a travel game board (Abstract: “board game”) comprising: a first planar surface (translated image: “front side”) imprinted with a gaming pattern (chess board), wherein the first planar surface (translated image: “front side”) is foldable from a playing position to a folded storage position and rollable from the playing position to a rolled storage position (Description: “[t]he printed cloth and the pieces are packed in a cardboard tube, tin can or cloth bag;” wherein it is inherent that a cloth can be folded or rolled); wherein the gaming pattern (chess board) comprises at least one playing element (chess squares) dimensioned to receive a standard playing card (translated image). Regarding the italicized claim language, although disclosed by Raasch, the claim language amounts to printed matter. Such instructions, descriptions, or indicia only serve to communicate the rules of the game to the players. These rules merely describe those elements in a manner that conveys intelligence to the players. They are instructions or indications of how to play the game and one cannot continue patenting a product indefinitely provided that they associate a new set of rules with known game boards and pieces. Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product. See MPEP 2112.01. The indicia on the game board are functional limitations, rules, or instructions that have no physical tie to the substrate. Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Any differences residing in meaning and information conveyed by printed matter are not considered patentable subject matter. No patentable weight is given to the printed matter unless there is an unobvious functional relationship between the printed matter and the substrate. See MPEP 2111.05. Assuming, for the sake of argument, that there is a functional relationship between the printed matter and the substrate, the examiner does not find there to be an unobvious functional relationship between the printed matter and the substrate as the printed matter is merely conveying information to the players in the game in an obvious and routine matter. As such, no patentable weight is given to the claimed printed matter. Additionally, it should be appreciated that the applicant’s functional language in the claim (dimensioned to receive a standard playing card) does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, Raasch’s game board is capable of receiving a standard playing card.
Regarding claim 2, Raasch discloses the game board of claim 1, wherein the first planar surface (translated image: “front side”) is washable (Abstract; wherein the cloth is cotton and cotton is washable).
Regarding claim 5, Raasch discloses the game board of claim 1, wherein the first planar surface (translated image: “front side”) comprises a fabric (Abstract: “cotton”).
Regarding claim 6, Raasch discloses the game board of claim 1, wherein the gaming pattern (chess board) comprises ink (Abstract: “thermal transfer or screen printing;” wherein both of these methods use ink).
Regarding claim 8, Raasch discloses the game board of claim 1, further comprising: a second planar surface (translated image: “back side”) opposite the first planar surface (translated image: “front side”); and a thickness between the first planar surface (translated image: “front side”) and the second planar surface (translated image: “back side”) (Abstract, Description, and translated image).
Regarding claim 9, Raasch discloses the game board of claim 8, wherein the second planar surface (translated image: “back side”) is imprinted with a second gaming pattern (backgammon) different than the gaming pattern (chess board) of the first planar surface (translated image: “front side”) (Abstract, Description, and translated image). Regarding the italicized claim language, although disclosed by Raasch, the claim language amounts to printed matter which is not given patentable weight for the reasons provided in paragraph 13 above.
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.
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over Mullenbach as applied to claim 8 above, and further in view of Raasch.
Regarding claim 9, Mullenbach does not disclose the second planar surface being imprinted with a second gaming pattern different than the gaming pattern of the first planar surface. Raasch, however, teaches a similar travel game board (Abstract: “board game”) comprising: a first planar surface (translated image: “front side”) imprinted with a gaming pattern (chess board), wherein the first planar surface (translated image: “front side”) is foldable and rollable (Description: “[t]he printed cloth and the pieces are packed in a cardboard tube, tin can or cloth bag;” wherein it is inherent that a cloth can be folded or rolled), a second planar surface (translated image: “back side”) opposite the first planar surface (translated image: “front side”); wherein the second planar surface (translated image: “back side”) is imprinted with a second gaming pattern (backgammon) different than the gaming pattern (chess board) of the first planar surface (translated image: “front side”) (Abstract, Description, and translated image). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure Mullenbach’s second planar surface to be imprinted with a second gaming pattern different that the gaming pattern of the first planar surface being Raasch discloses that this configuration allows for two game variants to be played with one transportable game board (Abstract and Description). Additionally, regarding the italicized claim language relating to the printing of gaming patterns, this recitation does not result in a structural difference over the prior art and is instead directed to printed matter which is not given patentable weight for the reasons provided in paragraph 13 above.
Claims 10-13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Raasch in view of Korean Publication (KR 200444869 Y1 using machine translation; hereinafter KR).
Regarding claims 10-12, Raasch discloses a travel gaming system (Figure) comprising: a flexible travel game board (Abstract: “board game”) comprising a first planar surface (translated image: “front side”) imprinted with a gaming pattern (chess board), wherein the first planar surface (translated image: “front side”) is foldable from a playing position to a first folded storage position (Description: “[t]he printed cloth and the pieces are packed in a cardboard tube, tin can or cloth bag;” wherein it is inherent that a cloth can be folded); at least one playing component (Description: “game pieces”), said playing component comprising a deck of playing cards, a die, a cube, a marble, and a play markers (Description: “game pieces”); a storage pouch (Description: “cloth bag”), the storage pouch (Description: “cloth bag”) configured to house the flexible travel game board (Abstract: “board game”) and the at least one playing component (Description: “game pieces”) (Description: “[t]he printed cloth and the pieces are packed in a…cloth bag”); wherein the travel game board (Abstract: “board game”), the playing components (Description: “game pieces”), and the storage pouch (Description: “cloth bag”) have a total package weight (Abstract, Description, and translated image). Raasch does not disclose the total package weight being less than ten ounces, less than eight ounces, or less than six ounces. KR, however, discloses a similar travel gaming system [1] comprising: a flexible travel game board [10], playing components (page 4: “black stones and white stones”), and storage pouch [20], wherein the travel game board [10], the playing components (page 4: “black stones and white stones”), and the storage pouch [20] have a total package weight that is light (pages 1-4 and Figures 1-2 and 5-8). KR discloses the light weight of the portable game device achieving the result of carrying ease and portability (pages 1-2); thus a person having ordinary skill in the art would have recognized that weight is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure Raasch’s travel gaming system to be less than six ounces to achieve desired carrying ease and portability, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II. Regarding the italicized claim language, although disclosed by Raasch, the claim language amounts to printed matter. Such instructions, descriptions, or indicia only serve to communicate the rules of the game to the players. These rules merely describe those elements in a manner that conveys intelligence to the players. They are instructions or indications of how to play the game and one cannot continue patenting a product indefinitely provided that they associate a new set of rules with known game boards and pieces. Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product. See MPEP 2112.01. The indicia on the game board are functional limitations, rules, or instructions that have no physical tie to the substrate. Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Any differences residing in meaning and information conveyed by printed matter are not considered patentable subject matter. No patentable weight is given to the printed matter unless there is an unobvious functional relationship between the printed matter and the substrate. See MPEP 2111.05. Assuming, for the sake of argument, that there is a functional relationship between the printed matter and the substrate, the examiner does not find there to be an unobvious functional relationship between the printed matter and the substrate as the printed matter is merely conveying information to the players in the game in an obvious and routine matter. As such, no patentable weight is given to the claimed printed matter.
Regarding claim 13, the modified Raasch discloses the travel gaming system of claim 10, wherein the flexible travel game board (Abstract: “board game”) is washable (Abstract; wherein the cloth is cotton and cotton is washable).
Regarding claim 16, the modified Raasch discloses the travel gaming system, of claim 10, wherein the first planar surface (translated image: “front side”) is foldable from the playing position to a second folded storage position different from the first storage position (Description: “[t]he printed cloth and the pieces are packed in a cardboard tube, tin can or cloth bag;” wherein the printed cloth can be folded differently each time it is stored).
Regarding claim 17, the modified Raasch discloses the travel gaming system of claim 10, wherein the flexible travel game board (Abstract: “board game”) is rollable from the playing position to a rolled position (Description: “[t]he printed cloth and the pieces are packed in a cardboard tube, tin can or cloth bag;” wherein the printed cloth is capable of being rolled).
Regarding claim 18, the modified Raasch discloses the travel gaming system of claim 10, wherein the gaming pattern (chess board) comprises at least one playing element (chess squares) configured to receive a standard playing card (translated image). Regarding the italicized claim language, although capable by Raasch, this claim language amounts to printed matter which is not given patentable weight for the reasons provided in paragraph 23 above. Additionally, it should be appreciated that the applicant’s functional language in the claim (configured to receive a standard playing card) does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Additionally, Raasch’s game board is capable of receiving a standard playing card.
Regarding claim 19, the modified Raasch discloses the travel gaming system of claim 10, wherein the flexible travel game board (Abstract: “board game”) has a first length and a first width in the playing position (see translated image), and the flexible travel game board has a playing area defined by the first length and the first width (translated image).
Regarding claim 20, the modified Raasch discloses the travel gaming system of claim 19, wherein the storage pouch (Description: “cloth bag”) has a length and a width, the storage pouch (Description: “cloth bag”) having a storage area defined by the length and the width (Description). The modified Raasch does not disclose the storage area being between at least 50% and 95% less than the playing area of the flexible travel game board. However, Raasch discloses the game board fitting into the smallest space achieving the result of easy transportation (Description); thus a person having ordinary skill in the art would have recognized that packed storage area is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure the modified Raasch storage area to be between at least 50% and 95% less than the playing area to achieve desired mobility and ease of transport, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II. Additionally, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to size the claimed apparatus in accordance to the system requirement, because such a modification would have involved a mere change in the size of the claimed apparatus. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04 IV A.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Raasch in view of KR as applied to claim 10 above, and further in view of Mullenbach.
Regarding claims 14-15, the modified Raasch does not disclose the flexible travel game board being water resistant or water repellant. Mullenbach, however, teaches a similar flexible travel game board [14], wherein the flexible travel game board [14] is water resistant/repellant (see lamination layer [41]) (col. 3 line 34 – col. 4 line 15 and Figure 8). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure the modified Raasch’s flexible travel game board to be water resistant and water repellant because Mullenbach teaches that this configuration is advantageous for durability (col. 3 line 62 – col. 4 line 15).
Response to Arguments
Applicant's arguments filed 10 March 2026 have been fully considered but they are not persuasive.
Regarding pages 8-11 of the Remarks, the applicant argued that neither Mullenbach nor Raasch anticipate the limitation “wherein the gaming pattern comprises at least one playing element dimensioned to receive a standard playing card.” The applicant disagreed that this “wherein the gaming pattern comprises at least one playing element configured to receive a standard playing card” is functional rather than structural but nevertheless changed “configured to” to dimensioned to recite a structural limitation. The examiner disagrees that the change results in a structural limitation. A gaming pattern comprising at least one playing element dimensioned to receive a standard playing card is still a functional limitation. First, the imprinted gaming pattern amounts to printed matter. As first outlined in paragraph 5 above, such instructions, descriptions, or indicia only serve to communicate the rules of the game to the players. These rules merely describe those elements in a manner that conveys intelligence to the players. They are instructions or indications of how to play the game and one cannot continue patenting a product indefinitely provided that they associate a new set of rules with known game boards and pieces. Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product. See MPEP 2112.01. The indicia on the game board are functional limitations, rules, or instructions that have no physical tie to the substrate. Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Any differences residing in meaning and information conveyed by printed matter are not considered patentable subject matter. No patentable weight is given to the printed matter unless there is an unobvious functional relationship between the printed matter and the substrate. See MPEP 2111.05. Assuming, for the sake of argument, that there is a functional relationship between the printed matter and the substrate, the examiner does not find there to be an unobvious functional relationship between the printed matter and the substrate as the printed matter is merely conveying information to the players in the game in an obvious and routine matter. As such, no patentable weight is given to the claimed printed matter. Second, the printed matter is further defined by a functional limitation (dimensioned to receive a standard playing card). As first outlined in paragraph 5 above, it should be appreciated that the applicant’s functional language in the claims (dimensioned/configured to receive a standard playing card) does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. A gaming pattern with an area dimensioned to receive a standard playing card does not result in a structural element of the game board. It is further directed to printed matter. Additionally, if a game board having the claimed structural limitations (a game board comprising a first planar surface which is capable of being folded and rolled) is capable of receiving a standard playing card, it anticipates the functional claim limitation. As a standard playing card is capable of being placed on both Mullenbach and Raasch’s game boards, the game boards of these references still anticipate claim 1 as outlined above. 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.
Regarding pages 12-13 of the Remarks, the applicant argued that Raasch does not disclose “at least one playing component, said playing component comprising a deck of playing cards, a die, a cube, a marble, and a play markers” since Raasch is directed to a game mat for chess and backgammon. The examiner disagrees. As Raasch, is directed to chess and backgammon, Raasch discloses “game pieces” (Description) which equate to the claimed play markers (i.e., something used as a mark or indication).
Regarding page 13 of the Remarks, the applicant argued that Raasch makes no reference to a storage pouch and instead teaches pieces that are glued or printed on both sides of the play cloth. The examiner disagrees. Raasch discloses the playing pieces being glued on both sides (of the playing piece) or printed in offset, not glued on both sides of the play cloth. One would not be able to play backgammon or chess if the playing pieces were permanently glued to the play cloth. Additionally, Raasch discloses that “[t]he printed cloth and the pieces are packed in a cardboard tube, tin can or cloth bag” (Description). The cloth bag equates to the claimed storage pouch. Since Raasch discloses the storage pouch (Description: “cloth bag”) housing the flexible travel game board (Abstract: “board game”) and the at least one playing component (Description: “game pieces), the examiner maintains that Raasch in view of KR still anticipates claim 10 as outlined above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711