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 .
Response to Arguments
1. Applicant's arguments filed April 23, 2026 have been fully considered but they are not persuasive.
With respect to the rejection of claims 1-16 and 18, as being unpatentable over U.S. Patent No. 4,437,667 of Miller (hereinafter “Miller”) in view of U.S. Patent No. 7,114,719 of Steenstra et al. (hereinafter “Steenstra”), applicant argues that a. neither Miller nor Steenstra teaches or suggests the claimed nested two-level category-to-subcategory hierarchy. However, Miller discloses that each face 11 includes nine facets 12 which are squares of equal size layed out in three rows and three columns (col 2, lines 59-61); a nested two-level category-to-subcategory hierarchy. As both Miller and Steenstra teach cubic games with coded markings, it would have been obvious to modify Miller with the specific category labels of Steenstra. As such, both prior art references maintain relevancy and in combination, address the same problem as the instant application.
2. Applicant argues that b. the Examiner's reliance on "design choice" (MPEP §2144.04(I)) and "close range" (MPEP §2144.05) is misplaced. Regarding “design choice,” this still maintains relevancy because the “each large cell carries a category label of the respective selected topic, and each small cell within that large cell carries a subcategory label that is a subsidiary of that category,” does not perform a functional relationship; only the categories and subcategories do. The arrangement of these labels on the faces of the cube hold no mechanical or structural significance. Further, applicant argues that examiner’s use of “close range” is misplaced, stating that “81 small cells per face organized as nine 3×3 large cells, each large cell carrying a different category label and each of its small cells carrying a different subsidiary subcategory label” is change in kind, not a change in degree. However, as discussed further below in the rejection of claim 4, this specific amount of “81 cells” is simply a duplication of parts as applicant as given to significance to this number per [0016] of the specification. As such, mere duplication of parts has no patentable significance unless a new and unexpected result is produced; see MPEP 2144.04 VI (B).
3. Applicant argues that c. the proposed combination of Miller and Steenstra lacks articulated reasoning with rational underpinning. Specifically, applicant argues that “Miller's alleged cube is designed to be twisted so that the facets on each face are rearranged to spell new words; that scrambling mechanism is fundamentally incompatible with any fixed hierarchical mapping of categories to subcategories, because the act of playing Miller's game would destroy the very hierarchy that Steenstra is said to supply.” However, Steenstra’s cube is not fixed as (inter-)relationship with corresponding (contributory) factors in other topic categories, depicted upon adjacent facets, can be identified, by turning the cube, (col 14, lines 62-65). As such, Steenstra maintains relevancy to be used in combination with the moveable cube of Miller. Additionally, applicant argues that “If an independent claim is nonobvious under 35 U.S.C. 103, then any claim depending therefrom is nonobvious.” M.P.E.P. § 2143.03. However, as further discussed in the rejection of claim 1, Miller in view of Steenstra is obvious and further dependent claims (for example, claim 17), will also be obvious in view of the combined prior art references.
Claim Rejections - 35 USC § 112
Claim 1, 18 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.
Regarding claim 1, the term “cube-like face” is a relative term which renders the claim indefinite. The term “like” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Using the term “cube-like face” in claim 1 and the following dependent claims is unclear in what the metes and bounds of such a physical structure are, making it an unclear interpretation.
Claims 2-18 are dependent from claim 1, therefore inheriting its deficiencies and also being
rejected under 35 U.S.C. 112(b).
Regarding claim 18, similar to the issue above in claim 1, the claim recites “screw-like attachments.” The term “screw-like” is a relative term which renders the claim indefinite. The term “like” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
1. Claims 1-16, and 18 are rejected under 35 U.S.C 103 as being unpatentable over Miller (US 4437667
A) in view of Steenstra et al. (US 7114719 B2), hereinafter Steenstra.
Regarding claim 1, Miller teaches An apparatus (1) for use in playing a word game (The game is played by multiple players, with the amount of time allotted each player to spell the maximum number of words on the faces of the playing unit determined by the chance means and measured by the timekeeping means, see abstract) that comprises arranging selected physical category labels from a group of physical category labels and/or arranging selected physical subcategory labels from a group of physical subcategory labels to selected positions on a cube-like structure (10) having six cube-like faces (11), the apparatus comprising: a cube-like physical structure having six cube-like faces (In the preferred embodiment, the playing unit 1 has a cubic configuration 10 with six faces 11, col 2, lines 58-59), wherein the cube-like physical structure is a polyhedral structure having six substantially square faces (see Fig 1); one respective cube-like face of the six cube-like faces has a structure of a number of large cells such that the number of large cells are able to be arranged in a square structure on the one respective cube-like face ((Each face 11 includes nine facets 12 which are squares of equal size layed out in three rows and three columns, col 2, lines 59-61), in which the large cells of the one respective cube-like face respectively have a space for placement of a physical category label in which the selected category comprises a category within the respective selected topic of the one respective cube-like face (such markers 2 to each of the facets 12 on the playing unit 10.Preferably, the letters are organized on the facets 12 of playing unit 1 to spell out words in each column and row, col 3, lines 16-21), and the number of different physical labels for the number of different selected categories within the respective selected topic of the respective one cube-like face corresponds to the number of large cells such that the selected categories are to be arranged in the square structure, wherein the different selected categories of the respective selected topic of the one respective cube-like face in a manner that at least relates to the symmetry of the large cell square structure of the one respective cube-like face (Numerous stickers or markers 2 are provided, each of which carries some indicia, there being at least as many different indicia as there are faces on the playing unit 1. The markers 2 are removably attached by the player to the playing unit 1, which has a mechanism which allows facets on each face of the unit to be shifted in order to disorganize the markers. The player then is required to return the markers to their original configuration, col 2, lines 49-57)
Miller doesn’t explicitly teach each large cell of the number of large cells of the one respective cube-like face, is itself subdivided into a number of small cells arranged in a square structure within that large cell, in which the small cells of that large cell respectively have a space for placement of a physical subcategory label, this is simply a design choice for containing the physical category labels and relates to ornamentation only, which has no mechanical function and cannot be relied upon to patentably distinguish the claimed invention from the prior art; see MPEP 2144.04 I.
While Miller teaches the placement of markers 2 on the facets 12 (analogous to the large cells)
on each face of the six-sided cube, the markers being an indicia type of alphabet letters, it lacks
specifically teaching wherein the subcategory of each small cell is a subsidiary of the selected category of the cell within which that small cell resides, and the number of different physical labels for the number of different selected subcategories within the respective selected category corresponds to the number of small cells, wherein the selected subcategories are arranged in the square structure wherein the arrangement of the selected subcategories contrasts the different selected subcategories within the selected category in a manner that at least relates to the symmetry of the small cell square structure of that large cell.
Steenstra teaches this as follows: wherein the subcategory of each small cell is a subsidiary of the selected category of the cell within which that small cell resides (Optionally, one or more individual facets are sub-divided. A sub-division example would be a (regular) matrix, or grid array--of juxtaposed areas or sections. These sections could in turn represent respective subsidiary categories, or contributory factors. A rectangular facet profile--in particular, (uniform) square facets, combining to form a cube structure--is a convenient content layout format, col 4, lines 4-10), and the number of different physical labels for the number of different selected subcategories within the respective selected category corresponds to the number of small cells (see Fig.21), wherein the selected subcategories are arranged in the square structure wherein the arrangement of the selected subcategories contrasts the different selected subcategories within the selected category in a manner that at least relates to the symmetry of the small cell square structure of that large cell (Optionally, one or more individual facets are sub-divided. A sub-division example would be a (regular) matrix, or grid array--of juxtaposed areas or sections. These sections could in turn represent respective subsidiary categories, or contributory factors. A rectangular facet profile--in particular, (uniform) square facets, combining to form a cube structure--is a convenient content layout format, col 4, lines 46-51).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention, to modify the geometric game of Miller with the category and subcategory
labels of Steenstra et al. to best generate the relationships between a broad topic and its respective sub-
topics as related to the user’s experience; forming a nested two-level category-to-subcategory hierarchy (Steenstra et al., col 1, lines 50-64).
In the combination of Miller and Steenstra, the cubic game of Miller with the category and subcategory labels of Steenstra teaches and in which a respective cube-like face corresponds with a respective selected topic in a particular arrangement related to a symmetrical structure between the cube-like faces wherein the selected topics in a manner that at least relates to the symmetrical structure between the cube-like faces with respect to the cube-like structure.
Regarding claims 2-3, the modified Miller teaches wherein the symmetry of the large cell square structure of the one respective cube-like face includes horizontal, vertical and/or diagonal symmetry within the one respective cube-like face (claim 2) as seen in Fig 4 of Miller, where the facets 12 (large cell square structure) is arranged in a 3x3 horizontal/vertical symmetry.
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While the modified Miller doesn’t specifically teach wherein the symmetry of the small cell square structure within the one respective large cell includes horizontal, vertical and/or diagonal symmetry within the respective large cell (claim 3), the small cell square structure is simply related to design choice as discussed above in claim 1, and the horizontal, vertical and/or diagonal symmetry is related to rearrangement of parts, as choosing any specific type of symmetry of the aforementioned symmetries would not change the function of the structure, and is held an obvious matter of design choice; see MPEP 2144.04 VI. C.
Regarding claim 4, while the modified Miller teaches the one respective cube-like face (see Fig 1 of Miller), it doesn’t teach a nine-by-nine arrangement of 81 small cells organized as nine three-by-three large cells, each large cell containing nine small cells arrangement in a three-by-three structure. However, this is mere duplication of parts, as the number of small cells holds no patentable significance; see MPEP 2144.04 VI. (B). A nine-by-nine arrangement is simply related to design choice as discussed above in claim 1, and the physical labels respectively containing the selected subcategories of the selected categories for the one selected topic for the one respective cube-like face is taught by Steenstra.
It would have been obvious to one of ordinary skill in the art to place the category labels of Steenstra in a grid-like design as seen with the nine three-by-three large cell square structure, as this is related to design choice and doesn’t change the functionality of the apparatus; see MPEP 2144.04 I. Steenstra teaches bears a respective different physical category label of the respective selected topic [[for ]]of the one respective cube-like face, and each of the nine small cells within any one of the large cells bears a respective different physical subcategory label that is a subsidiary of the category label of that large cell (the innovation factors bear on each of the cells).
Similarly, the nine selected physical subcategory labels associated within the one selected topic are to be arranged in a particular manner wherein the nine selected subcategories in a manner that at least relates to the horizontal, vertical and/or diagonal symmetry of nine small cells within the respective cube-like face is again, related to rearrangement of parts, and an obvious matter of design choice; see MPEP 2144.04 VI. C. While Steenstra teaches 12 innovation factors (analogous to the physical subcategory labels) it would have been obvious to use the nine selected physical subcategory labels of the instant invention, as these amounts are merely close and it is expected that the same results would be achievable using nine subcategory labels; see MPEP 2144.05 I.
Regarding claims 5-10, it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of cube structure does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter (the specific topics and corresponding category labels) and the substrate (cube faces) which is required for patentability.
Regarding claim 11, the modified Miller teaches wherein the selected category labels and/or the selected subcategory labels are capable of being physically attached to the cube-like faces in selected patterns on the cube-like faces (In a more specific embodiment, the markers each carry a letter of the alphabet and can be adhesively attached to the playing unit to spell words as desired by the player, Miller, col 1, lines 40-43).
Regarding claim 12, the modified Miller teaches wherein the selected patterns on the cube-like faces of the selected category labels and/or the selected subcategory labels are capable of being modified to capture at least one particular spatial relationship (horizonal strata) between the selected category labels and/or the selected subcategory labels that aligns with a spatial symmetry on one or more faces and/or among the one or more faces ((Facet (contributory) factors can be layered, in transverse (e.g. horizontal) strata, to represent a hierarchy of significance or importance--with, say, an uppermost layer accorded most significance. Similarly, (inter-)relationship with corresponding (contributory) factors in other topic categories, depicted upon adjacent facets, can be identified, by turning the cube, Steenstra et al., col 14, lines 59-65).
Regarding claims 13-16, the physical positions for the selected category labels and for the selected subcategory labels of a large cell are simply related to ornamentation, and have no mechanical function and cannot be relied upon to patentably distinguish the claimed invention from the prior art.
Regarding claim 18, the modified Miller teaches wherein the physical labels comprise at least one of the following: magnetic material, Velcro material, suction devices, screw-like attachments, attachments capable of being interlocked, transparent plastic sleeves capable of being fixed and/or otherwise attached to a cube-like face, push pins, or any combinations thereof as follows: On the face or side of each marker 2 opposite to the side carrying the letter is a pressure sensitive adhesive substance which can be used to repeatedly adhere and remove markers 2 from playing unit 1 (Miller, col 3, lines 11-15). This adhere and remove function is analogous to Velcro material.
2. Claim 17 is rejected under 35 U.S.C 103 as being unpatentable over Miller in view of Steenstra, further in view of Gruber (US 20160129340 A1).
Regarding claim 17, while the modified Miller teaches a cube-like physical structure (cubic configuration 10, Miller, col 2, line 59), it fails to teach that it comprises at least one of: a polymer, wood, metal, stone, ceramic, concrete, glass, or a composite thereof.
Gruber teaches this as follows: the building blocks 20 of the cube-shaped object are here regular squares and can be made for example of wood or another material that can be realized with different forms of side faces [0032].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the modified game cube of Miller with the wood material composition of Gruber to best form the spatial geometry of the cube-shaped object from individual building blocks (analogous to the cube-like faces of the instant invention) (Gruber, [0038])
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/R.S./ Examiner, Art Unit 3711
/NICHOLAS J. WEISS/ Supervisory Patent Examiner, Art Unit 3711
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