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 .
Drawings
New corrected drawings in compliance with 37 CFR 1.84 and 37 CFR 1.121 are required in this application because the drawings have a line and shading quality that is too dark distinguish between different features and too dark to be reproduced. Refer to 37 CFR 1.84(I). See Figures 1 and 4-11.
Claim Objections
Claims 4-7 are objected to because of the following informalities: Regarding claim 4, line 2, “same system” should be changed to game system. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-7 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, line 9, it is unclear if the “plurality of discussion topic cards” is different from the “plurality of topic cards” recited in line 6 of the claim. Similarly, regarding claim 4, lines 4-5, it is unclear if the “plurality of discussion topic cards” is different from the “plurality of topic cards” recited in line 3 of the claim. The specification describes topic cards [30] which can be subdivided into mild/fun topic cards [40], medium/risky topic cards [45], and hot/dangerous topic cards [50]. Only one set of topic cards is disclosed such that it seems the claimed “plurality of topic cards” and “plurality of discussion topic cards” are the same. For the purpose of examination, this is how the claims will be interpreted.
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 4-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 4-7 are directed to an idea in the form of rules for playing a game. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a rules booklet, timer, plurality of tokens, judge’s badge and plurality of cards do not add a meaningful limitation to the abstract idea because they are routine in card games. These claims are essentially an abstract idea in the form of rules for participating in/playing a card game.
Claims 4-7 recite selecting a judge, the judge selecting a topic card to establish a premise to be argued, starting a timer, arguing the premise, moderating the argument, and choosing a winner. These steps describe the concept of steps and rules for playing/participating in a game. 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. See MPEP 2106.04(a)(2) II C.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The additional elements of a rules booklet, timer, plurality of tokens, judge’s badge and plurality of cards are recited at a high level of generality and perform generic functions. Thus, taken alone, the additional elements do not amount to significantly more than the above identified judicial exception (the abstract idea). Looking at the additional elements in an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is nothing particular to the rules booklet, timer, plurality of tokens, judge’s badge and plurality of cards, or how they interact, that makes them specific to this method. They are simply conventional game elements present in nearly all board/card games. The claims, as a whole, are directed to the abstract concept of rules for participating in/playing a game. These abstract concepts are not patent eligible.
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 and 4-7 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. “Mindmade” describes the game Debatable as early as 22 June 2021 (https://www.mindmade.com/debatable/index.php; hereinafter Debatable).
Regarding claim 1, Debatable discloses a game kit (see “game kit” on page 5 annotated by examiner), comprising: a rules booklet (page 2, GAME CONTENTS: 1 Rules sheet; also see “rules booklet” on page 6 annotated by examiner); a timer (page 2, GAME CONTENTS: 1 Sand timer; also see “timer” on page 8 annotated by examiner); a plurality of tokens (page 2, GAME CONTENTS: 8 Vote Yes cards, 8 Vote No cards; also see “tokens” on page 7 annotated by examiner); a judge's badge (page 2, GAME CONTENTS: 1 Moderator card; also see “judges’ badge” on page 8 annotated by examiner); a plurality of topic cards (page 2, GAME CONTENTS: 93 Topic cards; also see “topic cards” on pages 7-8 annotated by examiner); a plurality of action cards (page 2, GAME CONTENTS: 60 Strategy cards; also see “action cards” on 6-8 annotated by examiner); a plurality of direction cards (page 2, GAME CONTENTS: 1 YES card, 1 NO card; also see “direction cards” on page 8 annotated by examiner); and a plurality of discussion topic cards (page 2, GAME CONTENTS: 93 Topic cards; also see “topic cards” on pages 7-8 annotated by examiner); wherein each respective direction card (page 2, GAME CONTENTS: 1 YES card, 1 NO card; also see “direction cards” on page 8 annotated by examiner) has a label selected from the group consisting of ‘agree’ (1 YES card) and ‘disagree’ (1 NO card); wherein there is the same number (1) of ‘agree’ direction cards (1 YES card) and ‘disagree’ direction cards (1 NO card); wherein the discussion topic cards (page 2, GAME CONTENTS: 93 Topic cards; also see “topic cards” on pages 7-8 annotated by examiner) are selected from the group consisting of mild, medium, and hot discussion topics (page 1: “serious and silly topics;” also see page 7 for example discussion topics on topic card which range from mild to hot and page 3 where topics can relate to entertainment (mild) or controversial topics that are “not safe for work” (hot); wherein “mild,” “medium,” and “hot” are subjective terms) (pages 1-12).
Regarding claim 4, Debatable discloses a method of playing a game comprising the steps of: a) providing a game system (see “game kit” on page 5 annotated by examiner), said same system including a rules booklet (page 2, GAME CONTENTS: 1 Rules sheet; also see “rules booklet” on page 6 annotated by examiner), a timer (page 2, GAME CONTENTS: 1 Sand timer; also see “timer” on page 8 annotated by examiner), a plurality of tokens (page 2, GAME CONTENTS: 8 Vote Yes cards, 8 Vote No cards; also see “tokens” on page 7 annotated by examiner), a judge's badge (page 2, GAME CONTENTS: 1 Moderator card; also see “judges’ badge” on page 8 annotated by examiner), a plurality of topic cards (page 2, GAME CONTENTS: 93 Topic cards; also see “topic cards” on pages 7-8 annotated by examiner), a plurality of action cards (page 2, GAME CONTENTS: 60 Strategy cards; also see “action cards” on 6-8 annotated by examiner), a plurality of direction cards (page 2, GAME CONTENTS: 1 YES card, 1 NO card; also see “direction cards” on page 8 annotated by examiner), and a plurality of discussion topic cards (page 2, GAME CONTENTS: 93 Topic cards; also see “topic cards” on pages 7-8 annotated by examiner); b) selecting a player to be the ‘judge’ (page 9: “The player the group believes is least likely to win the game receives the Moderator card and the Yes, and No cards. This player will be the Moderator for the first round”); c) the ‘judge’ selecting a topic card (page 9: “The Moderator draws a topic card”); d) the ‘judge’ reading the topic card to the players to establish a premise to be argued (page 9: “The Moderator…selects 1 of the five topics on the card and reads it aloud”); e) the ‘judge’ providing each player with a direction card to assign each respective player a direction to either agree or disagree with the premise (page 9: “The Moderator now selects any two players they want to see debate the chosen topic and hands out the Yes and No cards to whoever they feel should be for and against the topic”); f) starting the timer to initiate an argument round (page 10: “The Moderator then turns over the sand timer (2 min) and the debate starts); g) arguing the premise (page 10: “DEBATING”); h) the ‘judge’ moderating the argument round (page 10: “The Moderator has the important task of making sure both debating players get more or less the same amount of time to speak”); i) the ‘judge’ ending the argument round when the timer runs out (page 10: “When the time is up, the Yes player is allowed one short closing statement, followed by a closing statement by the No player); j) the ‘judge’ deciding who won the argument round (page 10: “Now all players, including the Moderator (but not the debating players of course), select one of their two voting cards and place it face down in front of them. When everyone has made their choice, the cards are revealed one by one”); k) winners taking one token (page 11: “The player with the most votes is safe;” also see page 12: “The winning player receives the current topic card as their prize”); l) passing the role of ‘judge’ to the next player (page 11: “The losing player also receives the Moderator card”); m) repeating steps c-l (page 11: “Now a new round starts”); and n) declaring the first player to reach a predetermined token sum the “winner” (page 11: “Eventually there will be one player left standing; also see page 12: “Keep going until one player reaches 3 won topic cards) (pages 1-12).
Regarding claim 5, Debatable discloses the method of playing a game of claim 4, and further comprising the steps of: o) before d), distributing one of each respective action cards (page 9: “the debating players must draw 2 strategy cards each”) to each player; and p) playing a respective action card (page 10: “Players MUST use BOTH their strategies at some point during the debate”) (pages 6-10).
Regarding claim 6, Debatable discloses the method of playing a game of claim 5, wherein the plurality of topic cards (page 2, GAME CONTENTS: 93 Topic cards; also see “topic cards” on pages 7-8 annotated by examiner) further comprises a respective plurality of ‘fun’ topic cards, a respective plurality of ‘risky’ topic cards, and a respective plurality of ‘dangerous’ topic cards (page 1: “serious and silly topics;” also see page 7 for example discussion topics on topic card which range from fun to dangerous and page 3 where topics can relate to entertainment (fun) or controversial topics that are “not safe for work” (dangerous); wherein “fun,” “risky,” and “dangerous” are subjective terms) (pages 1, 3, and 7).
Regarding claim 7, Debatable discloses the method of playing a game of claim 5, wherein the plurality of action cards (page 2, GAME CONTENTS: 60 Strategy cards; also see “action cards” on 6-8 annotated by examiner) further comprises new topic cards (page 6: “Use famous quotes”), flip flop cards (page 1: “Deny everything”), and last word cards (page 6: “Try to start a fight”) (pages 1, 6, and 9-10; wherein “new topic,” “flip flop,” and “last word” provide no further structural or process limitation to the claim such that the broadest reasonable interpretation of “new topic cards,” “flip flop cards,” and “last word cards” are simply cards. Additionally, Debatable discloses 240 different strategies on the action cards (page 2)).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Debatable as applied to claim 1 above, and further in view of Lamm (US 8,006,979 B1).
Regarding claims 2-3, Debatable discloses the game kit of claim 1 wherein the timer is a two-minute hourglass (pages 2, 8, and 10). Debatable disclose the timer being a two-minute hourglass and does not disclose the timer being a three-minute hourglass or electronic. Lamm, however, teaches a similar game kit [10], comprising: a timer [26]; wherein the timer [26] is a three-minute hourglass or wherein the timer [26] is electronic (col. 4 line 33: “a stopwatch”) (col. 2 line 65 – col. 3 line 5, col. 4 lines 21-35, and Figure 1). 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 timer to be a three-minute hourglass or electronic timer because Lamm teaches that these timers are known in the art for consistently timing game play (col. 4 lines 21-35).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Shaw, Sr. (US 6,416,055 B1) which discloses a similar game kit directed to judging a debate.
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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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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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711