DETAILED ACTION
This Office action is in response to Response to Election/Restriction received 10 December 2025.
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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-6 and 13-18, in the reply filed on 10 December 2025 is acknowledged. Claims 7-12 and 19-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
The drawings are objected to 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 CFR1.84(l). See Figures 1-6. The applicant has submitted color drawings for Figures 1-6. Color drawings are not accepted in utility application filed under 35 U.S.C. 111 unless a petition filed under 37 CFR 1.84(a)(2) or (b)(2) is granted as outlined above. Color drawings are permitted on rare occasions in a utility patent application only if the color drawings are of sufficient quality such that all the details in the drawings are reproducible in black and white in the printed patent. See 37 CFR 1.84(a). In the present application, the color drawings are not of sufficient quality. In corresponding US 2024/0017155 A1, Figures 1-6 have a line and shading quality that is too dark to distinguish between different features. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 101
Claims 1-6 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 1-6 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 game board, game pieces, and a pair of dice do not add a meaningful limitation to the abstract idea because they are routine in any board game. These claims are essentially an abstract idea in the form of rules for participating in/playing a board game.
Under step 2A, prong I, claims 1-6 recite providing additional elements including a game board, a plurality of game pieces, and a pair of six-sided dice. The rest of the limitations are directed towards the abstract idea of organizing human activity with the limitations directed toward different phases of playing a game. These steps describe the concept of steps and rules for playing/participating in a game. This is similar to the concepts held to be abstract by the courts in In re Brown, 645 Fed. Appx. 1014 (Fed Cir. 2016). Non-precedential with opinion. In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016), and In re Webb, 609 Fed. Appx. 643 (Fed. Cir. 2015), where steps for performing a task and steps for playing a game were held to be patent ineligible. Another 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. 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. Thus the examiner interprets the limitations of claims 1-6 to fall under methods of organizing human activity in the form of rules for playing a game such that the claims recite an abstract idea.
Under step 2A, prong II, the abstract idea is not integrated into a practical application. The rules to the game are applied using general gaming technology as opposed to a particular machine. There is no improvement to any functioning of computer technology. No transformation or reduction of a particular article occurs. The rules are generally linked to gaming technology elements.
Under step 2B, 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 game board, game pieces, and a pair of dice are recited at a high level of generality and perform generic functions widely prevalent in the game art. 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 game board, game pieces, and the pair of dice, or how they interact, that makes them specific to this method. They are simply conventional game board elements present in nearly all board games. The claims, as a whole, are directed to the abstract concept of rules for participating in/playing a board game. These abstract concepts are not patent eligible.
Dependent claims 2-5 add no additional elements not already included in the independent claim. The dependent claims simply add further abstract steps (rules/organizing human activity) in the form of rules for playing a game. 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 as outlined above.
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 13-18 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 13, the claim is indefinite for claiming both an apparatus and the method steps of using the apparatus. For example, in lines 8-10 of claim 13, “said game pieces are moved according to rolls of said pair of dice until one player wins by rolling a pre-established outcome while on one more of said pre-established plurality of said game spaces or being a final player with game pieces remaining” amounts to the method steps of using the apparatus and does not further structurally limit the claim. It is unclear whether infringement would occur when one creates a game board that allows game pieces to be moved according to rolls of said pair of dice or whether infringement would occur when the game pieces are actually moved according to rolls of said pair of dice. See MPEP 2173.05 (p) II.
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 1-2, 4-6, 13-15, and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacobs (US 6,481,714 B1).
Regarding claim 1, Jacobs discloses a method comprising: utilizing a game board [10] game formed of a plurality of game board spaces (see 1, 2, 3, K, Q, ST, DT, SA, SL, SP, and LT in Figure 2), said game board [10] including directional indicia (col. 2 lines 50-52: “Level one of the board game is flat. Level two is one inch high off the flat board surface, and level three is two inches high off the flat board surface”); utilizing a plurality of game pieces (col. 2. line 65: “four Fighters and one King;” see [18]) for each of four players (col. 2 lines 56-57: “up to four players”); establishing strengths (col. 3 lines 14-15: “[t]he Fighters have different strengths and weaknesses;” also see battle card [20] in Figure 3) and a number of steps for each game piece (col. 3 lines 52-53: “[t]he following actions may be taken based on the roll of the die”); utilizing a pair of six-sided dice [12, 14] comprising a first die [12] depicting four player colors and two jokers and a second die [14] depicting four directions and two jokers; and instructing players to move said game pieces (col. 2. line 65: “four Fighters and one King;” see [18]) according to rolls of said pair of dice [12, 14] (col. 3 lines 52-53: “[t]he following actions may be taken based on the roll of the die;” col. 4 line 12: “[n]ext roll two dice;” col. 11 lines 29-32: “[t]he player can choose to roll a single die as normal on their turn or attempt to free their fighter from the trap by rolling two dice”) until one player wins by rolling a pre-established outcome (col. 5 line 26: “die roll of six”) while on one or more of said pre-established plurality of said game spaces (col. 5 line 25: “Inner Square”) (col. 2 lines 65-67: “[t]he first player to get two of the four Fighters into Sanctuary takes over the castle and therefore wins the game”) or being a final player with game pieces remaining (col. 1 line 66 – col. 6 line 21, col. 11 lines 20-34, col. 12 lines 28 -41, col. 12 line 51 - col. 13 line 11, col. 18 lines 1-7, and Figures 1-3). The italicized limitations amount to printed matter. Although Jacobs does not disclose the first die depicting four player colors and two jokers or the second die depicting four directions and two jokers, 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 and dice 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 2, Jacobs discloses the method of claim 1 further comprising identifying certain of said game board spaces (see 1, 2, 3, K, Q, ST, DT, SA, SL, SP, and LT in Figure 2) as action spaces (see 1, 2, 3, ST, DT, SA, SL, SP, and LT in Figure 2) comprising one or more of tunnel spaces (see ST in Figure 2), death spaces, jail spaces (see DT, SA, SL, SP in Figure 2) and/or dice spaces (see 1, 2, 3, in Figure 2) (col. 2 lines 17-28, col. 3 line 47 – col. 4 line 49, col. 11 lines 20-34, col. 12 lines 28 -41, col. 12 line 51 - col. 13 line 11, col. 18 lines 1-7, and Figure 2). The italicized limitations amount to printed matter. See paragraph 15 above for interpretation of printed matter.
Regarding claim 4, Jacobs discloses the method of claim 1 wherein said second die [14] depicts directions of North, South, East and West corresponding to directions depicted on said game board. The italicized limitations amount to printed matter. See paragraph 15 above for interpretation of printed matter.
Regarding claim 5, Jacobs discloses the method of claim 1 further comprising comparing strengths of game pieces (col. 2. line 65: “four Fighters;” see [18]) for individual players when said game pieces (col. 2. line 65: “four Fighters;” see [18]) land on the same board game space (col. 4 lines 55-57: “Fighters can pass other Fighters up when moving spaces, but cannot land in a position occupied by another fighter unless they battle for the position and win” and col. 6 lines 8-11: “if a player wishes to move their fighter to a position that is already occupied by an opposing fighter, then the attacking fighter must win the battle by Defeating the opposing fighter before moving to that position”) and removing from play game pieces associated with a lesser strength (col. 5 lines 60-62: “[i]f a fighter’s Health Points drop below zero, the fighter is considered dead and is taken Out of Play”) (col. 4, lines 55-58, col. 5 line 31 – col. 6 line 21, and Figure 3).
Regarding claim 6, Jacobs discloses the method claim 1 further comprising: (i) responsive to a player rolling a joker on the direction die and a color on the player die, allowing the roller to move a correspondingly colored game piece in any desired direction based on a number of steps associated with the game piece; and/or (ii) responsive to a player rolling a joker on the player die and a direction on the direction die (col. 11 lines 31-32: “rolling doubles”), allowing the player to select which color game piece to move (col. 11 lines 32-33: “place the fighter in the corner position of level three nearest the trap”) (col. 11 lines 20-34; wherein if more than one of a player’s Fighters are stuck in the Double Trouble trap, the player can select which Fighter to move out of the trap upon rolling doubles). The italicized limitations amount to printed matter. See paragraph 15 above for interpretation of printed matter.
Regarding claim 13, Jacobs discloses a system comprising: a game board [10] game formed of a plurality of game board spaces (see 1, 2, 3, K, Q, ST, DT, SA, SL, SP, and LT in Figure 2), said game board [10] including directional indicia (col. 2 lines 50-52: “Level one of the board game is flat. Level two is one inch high off the flat board surface, and level three is two inches high off the flat board surface”); a plurality of game pieces (col. 2. line 65: “four Fighters and one King;” see [18]) for each of four players (col. 2 lines 56-57: “up to four players”), said plurality of game pieces having associated strengths (col. 3 lines 14-15: “[t]he Fighters have different strengths and weaknesses;” also see battle card [20] in Figure 3) and a number of steps (col. 3 lines 52-53: “[t]he following actions may be taken based on the roll of the die”); a pair of six-sided dice [12, 14] comprising a first die [12] depicting four player colors and two jokers and a second die [14] depicting four directions and two jokers; and wherein said game pieces (col. 2. line 65: “four Fighters and one King;” see [18]) are moved according to rolls of said pair of dice [12, 14] (col. 3 lines 52-53: “[t]he following actions may be taken based on the roll of the die;” col. 4 line 12: “[n]ext roll two dice;” col. 11 lines 29-32: “[t]he player can choose to roll a single die as normal on their turn or attempt to free their fighter from the trap by rolling two dice”) until one player wins by rolling a pre-established outcome (col. 5 line 26: “die roll of six”) while on one or more of said pre-established plurality of said game spaces (col. 5 line 25: “Inner Square”) (col. 2 lines 65-67: “[t]he first player to get two of the four Fighters into Sanctuary takes over the castle and therefore wins the game”) or being a final player with game pieces remaining (col. 1 line 66 – col. 6 line 21, col. 11 lines 20-34, col. 12 lines 28 -41, col. 12 line 51 - col. 13 line 11, col. 18 lines 1-7, and Figures 1-3). The italicized limitations amount to printed matter. Although Jacobs does not disclose the first die depicting four player colors and two jokers or the second die depicting four directions and two jokers, 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 and dice 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, the “wherein” clause in the claim amounts to functional claiming. It should be appreciated that the applicant’s functional language in the claim (i.e., said game pieces are moved according to rolls of said pair of dice until one player wins by rolling a pre-established outcome while on one or more of said pre-established plurality of said game spaces or being a final player with game pieces remaining) 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.
Regarding claim 14, Jacobs discloses the system of claim 13 wherein certain of said game board spaces (see 1, 2, 3, K, Q, ST, DT, SA, SL, SP, and LT in Figure 2) are action spaces (see 1, 2, 3, ST, DT, SA, SL, SP, and LT in Figure 2) comprising one or more of tunnel spaces (see ST in Figure 2), death spaces, jail spaces (see DT, SA, SL, SP in Figure 2) and/or dice spaces (see 1, 2, 3, in Figure 2) (col. 2 lines 17-28, col. 3 line 47 – col. 4 line 49, col. 11 lines 20-34, col. 12 lines 28 -41, col. 12 line 51 - col. 13 line 11, col. 18 lines 1-7, and Figure 2). The italicized limitations amount to printed matter. See paragraph 20 above for interpretation of printed matter.
Regarding claim 15, Jacobs discloses the system of claim 13 wherein said game board [10] is an 8 x 8 matrix of game board spaces (col. 2 lines 47-50 and Figures 1-2; wherein the game board is a 25 x 25 matrix which includes an 8 x 8 matrix). The italicized limitations amount to printed matter. See paragraph 20 above for interpretation of printed matter.
Regarding claim 17, Jacobs discloses the system of claim 13 wherein said second die [14] depicts directions of North, South, East and West corresponding to directions depicted on said game board. The italicized limitations amount to printed matter. See paragraph 20 above for interpretation of printed matter.
Regarding claim 18, Jacobs discloses the system of claim 13 wherein strengths of game pieces (col. 2. line 65: “four Fighters and one King;” see [18]) determine which game pieces are removed from game play (col. 5 lines 60-62: “[i]f a fighter’s Health Points drop below zero, the fighter is considered dead and is taken Out of Play”) (col. 4, lines 55-58, col. 5 line 31 – col. 6 line 21, and Figure 3).
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 3 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Jacobs.
Regarding claims 3 and 16, Jacobs discloses the method of claim 1 further comprising utilizing five game pieces (col. 2. line 65: “four Fighters and one King;” see [18]) for each player and the system of claim 13 further comprising five game pieces (col. 2. line 65: “four Fighters and one King;” see [18]) for each player (col. 2 lines 13-14 and 65). Jacobs discloses five game pieces, not six. However, Jacobs also discloses an alternate way to play the game by changing the number of Fighters each player begins with. Additional fighter pieces can be used to increase the beginning army sizes, or can be used as Mercenaries (col. 3 lines 1-10). 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 Jacobs’ board game to be played with at least five Fighters and one King (i.e., six game pieces) because Jacobs discloses that changing the number of Fighters will alter the length of the game and level of strategy such that a player can experiment with different numbers to determine a preferred way of playing the game (col. 3 lines 1-10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Hawthorne (US 2014/0171167 A1), Goldstein et al. (US 2018/0185743 A1), Garcia (US 2012/0248699 A1), and Christie Jr. (US 5,570,887) which all disclose similar board games utilizing game pieces of variable strength.
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.
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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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711