DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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 4, 9 and 10 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.
The term “slowly” in claim 4 is a relative term which renders the claim indefinite. The term “slowly” 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. No units of distance over time or speed have been given to quantify “slowly”; thus, the examiner is not placing any patentable weight on the term “slowly” in the language of claim 4 unless there is further specificity or criticality supplied by the Applicant.
Claim 9 recites the limitation "to fully reveal the device" in line 2. While there is an input device referenced in other claims, this does not make sense in the context of the claim. The examiner is interpreting this to mean “to fully reveal the dice”, as is stated in other claims. Clarification/correction is required.
Claim 10 recites the limitation "the input" in line 1. There is insufficient antecedent basis for this limitation in the claim. No input is mentioned in independent claim 1; therefore, the examiner is interpreting this to mean the input mentioned in claim 2 for examination purposes. Correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11-14 of copending Application No. 18/390,473 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations recited in claims 1-4 of the present invention are recited in claims 1 and 11-14 of the copending application, including:
“ a motorized platform and a cylinder positioned over the platform for containing one or more dice positioned on the motorized platform, wherein the motorized platform is configured to be moved independent of the cylinder in order to cause the one or more dice positioned to be thrown as part of a dice game, comprising:a telescopic cylindrical shutter positioned within the cylinder, having at least an upper portion having a first exterior diameter and a lower portion having a second exterior diameter, the second exterior diameter being larger than the first exterior diameter such that the upper portion will fit within the lower portion;two or more flexible supports connected at a first end to the lower portion”, “lower portion is in contact with the platform”, “configured to raise the lower portion after the one or more dice have been thrown to reveal one or more upward facing pips of the one or more dice as a result of the dice game”
“a first input from an input device instructing the drive motor when to raise the lower portion to the height”
“configured to raise the lower portion after the one or more dice have been thrown to a height where sides of the one or more dice are visible but the one or more upward facing pips are not”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over US 20070060301 (hereinafter “Lin”) in view of US 4234187 (hereinafter “Las”).
Regarding claim 1, Lin discloses the method for operating a shutter system for a dice system (Fig. 4, Para. 0025-0027) including a motorized platform (Fig. 4, 22 – platform, Para. 0035) and a cylinder (Fig. 4, 12 – dome, Para. 0036) positioned over the platform for containing one or more dice (Fig. 4, 50 – dice) positioned on the motorized platform. Though the dome is not cylindrical, the change in shape is a matter of design choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the cylindrical shape is significant. See MPEP 2144 – In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Lin further discloses that the motorized platform is configured to be moved independent of the cylinder in order to cause the one or more dice positioned to be thrown as part of a dice game (Para. 0035-0036, inner cap is mounted to base of dome and platform moves within inner cap), the method comprising: lowering a cylindrical shutter (Fig. 4, 24 – outer cap) positioned within the cylinder prior to the one or more dice being thrown, the cylindrical shutter having at least an upper portion (Fig. 4, 24 – outer cap upper half) and a lower portion (Fig. 4, 24 – outer cap lower half), the lower portion being in contact with the platform prior to the one or more dice being thrown (Para. 0036-0037); throwing the one or more dice (Fig. 1, Para. 0036-0037); and after the one or more dice have been thrown, raising the lower portion to fully reveal the dice (Fig. 1, Para. 0038).
Lin does not disclose that the shutter is telescopic, or the second exterior diameter being larger
than the first exterior diameter such that the upper portion will fit within the lower portion. However, Las, in the analogous art of dice games, discloses a method for a dice system (Fig. 4, abstract) with a telescopic shutter (Fig. 4, rings 18-22, Col. 4, line 48-Col. 5, line 15) having an upper portion with a first diameter (Fig. 4, for example, ring 18) and a lower portion with a second diameter (Fig. 4, for example, lower ring 22), the second exterior diameter being larger than the first exterior diameter such that the upper portion will fit within the lower portion (Fig. 4, successive telescoping rings). Thus, it would have been obvious to a person having ordinary skill in the art at the time of filing to configure the shutter of Lin to be telescopic in order to reduce the amount of space needed inside the containment cylinder to raise the shutter.
Claims 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Lin in view of Las and in further view of JP 2004257006 (hereinafter “Kazuki”).
Regarding claims 2 and 10, modified Lin discloses all the limitations of claim 1. Although modified Lin discloses a method that raises the lower portion (Lin, Para. 0038), it does not directly explicitly state that it is in response to input from an input device. However, Kazuki, in the same field of endeavor of controlled shutter systems, discloses using a button to control raising/lowering of shutters (Para. 0029 – push button switch). Thus, it would be obvious to a person having ordinary skill in the art to use an input device, such as the commonly known means of a push button, to control shutter movement of Lin’s design.
Claims 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lin in view of Las and Kazuki and in further view of US 20080146311 (hereinafter “Walker”).
Regarding claim 3, modified Lin discloses all the limitations of claim 2, including that an input causes the lower portion to be raised to a height (Kazuki, Para. 0078 – intermediate position). Reasons for combination are as stated supra. However, it is not disclosed that this height occurs where sides of the one or more dice are visible to an observer but one or more upward facing pips of the dice are not visible the observer. Walker, in the analogous art of games of chance, discloses the method of revealing a partial game result before the full outcome for “heightened awareness and suspense” during play (Para. 0019). Thus, it would be obvious to a person of ordinary skill in the art at the time of filing to raise the shutter of Lin to only show the partial roll (i.e. sides) of the dice to increase anticipation and player enjoyment.
Regarding claim 4, modified Lin further discloses that the input causes the lower portion to be slowly raised to the height (Kazuki, Para. 0029 and 0078). Additionally, the limitation of “slowly” is being disregarded due to 112(b) issues mentioned supra.
Regarding claim 5, modified Lin further discloses that the input is generated as a result of a button being touched by a user (Kazuki, Para. 0029).
Regarding claim 6, modified Lin further discloses that after raising the lower portion to the height (Kazuki, Para. 0078), raising the lower portion to fully reveal the dice (Lin, Para. 0038).
Regarding claim 7, modified Lin further discloses raising the lower portion to fully reveal the dice (Lin, Para. 0038) after the raising the lower portion to the height (Kazuki, Para. 0078) is in response to a second input from the input device (Kazuki, Para. 0029 – push button switch), wherein the second input is generated as a result of a button being pushed by a user (Kazuki, Para. 0029 –opening/up operation switch). The sequencing of steps would occur naturally with a user controlling the input means of Kazuki to perform a partial reveal of the product and a full reveal of a product.
Regarding claim 8, modified Lin further discloses after the raising the lower portion to the height (Kazuki, Para. 0078), secondarily lowering the lower portion to be in contact with the platform, wherein the secondarily lowering is in response to a second input from the input device (Kazuki, Para. 0029 – push button switch), wherein the second input is generated as a result of a button being pushed by a user (Kazuki, Para. 0029 –closing/down operation switch). The sequencing of steps would occur naturally with a user controlling the input means of Kazuki to perform a partial reveal of the product and then closing down the operation. Although the combination with Walker is being used to show the concept of performing a partial reveal to a full reveal, the examiner takes the position that it would have been obvious to a person of ordinary skill in the art at the time of the invention to lower the lower portion if the initial raising step of the lower portion was too high so that the product/dice exposed too much information to the users.
Regarding claim 9, modified Lin further discloses after the raising the lower portion to the height or starting to raise the lower portion to the height (Kazuki, Para. 0078), raising the lower portion to fully reveal the device (Lin, Para. 0038) in response to a second input from the input device (Kazuki, Para. 0029 – push button switch), wherein the second input is generated as a result of a button being pushed by a user (Kazuki, Para. 0029 –opening/up operation switch). As a reminder, the language “reveal the device” is being interpreted as “reveal the dice” as stated supra in the 112(b) rejection. See sequencing explanation above for claim 7.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lin in view of Las and further in view of US 20110018194 (hereinafter “Nicely”).
Regarding claim 11, Lin and Las disclose all of the limitations of claim 1. However, modified Lin does not disclose the method of a dice game that is physically operated in a location separate from a player accessing the dice system remotely with a computer. However, Nicely, in the analogous art of dice games, discloses “remote communication assemblies may be associated with a plurality of video gaming machines” that allows many different players to participate (Para. 0140-0141). Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to include remote play access to Lin’s invention in order to increase the reach of the game and potential players.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
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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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/S.M.B./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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