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 1-13 objected to because of the following informalities: note MPEP 608.01(m) regarding forms of claims whereas “each claim begins with a capital letter and ends with a period”. 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.
Claim 8 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.
With respect to claim 8, further clarification is require what is applicant consider as “side surfaces with branding” (lines 3-4)
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, 9 and 11-13 are rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more, as “human activity” as rules of conducting a game. 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. In accordance with MPEP 2106.04, each of claims 4 and 11-13 has been analyzed to determine whether it is directed to any judicial exceptions. Step 2A, Prong 1 per MPEP 2106.04(a) Each of Claims 4 and 11-133 recites at least one step or instruction for playing a throwing type game/a by taking turns in propelling game pieces at opponents, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) or a certain method of organizing human activity in MPEP 2106.04(a)(2)(II) or mathematical concept in MPEP 2106.04(a)(2)(I). Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP 2106.04(a)(2)(II)). With respect to step 1, each claim 4 and 11-13 is directed to a method which is eligible at step 1. With respect to set 2A, the following elements are considered to be abstract: A method of playing a physically interactive game using the gaming set comprising: Propelling a selected cubic gaming element towards an opponent’s gaming elements by a foot-based action to impact and reduce the "lives" count of the opposing elements; Implementing turn-based gameplay where players alternate in selecting and propelling gaming elements based on strategic considerations” (claim 4); “A method for conducting a 1 vs. 1 game mode using the gaming set, comprising: Two players engaging in a head-to-head format in a turn-based system; Each player strategically selecting gaming elements from their collection based on tier and life points at the start of each turn; Players alternating turns, where each turn involves propelling a gaming element towards the opponent's elements; The game proceeding with each player taking turns in accordance with the turn-based mechanism until one player successfully reduces all lives of the opponent's gaming elements to zero, thereby determining the winner” (claim 11); “A method for conducting a Team vs. Team game mode using the gaming set, comprising: Two teams, each consisting of multiple players, competing in a collaborative gameplay format within a turn-based system; Teams strategically selecting gaming elements from their collective pool based on tiers and life points at the start of each team's collective turn; During each team's turn, alternating actions among team members, where each member completes their action before moving to the next member, ensuring all members have acted before the end of the team's turn; After one team completes its turn, the opposing team commences its turn, following the same sequence; The game continues in this turn-based manner, with teams alternating complete turns, until one team successfully eliminates all lives of the opposing team's gaming elements, thus achieving victory” (claim 12) and “A method for conducting The Arena Mode game using the gaming set , comprising: Multiple players participating simultaneously in a free-for-all format under a turn-based system; Players independently selecting gaming elements from any tier with no restrictions on quantity at the start of their turns; A turn-based gameplay involving dynamic and unpredictable interactions as each player aims, on their turn, to reduce the lives of all other players' gaming elements; The game concluding when only one player remains with gaming elements that still have lives, or when a predetermined time limit is reached, with the winner being the player with the most cumulative lives remaining at the end of the turn cycle” (claim 13). The above limitations appear to be directed to methods of human activity because such steps are steps of playing a well-known concept of propelling game pieces/set at opponent while taking turns in attempt to achieve points. The following are additional elements that do not amount to a practical application at step 2A: the gaming set as cubes with printed indicia. In re-evaluating the additional elements under step 2B, it appears to be routine and conventional in the art as exhibited by (Hamilton WO 2004069359A2, Figs. 1A-2B (pages 8:13-9:14 regarding the cubic game pieces and at least Figs. 9A-10J different modes of playing the game by taking turns and propelling cubic game set; as well as Lyle US 3,118,675 in Figs. 1 and 3 (2:27-40) as game utilizing cubic set to be propel). The limitations of claim(s) (4 and 11-13), when considered individually and as an ordered combination do not amount to significantly more than the abstract idea for the reasons set forth above. This judicial exception is not integrated into a practical application because all of such steps are an abstract idea in the form of human activity. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because “cubic set with indicia on” do not transform the abstract idea into a patent-eligible application, as the steps are merely steps of human activity, without significantly more. The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982. In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’. Id. Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010.
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. 911 F.3d at 1160-61; 129 USPQ2d at 1011. In this case, it is clear that the rules of playing the game, by propelling cubic set at opponents, while taking turns, are an example of following rules or instructions, which as set forth above, the Federal Circuit determined that such claims were directed to the abstract idea of "rules for playing games", which the court characterized as a certain method of organizing human activity.
Further, dependent claims 5-7 and 9 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed. That is, claim 5 relates to a player positioning; claims 6-7 each relates to a type of propelling manner; and claim 9 relates to a victory of the game. Accordingly, as indicated above, each of the above-identified claims recites an abstract idea as in MPEP 2106.04(a).
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-3, 8, and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamilton WO2004069359A2 (“Hamilton”) .
As per claim 1, Hamilton discloses a gaming set (Figs. 1A-3A; page 8:4- page 10:22) comprising: A plurality of cubic gaming elements, each categorized into one of at least three distinct tiers based on the number of "lives" the element represents (cubic game pieces 1 (Figs. 1A-1B) and game pieces 8 (Figs. 2A-2B); each game pieces includes printed indicia related to “lives” (page 8:19-22)- regrading game pieces 1; page 9:10-15 “lives” of game pieces 8); Wherein each cubic gaming element features distinct surface designs, including character imagery, tier designation, and numeric life value (Figs. 3A-3B and page 9:16-10:22, regarding the characters, lives, strength, and etc. of to be stick, adhere, to cubic game sets 1 and 8). .
As per claim 2, with respect to wherein: The tiers are designated as Standard, Rare, and Legendary, each tier indicating a range of "lives" (note Fig. 3A (page 10:7-10) for example, “power” 18, “special ability” 20 and etc.; see Fig. 3B (page 10: 11-16), for example, rating, “defense” 24, “damage” 25, and etc.) .
As per claim 3, with respect to The cubic gaming elements are specifically adapted for outdoor physical gameplay, ensuring durability and visibility in various outdoor conditions, it is noted that it has been held that 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 art apparatus teaches all the structural limitations of the claim. Exparte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The examiner takes the position that Hamilton’s cubic set apparatus is fully capable to be employed as claimed, as it includes the same claimed apparatus.
As per claim 8, with respect to wherein: Each cubic gaming element's design includes a top surface with the character's name, front and back surfaces with character imagery, side surfaces with branding, and a bottom surface indicating tier level and life points, note Figs. 1A-1B (page 8:19-20) regarding cubes 1 and Figs. 2A-2B(page 9:10-14) regarding cubes 8; note Figs. 3A-3B (page 9:16-page 10: 16) regarding the designed related to each cubic sets.
As per claim 11, Hamilton discloses A method for conducting a 1 vs. 1 game mode using the gaming set of Claim 1 (Figs. 9A-9E, pages 13, line 13 (under example 1) to page 18:, 16 and page 27 (under example 4), comprising:
Two players engaging in a head-to-head format in a turn-based system;
Each player strategically selecting gaming elements from their collection based on tier and life points at the start of each turn (Fig. 9A; at least page 14: 11-20; page 27 under “example 4”); Players alternating turns, where each turn involves propelling a gaming element towards the opponent's elements(Fig. 9A; page 14: 11-20; page 27, under “example 4”); The game proceeding with each player taking turns in accordance with the turn-based mechanism until one player successfully reduces all lives of the opponent's gaming elements to zero, thereby determining the winner (Figs. 9B-9d; page 14:11-page 15:23; page 27, under “example 4”).
As per claim 12, Hamilton discloses A method for conducting a Team vs. Team game mode using the gaming set of Claim 1 (team tags formed by two or more players in page 23:6-page 24:16 following the rules under “example 2” (page 18:19-page 23:5, page 24:17-page 25:6 and Figs. 10A-10J), comprising:
Two teams, each consisting of multiple players, competing in a collaborative gameplay format within a turn-based system (Fig. 10A; page 19:1-17; Teams strategically selecting gaming elements from their collective pool based on tiers and life points at the start of each team's collective turn (Figs. 10A, 10B, 10F, 10G, 10H and 10I; page 19: 19-22 ;During each team's turn, alternating actions among team members, where each member completes their action before moving to the next member, ensuring all members have acted before the end of the team's turn (Figs. 10A, 10F and 10H; page 19:19-page 20:15);After one team completes its turn, the opposing team commences its turn, following the same sequence (Figs. 10C, 10D, 10F, 10I and 10H; page 19:19-page 20:15; The game continues in this turn-based manner, with teams alternating complete turns, until one team successfully eliminates all lives of the opposing team's gaming elements, thus achieving victory (game ends with points awarded accordingly)(Figs. 10B, 10E, 10G and 10J; page 20:16-page 21:3).
As per claim 13, Hamilton discloses A method for conducting The Arena Mode game using the gaming set of Claim 1 (Figs. 10A-10J in conjunction to page 18:19-page 23:5, page 24:17-page 25:6, and page 25:7-page 27:15, under “example 3”) comprising: Multiple players participating simultaneously in a free-for-all format under a turn-based system (Figs. 10A, 10C and 10D; page 25:16+); Players independently selecting gaming elements from any tier with no restrictions on quantity at the start of their turns (Figs. 10A+, page 25:23+); A turn-based gameplay involving dynamic and unpredictable interactions as each player aims, on their turn, to reduce the lives of all other players' gaming elements(Figs. 10A+, page 25:23+); The game concluding when only one player remains with gaming elements that still have lives, or when a predetermined time limit is reached, with the winner being the player with the most cumulative lives remaining at the end of the turn cycle (Figs. 10E and 10J; page 25-23-page 26:16).
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(s) 4-7, 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamilton as applied to claim 1 above, and further in view of Lyle US 3,118,675 (“Lyle”).
As per claim 4, Hamilton discloses A method of playing a physically interactive game using the gaming set of Claim 1 (Figs. 9A-9E (page 27:17-page 28:2) and/or Figs. 10A-10J (page 25:8-27:15), comprising:
Propelling a selected cubic gaming element towards an opponent’s gaming elements by an action to impact and reduce the "lives" count of the opposing elements (e.g., Figs. 9B, 9C (pages 27+); Figs. 10A, and 10F (pages 25:8+); Implementing turn-based gameplay where players alternate in selecting and propelling gaming elements based on strategic considerations (e.g., Figs. 9B, 9C (pages 27+); Figs. 10A, 10F, and 10G (pages 25:8+).
Hamilton is not specific regarding propelling the cube gaming element by a foot based action.
However, in a similar field of gaming set devices, Lyle discloses propelling cube gaming element by a foot based action (propelling cube game piece 12 by foot)(Fig. 1; 2:27-39). Therefore, 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 to form Hamilton’s propelling the cube gaming element by a foot based action for the reason that a skilled artisan would have been motivated by Lyle’s suggestions that such manner of propelling the cube game piece by foot provide amusement as well as develop skill (1:14+”the provision of an amusement and exercise producing apparatus of the kind indicated, which affords opportunity for the development of skill, as opposed to mere chance, and which, while primarily designed for use by children, is also suitable for use by adults”).
As per claim 5, with respect to wherein The game includes specific player positioning and cube placement guidelines tailored for outdoor or spacious indoor environments, note Lyle’s Fig. 1 and 1: 44-50). Therefore, 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 to form Hamilton’s wherein the game incorporates specific player positioning and cube placement guidelines tailored for outdoor or spacious indoor environments for similar reason discussed above with respect to claim 4.
As per claim 6, with respect to wherein: The game incorporates a variety of physical kicking techniques, including a "Baby Kick" for precision and a "Grasshopper Kick" for power and range, the examiner takes the position that within Lyle’s game a user (e.g., Fig. 1 and 2:21-39) can kick the game set cube in any manner, strength, technique, based upon a user’s age, skills, and etc. Therefore, 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 to form Hamilton’s wherein: The game incorporates a variety of physical kicking techniques, including a "Baby Kick" for precision and a "Grasshopper Kick" for power and range for similar reason discussed above with respect to claim 4.
As per claim 7, with respect to wherein: The "Baby Kick" is characterized by gentle foot-based propulsion suitable for close-range interaction and precision strikes; The "Grasshopper Kick" involves a dynamic leaping action, facilitating longer-range strikes and strategic repositioning of the gaming elements, the examiner maintains his position that within Lyle’s game (e.g., Fig. 1 and 2:21-39) such kicks can be performed, again based upon a suer’s skills, age, strength, and etc. Therefore, 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 to form Hamilton’s wherein: The "Baby Kick" is characterized by gentle foot-based propulsion suitable for close-range interaction and precision strikes; The "Grasshopper Kick" involves a dynamic leaping action, facilitating longer-range strikes and strategic repositioning of the gaming elements for similar reason discussed above with respect to claim 4.
As per claim 9, with respect to wherein: Victory conditions are set based on the depletion of "lives" from an opponent's gaming elements or achieving a dominant position on the playing field, note Hamilton’s Figs. 10B, 10E, 10G and 10J; page 25-23-page 26:16, and page 20:16-page 21:3, whereas a game ends with points awarded accordingly.
As per claim 10, Hamilton is not specific regarding wherein: The cubic gaming elements are manufactured from materials suitable for outdoor play, such as high-quality plastic, with UV-resistant printing for durability and legibility.
However, Lyle discloses the use of suitable plastic 2:17-21.
Therefore, 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 to form Hamilton’s cubic gaming elements are manufactured from materials suitable for outdoor play, such as high-quality plastic, with UV-resistant printing for durability and legibility for the reason that a skilled artisan would have been motivated by Lyle’s suggestions using known materials suitable to their intended use as strong and durable enough materials yet light enough to allow propelling of the cubes and avoid injuries and alike.
The examiner construed the plastic-rubber materials of Lyle with indicia thereupon (e.g., Figs. 1 and 3) as “The cubic gaming elements are manufactured from materials suitable for outdoor play, such as high-quality plastic, with UV-resistant printing for durability and legibility. However, if there is any doubt regarding such, it is noted that it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Therefore, 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 to form Hamilton’s cubic gaming elements are manufactured from materials suitable for outdoor play, such as high-quality plastic, with UV-resistant printing for durability and legibility for the reason that a skilled artisan would have been motivated in using known materials suitable to their intended use as strong and durable enough materials allowing propelling the cubic set yet light enough to allow easier propelling of the cubes (reduce user’s fatigue) and avoid injuries and alike.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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/A.A.K/Examiner, Art Unit 3711 3/24/2026 /JOHN E SIMMS JR/Primary Examiner, Art Unit 3711