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 Objections
Claim 3 is objected to because of the following informalities: Claim 3 line 1 recites “wherein wherein.” 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 5, 10, and 11 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.
Claims 5 and 11 both recite “construction of playing paths.” However, only the term “a playing path” and “the playing path” were previously claimed. Therefore, the term “playing paths” lacks proper antecedent basis. Presumably this was intended to recite “construction of the playing path” or similar. Appropriate correction is required.
Claim 10 is lacking a preamble and a dependency, therefore, it is unclear what is attempting to be claimed. For the purposes of this action, it is presumed that claim 10 was intended to depend from claim 9, since it appears to further limit the “random selection device” by claiming a die. Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by Hawk (US Patent No. 7,481,726 B2).
In Reference to Claims 1-5
Hawk teaches (Claim 1) A game kit comprising: a plurality of tiles, the tiles being separate from each other (items 21-32 and / or items 41-54, fig’s 1-4), the tiles being positionable in any one of multiple arrangements to define a playing path in which each tile defines a landing space along the playing path (column 4 lines 51-58), the plurality of tiles including a set of instruction tiles, each instruction tile including indicia representing a gameplay instruction (column 7 lines 14-16);
(Claim 2) wherein the playing path of each of the multiple arrangements has a start end and a finish end (fig. 4 and column 8 lines 56-58);
(Claim 3) wherein wherein the start end of the playing path and the finish end of the playing path are spaced from each other (fig. 4);
(Claim 4) wherein each tile has an upper surface sized and configured to support a player thereon (column 5 lines 35-41);
(Claim 5) wherein the plurality of tiles is sized and configured to facilitate construction of playing paths on a ground surface (column 45 lines 63-65);
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hawk.
In Reference to Claim 6
Hawk teaches all of claim 1 as discussed above.
Hawk further teaches (Claim 6) wherein [some of the] tiles are equal in size and shape to each other (items 21-24, 26, 27, 28, 29, 31 etc., fig. 3).
Hawk fails to teach all of the game tiles being equal of claim 6.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided all of the tiles in an equal size simply as a matter of engineering design choice, since, it has been held that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Hawk teaches that a variety of shapes would work equally well in the system, as long as the edge dimensions of the shapes are relatively equal (column 5 lines 46 – column 6 line 5), so they may conveniently line up when used to form a path. Therefore, merely claiming equally sized and shaped tiles or a variety of sized and shaped tiles would not produce any new or unexpected results, and is, therefore, simply a matter of engineering design choice and is not a patentable distinction.
Claims 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hawk in view of Rosenwinkel et al. (US Patent No. 4,526,376).
In Reference to Claims 7-8
Hawk teaches all of claim 1 as discussed above.
Hawk fails to teach the features of claims 7 and 8.
Rosenwinkel teaches (Claim 7) wherein [a] plurality of tiles further comprises a set of non-instruction tiles, each non-instruction tile being free of indicia representing gameplay instructions (column 2 lines 48-58, plain tiles);
(Claim 8) wherein the set of non-instruction tiles comprises different groups of non-instruction tiles (e.g. plain girder cards and plain ladder cards, column 2 lines 48-58), wherein the different groups of non-instruction tiles have different [designs](fig. 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the path forming game of Hawk with the feature of sets of non-instruction cards as taught by the path forming game of Rosenwinkel for the purpose of providing a wider assortment of cards for creating more varied and diverse path formations, making the game more versatile, and more interesting and attractive to the users.
Further, the examiner notes that 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 playing tile 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 e.g. instruction / non-instruction / color indicia and the substrate e.g. playing tile, which is required for patentability.
In Reference to Claims 9-10
Hawk teaches all of claim 1 as discussed above.
Hawk fails to teach the feature of claims 9 and 10.
Rosenwinkel teaches (Claim 9) further comprising a random selection device configured for use in conjunction with [a] plurality of tiles to play a game (item 58, fig. 1);
(Claim 10) the random selection device comprising a die having a plurality of sides, the sides of the die having indicia which is unique from each other, the indicia of each side representing a number (item 58, fig. 1, column 2 lines 59-61).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the path forming game of Hawk with the feature of a die as taught by the path forming game of Rosenwinkel for the purpose of providing a random selection feature to the device for use in gameplay as taught by Rosenwinkel (column 3 lines 8-13), allowing the game to be played with additional chance elements, making the game more interesting and attractive to the users.
In Reference to Claim 11
Hawk teaches (Claim 11) A game kit comprising: a plurality of tiles, the tiles being separate from each other (items 21-32 and / or items 41-54, fig’s 1-4), the tiles being positionable in any one of multiple arrangements to define a playing path in which each tile defines a landing space along the playing path (column 4 lines 51-58), wherein the playing path has a start end and a finish end (fig. 4 and column 8 lines 56-58), wherein the start end of the playing path and the finish end of the playing path are spaced from each other (fig. 4), each tile having an upper surface sized and configured to support a player thereon (column 5 lines 35-41), the plurality of tiles being sized and configured to facilitate construction of playing paths on a ground surface (column 45 lines 63-65), [some of the] plurality of tiles being equal in size and shape to each other (items 21-24, 26, 27, 28, 29, 31 etc., fig. 3), the plurality of tiles including: a set of instruction tiles, each instruction tile including indicia representing a gameplay instruction (column 7 lines 14-16); []; [].
Hawk fails to teach all of the game tiles being equal sizes, colored non-instruction tiles, and a die of claim 11.
Rosenwinkel teaches a set of non-instruction tiles, each non-instruction tile being free of indicia representing gameplay instructions (column 2 lines 48-58, plain tiles), the set of non-instruction tiles comprising different groups of non-instruction tiles, wherein the different groups of non-instruction tiles have different [patterns] (e.g. plain girder cards and plain ladder cards, column 2 lines 48-58, fig. 1);
and a random selection device configured for use in conjunction with [a] plurality of tiles to play a game (item 58, fig. 1), the random selection device comprising a die having a plurality of sides, the sides of the die having indicia which is unique from each other, the indicia of each side representing a number (item 58, fig. 1, column 2 lines 59-61), the die having a size such that the die is configured to be rolled on the ground surface and display the indicia of a selected side in view of a player standing along the playing path (item 58, note that any die is capable of performing the function recited here, no specific size is actually claimed).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided all of the tiles in an equal size simply as a matter of engineering design choice, since, it has been held that changes in shape are obvious matters of design choice absent persuasive evidence that the particular configuration is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Hawk teaches that a variety of shapes would work equally well in the system, as long as the edge dimensions of the shapes are relatively equal (column 5 lines 46 – column 6 line 5), so they may conveniently line up when used to form a path. Therefore, merely claiming equally sized and shaped tiles or a variety of sized and shaped tiles would not produce any new or unexpected results, and is, therefore, simply a matter of engineering design choice and is not a patentable distinction.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the path forming game of Hawk with the feature of sets of non-instruction cards as taught by the path forming game of Rosenwinkel for the purpose of providing a wider assortment of cards for creating more varied and diverse path formations, making the game more versatile, and more interesting and attractive to the users.
Additionally, the examiner notes that 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 playing tile 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 e.g. instruction / non-instruction / color indicia and the substrate e.g. playing tile, which is required for patentability.
Finally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the path forming game of Hawk with the feature of a die as taught by the path forming game of Rosenwinkel for the purpose of providing a random selection feature to the device for use in gameplay as taught by Rosenwinkel (column 3 lines 8-13), allowing the game to be played with additional chance elements, making the game more interesting and attractive to the users.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711