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 § 103
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.
Claim(s) 1-2, 6-10, 12-13, 17-23 are rejected under 35 U.S.C. 103 as being unpatentable over Rogahn (Pat no. 4,741,534). anticipated by Rogahn (US 4,741,534). Regarding claim 1, Rogahn discloses a game construction comprising a plurality of three dimensional blocks (10). Note Figure 1 and column 2, lines 15-24. Rogahn provides the six sides of the cubes with a portion of a picture such that a total of six different pictures may be formed when the cubes are rearranged correctly. The six different portions of pictures define first, second, third, and fourth indica disposed on first, second, third and fourth surface of the blocks with corresponding rules for each completed image. For example, the first indicia as shown in Figure 1 of Rogahn inherently comprises a first set of rules where a user completes the prescribed picture. Likewise, the second, third, and fourth indicia define different sets of rules for the user to complete the other prescribed pictures. Note Figure 1 of Rogahn showing the first surfaces of the blocks with a portion of a two-dimensional image thereon. Further, it is noted that the limitation for the blocks to comply with first, second, third, and fourth sets of rules relates to the intended use of the invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the blocks forming each of the completed images are capable of corresponding with a prescribed set of rules and thus, meet the claim limitation. Note MPEP 2114 (II).
Regarding claim 2, Note Figure 1 of Rogahn showing the plurality of three-dimensional blocks placed in a predetermined configuration wherein the first set of rules is completed and a first predetermined game (e.g. the completed image) is achieved.
Regarding claims 6, 17, the limitations for the indicia to be a set of words, letters or absent indicia relates to the meaning and information conveyed by the printed matter applied to the blocks. Note MPEP 21111.05 stating that "To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated. See Lowry, 32 F.3d at 1584, 32 USPQ2d at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404)." Here, the printed matter does not provide a functional relationship with the substrate and thus, the printed matter is not accorded patentable weight. The printed matter may be applied to any substrate and the substrate can comprise any printed matter. Thus, the printed matter does not rely on the specifics of the substrate and a functional relationship does not exist. MPEP 2111.05(B) also states that claims are properly rejected where there is "no new feature of physical structure and no new relation of printed matter to physical structure." Here, the instant claims do not define a new feature of physical structure and no new relation of printed matter to physical structure given the teachings of Rogahn and thus, the claimed printed matter does not distinguish the instant invention from the teachings of Rogahn. Further, even if a functional relationship did exist, this relationship is not new and unobvious given the teachings of the prior art. Note MPEP 2111.05(II). Rogahn particularly teaches the application of portions of an image to the faces of a plurality of blocks which are rearranged to form a completed image. To merely recite that the indicia comprises a set of words, letters or blanks is not new and unobvious but is instead merely an extension on the teachings of Rogahn. Thus, the recited printed matter is not accorded patentable weight and the teachings of Rogahn anticipate the claimed invention. In the alternative, even if a functional relationship did exist, this relationship is not new and unobvious given the teaching of Rogahn. It would have been obvious to one of ordinary skill in the art to provide alternative indicia on the blocks of Rogahn such as letters, words or blanks in order to provide alternative images for the user to construct. Regarding claim 7, Rogahn teaches all six faces of the cubes to comprise indicia thereon. Thus, Rogahn teaches fifth indicia for the blocks that corresponds with a fifth set of rules. Regarding claim 9, Rogahn teaches six sided cubic blocks. Regarding claim 10, insofar as this claim may be understood, Rogahn anticipates the claimed structure. It is noted that the claim does not positively identify the two or more different shapes for the three dimensional blocks of claim 1. The claim merely defines achievement of a set of rules for two or more different three dimensional block shapes. It is also noted that the achievement of the set of rules relates to the intended use of the different three dimensional block shapes. Thus, using a broadest reasonable interpretation, claim 10 merely defines two or more blocks with different shapes. Rogahn teaches two or more three dimensional blocks (10, 12) with different shapes for the game. Note Figure 1. The different three dimensional block shapes are used for forming the image and thus Rogahn inherently teaches different three dimensional block shapes that are capable of achieving a set of rules as recited. Regarding claims 12-13 and 18, note the rejections of claims 1-2 and 7 as these claims recite similar limitations. Rogahn teaches a plurality of three dimensional cubes with the recited first, second, third, and fourth surfaces with indicia applied to each of the faces.
Regarding claims 8 and 19, Rogahn teaches fifth indicia applied to the faces of the blocks. The limitation for the fifth indica to also correspond to the first, second or third set of rules relates to the meaning and information conveyed by the printed matter and is not accorded patentable weight. Note the rejections of claim 4-6 above. Because the fifth indicia does not provide a functional relationship with the substrate, the particular printed matter and the limitation for the fifth indica to correspond to the first, second or third set of rules is not given patentable weight. In the alternative, Rogahn teaches providing a portion of an image on the faces of the blocks of the game. To merely state that the indicia relates to the first, second, or third set of rules is not new and unobvious given the teachings of Rogahn but is instead an obvious extension on the teachings. It would have been obvious to one of ordinary skill in the art to provide related completed images for the faces of the blocks such as various scenic images in order to provide various completed images for the user to construct. Providing related completed images defines a fifth indicia that corresponds to the first, second or third set of rules as well as a fifth set of rules. Further, it is noted that the limitation for the fifth indicia to correspond to at least one of the first, second or third set of rules relates to the intended use of the invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the blocks forming each of the completed images are capable of corresponding with a prescribed set of rules and thus, meet the claim limitation. Note MPEP 2114 (II).
Regarding claim 20, Rogahn discloses a game construction comprising a plurality of three dimensional blocks (10). Note Figure 1 and column 2, lines 15-24. Rogahn provides the six sides of the cubes with a portion of a picture such that a total of six different pictures may be formed when the cubes are rearranged correctly. The six different portions of pictures define first, second, third, and fourth indica disposed on first, second, third and fourth surface of the blocks with corresponding rules for each completed image. For example, the first indicia as shown in Figure 1 of Rogahn inherently comprises a first set of rules where a user completes the prescribed picture. Likewise, the second, third, and fourth indicia define different sets of rules for the user to complete the other prescribed pictures. Further, it is noted that the limitation for the blocks to comply with first, second, third, and fourth sets of rules relates to the intended use of the invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the blocks forming each of the completed images are capable of corresponding with a prescribed set of rules and thus, meet the claim limitation. Note MPEP 2114 (II).
Regarding claim 21, Rogahn shows at least one indicia is customizable by user as shown in figure 3 and it would have been obvious to one of ordinary skill in the art at the time of filing to customize indicia to tailor the gaming structure to fit a users preference.
Regarding claim 22, Rogahn shows a game card providing instructions for at least one of the sets of rules. See fig 4.
Regarding claim 23, there is no structural limitations in this claim as the set of rules, icons and matching step do not impart structure. Rogahn does shows a plurality of three-dimensional blacks that have surfaces. The actual content/icon is directed towards printed matter which is not accorded patentable weight as discussed supra. The printed matter is merely conveying information to a user and does not have a functional relationship with the substrate/block. Assuming arguendo that there is a functional relationship, there is no unobvious functional relationship as the printed matter is merely conveying information/rules to a user in a conventional manner.
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument with respect to the actual indicia being distinct set of game rules, the examiner maintains his position that the printed matter is not accorded patentable weight as outlined in the body of the rejection. The examiner disagrees that there is a functional relationship between the printed matter and the substrate (block) as the substrate is merely conveying information/rules to a user to play the game using the blocks. This is similar to applied prior art Rogahn which has printed matter on blocks to play a game by completing a puzzle using the printed matter as instructions to assemble blocks to reach a desired output.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE LEE KIM whose telephone number is (571)272-4463. The examiner can normally be reached Monday to Thursday 6am-4pm.
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.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711