DETAILED ACTION
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.
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(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pendexter (US 6702287) in view of Duke (US 5690334).
With respect to claim 1, Pendexter discloses, a chess game (“Super Chess” in abstract) for two opposed players (claim 1 details a first and second player), the game comprising: - a board partitioned by twelve horizontal lines and eleven vertical lines (fig. 1 details a 10x11 board which contains 12 vertical lines and 11 horizonal lines; the orientation of the lines, vertical vs. horizontal is seen as a nonstructural difference and as such is given no patentable weight), divided in two symmetrical parts by a blank (column F in fig. 1 divides the board into two symmetrical 5x10 parts), each part having a center (it is inherent that any part will have a center; herein C5-6 and I5-6 are center for the two symmetrical 5x10 parts in fig. 1) and patterns to help arrange pieces at an opening (checkerboard patterning in fig. 1), a space (i.e. rows 7-4 in fig. 1), and a bar at an end (rows 1 and 10 in fig. 1 are equivalent to applicant’s bar at an end) to help remember postponements (this function is seen as an intended use of the end rows in fig. 1); and
- two set of game pieces (see pieces in fig. 1; and note col. 2, lines 40-50), each set having a color (col. 2, lines 60-62), each of the two sets of game pieces having a specific starting position (fig. 1 details specific starting positions), specific moving and capturing rules (figs. 2-19 detail moving and capturing rules of various game pieces), and where starting positions of the two sets of game pieces are symmetrical on the board (clear from fig. 1 that the start positions are symmetrical on the board).
Pendexter does not expressly disclose any potential materials to manufacture the board from.
Duke discloses that a game board can be constructed out of wood (col. 8, lines 30-33).
Duke and Pendexter are analogous art because they are from the same field of endeavor namely board games.
At the time of filing it would have been obvious to one of ordinary skill in the art construct the board of Pendexter out of wood as taught by Duke. Such a material choice would have been predictable and resulted in a wooden Pendexter board.
The name of various board positions and game pieces, i.e. river, palace, water crystal, twelve zodiac animals are seen as a non-structural aesthetic selections that do not differentiate the apparatus from the prior art. As such while Pendexter does not disclose the same names for board positions or game pieces these names, as non-structural aesthetic labels, are not afforded any patentable weight.
Additionally, applicant is advised of the following guidance concerning the patentability of various aspects of board games. 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. If a prior art structure is capable of performing the intended use as recited, then it meets the claim. See MPEP 2114, In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding the claimed indicia of a board game surface, including the spaces, colors, and shapes of the board, the playing surface of Pendexter substantially teaches the claimed printed matter as shown above.
Moreover, per MPEP 2111.05, If a new and unobvious functional relationship between the printed matter and the substrate does not exist. USPTO personnel need not give patentable weight to printed matter. 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). 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 …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). The physical configuration of the claimed apparatus in the Gulack invention comprised three key elements: (1) a band, ring, or set of concentric rings; (2) a plurality of individual digits imprinted on the band or ring at regularly spaced intervals; and (3) an algorithm by which the appropriate digits are developed. The court noted that the claims required a particular sequence of digits to be displayed on the outside surface of a band. These digits were functionally related to the band in two ways: (1) the band supports the digits; and (2) there is an endless sequence of digits — each digit residing in a unique position with respect to every other digit in an endless loop. The digits exploit the endless nature of the band, and notably, these features are critical to the invention, thus constituting a functional relationship between the digits and the band. The product performed some function with respect to the printed matter it is associated because the claimed algorithm would not be satisfied without certain physical relationships of the string of numbers. In Miller, the printed indicia on a measuring device for use in fractioning recipes was at issue. In re Miller, 418 F.2d 1392, 164 USPC 46 (CCPA 1969). Specifically, volumetric indicia on the measuring receptacle indicated volume in a certain ratio to actual volume. This relationship was held to constitute a functional relationship between the indicia and the substrate. The printed matter performs some function with respect to the product to which it is associated. Evidence against a functional relationship exists where a product merely serves as a support for printed matter. See MPEP 2111.05. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product. Another example in which a product merely serves as a support would occur for a deck of playing cards having images on each card. See In re Bryan, 323 Fed. App'x 898 (Fed. Cir. 2009) (unpublished). In Bryan the applicant asserted that the printed matter allowed the cards to be "collected, traded, and drawn"; "identify and distinguish one deck of cards from another"; and "enable[] the card to be traded and blind drawn". However, the court found that these functions do not pertain to the structure of the apparatus and were instead drawn to the method or process of playing a game. See also Ex parte Gwinn, 112 USPQ 439, 446-47 (Bd. Pat. App. & Int. 1955), in which the invention was directed to a set of dice by means of which a game may be played. The claims differed from the prior art solely by the printed matter in the dice. The claims were properly rejected on prior art because there was no new feature of physical structure and no new relation of printed matter to physical structure. For example, a claimed measuring tape having electrical wiring information thereon, or a generically claimed substrate having a picture of a golf ball thereupon, would lack a functional relationship as the claims as a whole are directed towards conveying wiring information (unrelated to the measuring tape) or an aesthetically pleasing image (unrelated to the substrate) to the reader. Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists. For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864. Unlike the fact situations in Miller and Gulack, the substrate (board) does not support the printed indicia and the indicia is not arranged such that it's positioned in a unique functional position with respect to the substrate. Moreover, the indica is directed towards conveying abstract (i.e. no structural functionality) game rules to a human reader independent of the functionality of the supporting product. There is not a new and nonobvious functional relationship therebetween. Instead, the printed matter is akin to the images on a playing card in In re Bryan and the dice indicia of Ex parte Gwinn, neither of which were determined to establish a new and unobvious functional relationship with the substrate. As such, no patentable weight is given to any claimed printed matter.
With respect to claim 2, Duke and Pendexter disclose, a chess game as claimed in claim 1 (see above).
As discussed above the name of various board positions and game pieces, i.e. Sky Eye, are seen as a non-structural aesthetic selections that do not differentiate the apparatus from the prior art. As such while Pendexter does not disclose the same names for board positions or game pieces these names, as non-structural aesthetic labels, are not afforded any patentable weight.
As to the “function” of the Sky Eye piece, it is clear from the applicant’s specification that this protection function is entirely a construct borne out of the rules and method of playing the applicant’s board game and not any unique structural relationship/mechanism. Furthermore, each of the various game pieces of Pendexter are seen as providing a protection function for other game pieces depending up the particular game piece arrangement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William L Boddie whose telephone number is (571)272-0666. The examiner can normally be reached 8 - 4:15 M-F.
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/WILLIAM BODDIE/Supervisory Patent Examiner, Art Unit 2625