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 1-8 objected to because of the following informalities: it seems as the term “franchize” needs to be --franchise---. Appropriate correction is required.
Drawings
The drawings are objected to because the drawings are murky and the detail thereof are blurry and unclear. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application (see MPEP 608.02 Drawing and section V “DRAWING STANDARDS” for requirement of the application drawings). Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Note in particular regarding :(j) DETAILED DESCRIPTION OF THE INVENTION: See MPEP § 608.01(g). A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.
For example, it is unclear how the game start, or how a round is played (is a character (e.g., Fig. 2) moves along the board (Fig. 1) depending on which dice (as shown in Fig. 3 or Fig. 4) intended to be rolled during the game (i.e., “during drafting process” or “in game decision making”)?). This is a mere example and the specification should be specific as is necessary to describe the invention adequately and accurately to fully understand applicant’s invention.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 1-8 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.
As per claim 1, further clarification is require regarding “Player cards representing individual basketball players, each card containing information on player performance and outcomes based on dice rolls”. According to the original disclosure the dice outcome (i.e., dice rolls) is related to either a “drafting process” (section 3, page 4) and/or a “in-game decision making” (section 5, page 4).
Further clarification is require regarding “Special events and challenges affecting gameplay, such as luxury tax penalties, roster moves, and player injuries”. Are such “events” are part of the board game? Or the cards?
Further clarification is require what is applicant consider “Rules for head-to-head matchups between franchize owners”. As well as what applicant consider “Mechanisms for tracking franchize milestones and historical records; j. Optional elements such as player development, trades, and community engagement features”.
With respect to claim 4, further clarification is require what applicant consider “a snake format”.
With respect to claim 8, further clarification is require what is applicant consider “mechanisms for player development, trades, and community engagement features to enhance gameplay depth and immersion”.
Claims 2-3, and 5-7 are rejected based upon their dependency to claim 1.
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 1-8 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 “managing an NBA basketball franchise” . 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 the above claims has been analyzed to determine whether it is directed to any judicial exceptions. Step 2A, Prong 1 per MPEP 2106.04(a) Each of the above claims recites at least one step or instruction for “human activity”, 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). With respect to step 1, claim 1 is directed to a system/method which is eligible at step 1. With respect to set 2A, the following elements are considered to be abstract: in the broadest and most reasonable manner, the examiner construed the system of claim 1, as steps following a well-known concept of an NBA teams/franchise, without anymore. The claim limitations appear to be directed to certain system/method of human activity of following rules govern by the NBA league. The following are additional elements that do not amount to a practical application at step 2A: such as playing cards, dice/s and a game board. In re-evaluating the additional elements under step 2B, these additional element appears to be routine and conventional in the art as exhibited by Jenkins US 5,163,687 (Figs. 1-13; 3:31-6:68; see for example Figs. 1 and 2, regarding the game board; Figs. 4-6, playing cards, and Fig.3A, a dice). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because neither, the game board, the cards nor the dice, do not transform the abstract idea into a patent-eligible application as the steps are merely steps of human activity following the well-established rules govern by the NBA. 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. Thus, the limitations of independent claim1 when considered individually and as an ordered combination do not amount to significantly more than the abstract idea for the reasons set forth above.
Dependent claims 2-8 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. Claims 2 and 3, each recites manner related to a printed matter on the game board (claim 2) or the cards (claim 3); claims 4-5 are relating to the well-known NBA rules of a draft (claim 4), and a playoff (claim 5); claim 6 related to printed matter upon the game board, claim 7 related to titles/ championships and claim 8 related to a player development. There are no additional elements, within the dependent claims to be more than “human activity”, to significantly add more than the judicial exception to transform the method/system from the abstract idea (i.e. an abstract idea of human activity in the form of following the well-established rules govern by the NBA) into a patent eligible subject matter. Accordingly, as indicated above, each of the above-identified dependent claims 2-8 recites an abstract idea and when considered individually and as an ordered combination do not amount to significantly more than the abstract idea for the reasons set forth above.
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.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jenkins US 5,163,687 (“Jenkins”) in view of Murphy et al US 5,123,653 (“Murphy”) and Treece US 2017/0028294 (“Treece”).
As per claim 1, Jenkins discloses a basketball franchize simulation game system (Figs. 1-13; 3:31-6:68) comprising:
a. A game board representing a basketball season, comprising a plurality of spaces with varying effects on gameplay (game board 11 with spaces 12-16)(Figs. 1-2; 3:31-55);
b. Player cards representing individual basketball players, each card containing information on player performance (players cards 19)(Fig. 5; 4:6-62) and outcomes based on dice rolls (to the best of his understanding the examiner construed the use of dice 34 (Fig. 3A; 5:33-44) as such);
c. A draft system wherein franchize owners select players and coaches within a salary cap limit using a round-robin format (via draft cards 20)(Fig. 6; 4:63-51);
g. Special events and challenges affecting gameplay, such as luxury tax penalties, roster moves, and player injuries; (penalties, salary cap (i.e., luxury tax), and player lost for any reason (e.g., injuries)(3:55-67 and 5:47-6:39), h. Rules for head-to-head matchups between franchize owners (via game cards 18)(Fig. 4; 3:55-67 and 5:18-46); and
j. Optional elements such as player development, trades, and community engagement features (such as trades in 6:15+”It should be noted that during play of the game the players may be traded, waived, bought and sold as required for each participant to fill a team. In a trade, the salary accompanies a player to a new team”).
Jenkins is not specific regarding d. A game schedule determining matchups and win share totals for each game; e. Mechanics for gameplay including dice rolls to determine player performance, win share calculations, and tallying of wins and losses; f. Playoff structure including seeding, series lengths, and win conditions.
Jenkins is not specific regarding i. Mechanisms for tracking franchize milestones and historical records.
With respect to a game schedule, a dice roll to determine game’s outcome, and a playoff structure means, Murphy discloses a game board (10)(Fig. 1; 2:13-59) to include a dice 30 as well as a regular season structure (via cards 48)(Fig. 2, 2:60-3:42) and a playoff structure (via playoff cards 50)(Fig. 2; 3:43-4:6).
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 Jenkins’ with A game schedule determining matchups and win share totals for each game; Mechanics for gameplay including dice rolls to determine player performance, win share calculations, and tallying of wins and losses; Playoff structure including seeding, series lengths, and win conditions, for the reason that a skilled artisan would have been motivated in combining prior art elements according to known methods to yield predictable results forming a basketball game board that includes such features for purposes of excitement and entertainment.
With respect to Mechanisms for tracking franchize milestones and historical records, Treece discloses championships won (i.e., milestones and historical records; whereas the mechanism recorded upon playing cards)(Figs. 1A and 3; [0034]; note [0026]-[0028] regarding the cards, i.e., the “Mechanisms for tracking”).
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 Jenkins’ Mechanisms for tracking franchize milestones and historical records for the reason that a skilled artisan would have been motivated in provide additional data for purposes of excitement and entertainment.
As per claim 2, with respect to wherein the game board comprises spaces with effects such as salary cap adjustments, player bonuses, and penalties, note Jenkins’s Fig. 1 in conjunction to 3:31+ regarding spaces 12-16 and playing cards to determine the rules of the draft and etc. (also note 5:51+, as penalties, salary and alike).
As per claim 3, with respect to wherein player cards contain information on player performance based on home and away games, with varying win share outcomes, note Jenkins’ Fig. 5 regarding player cards and 4:6+ as the information upon a card.
Note: with respect to claims 2 and 3, such limitations are amount to mere printed matter, and to that end it is noted that 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 this case, there is no new and unobvious functional relationship between the printed matter and the substrate, as the printed matter is a well-known manner of placing data (i.e., printed matter) upon a game board and card games.
As per claim 4, with respect to wherein the draft system utilizes a snake format to determine player selection order, to the best of his understanding the examiner construed the draft manner taught by Jenkins (Fig. 6 in conjunction to 4:63-5:46) as such.
As per claim 5, with respect to wherein playoff series lengths vary based on round, with the finals being a best-of-five format, the examiner construed the playoff cards 50 of Murphy, that are more than five, as being such a format (note 3:50+ as the manner of playing a playoff structure). 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 Jenkins’ wherein playoff series lengths vary based on round, with the finals being a best-of-five format for the reason that a skilled artisan would have been motivated in providing excitement and entertainment.
As per claim 6, with respect to wherein special events and challenges are triggered by landing on specific spaces on the game board, note Jenkins’ Fig. 1 and 3:31-55 regarding the board 11 with spaces 12-16 in conjunction to 5:27-51 as the manner of playing the game; note 6:15-33 regarding a “special event” (such as trades).
As per claim 7, with respect to wherein franchize milestones include perfect season achievements, conference titles, and playoff berths, construed as championships won (that includes conference titles, and playoff berths, to reach the championships, as taught by Treece (Figs. 1A and 3; [0034]; note [0026]-[0028]). 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 Jenkins’ wherein franchize milestones include perfect season achievements, conference titles, and playoff berths for the reason that a skilled artisan would have been motivated in providing excitement and entertainment while including such data.
As per claim 8, with respect to further comprising mechanisms for player development, trades, and community engagement features to enhance gameplay depth and immersion, construed as cards to include data regarding skills in Figs. 1A and 2 ([0026]-[0028] of Treece; such developing skill printed upon the cards construed as such “mechanism” as claimed. 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 Jenkins’ further comprising mechanisms for player development, trades, and community engagement features to enhance gameplay depth and immersion for the reason that a skilled artisan would have been motivated in providing excitement and entertainment while including such data.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.K/Examiner, Art Unit 3711 2/25/2026 /JOHN E SIMMS JR/Primary Examiner, Art Unit 3711