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 § 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) 1-9 and 11-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al US 5,261,666 (“Chen”).
As per claim 1, Chen discloses a game die device (die 1)(Fig. 1 and Figs. 11-13; 1:55-2:43, 2:58-3:19 and 4:62-5:21), the device comprising:
- a body having a plurality of walls that are coupled together in a three-dimensional shape (Fig. 1; 1:55-64), wherein each wall of the plurality of walls comprises a contact surface (Fig. 1), and wherein the plurality of walls includes a first wall and a second wall that is opposingly positioned to the first wall so that the first wall and the second wall are on opposite sides of the body (any one of the walls of the body that are position as such)(Fig. 1);
- a wall aperture disposed in the first wall (any recess 3 of a respective wall)(Fig.1; 1:55+) ;
- a reel rotatably coupled to the body via a connector (indicating piece 5/42 connected via shaft 4)(Fig. 1; 1:55-2:23), wherein the reel includes two or more outer plates which may be alternatingly positioned to be visible through the wall aperture as the reel is rotated, and wherein the reel includes two or more inner plates (note the examiner’s markings hereinafter in conjunction to Fig. 12 regarding indicating piece 42);
- a reel aperture formed in the reel (central groove 43)(Fig. 12; 2:22+), wherein the connector is inserted through the reel aperture (shaft 4 passing therethrough)(Fig. 12 in conjunction to Fig. 1 and 1:55+), wherein the reel aperture includes two or more inner plate junctions (note the examiner’s markings hereinafter in conjunction to Fig. 12 regarding indicating piece 42), and wherein when the device is rolled or thrown, the reel is configured to rotate around the connector until the device lands on a contact surface of the second wall and the action of gravity causes a first inner plate junction of the two or more inner plate junctions to rest on the connector so that the outer plate proximate to the first inner plate junction is facing away from the second wall and visible through the wall aperture (note 1:61-2:10 and 4:62+ in conjunction to Figs. 1 and at least 12, regarding the operation of the die to be played, thrown. In addition, with respect manner of using the die, note the examiner discussion hereinafter with respect to claim 11, as “manner of operating the device does not differentiate apparatus claim from the prior art”).
Examiner’s markings
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As per claim 2, Chen discloses wherein the connector is coupled to at least one wall of the plurality of walls (Fig. 1 and 1:57-61).
As per claim 3, with respect to wherein a first outer plate of the two or more outer plates has a plate center, and wherein the first inner plate junction is positioned proximate to the plate center of the first outer plate, note Fig. 12 as marked above with respect to claim 1, the examiner construed the center thereof in proximate, as claimed.
As per claim 4, Chen discloses wherein the body comprises at least six walls (Fig. 1; 2:56+).
As per claim 5, with respect to wherein the first inner plate junction is formed at an intersection of a first inner plate and a second inner plate that are coupled together, note Fig. 12 as marked above with respect to claim 1.
As per claim 6, with respect to wherein the first inner plate junction is formed between an intersection of a first inner plate with an outer plate and an intersection of a second inner plate with the outer plate, note Fig. 12 as marked above with respect to claim 1.
As per claim 7, with respect to wherein the two or more outer plates are each planar in shape, note Fig. 12 as marked above with respect to claim 1.
As per claim 8, Chen discloses wherein the plurality of walls are each planar in shape (Fig. 1).
As per claim 9, with respect to wherein the reel has a number of inner plates and a number of outer plates, and wherein the number of inner plates is equal to the number of outer plates, note Fig. 12 as marked above with respect to claim 1.
As per claim 11, with respect to wherein after the device lands on a contact surface of the second wall and via the action of gravity, each outer plate of the reel has a substantially equal probability of facing away from the second wall and being visible through the wall aperture, note 1:61-2:10 and 4:62+ in conjunction to Figs. 1 and at least 12, regarding the operation of the die to be played, thrown. Also, per MPEP 2114 under II. manner of operating the device does not differentiate apparatus claim from the prior art "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). The examiner takes the position that Chen’s device is fully capable to perform as such since it includes the structural limitations claimed.
As per claim 12, since the claim’s limitations are very similar to claims 1, 3 and 11 the examiner states that claim 12 is rejected over Chen for the same reasons discussed above with respect to claims 1, 3 and 111. Since there is no apparent different structural and/or functional limitations of the device of claim 12 and the
device of claims 1,3 and 11, it is important to note that such statement by the examiner is not merely to “ignore” the claim’s limitations; rather, the examiner attempts to simplify the above rejection, and not “paste and copy” similar limitations, thus to create unnecessary lengthy Office action.
With respect to “wherein the contact surface of each wall comprises substantially the same shape”, note Fig. 1.
With respect to “wherein each inner plate has substantially the same shape”, note Fig. 12 as marked above with respect to claim 1.
As per claim 13, Chen discloses wherein the connector is coupled to at least one wall of the plurality of walls (Fig. 1 and 1:57-61).
As per claim 14, Chen discloses wherein the body comprises at least six walls (Fig. 1; 2:56+).
As per claim 15, with respect to wherein the first inner plate junction is formed at an intersection of a first inner plate and a second inner plate that are coupled together, note Fig. 12 as marked above with respect to claim 1.
As per claim 16, with respect to wherein the first inner plate junction is formed between an intersection of a first inner plate with an outer plate and an intersection of a second inner plate with the outer plate, note Fig. 12 as marked above with respect to claim 1.
As per claim 17, with respect to wherein the two or more outer plates are each planar in shape, note Fig. 12 as marked above with respect to claim 1.
As per claim 18, Chen discloses wherein the plurality of walls are each planar in shape (Fig. 1).
As per claim 19, with respect to wherein the reel has a number of inner plates and a number of outer plates, and wherein the number of inner plates is equal to the number of outer plates, note Fig. 12 as marked above with respect to claim 1.
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) 10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen.
As per claims 10, 20, Chen is not specific wherein the reel has a number of inner plates and a number of outer plates, and wherein the number of inner plates is less than the number of outer plates. However, it is noted that it has been held that the Federal Courts have held that the configuration of the claimed product was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product was significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). 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 Chen’s wherein the reel has a number of inner plates and a number of outer plates, and wherein the number of inner plates is less than the number of outer plates as a user’s design choice that a skilled artisan would have found obvious absent persuasive evidence that the particular configuration of the claimed product was significant.
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 2/26/2026 /JOHN E SIMMS JR/Primary Examiner, Art Unit 3711