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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The preliminary amendment filed December 20, 2023, has been entered. Claims 15-28 remain pending in this application.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “9” in Figs. 1B and 5A; and “21” and “22” in Fig. 1C. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. 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. 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
The disclosure is objected to because of the following informalities:
On pg. 1, first paragraph, and pg. 2, second paragraph, references to specific claim numbers should be deleted, because claim numbering may change during the course of prosecution.
On pg. 9, second-to-last paragraph, it appears to the examiner that “cubes with eight or more faces” should read --dice with eight or more faces-- (since cubes, by definition, have only six faces).
Appropriate correction is required.
Claim Objections
Claim 22 is objected to because it includes reference character “X2” which is not enclosed within parentheses.
Reference characters corresponding to elements recited in the detailed description of the drawings and used in conjunction with the recitation of the same element or group of elements in the claims should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. The examiner notes that the presence of reference characters does not affect the scope of a claim. See MPEP § 608.01(m).
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.
Claims 17-20, 22-24, 26, and 28 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 17, 18, 20, 22-24, and 26, the term “preferably” renders the claims indefinite, because it is unclear whether the claims are limited by the preferred features. As explained in MPEP § 2173.05(c), subsection I, “If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim.” For the purpose of examination, claim limitations that are designated as preferable are interpreted as optional but not required.
Claim 19 recites the limitation “the inner surface” in line 2. There is insufficient antecedent basis for this limitation in claim 15, from which claim 19 depends. For the purpose of examination, “the inner surface” will be interpreted to mean --an inner surface--.
Regarding claim 28, the limitation “each cup is configured to receive a having an annular, groove or elevation on its upper side” in line 5 renders the claim indefinite because there appear to be some words missing. It is unclear what the cup is configured to receive, and what has an annular groove or elevation on its upper side. In addition, claim 28 subsequently recites “this lid” in lines 6-7, but a lid is not previously introduced in claim 28, such that it is unclear what lid is being referred to. A lid is later introduced in line 8. For the purpose of examination, the reference to “an annular, groove or elevation on its upper side” in line 5 will be interpreted as referring to the elevation or groove of the lid subsequently described in lines 8-15. Additionally, there is insufficient antecedent basis in the claim for “the fitted lid” recited in line 11. For the purpose of examination, “the fitted lid” will be interpreted as referring to the lid when fitted on its cup. In addition, it appears that “and has” in line 3 should read --and having--, and each instance of “annular, groove” in lines 5 and 12 should read simply --annular groove-- (with no comma).
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.
Claim 26 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gotz (DE 29911468 U1, hereinafter Gotz).
Regarding claim 26, Gotz discloses a lid (“cube base,” Fig. 2, pg. 1:25-35) for a dice cup having a bottom and a circumferential side wall (the cup of Fig. 1 being “closed with the associated cube base” of Fig. 2). The lid has an annular elevation on its upper side (i.e., the annular rim at bottom in Fig. 2, which shows the lid/cube base in an inverted position for use as a play surface, pg. 1:35-40), which is capable of use for stacking several cups on top of one another by means of a cup placed on this lid (since the 71.5-mm internal diameter of the area within the annular elevation of the lid/cube base, Fig. 2, is larger than the outer 57.5-mm diameter of the base of the cup, Fig. 1). The examiner notes that claim 26 is directed solely to the lid. The preamble recitation “for a cup according to claim 15” describes an intended use of the lid. Because the cup is not positively claimed as part of the invention of claim 26, specific features of the cup of claim 15, including the TPE material and the inwardly facing lip, do not further limit the lid of claim 26. Therefore, Gotz anticipates claim 26. If there is any doubt regarding the examiner’s findings with respect to anticipation, see the alternate rejection of claim 26 under 35 USC 103 below.
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.
Claims 15-20, 22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Lester (US Patent No. 3,645,533, hereinafter Lester) in view of Bowman (US Patent No. 2,148,097, hereinafter Bowman) and Wikipedia, “Synthetic Rubber” (hereinafter Wikipedia).
Regarding claim 15, Lester discloses a dice cup (10, Figs. 1-2; col. 1:60-67) with a bottom (13) and a circumferential side wall (12). The dice cup (10) is formed from “a resilient plastic material” (col. 1:59-61) and has an inwardly facing lip (annular ridge 23; col. 2:30-38) on its upper, inner rim edge (22), which lip (23) is formed integrally with the cup (see Figs. 1-2).
Lester does not teach that the material of the dice cup is thermoplastic elastomer (TPE). However, Bowman teaches a dice cup that is advantageously made of a “flexible or semi-flexible material such as rubber” (col. 1:49-55). One of ordinary skill in the art of dice cups would have recognized that the flexible or semi-flexible rubber suggested by Bowman would have the advantage of being less noisy and less damaging to dice as compared to a harder plastic material. While Bowman does not explicitly disclose the rubber being a thermoplastic elastomer material, Wikipedia teaches that thermoplastic elastomers are a known synthetic rubber material which have the advantage of ease of molding (under heading “Natural vs. synthetic rubber,” see last paragraph: “A new class of synthetic rubber is the thermoplastic elastomers which can be moulded easily unlike conventional NR vulcanized rubber”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Lester by selecting thermoplastic elastomer (i.e., a synthetic rubber) as suggested by Bowman and Wikipedia, since the court has held that the selection of a known material based on its suitability for its intended purpose would have been obvious. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). One of ordinary skill in the art would have been motivated to generally select a rubber-type material as suggested by Bowman for the purpose of reducing noise and preventing damage to dice, and specifically a thermoplastic elastomer synthetic rubber as taught by Wikipedia in order to facilitate ease of molding.
Regarding claim 16, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 15. Lester does not teach a rounded corner region formed between an underside of the cup and an outer surface of the side wall of the cup. However, Bowman further teaches a corner region (at “12” in Fig. 2) formed between an underside (10) of the cup and an outer surface of the side wall (11) of the cup is rounded. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Lester to include a rounded corner region formed between an underside of the cup and an outer surface of the side wall of the cup, as taught by Bowman, since this involves the simple substitution of one known configuration for the bottom of a dice cup for another known configuration for the bottom of a dice cup, to yield predictable results.
Regarding claim 17, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 15. Lester further teaches that an inner surface of the side wall (12) has a rough surface structure (due to projections 19, Figs. 1-2; col. 2:1-29). As noted above in the rejection under 35 USC 112(b), the limitations following “preferably” are interpreted for examination purposes to be optional features rather than required limitations.
Regarding claim 18, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 15. Lester does not teach a rough surface structure on an outer surface of the side wall. However, Bowman further teaches a rough surface structure (“an imitation or simulation of spaced apart lines of stitching which are formed in the molding process merely for appearance,” col. 2:24-27, at 20 in Fig. 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Lester by adding a rough surface structure as taught by Bowman to the outer surface of the side wall, in order to enhance the appearance of the dice cup (e.g., to simulate the appearance of a conventional leather dice cup).
Regarding claim 19, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 15. Lester further teaches that a corner area between an inner surface of the side wall (12) and an inner side of a base area (13) is rounded (“bottom wall 13 … forms an inner concave surface 14, with a smooth transition between this inner concave surface 14 and the inner surface 15 of the cylindrical sidewall 12,” col. 1:67-70).
Regarding claim 20, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 15. Lester further teaches that the cup (10) has an annular groove (between base 13 and cylindrical flange 16) or elevation (cylindrical flange 16) on an underside of the bottom (Fig. 2; col. 1:70-75).
Regarding claim 22, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 15. Lester further teaches that an upper surface of the lip (23) lies in a horizontal plane (see Fig. 2). As shown in Fig. 2, the upper surface of the lip (23) is also smooth.
Regarding claim 24, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 15. Bowman further teaches an insert ring (ring 17, Figs. 1-2) that is detachably seated in a corner region between a lip underside and an inner surface of the side wall (at annular groove 15, col. 2:16-22). When modifying Lester to include a flexible or semi-flexible rubber material as taught by Bowman, as discussed above, it would have been obvious to one of ordinary skill in the art to also include the insert ring taught by Bowman in order to hold the upper opening of the cup in its round shape (Bowman, col. 2:27-31). As noted above in the rejection under 35 USC 112(b), the limitations following “preferably” are interpreted for examination purposes to be optional features rather than required limitations.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Lester in view of Bowman and Wikipedia, in further view of Taniguchi (US Patent No. 8,748,526, hereinafter Taniguchi).
Regarding claim 21, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 15. Lester, Bowman, and Wikipedia do not teach that the cup is formed from bio-based material and/or is biodegradable. However, Taniguchi teaches that bio-based, biodegradable thermoplastic elastomer is desirable for reducing environmental impact (col. 1:15-22; “from the raw material of plant origin,” “biodegradability can be imparted also to the thermoplastic elastomer composition,” col. 7:3-14; the biodegradable thermoplastic elastomer composition being “preferably used as … molded articles for miscellaneous goods,” col. 2:66-3:3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Lester by specifically selecting a bio-based, biodegradable thermoplastic elastomer as taught by Taniguchi for the material of the dice cup, in order to reduce environmental impact.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Lester in view of Bowman and Wikipedia, in further view of Efunda Engineering Fundamentals (hereinafter Efunda).
Regarding claim 23, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 15. The thermoplastic elastomer synthetic rubber material taught by Bowman and Wikipedia inherently has a degree of hardness, but Bowman and Wikipedia are silent with respect to this property. However, Efunda is cited as evidence that common thermoplastic elastomers inherently have hardnesses within the claimed range of 75 to 90 Shore A (e.g., polyurethane thermoplastic elastomers of soft or medium hardness having hardnesses in the range of 55 to 94 Shore A). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, when selecting a thermoplastic elastomer synthetic rubber material for the dice cup of Lester as discussed above, to select a material within the claimed range of 75 to 90 Shore A, or specifically 88 Shore A, so that the cup has a desired degree of flexibility (e.g., within the range of “flexible or semi-flexible,” Bowman, col. 1:54-55), this being within the conventional range of hardnesses for such materials.
Claims 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Lester in view of Bowman and Wikipedia, in further view of Gotz.
Regarding claim 25, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 15. Lester does not teach a lid. However, Gotz teaches a dice cup (Fig. 1) comprising a lid (Fig. 2). Gotz teaches that the lid is advantageous for preventing manipulating the results of a dice roll, preventing loss of dice, and providing a surface on which to roll the dice from the cup. See pg. 1:15-40. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Lester by adding a lid as taught by Gotz, in order to prevent manipulation of results or loss of dice to provide a surface on which to roll the dice from the cup. When adding a lid, it would have been obvious to one of ordinary skill in the art to manufacture the lid of the same thermoplastic elastomer material as the dice cup (as discussed above for claim 15), in order to afford the same advantages of reducing noise and preventing damage to dice as well as to facilitate ease of manufacture.
Regarding claim 26, the modified Lester teaches the cup as recited in claim 15, as set forth above. Lester does not teach a lid for the cup. However, Gotz teaches lid (Fig. 2) for a dice cup (Fig. 1), wherein the lid has an annular elevation on its upper side (i.e., the annular rim at bottom in Fig. 2, which shows the lid/cube base in an inverted position for use as a play surface, pg. 1:35-40), which is capable of use for stacking several cups on top of one another by means of a cup placed on this lid (since the 71.5-mm internal diameter of the area within the annular elevation of the lid/cube base, Fig. 2, is larger than the outer 57.5-mm diameter of the base of the cup, Fig. 1). Gotz teaches that the lid is advantageous for preventing manipulating the results of a dice roll, preventing loss of dice, and providing a surface on which to roll the dice from the cup. See pg. 1:15-40. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Lester by adding a lid as taught by Gotz, in order to prevent manipulation of results or loss of dice to provide a surface on which to roll the dice from the cup.
Regarding claim 27, the modified Lester teaches the claimed invention substantially as claimed, as set forth above for claim 26. When adding a lid, it would have been obvious to one of ordinary skill in the art to manufacture the lid of the same thermoplastic elastomer material as the dice cup (as discussed above for claim 15), in order to afford the same advantages of reducing noise and preventing damage to dice as well as to facilitate ease of manufacture.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Gotz in view of Bowman, Wikipedia, Lester, and Grogg (US Patent No. 1,626,930, hereinafter Grogg).
Regarding claim 28, Gotz discloses a system with stackable dice cups (cup of Fig. 2 with lid/base of Fig. 2 being inherently stackable) comprising a cup (Fig. 1) with a lid (Fig. 2). While Gotz does not explicitly describe a plurality of the cups and lids, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a plurality of the cups and corresponding lids of Gotz, for example, stacked on a shelf in a retail store, a storage warehouse, or a personal storage area (e.g., a closet or cabinet). The cup of Gotz is inherently capable of being stacked on top of the lid when the lid is fitted on top of another cup, since the 71.5-mm internal diameter of the area within the annular elevation of the lid/cube base (Fig. 2) is larger than the outer 57.5-mm diameter of the base of the cup (Fig. 1).
Gotz does not teach that the cups are formed from a TPE with an inwardly facing lip on the upper, inner rim edge, and Gotz does not teach an annular groove or annular elevation on the bottom underside of the cup that is complementary to and engaging with an annular elevation or annular groove on the upper side of the lid when the cups are stacked.
However, with respect to the TPE material, Bowman teaches a dice cup that is advantageously made of a “flexible or semi-flexible material such as rubber” (col. 1:49-55). One of ordinary skill in the art of dice cups would have recognized that the flexible or semi-flexible rubber suggested by Bowman would have the advantage of reducing noise and preventing damage to dice while in use. While Bowman does not explicitly disclose the rubber being a thermoplastic elastomer material, Wikipedia teaches that thermoplastic elastomers are a known synthetic rubber material which have the advantage of ease of molding (under heading “Natural vs. synthetic rubber,” see last paragraph: “A new class of synthetic rubber is the thermoplastic elastomers which can be moulded easily unlike conventional NR vulcanized rubber”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Gotz by selecting thermoplastic elastomer (i.e., a synthetic rubber) as suggested by Bowman and Wikipedia, since the court has held that the selection of a known material based on its suitability for its intended purpose would have been obvious. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). One of ordinary skill in the art would have been motivated to generally select a rubber-type material as suggested by Bowman for the purpose of reducing noise and preventing damage to dice, and specifically a thermoplastic elastomer synthetic rubber as taught by Wikipedia in order to facilitate ease of molding.
With respect to the inwardly facing lip, Lester discloses a dice cup (10, Figs. 1-2; col. 1:60-67) with an inwardly facing lip (annular ridge 23; col. 2:30-38) on its upper, inner rim edge (22), which lip (23) is formed integrally with the cup (see Figs. 1-2). Lester teaches that the lip (23) advantageously “acts as a further barrier over which the dice must tumble when being released from the cup” (col. 2:30-33), “which prevents sliding of the dice from the dice cup without tumbling and further prevents unfair manipulation of the dice within the dice cup” (col. 2:50-55). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Gotz by adding an inwardly facing lip as taught by Lester on the upper, inner rim edge of the cup, in order to enhance tumbling action of the dice from the cup to prevent cheating.
With respect to the complementary grooves and elevations on the underside of the cup and the upper side of the lid for stacking, Grogg teaches an annular elevation (annular semi-circular rib portion 4, Figs. 1-2; or annular upstanding rib portion 13, Fig. 3) on an upper side of a lid (closure 3, Fig. 1; or cap 10, Fig. 3) and a complementary annular groove (annular groove portion 5, Fig. 1; or annular groove 14, Fig. 5) on a bottom underside of corresponding container (1, Fig. 1; or 12, Fig. 5), in which groove (5 or 14) the elevation (4 or 13) of the lid engages to secure a stack when the containers are stacked on top of one another with the lids fitted on the containers (“complementary interfitting members … guide the operator in piling the containers upon each other, so that they can be positioned in alignment with each other in a convenient and efficient manner to maintain their equipoise and balance with respect to each other … without danger of the containers tending to fall or tumble from each other” and “to provide an efficient and rapid means of piling a plurality of containers in alignment with each other to present a uniform and symmetrical appearance to the eye of the observer when said containers are arranged in parallel rows on a shelf or the like,” col. 1:19-52). While Grogg is generally in the field of containers rather than specifically in the field of dice cups, Grogg is analogous art because Grogg is reasonably pertinent to the stacking problem confronting the inventor. See MPEP § 2141.01(a). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Gotz by providing the upper side of the lid with an annular elevation and the bottom underside of the cup with a complementary annular groove as taught by Grogg, in order to enhance stability and ensure an aesthetically pleasing alignment, for example, when the cups are stacked for sale or storage.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zender (US Patent No. 70,932), Bonell (US Patent No. 1,629,142), Gessler (US Patent No. 2,060,463), Laube, Jr. (US Patent No. 2,628,840), MacPherson (US Patent No. 3,269,732), and WE Games (non-patent literature) each disclose a dice cup with an inwardly facing lip, cited here as further representative of the state of the art.
Liberson (US Patent No. 2,262,642) discloses a rubber dice cup with interior and exterior surface features.
Klein (US Patent Pub. 2013/0087971) discloses a dice cup comprising ethyl-vinyl acetate copolymer material for improved randomness, damage prevention, and noise damping (¶ 55).
Xu (US Design Patent No. D906,434) discloses a dice cup with lid.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at (571)272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Laura Davison/Primary Examiner, Art Unit 3993