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 .
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 13-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception, i.e., an abstract idea, without significantly more. The claims recite a method of playing a game by distributing a plurality of targets, adjusting the buoyancy of balls, throwing the balls and keeping score. This judicial exception is not integrated into a practical application because it is considered to be a method of following rules or instructions. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of buoyancy-adjustable balls and floatable targets do not add meaningful limits to practicing the abstract idea.
Claims 13-20 recite a method of playing a game which correspond to concepts identified as abstract concepts by the courts, such as following a set of rules or instructions in In re Marco Guldenaar Holding B.V., 129 USPQ 1008. The concept described in claims 13-20 of organizing human activity are not meaningfully different than those concepts found by the courts to be abstract ideas. As such, the description in claims 13-20 are abstract ideas.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claims recite the additional limitation of buoyancy-adjustable balls and floatable targets which are considered to be generic elements used in swimming pool games. The inventive concept is in the rules of operating the elements which has been identified as an abstract concept above. The buoyancy-adjustable balls and floatable targets are not specific machines in that they do not themselves perform any part of the method, but rather used by a player. Therefore, the claimed steps do not involve significantly more that he abstract concept of following a set of instructions.
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 1 and 3-19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2019/0308082 (Hudgins) in view of U.S. Patent Number 6,416,430 (Moore).
Regarding claims 1 and 13-19, Figure 5 of Hudgins shows a swimming pool game with a plurality of projectiles 33 and floatable targets 23,24,25. Targets 23,24,25 are shown to a have a closed square shape. Figure 5 clearly shows the inside region of targets 23,24,25 having an area large enough to permit projectile 33 to float on the water surface therewithin. Although Figure 5 shows only one projectile 33, Hudgins discloses that a plurality of projectiles can be used. See Hudgins, paragraph [0020].
Projectiles 33 are disclosed to be buoyant but does not explicitly disclose the projectiles to be buoyancy-adjustable. See Hudgins, paragraph [0021]. Moore discloses a ball designed to be used in a swimming pool. See Moore, column 5, lines 4-7. Moore further discloses that the ball has a water-impervious shell and is buoyancy-adjustable via a valve. See Moore, column 6, lines 33-42; bridging paragraph between columns 6-7. The substitution of one known element (buoyancy-adjustable ball as shown in Moore) for another (buoyancy projectile as shown in Hudgins) would have been obvious to one of ordinary skill in the art at the time of the invention since the substitution of the buoyancy-adjustable balls shows in Moore would have yielded predictable results, namely, to allow the game projectile to skim across the water surface, enabling game play with long-range targets.
Regarding claim 3, although Moore does not disclose water level indicia, Moore discloses the concept of varying the amounts and combination of water and air and it would have been obvious to one of ordinary skill in the art to provide indicia on the Moore ball to allow a user to know the exact ratio of water/air in the ball for consistent game play. The conclusion of obviousness may be made from common knowledge and common sense of the person of ordinary skill in the art. See In re Bozek, 163 USPQ 545.
Regarding claim 4, Hudgins teaches the concept of using different colors as indicia to distinguish the projectiles. See Hudgins, paragraph [0020].
Regarding claims 5 and 6, Moore discloses the ball to be inflatable and the amount of water in the ball to be adjustable. See Moore, column 6, lines 33-43; bridging paragraph between columns 6-7. The inflatable ball is considered to be inherently capable of being manually compressed and expanded to expel or add water.
Regarding claim 7, Moore discloses that the ball can be textured. See Moore, column 6, lines 56-65.
Regarding claim 8, Moore discloses a valve but does not explicitly disclose the valve to be manual. Official Notice is taken that manual valves is a conventional valve for use in inflatable balls. Therefore, it would have been obvious to a person having ordinary skill in this art to use a manual valve in the Moore ball in order to adjust the amount of water and/or air in the ball.
Regarding claim 9, Figure 5 of Hudgins clearly shows targets 23,24,25 of different sizes.
Regarding claim 10, Hudgins discloses the concept of having targets of different shapes. See Hudgins, paragraph [0017].
Regarding claims 11, Hudgins discloses assigning different point values for different targets but does not explicitly disclose using indicia on the targets. See Hudgins, paragraph [0017]. It would have been obvious to one of ordinary skill in the art to indicate the point value on the targets themselves since it was known in the art that such an expedient would allow a player to clearly recognize the point value of the targets.
Regarding claim 12, Figure 5 of Hudgins shows a boundary marker 28. To the extent that Hudgins only shows one boundary marker, it would have been obvious to use more than one boundary marker to throw projectiles from different locations around the pool since it has generally been recognized that duplicating parts for a multiple effect involves only routine skill in the art. See St. Regis Paper Co., v. Bemis Co., Inc., 193 USPQ 8.
With further regard to claims 13 and 14, Figure 6 of Hudgins discloses the recited steps of distributing targets upon a water surface and throwing projectiles toward the targets. Using the buoyancy-adjustable balls in the Hudgins game as modified by Moore above is considered to inherently include the recited buoyancy adjusting steps.
With further regard to claims 15-19, Hudgins discloses that points are scored only if the projectile stays within the target area with greater scores given for smaller targets. See Hudgins, paragraph [0020].
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hudgins and Moore as applied above in view of U.S. Patent Number 5,102,131 (Remington et al., hereinafter Remington).
Moore does not disclose a translucent window in the ball. Remington discloses a waterproof game ball with a translucent shell to display an internal light. See Remington, Figure 1; Abstract. To provide the ball of Moore with a translucent window would have been obvious to one of ordinary skill in the art, in view of the teachings of Remington, since all the claimed elements were known in the prior art and one skill in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention, i.e., one skilled in the art would have recognized that the translucent window and internal lighting would allow for nighttime play of the Hudgins game as modified above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Raleigh Chiu whose telephone number is (571) 272-4408. The examiner can normally be reached on Monday-Tuesday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim, can be reached on (571) 272-4463.
The fax number for the organization where this application or proceeding is assigned is (571) 273-8300.
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It is noted that all practice before the Office is in writing (see 37 C.F.R. § 1.2) and the proper authority for action on any matter in this regard are the statutes (35 U.S.C.), regulations (37 C.F.R.) and the commentary on policy (MPEP). Therefore, no telephone discussion may be controlling or considered authority of Petitioner’s/Caller’s action(s).
/RALEIGH W CHIU/ Primary Examiner, Art Unit 3711
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