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.
The subject matter of a claim must be directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter. If it is not, the claim is not eligible for patent protection. The subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention is limited to abstract ideas, laws of nature and natural phenomena (i.e., the judicial exceptions) (See Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 2354, 110 USPQ2d 1976, 1980 (2014) (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1979 (2013))). There are two criteria for determining subject matter eligibility under 35 U.S.C. 101 and both must be satisfied. The claimed invention (1) must be directed to one of the four statutory categories, and (2) must not be wholly directed to subject matter encompassing a judicially recognized exception. Claims 1-14 are directed to rules governing a game/activity. Methods of managing a game/activity are abstract ideas (See: Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)) and a set of rules for a game are drawn to abstract ideas (See: In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016)). The claimed invention is directed to non-statutory subject matter because the claims as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. Based on the subject matter eligibility test for products and processes, claims 1-14 are not eligible for patent protection because:
(Step 1) claims 1-14 are directed to a process, machine, manufacture or composition of matter.
(Step 2A) claims 1-14 are directed to a law of nature, a natural phenomenon, or an abstract idea (a judicially recognized exception) based on the recited limitations of claims 1-14. The recited limitations fall within the subject matter grouping of abstract ideas and are directed to methods of organizing human activity (following instructions/rules governing an activity/game). If a claim recites a judicial exception (an abstract idea), the claim is evaluated as to whether the judicial exception is integrated into a practical application. Integration into a practical application is evaluated by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The additional elements or combination of elements in the claims other than the abstract idea per se amounts to no more than: a playing board having indicia, playing pieces, dice, a 6-sided multiplying cube. The recited judicial exception has not been integrated into a practical application because the additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use.
(Step 2B) claims 1-14 do not recite provide an inventive concept because the additional elements (a playing board having indicia, playing pieces, dice, a 6-sided multiplying cube) do not amount to significantly more than the judicial exception (See: Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, 1293-94, 101 USPQ2d 1961, 1965-66 (2012)). The examiner takes official notice that the additional elements (a playing board having indicia, playing pieces, dice, a 6-sided multiplying cube) are well-understood, routine, and conventional and are widely prevalent and in common use in the relevant field (See for example: Gerdsberg (20220023749), Barber (4286787), Lane (434258), Renner (4657254), Miller (5370397), Novinbakht (20140197597)), comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. 112(a).
Therefore, claims 1-14 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 1-14 are 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.
The recitation in claim 1 of “a method of reducing an effect of known computer based skills in a backgammon game, the backgammon game including a playing board with a first player home zone, a first player outer zone, a second player outer zone, and a second player home zone, playing pieces, and dice, the method comprising: (a) arranging the first playing piece,” the recitation in claim 7 of “a method of reducing an effect of known computer based skills in a backgammon game, the backgammon game including a playing board, playing pieces, and dice, the method comprising: (a) arranging the playing pieces”, and the recitation in claim 11 of “a method of reducing an effect of known computer based skills in a backgammon game, the backgammon game including a playing board, playing pieces, dice, and a 6-sided multiplying cube, the method comprising: (a) arranging the playing pieces” are indefinite because the claims are claiming a method and apparatus in the same claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).
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 2-6, 8-10, and 12-14 are 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.
The recitation in the preamble of claims 2-6 of “a method according to” is rejected as failing to provide proper antecedent basis. Claims 2-6 are dependent on claim 1, where the preamble of claim 1 recites “a method”. The recitation in the preamble of claims 2-6 of “a method according to” should be changed to --The method according to--.
The recitations in the preamble of claims 8-10 of “a method according to” is rejected as failing to provide proper antecedent basis. Claims 8-10 are dependent on claim 7, where the preamble of claim 7 recites “a method”. The recitation in the preamble of claims 8-10 of “a method according to” should be changed to --The method according to--.
The recitations in the preamble of claims 12-14 of “a method according to” is rejected as failing to provide proper antecedent basis. Claims 12-14 are dependent on claim 11, where the preamble of claim 11 recites “a method”. The recitation in the preamble of claims 12-14 of “a method according to” should be changed to --The method according to--.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Gerdsberg (20220023749) in view of Renner (4657254).
Regarding claim 1, Gerdsberg (Figures 1-6) teaches a method of reducing an effect of known computer based skills in a backgammon game (Para. 0039, 0077), the backgammon game including a playing board (Fig. 1, Part No. 5) (Para. 0040) with a first player home zone, a first player outer zone, a second player outer zone, and a second player home zone, playing pieces (Para. 0040-0042), and dice (Fig. 2b, Part No. 25) (Para. 0044), wherein a first player attempts to move first playing pieces to and off of the first player home zone, and wherein a second player attempts to move second playing pieces to and off the second player home zone (Para. 0047); and (c) using at least two dice (Fig. 2b, Part No. 25) (Para. 0044, 0054) such that each of the first player and the second player is enabled to make at least two moves after each roll of the dice (Para. 0054), and arranging the playing pieces on the board in stacks (Para. 0041, 0064).
Gerdsberg does not teach the method comprising: (a) arranging the first playing pieces on the playing board with a stack of one of the first playing pieces in the second player home zone, a stack of two of the first playing pieces in the second player outer zone, a stack of three of the first playing pieces in the second player outer zone, a stack of four of the first playing pieces in the first player outer zone, and a stack of five of the first playing pieces in the first player home zone; (b) arranging the second playing pieces on the playing board with a stack of one of the second playing pieces in the first player home zone, a stack of two of the second playing pieces in the first player outer zone, a stack of three of the second playing pieces in the first player outer zone, a stack of four of the second playing pieces in the second player outer zone, and a stack of five of the second playing pieces in the second player home zone.
It is noted that Gerdsberg teaches arranging the playing pieces on the board in stacks (Para. 0041, 0064). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with arranging the first playing pieces on the playing board with a stack of one of the first playing pieces in the second player home zone as a means of mere rearrangement of parts. See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court found that claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device; See: In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), where the court found that the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice. As an alternative rejection, the prior art of Renner is being used to teach the claimed placement of the playing pieces.
Renner (Figure 2) teaches placing backgammon playing pieces in stacks on a game board (See figure 2) (Col. 4, Lines 31-37).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with placing backgammon playing pieces in stacks on a game board as taught by Renner as a means of providing a backgammon game board with stacks of playing pieces (Renner: Col. 4, Lines 31-37).
Regarding claim 2, the modified Gerdsberg (Figures 1-6) teaches step (c) is practiced by using three dice (Fig. 2b, Part No. 25) such that each of the first player and the second player is enabled to make three moves after each roll of the dice (Para. 0054).
Regarding claim 3, the modified Gerdsberg (Figures 1-6) teaches the backgammon game further comprises a 6-sided multiplying cube (Fig. 2b, Part No. 30) (Para. 0044).
The modified Gerdsberg does not teach marking the six sides of the multiplying cube with numbers in a Fibonacci series.
It is noted that the claim recitation of “marking the six sides of the multiplying cube with numbers in a Fibonacci series” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated. See Lowry, 32 F.3d at 1584, 32 USPQ2d at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404). Where a product merely serves as a support for printed matter, no functional relationship exists. 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. An example of a product merely serving as support for printed matter is 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. In the instant case, claims differ from the prior art solely by the printed matter on the dice so that there is no new feature of physical structure and no new relation of printed matter to physical structure. Therefore, the printed matter is not given patentable weight.
Regarding claim 4, the modified Gerdsberg (Figures 1-6) teaches a 6-sided multiplying cube (Fig. 2b, Part No. 30) (Para. 0044).
The modified Gerdsberg does not teach the marking step comprises marking the six sides of the multiplying cube with numbers in the Fibonacci series, starting with two.
It is noted that the claim recitation of “the marking step comprises marking the six sides of the multiplying cube with numbers in the Fibonacci series, starting with two” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. Where a product merely serves as a support for printed matter, no functional relationship exists. An example of a product merely serving as support for printed matter is 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. In the instant case, claims differ from the prior art solely by the printed matter on the dice so that there is no new feature of physical structure and no new relation of printed matter to physical structure. Therefore, the printed matter is not given patentable weight.
Regarding claim 5, the modified Gerdsberg (Figures 1-6) teaches the backgammon game including a playing board (Fig. 1, Part No. 5) (Para. 0040), playing pieces (Para. 0040-0042), and dice (Fig. 2b, Part No. 25) (Para. 0044), the playing board having sequential spots.
It is noted that the claimed “1-spot”, “ 7-spot”, “9-spot” and “12-spot” are directed to the sequential number of each spot on the backgammon board. Applicant’s specification (Para. 0035) discloses: “with reference to FIG. 1, stack 12A is set on the 1-spot on the second player side, stack 12B is set on the 7-spot on the second player side, stack 12C is set on the 12-spot on the second player side, stack 12D is set on the 9-spot on the first player side, and stack 12E is set on the 6-spot and the first player side. The second player playing pieces 13 are set in similar spots that mirror the first player set up”. It is noted that the prior art of Gerdsberg teaches sequential spots as claimed.
The modified Gerdsberg does not teach step (a) is practiced by arranging the stack of one of the first playing pieces on a 1-spot in the second player home zone, arranging the stack of two of the first playing pieces on a 7-spot in the second player outer zone, arranging the stack of three of the first playing pieces on a 12-spot in the second player outer zone, arranging the stack of four of the first playing pieces on a 9-spot in the first player outer zone, and arranging the stack of five of the first playing pieces on a 6-spot in the first player home zone.
It is noted that the prior art of Gerdsberg teaches arranging the playing pieces on the board in stacks (Para. 0041, 0064). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Gerdsberg with arranging the stack of one of the first playing pieces on a 1-spot in the second player home zone as a means of mere rearrangement of parts. See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court found that claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device; See: In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), where the court found that the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice. As an alternative rejection, the prior art of Renner is being used to teach the claimed placement of the playing pieces.
Renner (Figure 2) teaches placing stacks of backgammon playing pieces in zones/spaces on a game board (See figure 2) (Col. 4, Lines 31-37).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with placing stacks of backgammon playing pieces in zones on a game board as taught by Renner as a means of providing a backgammon game board with stacks of playing pieces in spaces/zones on the game board (Renner: Col. 4, Lines 31-37).
Regarding claim 6, the modified Gerdsberg (Figures 1-6) teaches the backgammon game including a playing board (Fig. 1, Part No. 5) (Para. 0040), playing pieces (Para. 0040-0042), and dice (Fig. 2b, Part No. 25) (Para. 0044).
The modified Gerdsberg does not teach step (b) is practiced by arranging the stack of one of the second playing pieces on a 1-spot in the first player home zone, arranging the stack of two of the second playing pieces on a 7-spot in the first player outer zone, arranging the stack of three of the second playing pieces on a 12-spot in the first player outer zone, arranging the stack of four of the second playing pieces on a 9- spot in the second player outer zone, and arranging the stack of five of the second playing pieces on a 6-spot in the second player home zone.
It is noted that the prior art of Gerdsberg teaches arranging the playing pieces on the board in stacks (Para. 0041, 0064). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Gerdsberg with arranging the stack of one of the second playing pieces on a 1-spot in the first player home zone as a means of mere rearrangement of parts. See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court found that claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device; See: In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), where the court found that the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice. As an alternative rejection, the prior art of Renner is being used to teach the claimed placement of the playing pieces.
Renner (Figure 2) teaches placing stacks of backgammon playing pieces in zones/spaces on a game board (See figure 2) (Col. 4, Lines 31-37).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Gerdsberg with placing stacks of backgammon playing pieces in zones on a game board as taught by Renner as a means of providing a backgammon game board with stacks of playing pieces in spaces/zones on the game board (Renner: Col. 4, Lines 31-37).
Regarding claim 7, Gerdsberg (Figures 1-6) teaches a method of reducing an effect of known computer based skills in a backgammon game, the backgammon game including a playing board (Fig. 1, Part No. 5) (Para. 0040), playing pieces (Para. 0040-0042), and dice (Fig. 2b, Part No. 25) (Para. 0044), the method comprising: and (b) using at least two dice (Fig. 2b, Part No. 25) (Para. 0044, 0054) for each roll such that each of the first player and the second player is enabled to make at least two moves after each roll of the dice (Para. 0054).
Gerdsberg does not teach arranging the playing pieces from farthest from home to closest to home in stacks of 1, 2, 3, 4 and 5 playing pieces, respectively, for each of a first player and a second player.
It is noted that the prior art of Gerdsberg teaches arranging the playing pieces on the board in stacks (Para. 0041, 0064). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with arranging the playing pieces from farthest from home to closest to home in stacks of 1, 2, 3, 4 and 5 playing pieces as a means of mere rearrangement of parts. See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court found that claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device; See: In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), where the court found that the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice. As an alternative rejection, the prior art of Renner is being used to teach the claimed placement of the playing pieces.
Renner (Figure 2) teaches placing stacks of backgammon playing pieces in zones/spaces on a game board (See figure 2) (Col. 4, Lines 31-37).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with placing stacks of backgammon playing pieces in zones on a game board as taught by Renner as a means of providing a backgammon game board with stacks of playing pieces in spaces/zones on the game board (Renner: Col. 4, Lines 31-37).
Regarding claim 8, the modified Gerdsberg (Figures 1-6) teaches step (b) is practiced by using three dice (Fig. 2b, Part No. 25) (Para. 0054) such that each of the first player and the second player is enabled to make three moves after each roll of the dice (Para. 0054).
Regarding claim 9, the modified Gerdsberg (Figures 1-6) teaches the backgammon game further comprises a 6-sided multiplying cube (Fig. 2b, Part No. 30) (Para. 0044).
The modified Gerdsberg does not teach marking the six sides of the multiplying cube with numbers in a Fibonacci series.
It is noted that the claim recitation of “marking the six sides of the multiplying cube with numbers in a Fibonacci series” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. Where a product merely serves as a support for printed matter, no functional relationship exists. An example of a product merely serving as support for printed matter is 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. In the instant case, claims differ from the prior art solely by the printed matter on the dice so that there is no new feature of physical structure and no new relation of printed matter to physical structure. Therefore, the printed matter is not given patentable weight.
Regarding claim 10, the modified Gerdsberg (Figures 1-6) teaches the backgammon game further comprises a 6-sided multiplying cube (Fig. 2b, Part No. 30) (Para. 0044).
The modified Gerdsberg does not teach the marking step comprises marking the six sides of the multiplying cube with numbers in the Fibonacci series, starting with two.
It is noted that the claim recitation of “the marking step comprises marking the six sides of the multiplying cube with numbers in the Fibonacci series, starting with two” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. Where a product merely serves as a support for printed matter, no functional relationship exists. An example of a product merely serving as support for printed matter is 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. In the instant case, claims differ from the prior art solely by the printed matter on the dice so that there is no new feature of physical structure and no new relation of printed matter to physical structure. Therefore, the printed matter is not given patentable weight.
Regarding claim 11, Gerdsberg (Figures 1-6) teaches a method of reducing an effect of known computer based skills in a backgammon game, the backgammon game including a playing board Fig. 1, Part No. 5) (Para. 0040), playing pieces (Para. 0040-0042), dice (Fig. 2b, Part No. 25) (Para. 0044), and a 6-sided multiplying cube (Fig. 2b, Part No. 30) (Para. 0044), the method comprising: (b) using three dice (Fig. 2b, Part No. 25) (Para. 0044, 0054) for each roll such that each of the first player and the second player is enabled to make three moves after each roll of the dice (Para. 0054).
Gerdsberg does not teach (a) arranging the playing pieces from farthest from home to closest to home in five stacks of playing pieces, respectively, for each of a first player and a second player, marking the six sides of the multiplying cube with numbers in a Fibonacci series.
It is noted that the claim recitation of “marking the six sides of the multiplying cube with numbers in a Fibonacci series” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. Where a product merely serves as a support for printed matter, no functional relationship exists. An example of a product merely serving as support for printed matter is 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. In the instant case, claims differ from the prior art solely by the printed matter on the dice so that there is no new feature of physical structure and no new relation of printed matter to physical structure. Therefore, the printed matter is not given patentable weight.
It is noted that the prior art of Gerdsberg teaches arranging the playing pieces on the board in stacks (Para. 0041, 0064). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with arranging the playing pieces from farthest from home to closest to home in five stacks of playing pieces, respectively, for each of a first player and a second player as a means of mere rearrangement of parts. See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court found that claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device; See: In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), where the court found that the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice. As an alternative rejection, the prior art of Renner is being used to teach the claimed placement of the playing pieces.
Renner (Figure 2) teaches placing stacks of backgammon playing pieces in zones/spaces on a game board (See figure 2) (Col. 4, Lines 31-37).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with placing stacks of backgammon playing pieces in zones on a game board as taught by Renner as a means of providing a backgammon game board with stacks of playing pieces in spaces/zones on the game board (Renner: Col. 4, Lines 31-37).
Regarding claim 12, the modified Gerdsberg (Figures 1-6) teaches a 6-sided multiplying cube (Fig. 2b, Part No. 30) (Para. 0044).
The modified Gerdsberg does not teach the marking step comprises marking the six sides of the multiplying cube with numbers in the Fibonacci series, starting with two.
It is noted that the claim recitation of “the marking step comprises marking the six sides of the multiplying cube with numbers in the Fibonacci series, starting with two” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. Where a product merely serves as a support for printed matter, no functional relationship exists. An example of a product merely serving as support for printed matter is 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. In the instant case, claims differ from the prior art solely by the printed matter on the dice so that there is no new feature of physical structure and no new relation of printed matter to physical structure. Therefore, the printed matter is not given patentable weight.
Regarding claim 13, the modified Gerdsberg (Figures 1-6) teaches the backgammon game including a playing board Fig. 1, Part No. 5) (Para. 0040), playing pieces (Para. 0040-0042), dice (Fig. 2b, Part No. 25) (Para. 0044), and a 6-sided multiplying cube (Fig. 2b, Part No. 30) (Para. 0044).
The modified Gerdsberg does not teach step (a) is practiced by arranging the playing pieces from farthest from home to closest to home in stacks of 1, 2, 3, 4 and 5 playing pieces, respectively, for each of a first player and a second player.
It is noted that the prior art of Gerdsberg teaches arranging the playing pieces on the board in stacks (Para. 0041, 0064). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with arranging the playing pieces from farthest from home to closest to home in stacks of 1, 2, 3, 4 and 5 playing pieces as a means of mere rearrangement of parts. See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court found that claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device; See: In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), where the court found that the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice. As an alternative rejection, the prior art of Renner is being used to teach the claimed placement of the playing pieces.
Renner (Figure 2) teaches placing stacks of backgammon playing pieces in zones/spaces on a game board (See figure 2) (Col. 4, Lines 31-37).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with placing stacks of backgammon playing pieces in zones on a game board as taught by Renner as a means of providing a backgammon game board with stacks of playing pieces in spaces/zones on the game board (Renner: Col. 4, Lines 31-37).
Regarding claim 14, the modified Gerdsberg (Figures 1-6) teaches the playing board includes a first player home zone, a first player outer zone, a second player outer zone, and a second player home zone (See fig. 1).
The modified Gerdsberg does not teach step (a) is practiced by arranging the stack of one of the playing pieces for each of the first player and the second player on a 1-spot in the second player home zone and the first player home zone, respectively, arranging the stack of two of the playing pieces for each of the first player and the second player on a 7-spot in the second player outer zone and the first player outer zone, respectively, arranging the stack of three of the playing pieces for each of the first player and the second player on a 12-12 spot in the second player outer zone and the first player outer zone, respectively, arranging the stack of four of the playing pieces for each player on a 9-spot in the first player outer zone and the second player outer zone, respectively, and arranging the stack of five of the playing pieces for each player on a 6-spot in the first player home zone and the second player home zone, respectively.
It is noted that the prior art of Gerdsberg teaches arranging the playing pieces on the board in stacks (Para. 0041, 0064). It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with arranging the stack of one of the playing pieces for each of the first player and the second player on a 1-spot in the second player home zone and the first player home zone as a means of mere rearrangement of parts. See: In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), where the court found that claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device; See: In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), where the court found that the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice. As an alternative rejection, the prior art of Renner is being used to teach the claimed placement of the playing pieces.
Renner (Figure 2) teaches placing stacks of backgammon playing pieces in zones/spaces on a game board (See figure 2) (Col. 4, Lines 31-37).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Gerdsberg with placing stacks of backgammon playing pieces in zones on a game board as taught by Renner as a means of providing a backgammon game board with stacks of playing pieces in spaces/zones on the game board (Renner: Col. 4, Lines 31-37).
Conclusion
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/C.G./Examiner, Art Unit 3711
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711