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 Objections
Claims 8 and 17 are objected to because of the following informalities: Regarding claim 8, line 4 and claim 17, line 4, “plurality of set object” should be changed to plurality of set objects. Appropriate correction is required.
Claim Rejections - 35 USC § 101
Claim 18 is rejected under 35 U.S.C. 101 because 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. Claim 18 is directed to an idea in the form of rules for playing a game. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the set objects, die, and tossing articles do not add a meaningful limitation to the abstract idea because they are routine in a tossing game. These claims are essentially an abstract idea in the form of rules for participating in/playing a game.
Under step 2A, prong I, claim 18 recites providing additional elements including set objects, a die, and tossing articles. The rest of the limitations are directed towards the abstract idea of organizing human activity with the limitations directed toward different phases of playing a game. These steps describe the concept of steps and rules for playing/participating in a game. This is similar to the concepts held to be abstract by the courts in In re Brown, 645 Fed. Appx. 1014 (Fed Cir. 2016). Non-precedential with opinion. In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016), and In re Webb, 609 Fed. Appx. 643 (Fed. Cir. 2015), where steps for performing a task and steps for playing a game were held to be patent ineligible. Another example of a claim reciting following rules or instructions is In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. The Federal Circuit determined that the claims were directed to the abstract idea of "rules for playing games," which the court characterized as a certain method of organizing human activity. See MPEP 2106.04(a)(2) II C. Thus the examiner interprets the limitations of claim 18 to fall under methods of organizing human activity in the form of rules for playing a game such that the claims recite an abstract idea.
Under step 2A, prong II, the abstract idea is not integrated into a practical application. The rules to the game are applied using general gaming technology as opposed to a particular machine. There is no improvement to any functioning of computer technology. No transformation or reduction of a particular article occurs. The rules are generally linked to gaming technology elements.
Under step 2B, 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 additional elements of set objects, a die, and tossing articles are recited at a high level of generality and perform generic functions widely prevalent in the game art. Thus, taken alone, the additional elements do not amount to significantly more than the above identified judicial exception (the abstract idea). Looking at the additional elements in an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is nothing particular to the set objects, the die, or the tossing objects, or how they interact, that makes them specific to this method. They are simply conventional game elements present in tossing games. The claim, as a whole, are directed to the abstract concept of rules for participating in/playing a board game. These abstract concepts are not patent eligible.
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 1-18 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.
Regarding claim 1, the phrase "if added" renders the claim indefinite because it is unclear whether the limitation(s) preceding the phrase are part of the claimed invention. Description of examples or preferences is properly set forth in the specification rather than the claims. See MPEP 2173.05(d). Additionally, lines 4-5 of the claim recite “a set of rows” while lines 5-6 proceed to describe only a first row with optional additional rows. It is unclear how many rows are required.
Regarding claim 18, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP 2173.05(d). Additionally, claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. See MPEP 2111.04.
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.
Claims 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Pog.”
Regarding claim 1, Pog discloses a tossing game assembly comprising: a plurality of set objects (“POG milkcaps”), each set object of the plurality of set objects (“POG milkcaps”) having opposed ends (top and bottom of disk), the opposed ends (top and bottom of disk) being substantially parallel planar such that the set objects of the plurality of set objects are positionable in a set of rows wherein a first one of the rows is positioned on a ground surface and additional rows, if added, is stacked sequentially upon the first one of the rows and decrease in number of set objects by one set object for each additional row; and a plurality of tossing articles (“kini;” also see The Traditional Rules, W.P.F. TOURNAMENT RULES, and THE PIT on pages 3-4, wherein each player throws their own kini and each game has more than one player, i.e., there are at least two kinis), each tossing article of the plurality of tossing articles (“kini”) having a planar surface (kini top or bottom; also see POG KINIS on page 2, wherein kinis can be made by gluing two milkcaps together), such that a tossing article of a first player is stackable atop the set of rows positioning a second player for tossing a tossing article of the second player at the set of rows and the tossing article of the first player with the intention of knocking the tossing article of the first player to the ground surface (pages 1-4). Regarding the italicized portion of the claim, it should be appreciated that the applicant’s functional language in the claim does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, regarding the recitations that the set objects are positionable (i.e., capable of being positioned) and a tossing article of a first player is stackable (i.e., capable of being stacked), it has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138. Additionally, the POG milkcaps are capable of being positioned in a set of rows wherein a first one of the rows is positioned on a ground surface and additional rows, if added, can be stacked sequentially upon the first one of the rows and decrease in number of set objects by one set object for each additional row and a POG milkcap of a first player is capable of being stacked atop the set of rows positioning a second player for tossing a kini at the set of rows and the POG milkcap of the first player with the intention of knocking the POG milkcap of the first player to the ground surface.
Regarding claim 2, Pog discloses the tossing game assembly of claim 1, wherein the set objects of the plurality of set objects (“POG milkcaps”) being cylindrical (page 1: “round, wax coated cardboard disks;” wherein a disk is a short cylinder).
Regarding claim 3, Pog discloses the tossing game assembly of claim 1, wherein the plurality of set objects (“POG milkcaps”) comprises two, five, or nine set objects (see pages 3-4; wherein in The Traditional Rules, players contribute an equal number of POG milkcaps, in W.P.F. TOURNAMENT RULES, there are eleven POG milkcaps, and in THE PIT, there are sixteen to thirty-two POG milkcaps, which amounts all include (i.e., comprise) two, five, or nine POG milkcaps).
Regarding claim 4, Pog discloses the tossing game assembly of claim 1, wherein the plurality of set objects (“POG milkcaps”) comprises five set objects (see pages 3-4; wherein in The Traditional Rules, players contribute an equal number of POG milkcaps, in W.P.F. TOURNAMENT RULES, there are eleven POG milkcaps, and in THE PIT, there are sixteen to thirty-two POG milkcaps, which amounts all include (i.e., comprise) five POG milkcaps).
Regarding claim 7, Pog discloses the tossing game assembly of claim 1, wherein the tossing articles of the plurality of tossing articles (“kini”) are cylindrical (pages 1-2; wherein kinis can be made by gluing two milkcaps together and milkcaps are “round, wax coated cardboard disks;” wherein a disk is a short cylinder).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Pog.
Regarding claim 5, Pog discloses at least two tossing articles (“kini”) but does not explicitly disclose the plurality of tossing articles numbering one more than the plurality of set objects. However, Pog discloses that the POG kinis are highly collectable and tradeable (pages 1-2); thus a person having ordinary skill in the art would have recognized that the number of kinis is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to own one more kini than POG milkcaps to achieve desired collectable and tradeable pieces, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II. Additionally, it would have been an obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include one more tossing article than the plurality of set objects since a duplication of parts is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See MPEP 2144.04 VI B.
Claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Pog as applied to claim 1 above, and further in view of Browne (US 5,486,009).
Regarding claim 6, Pog discloses the tossing game assembly of claim 1, wherein the tossing articles of the plurality of tossing articles (“kini”) are shaped substantially as are the set objects of the plurality of set objects (“POG milkcaps”) (pages 1-2; where kinis can be made by gluing two milkcaps together). Pog discloses kinis being made by gluing two milkcaps together, and thus the kinis and the POG milkcaps are not the same size. Browne, however, teaches the history of Pog milkcaps, wherein slammers (i.e., kinis) were originally simply another milkcap (col. 1 lines 18-55). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a POG milkcap as the kini in Pog, which would render the tossing articles (“kinis”) the same size and shape as the set objects (“POG milkcaps”), because Browne teaches that this is the original structure of the game.
Regarding claim 8, Pog discloses the tossing game assembly of claim 1, wherein: the set objects of the plurality of set objects (“POG milkcaps”) are cylindrical (page 1: “round, wax coated cardboard disks;” wherein a disk is a short cylinder); the plurality of set objects (“POG milkcaps”) comprises five set objects (see pages 3-4; wherein in The Traditional Rules, players contribute an equal number of POG milkcaps, in W.P.F. TOURNAMENT RULES, there are eleven POG milkcaps, and in THE PIT, there are sixteen to thirty-two POG milkcaps, which amounts all include (i.e., comprise) five POG milkcaps); and the tossing articles of the plurality of tossing articles (“kini”) are shaped substantially as are the set objects of the plurality of set objects (“POG milkcaps”) (pages 1-2; where kinis can be made by gluing two milkcaps together). Pog discloses at least two tossing articles (“kini”) but does not disclose the plurality of tossing articles numbering one more than the plurality of set objects or the tossing articles being the same size as the set objects. However, Pog discloses that the POG kinis are highly collectable and tradeable (pages 1-2); thus a person having ordinary skill in the art would have recognized that the number of kinis is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to own one more kini than POG milkcaps to achieve desired collectable and tradeable pieces, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II. Additionally, it would have been an obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include one more tossing article than the plurality of set objects since a duplication of parts is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See MPEP 2144.04 VI B. Pog discloses kinis being made by gluing two milkcaps together, and thus the kinis and the POG milkcaps are not the same size. Browne, however, teaches the history of Pog milkcaps, wherein slammers (i.e., kinis) were originally simply another milkcap (col. 1 lines 18-55). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a POG milkcap as the kini in the modified Pog, which would render the tossing articles (“kinis”) the same size and shape as the set objects (“POG milkcaps”), because Browne teaches that this is the original structure of the game.
Claims 9-14, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Pog as applied to claim 1 above, and further in view of Phalin et al. (US 5,711,527; hereinafter Phalin).
Regarding claim 9, Pog discloses a tossing game playing kit (page 2: “enough POG milkcaps to form a stack, a kini”) comprising the tossing game assembly of claim 1. Pog discloses determining which player goes first by flipping a POG milkcap or playing rock, paper, scissors (pages3-4) but does not disclose a die. Phalin, however, discloses a method for selecting player order comprising a die, wherein the die is configured for rolling for determining an aspect (player order) of a tossing game (Figure 2) (col. 2 lines 48-54, col. 3 lines 27-30, and Figure 2). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a die in the tossing game playing kit of Pog because Phalin teaches that rolling a die is a known method in the art for selecting player order which is equally suitable as flipping a coin or playing rock, paper, scissors (col. 2 lines 48-54).
Regarding claim 10, the modified Pog does not disclose the tossing game playing kit including an instruction comprising at least one set of rules for playing a tossing game. However, the examiner takes official notice that it is notoriously well known in the art to include printed instructions with rules in game kits to explain setup, gameplay, and objectives of the game.
Regarding claim 11, the modified Pog discloses the tossing game playing kit of claim 9, wherein the set objects of the plurality of set objects (“POG milkcaps”) being cylindrical (page 1: “round, wax coated cardboard disks;” wherein a disk is a short cylinder).
Regarding claim 12, the modified Pog discloses the tossing game playing kit of claim 9, wherein the plurality of set objects (“POG milkcaps”) comprises two, five, or nine set objects (see pages 3-4; wherein in The Traditional Rules, players contribute an equal number of POG milkcaps, in W.P.F. TOURNAMENT RULES, there are eleven POG milkcaps, and in THE PIT, there are sixteen to thirty-two POG milkcaps, which amounts all include (i.e., comprise) two, five, or nine POG milkcaps).
Regarding claim 13, the modified Pog discloses the tossing game playing kit of claim 9, wherein the plurality of set objects (“POG milkcaps”) comprises five set objects (see pages 3-4; wherein in The Traditional Rules, players contribute an equal number of POG milkcaps, in W.P.F. TOURNAMENT RULES, there are eleven POG milkcaps, and in THE PIT, there are sixteen to thirty-two POG milkcaps, which amounts all include (i.e., comprise) five POG milkcaps).
Regarding claim 14, the modified Pog discloses at least two tossing articles (“kini”) but does not explicitly disclose the plurality of tossing articles numbering one more than the plurality of set objects. However, the modified Pog discloses that the POG kinis are highly collectable and tradeable (pages 1-2); thus a person having ordinary skill in the art would have recognized that the number of kinis is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to own one more kini than POG milkcaps to achieve desired collectable and tradeable pieces, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II. Additionally, it would have been an obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include one more tossing article than the plurality of set objects since a duplication of parts is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See MPEP 2144.04 VI B.
Regarding claim 16, the modified Pog discloses the tossing game playing kit of claim 9, wherein the tossing articles of the plurality of tossing articles (“kini”) are cylindrical (pages 1-2; wherein kinis can be made by gluing two milkcaps together and milkcaps are “round, wax coated cardboard disks;” wherein a disk is a short cylinder).
Regarding claim 18, the modified Pog discloses a method for playing a tossing game comprising providing a tossing game playing kit (page 2: “enough POG milkcaps to form a stack, a kini”) of claim 9; and positioning respective set objects (“POG milkcaps”) in a first one of the rows (pages 3-4; wherein The Traditional Rules, W.P.F. TOURNAMENT RULES, and THE PIT all require a stack of POG milkcaps, wherein the bottom POG milkcap equates to a first row) on a ground surface (page 2: “level playing surface”); optionally stacking additional rows sequentially upon the first one and decreasing the number of set objects by one set object for each additional row (*examiner note: see paragraph 10 above; wherein this limitation is not required); rolling the die to determine a first player of the tossing game (see paragraph 25 above; wherein this limitation is taught by Phalin); stacking a tossing article of the first player (pages 3-4; wherein The Traditional Rules, W.P.F. TOURNAMENT RULES, and THE PIT all require a stack of POG milkcaps, wherein the top POG milkcap equates to a tossing article of the first player) atop the set of rows; and tossing a tossing article (“kini”) of a second player at the set of rows and the tossing article of the first player (pages 3-4; wherein The Traditional Rules, W.P.F. TOURNAMENT RULES, and THE PIT all require a stack of POG milkcaps, wherein the top POG milkcap equates to a tossing article of the first player) with the intention of knocking the tossing article of the first player (pages 3-4; wherein The Traditional Rules, W.P.F. TOURNAMENT RULES, and THE PIT all require a stack of POG milkcaps, wherein the top POG milkcap equates to a tossing article of the first player) to the ground surface (pages 3-4: “milkcaps landing face down”) (pages 1-4).
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Pog in view of Phalin as applied to claim 9 above, and further in view of Browne.
Regarding claim 15, the modified Pog discloses the tossing game playing kit of claim 9, wherein the tossing articles of the plurality of tossing articles (“kini”) are shaped substantially as are the set objects of the plurality of set objects (“POG milkcaps”) (pages 1-2; where kinis can be made by gluing two milkcaps together). The modified Pog discloses kinis being made by gluing two milkcaps together, and thus the kinis and the POG milkcaps are not the same size. Browne, however, teaches the history of Pog milkcaps, wherein slammers (i.e., kinis) were originally simply another milkcap (col. 1 lines 18-55). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a POG milkcap as the kini in the modified Pog, which would render the tossing articles (“kinis”) the same size and shape as the set objects (“POG milkcaps”), because Browne teaches that this is the original structure of the game.
Regarding claim 17, the modified Pog discloses the tossing game playing kit of claim 9, wherein: the set objects of the plurality of set objects (“POG milkcaps”) are cylindrical (page 1: “round, wax coated cardboard disks;” wherein a disk is a short cylinder); the plurality of set objects (“POG milkcaps”) comprises five set objects (see pages 3-4; wherein in The Traditional Rules, players contribute an equal number of POG milkcaps, in W.P.F. TOURNAMENT RULES, there are eleven POG milkcaps, and in THE PIT, there are sixteen to thirty-two POG milkcaps, which amounts all include (i.e., comprise) five POG milkcaps); and the tossing articles of the plurality of tossing articles (“kini”) are shaped substantially as are the set objects of the plurality of set objects (“POG milkcaps”) (pages 1-2; where kinis can be made by gluing two milkcaps together). The modified Pog discloses at least two tossing articles (“kini”) but does not disclose the plurality of tossing articles numbering one more than the plurality of set objects or the tossing articles being the same size as the set objects. However, the modified Pog discloses that the POG kinis are highly collectable and tradeable (pages 1-2); thus a person having ordinary skill in the art would have recognized that the number of kinis is a result-effective variable. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to own one more kini than POG milkcaps to achieve desired collectable and tradeable pieces, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II. Additionally, it would have been an obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include one more tossing article than the plurality of set objects since a duplication of parts is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See MPEP 2144.04 VI B. The modified Pog discloses kinis being made by gluing two milkcaps together, and thus the kinis and the POG milkcaps are not the same size. Browne, however, teaches the history of Pog milkcaps, wherein slammers (i.e., kinis) were originally simply another milkcap (col. 1 lines 18-55). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a POG milkcap as the kini in the modified Pog, which would render the tossing articles (“kinis”) the same size and shape as the set objects (“POG milkcaps”), because Browne teaches that this is the original structure of the game.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Weyand (US 5,480,150) which discloses a similar game of tossing a disc [18] at a stack [16] of discs [10-14], Romano (US 5,462,282) which discloses a similar game of stackable chips/POGS where one chip [12] is thrown at a stack of gaming chips [12], Respicio (US 5,340,113) which discloses a similar game of POGS where a cap hitter disk [44] is thrown at a stack of cap disks [38], Goozee et al. (GB 2,412,365 A) which discloses a similar game of throwing a disc against another stack of discs, Libby’s Libby Whole Kernel Corn which discloses similar structure to the claimed plurality of set objects and plurality of tossing articles, Kids for Saving Earth Presents A CanCan Carnival which discloses a similar game of tossing crushed pop cans at a pyramid of pop cans, and Have fun in the garden with Jaques of London Tin Can Alley game which discloses a similar game of throwing bean bags at a stacked pyramid of cans.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY B. WALTER whose telephone number is (571)270-5286. The examiner can normally be reached Monday - Friday: 8:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at (571)272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711