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 .
Drawings
The drawing is objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “2” has been used to designate both a dice game and a table in the specification.
The drawing is objected to because the reference numbers do not seem to correspond to the limitations described in the specification. Reference numbers for the table [2] and dealer station [4] both point toward the fill the field bonus [12] and player stations [6, 8] are labeled ambiguously such that it cannot be discerned which portion of the Figure is equated with the player stations. Additionally, it is unclear what the unlabeled double square between the Fill the Field Bonus and the gaming table is.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
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 1-2 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 claim is indefinite for claiming both an apparatus and the method steps of using the apparatus. For example, in lines 4-6 of claim 1, “game rules including the steps of: players placing field wagers; a shooter placing a field wager; the shooter rolling the dice; the dice roll determining a win-loss in accordance with a designated payout; paying wins; and collecting losses” amounts to the method steps of using the apparatus and does not further structurally limit the claim. It is unclear whether infringement would occur when one creates a dice game that allows for the rules to be followed or whether infringement would occur when the game rules are actually followed. See MPEP 2173.05 (p) II.
Regarding claim 2, the claim is indefinite for claiming both an apparatus and the method steps of using the apparatus. For example, in lines 2-3 of claim 2, “a Fill the Field bonus side bet configured for players wagering on whether or not all of a predetermined field will be filled before a “7” is rolled” amounts to the method steps of using the apparatus and does not further structurally limit the claim. It is unclear whether infringement would occur when one creates a dice game that allows for a Fill the Field bonus side bet to be placed or whether infringement would occur when a Fill the Field bonus side bet is actually placed. See MPEP 2173.05 (p) II.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hobert (US 5,829,749).
Regarding claim 1, Hobert discloses a dice game (col. 6 line 4: “craps game”), including: a table [4] with a row of player stations (col. 1 lines 42-44: “[a]t the craps table, many players place the same bets on particular rolls or combination of rolls of the dice”) and picture bets [2]; the picture bets [2] corresponding to player dice rolls; and game rules including the steps of: players placing field wagers (col. 2 line 16: “players must make all bets;” also see claim 1 (d) and (e)); a shooter placing a field wager (col. 2 line 16: “players must make all bets;” also see claim 1 (d) and (e)); the shooter rolling the dice (col. 1 line 33: “the “shooter,” rolls a pair of dice;” also see claim 1 (f)); the dice roll determining a win-loss in accordance with a designated payout (col. 1 lines 33-34: “particular bets are won or lost;” also see claim 1 (g)); paying wins (col. 7 lines 60-61, col. 8 line 51, col. 9 line 47, and col. 9 lines 65-66: “the host pays all bets;” also see claim 1 (h) and (j)); and collecting losses (col. 9 line 11, col. 9 line 37, and col. 9 line 48: “collect(s) all bets;” also see claim 1 (i) and (k)) (col. 1 line 30 – col. 2 line 19, col. 6 lines 4-52, col. 9 lines 16-41, and Figures 1 and 5). Regarding the italicized claim language, although taught by Hobert, the examiner would like to point out that this claim language amounts to printed matter. Such instructions, descriptions, or indicia only serve to communicate the rules of the game to the players. These rules merely describe those elements in a manner that conveys intelligence to the players. They are instructions or indications of how to play the game and one cannot continue patenting a product indefinitely provided that they associate a new set of rules with known games. Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product. See MPEP 2112.01. The indicia on the game table are functional limitations, rules, or instructions that have no physical tie to the substrate. Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). Any differences residing in meaning and information conveyed by printed matter are not considered patentable subject matter. No patentable weight is given to the printed matter unless there is an unobvious functional relationship between the printed matter and the substrate. See MPEP 2111.05. Assuming, for the sake of argument, that there is a functional relationship between the printed matter and the substrate, the examiner does not find there to be an unobvious functional relationship between the printed matter and the substrate as the printed matter is merely conveying information to the players in the game in an obvious and routine matter. As such, no patentable weight is given to the claimed printed matter. Additionally, although taught by Hobert, the examiner would like to point out that the claimed game rules amount to functional claiming. 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.
Regarding claim 2, Hobert discloses the dice game according to claim 1, which includes: a Fill the Field bonus side bet [52] configured for players wagering on whether or not all of a predetermined field (4, 5, 6, 8, 9, 10) will be filled before a “7” is rolled (col. 9 lines 21-23 and Figure 5). Regarding the italicized claim language, although taught by Hobert, the examiner would like to point out that this claim language amounts to printed matter which is given no patentable weight for the reasons provided in paragraph 11 above. Additionally, although taught by Hobert, regarding the recitation that the Fill the Field bonus side bet is configured for players wagering on whether or not all of a predetermined field will be filled before a “7” is rolled, the examiner would like to point out that this limitation amounts to functional claiming which does not serve to impart patentability for the reasons provided in paragraph 11 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Hobert (US 5,487,547) which discloses a similar dice game including a Fill the Field bonus side bet configured for players wagering on whether or not all of a predetermined field (2, 3, 4, 9, 10, 11, 12) will be filled before a “7” is rolled (col. 5 lines 35-37) and Moore, JR. (US 2005/0001379 A1) which discloses a similar dice game including a Fill the Field bonus side bet configured for players wagering on whether or not all of a predetermined field (2, 3, 4, 5, 6) or (8, 9, 10, 11, 12) will be filled before a “7” is rolled (paragraphs 0369-0370).
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