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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 21, 23-25, and 36 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 claims 21, 23, and 36, the phrase “i.e.” or "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Applicant is recommended to either remove these claim limitations or include them in the definite. See MPEP § 2173.05(d).
Claim 36 claims the use of an apparatus, which is held to be indefinite because it merely recites a use of an apparatus without any active, positive steps delimiting how this use is actually practiced. Additionally, it is unclear if the claim is directed toward a method claim or an apparatus claim. Therefore, the Examiner recommends the claim to be reworded as such: “The playing cards storage device according to claim 19, wherein the device is used to store playing cards in a casino.” For examination purposes, the Examiner will be interpreting this as an apparatus claim. See MPEP § 2173.05(q).
Claim limitations “holding means to hold a seal” in claim 24, line 2 and “holding means to hold the cover plate of a cartridge” in claim 25, line 2 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There are no further structural components mentioned in the specification regarding these “holding means”. Additionally, the structure of these components is not readily apparent from the drawings. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 19-23, 25, 27-28, 32, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over US 20070241015 (hereinafter “Kwan”) in view of US 20200140145 (hereinafter “Huizingh”).
Regarding claim 19, Kwan discloses a playing cards storing device (Fig. 1, 10) for holding, storing and/or manipulating a set of playing cards, wherein the playing cards storing device comprises an open box (Fig. 2, 16) comprising at least two mutually opposite lateral walls (Fig. 2, 26a/b), a bottom wall (Fig. 2, 28) between the lateral walls and a backwall (Fig. 2, 20) between the lateral walls,
and wherein, in longitudinal direction and a sense from the backwall towards the inner side of the box, the outmost point of the side of the lateral walls opposite to the bottom wall (point A) extends beyond the outmost point of the side of the lateral walls contacting the bottom wall (point B) (see annotated Fig. 2 below).
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Kwan does not disclose the bottom wall and the backwall being connected along a coupling rib. However, Huizingh, in the same field of endeavor of storage containers, discloses reinforcement ribs (Fig. 1, 12) for the purpose of reinforcing walls and diving areas into segments (Para. 0044). Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to include a rib along where the backwall and bottom wall meet (divided segments), to increase the mechanical strength of the box and prevent damage from handling/drops. Additionally, the specific placement of the rib would not modify the operation of the device and is seen as a simple rearrangement of parts. See MPEP 2144 - In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 20, modified Kwan further discloses that the face wall of the open box is a partially or completely open surface (See annotated Kwan, Fig. 2 shaded below).
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Regarding claim 21, modified Kwan further discloses that the top wall, i.e. the side opposite the bottom wall, is partially or completely open (See annotated Kwan, Fig. 2 shaded below).
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Regarding claim 22, modified Kwan further discloses that the backwall has a perimeter substantially identical to the perimeter of the playing cards to be stored in the card storage device (Kwan, Para. 0018). The box of Kwan (or, “sleeve”) is designed for the purpose of holding and protecting cards. Therefore, it would be inherent that the box backwall would have a corresponding perimeter to that of playing cards.
Regarding claim 23, modified Kwan further discloses that the box (Fig. 2, 16) has a volume of a trapezoidal prism, preferably a cuboid. The box disclosed by Kwan is three-dimensional and has 6 faces, 2 of which are generally parallel faces, and the other 4 are rectangular lateral faces, thus making the box volume cuboid. As discussed supra, the term “preferably” makes this limitation indefinite and the examiner is interpreting the volume to be “cuboid” in shape.
Regarding claim 25, modified Kwan further discloses a playing cards storing device, (Kwan Fig. 1, 10) that has a holding means (Kwan, Fig. 5, 56) to hold the cover plate of a cartridge. The fastener is attached to the device to secure the box to other objects, such as a belt loop (Kwan, Para. 0023). However, such a clip or fastener would inherently be capable of holding a cover plate. If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See MPEP 2114 - In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Additionally, “holding means” is being interpreted under broadest reasonable interpretation by the Examiner as cited in 35 USC § 112 supra. “Holding means” in this case could refer to any physical component that is capable of grabbing or attaching to a cover plate.
Regarding claim 27, modified Kwan further discloses that the playing cards storage device further has a cover (Kwan, Fig. 4A, 14) to cover at least one of the face side being opposite to the backwall and the top side being the opposite to the bottom wall.
Regarding claim 28, modified Kwan further discloses that the cover (Kwan, Fig. 4A, 14 – see annotations below) covers the face side being opposite to the backwall and the top side being the opposite to the bottom wall.
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Regarding claim 32, modified Kwan discloses all the limitations of claim 27, and further discloses a coupling means (Kwan, Fig. 1, 24) to releasably couple the open box to the cover (Kwan, Para. 0017).
Regarding claim 36, this claim is being interpreted as stated supra in the 35 USC § 112(b) rejection. Modified Kwan discloses all the limitations of claim 19, but does not expressly state that the playing cards storing device is used to store playing cards in a casino. However, the container structure of modified Kwan would easily be able to store cards in a casino. If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See MPEP 2114 - In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Kwan in view of Huizingh as applied to claim 19 above, and further in view of KR 101728247 (hereinafter, “Sik”).
Regarding claim 24, modified Kwan discloses all the limitations of claim 19. Modified Kwan does not disclose that the playing cards storing device has a holding means to hold a seal. However, Sik, in the analogous art of card containers, discloses a device to prevent card tampering that has a fixing piece (Fig. 1, 130) that can accommodate a confirmation seal (Fig. 1, 160). Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to introduce a component or piece to hold a seal to a card box to reveal signs of possible tampering and prevent fraud in games. Applicant is reminded that the term “holding means” in this claim is being interpreted under broadest reasonable interpretation, as cited in 35 USC § 112 supra. In the instant case, “holding means” could be an external, physical component that a seal might be placed on.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Kwan in view of Huizingh as applied to claim 19 above, and further in view of US 5566945 (hereinafter, “Sagucio”).
Regarding claim 26, modified Kwan discloses all the limitations of claim 19. Modified Kwan does not disclose that the backwall has a cut out along a part of the side remote from the bottom wall. However, Sagucio, in the analogous art of card holders, discloses a storage pocket for cards with a cut (Fig. 3, 90), “provided for sliding a finder along when dislodging the stored game cards” (Col. 3, lines 17-19). Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to introduce a cut into the storage device to aid in the retrieval of stuck cards.
Claims 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Kwan in view of Huizingh as applied to claim 27 above, and further in view of US 7717426 (hereinafter, “Malmloff”).
Regarding claim 29, modified Kwan discloses all the limitations of claim 27, including a cover for a playing cards storage device. However, it is unclear that the cover is expressly L-shaped. However, Malmoff, in an analogous art of storage containers, discloses a cover (Fig. 5, 210 – “door”) that clearly has an L-shape. Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to use a lid with an L-shape to prevent the contents of a storage container from spilling out.
Regarding claim 30, modified Kwan further discloses that the short side of the L-shape (Malmoff, Fig. 5, 240) covers the face side of the open box.
Regarding claim 31, modified Kwan further discloses that the long side of the L-shape (Malmoff, Fig. 5, 235) covers the top side of the open box.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Kwan in view of Huizingh as applied to claim 32 above, and further in view of US 2705555 (hereinafter, “Brenner”).
Regarding claim 33, while modified Kwan discloses all the limitations of claim 32, it is silent regarding at the face side of the open box opposite to the backwall, a slit is provided between the open box and the cover when the open box and the cover are coupled. However, in the same field of endeavor, Brenner discloses a card package device that has a slit (annotated below in Fig. 2) when two pieces are coupled (Col. 1, lines 37-41). Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to include a slit that would allow for easier access to the cards while the container is closed. For example, the slit could be utilized to insert something to cut or split the deck of cards while preventing fraudulent manipulation of the deck.
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Claims 34 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Kwan in view of Huizingh as applied to claim 27 above, and further in view of US 4146229 (hereinafter, “Morse”).
Regarding claim 34, modified Kwan discloses the all the limitations of claim 27. While modified Kwan does disclose the container may be plastic (which is classified polymer), it is not expressly stated that the plastic is non-transparent. However, Morse in the analogous art of card containers, specifically states that walls “are formed of opaque plastic” to prevent others from seeing cards placed on a specific wall (Abstract). Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to make a cover/box from non-transparent polymer in order to prevent cheating/players seeing other’s cards during games. Also, existing case law notes that the selection of a well-known material is not considered patentable. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144 - In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 35, modified Kwan discloses the all the limitations of claim 27. While modified Kwan does disclose the container may be plastic (which is classified polymer), it is not expressly stated that the plastic is transparent. However, Morse in the analogous art of card containers, specifically has a “wall being formed of transparent plastic” such that cards can be viewed by the individual playing. Thus, it would be obvious to a person having ordinary skill in the art at the time of filing to make a cover/box from transparent polymer for sections that an individual or dealer would need to visualize. For example, one could tell if the card container was empty or full, without having to pick it up. Additionally, as stated supra, that the existing case law notes that the selection of a well-known material is a matter of design-choice and not considered patentable. MPEP 2144 - In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M BERRY whose telephone number is (571)272-0925. The examiner can normally be reached M-F: 8-5.
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/S.M.B./Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711