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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 17, 2026, has been entered.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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), 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), except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 18-20, 24-25, 27-32, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Krapf et al. (US Patent Pub. 2021/0163249, hereinafter Krapf) in view of Cook et al. (US Patent No. 8,204,309, hereinafter Cook).
Regarding claim 18, Krapf discloses a system (Figs. 1-2) for creating sets of cards (card-like data carriers 5, ¶ 57), the system comprising:
a card supply means providing a plurality of cards (“personalization device,” ¶ 57, e.g., a printer, ¶¶ 3, 82; compare to Applicant’s disclosure at ¶ 28);
a card moving system comprising a conveyor belt (conveying device 4 “constructed as a vacuum conveyor belt (vacuum belt),” ¶ 58) adapted to carry one or more cards individually connected to a lower side of the conveyor belt (4) and a plurality of activatable releasing means (compressed air units 2a, 2b, ¶¶ 13, 62; compare to Applicant’s disclosure at ¶ 56) for releasing the card from the conveyor belt (4), the releasing means being a gas blowing means to blow the connected card from the conveyor belt (“configured, when activated accordingly, to apply compressed air to the main face of a selected data carrier 5 which faces towards the conveying device 4 … and thereby to transmit an impulse to it in such a way that it is released from the conveying device,” ¶ 62);
a plurality of card collecting means (card magazines 8a, 8b, ¶¶ 61-62; compare to Applicant’s disclosure at ¶ 14) to collect a set of cards, each of the card collecting means (8a, 8b) being provided under the conveyor belt (¶ 58) at different positions along the direction of movement of the conveyor belt (see Fig. 1, ¶ 62);
a card identifying means (inspection device 3, ¶ 40; compare to Applicant’s disclosure at ¶¶ 35-36) to identify the cards carried by the card moving system by one or more identification elements or card identity (e.g., based on “its personalization carried out beforehand, such as by inscription or printing of data,” ¶ 82); and
a controlling means to assign each of the identified cards carried by the card moving system to one of the card collecting means (the system being “configured to effect the selective release of data carriers from the conveying device in dependence on the results of the inspection previously carried out by the inspection device, so that a sorting of the data carriers in dependence on these results is achieved,” ¶ 40; see also ¶ 62; the structure of the controlling means being, e.g., “a global control device for the entire device 1,” ¶ 73);
wherein for each card collecting means (8a, 8b), one of the activatable releasing means (2a, 2b) is positioned at the same position along the direction of movement of the conveyor belt (4; see Fig. 1), the controlling means being adapted to activate the releasing means (2a, 2b) positioned at the card collecting means (8a, 8b) when one of the cards (5) passes the card collecting means (8a, 8b) it is assigned to (¶¶ 17-18, 40, 62).
Krapf generally discloses the use of this system for sorting “card-like data carriers” (¶ 40). Krapf does not specifically teach that the cards are playing cards, game cards, casino cards, collectible cards, or trading cards and that the controlling means keeps track of a number of cards with a given rank and suit, one or more identification elements, or card identity having been sent to each of the card collecting means.
However, Cook teaches a system for creating sets of cards (col. 1:60-2:16) which are playing cards or trading cards (col. 1:6-44). The playing cards are also understood to be game cards or casino cards, and the trading cards are also understood to be collectible cards. Cook teaches that the system comprises a card supply means providing a plurality of playing cards or trading cards (any one or more of a printer which pre-prints the cards, col. 1:60-61, or die cutting and singulating units 12a, 12b, conveyor 20”, hopper 215, or ejection station 219, Fig. 4), a plurality of card collecting means (buffers 60a-60n, Fig. 3) to collect a set of cards with a given number of cards with given rank and suit and/or one or more identification elements and/or card identity (“a pack of cards in each buffer which has a desired random order,” col. 4:45-49, where “a desired random order” is clearly understood in the context of playing cards to be a random order based on card identity, i.e., rank and suit, e.g., two of hearts, Fig. 2), and a controlling means (processor 34’, Fig. 3) to assign each of the cards carried by the conveyor belt (244) to one of the card collecting means (buffers 60a-60n; “processor 34’ could feed cards to buffers so as to establish a pack of cards in each buffer which has a desired random order,” col. 4:45-49), said controlling means (34’) keeping track of the number of playing cards with given rank and suit, or one or more identification elements, or card identity having been sent to each of the card collecting means (i.e., “each buffer,” id.) for the purpose of “establish[ing] a pack of cards in each buffer which has a desired random order.” Establishing a pack of cards in a desired random order in each buffer is understood to include keeping track of the number of cards based on the identity of the cards (as determined by the card identification at the imaging station 16 to select the appropriate one of buffers 60a to 60n “in which to feed each identified card,” col. 4:20-25). This “keeping track” function is understood to be implicit in the role of the processor 34’ which “is looking for only certain cards to fill the buffers” (col. 4:53-54) in order to feed the cards to the buffers to establish “a pack of cards in each buffer which has a desired random order” (col. 4:48-49) and to recognize when “a pack was complete” (col. 4:49-50). Cook suggests that this may be useful for “providing new decks to casinos, which decks have a random order” (col. 5:1-3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Krapf by configuring the card supply means to provide a pack of playing cards in a desired random order to the card collecting means, and configuring the controlling means to keep track of the number of playing cards with given rank and suit (or identification elements or card identity) having been sent to each of the card collecting means, as suggested by Cook, in order create a pack of cards in each collecting means which has a desired random order (Cook, col. 3:45-50) to supply casinos with randomly ordered decks of playing cards (Cook, col. 4:57-5:3). For further discussion of these limitations, see Response to Arguments below.
Regarding claim 19, the modified Krapf teaches the claimed invention substantially as claimed, as set forth above for claim 18. Krapf further discloses a defect detection unit to detect defective cards (as a component of the inspection device 3, see ¶¶ 40 and 67; compare to Applicant’s disclosure at ¶ 36, which describes the defect detection function as being performed by the card identification means). See also Cook, col. 3:25-48.
Regarding claim 20, the modified Krapf teaches the claimed invention substantially as claimed, as set forth above for claim 19. Krapf further discloses a card extraction bin (“a further card magazine which is ready at a further stacking position of the stacking area,” ¶ 40) provided under the conveyor belt (4) at a given position along the direction of movement of the conveyor belt (“at a further stacking position,” ¶ 40). One of the releasing means (analogous to compressed air units 2a, 2b) is understood to be positioned at the same given position along the direction of movement of the conveyor belt in order to accomplish the disclosed function of “selective release of data carriers” (as described in ¶ 40), the controlling means being adapted to activate the releasing means at the position along the direction of movement of the conveyor belt (4) when the defective card passes the card extraction bin (¶ 40).
Regarding claim 24, the modified Krapf teaches the claimed invention substantially as claimed, as set forth above for claim 18. Krapf does not teach that the width of the conveyor belt is less than the length of the carried cards. However, Cook further teaches the width of the conveyor belt (upper conveyor 244, Fig. 6; col. 5:18-22) is less than the length of the carried cards (“The width of the upper conveyor 244 is chosen to be less than that of the long dimension of the cards 290. In consequence, both ends of each card extends beyond either side of the conveyor 244,” col. 6:37-40). Cook teaches that this configuration of the conveyor belt with respect to the card length permits the gas blowing means to act on each end of the card (“on either side of upper belt conveyor 244,” col. 5:48-51) to release it from the conveyor belt at a selected collection location. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Krapf by configuring the conveyor belt width to be less than the length of the carried cards, as taught by Cook, in order to facilitate release of the cards from the conveyor belt by the gas blowing means.
Regarding claim 25, the modified Krapf teaches the claimed invention substantially as claimed, as set forth above for claim 24. For cooperation with the width of the conveyor belt being less than the length of the cards to facilitate release by the gas blowing means, as discussed above, Cook further teaches the card supply means (any one or more of die cutting and singulating units 12a, 12b, conveyor 20”, hopper 215, or ejection station 219, Fig. 4) provides the cards to be displaced with the length of the card perpendicular to the direction of movement of the conveyor belt (see Fig. 6).
Regarding claim 27, the modified Krapf teaches the claimed invention substantially as claimed, as set forth above for claim 18. Krapf further teaches the gas blowing means is an air blowing means comprising a first air knife (compressed air units 2a, 2b; ¶ 62). See also Cook, col. 5:48-53, 6:50-59.
Regarding claims 28 and 29, the modified Krapf teaches the claimed invention substantially as claimed, as set forth above for claim 26. Krapf further teaches the gas blowing means is an air blowing means (compressed air units 2a, 2b; ¶ 62). For cooperation with the width of the conveyor belt being less than the length of the cards to facilitate release by the gas blowing means, as discussed above, Cook further teaches the gas blowing means (271a, 271b, Fig. 6) is an air blowing means comprising a plurality of pairs of air knives (“air nozzles,” col. 5:49-50), which includes a first pair of air knives as recited in claim 28, the first and second air knife of each pair of air knifes being positioned at opposite sides of the conveyor belt (244) and at the same position along the direction of movement of the conveyor belt (col. 5:48-51, Fig. 6).
Regarding claim 30, the modified Krapf teaches a method to provide a set of cards, including game cards, casino cards, collectible cards, or trading cards as taught by Cook, and including the step of providing a system for creating sets of playing cards, game cards, casino cards, collectible cards, or trading cards, as discussed above for claim 18. Krapf further discloses the steps of providing a series of cards to the system for creating the sets of cards (¶ 82); identifying (by inspection device 3, ¶¶ 40, 82) each of the cards sucked by the conveyor belt (4) and assigning a card collecting means (8a, 8b) to each of the identified cards (¶ 40, the cards being selectively released into respective collecting means “in dependence on the results of the inspection previously carried out by the inspection device,” ¶ 40); displacing the identified cards along the conveyor belt (4) to the plurality of card collecting means (8a, 8b; ¶ 62); and for each identified card, activating the releasing means (2a, 2b) at the same position along the direction of movement of the conveyor belt (4) when a card passes the card collecting means (8a, 8b) it is assigned to (¶ 62); wherein the controlling means assigns a card collecting means to each card such that in each card collecting means, a set of cards is created (¶ 62).
Krapf does not specifically teach the use of this method for providing a set of randomly shuffled cards, including the step of providing a series of randomly ordered cards to the system, such that sets of one or more decks of cards are created. However, Cook discloses a general method of processing pre-printed cards (col. 1:6-7), which is specifically applied to providing a randomly shuffled set of one or more decks of cards (“providing new decks to casinos, which decks have a random order,” col. 4:57-5:3), wherein the method includes the step of providing a series of randomly ordered cards to the system (the cards “arrive in a non-standard order,” col. 8:3-7) to create sets of one or more decks of cards (each set being “a single deck of fifty-two cards” or “‘superdecks’ of four, six or eight decks each,” col. 6:60-64). See also col. 4:45-51: “In such instance, rather than feeding identical cards to the same buffer, processor 34’ could feed cards to buffers so as to establish a pack of cards in each buffer which has a desired random order.” Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specifically apply the invention of Krapf to providing a set of randomly shuffled cards, including the step of providing a series of randomly ordered cards to the system, such that sets of one or more decks of cards are created, as suggested by Cook, in order to supply casinos with randomly ordered decks of playing cards.
Regarding claim 31, the modified Krapf teaches the claimed invention substantially as claimed, as set forth above for claim 30. Krapf and Cook do not explicitly teach that the card supply means provides cards with a face side of the cards facing away from the conveyor belt. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to reverse the orientation of the cards such that the face side of the cards faces away from conveyor belt, since the court has held that mere reversal of parts of an invention is an obvious modification. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1963).
Regarding claim 32, the modified Krapf teaches the claimed invention substantially as claimed, as set forth above for claim 30. Krapf further teaches at least part of the cards provided to the system for creating sets of cards are reclaimed cards (e.g., reclaimed from elimination area D via belts 11a, 11b by return loop 12, Fig. 1; ¶ 68). Additionally or alternatively, Cook further teaches at least part of the cards provided to the system are reclaimed cards (e.g., “previously manufactured decks of cards” loaded in hopper 215, col. 5:16-17, in “non-standard order,” col. 8:3-7; or “cards in the overflow buffer … fed back to the batch conveyor either manually or automatically,” col. 4: 51-56).
Regarding claim 34, the modified Krapf teaches the claimed invention substantially as claimed, as set forth above for claim 30. Cook further teaches a controlling means that creates a sequence of the identities of the cards for each set of cards created (“the controller may randomly determine an order for the set of cards,” col. 6:65-66). When modifying Krapf in view of Cook in the manner discussed above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Krapf by configuring the controller to create a sequence of the identities of the cards for each set of cards created in each card collecting means, in order to ensure random arrangement of the shuffled cards.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Krapf in view of Cook, in further view of Horiguchi et al. (US Patent No. 8,443,959, hereinafter Horiguchi).
Regarding claim 21, the modified Krapf teaches the claimed invention substantially as claimed, as set forth above for claim 18. Krapf does not disclose respective first and second card detecting means before and after each releasing means. However, to solve the problem of confirming that an item is successfully released at an intended location in a sorting system, Horiguchi teaches a first detecting means (upstream sensors 44a, 44b, Fig. 1; col. 9:53-67) provided before a releasing means (at sorting hole 41) and a second detecting means (downstream sensors 44c, 44d, Fig. 1; col. 9:67-10:13) provided after the releasing means in a downstream direction of the sorting system (“downstream side coin detection sensors 44c and 44d serve to confirm that a coin has dropped into the sorting hole 41,” col. 9:67-10:2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Krapf by adding respective first and second detecting means as suggested by Horiguchi before and after each releasing means in the direction of movement of the conveyor belt, in order to confirm that cards are successfully released at their intended locations along the conveyor belt, for quality assurance.
Response to Arguments
Applicant's arguments filed June 17, 2026, have been fully considered but they are not persuasive.
First, Applicant argues that Cook does not disclose “keeping track of the number of cards with given rank and suit, one or more identification elements, or card identity sent to each of the card collecting means.” Applicant argues that Cook’s processor is instead “looking for only certain cards to fill the buffers.” This argument is not persuasive because keeping track of the inventory in the buffers is not incompatible with looking for only certain cards to fill the buffers. Indeed, keeping track of the identity of cards in the buffers appears to the examiner to be implicit in Cook’s disclosed processor functions (for example, keeping track of the inventory as a list of the “certain cards” to fill the buffer with “a pack of cards” in “a desired random order” that are then fed to a conveyor “[a]s soon as a pack was complete,” col. 4:45-51). If the processor did not keep track of the inventory of cards sent to the buffers, then the processor would not know what “certain cards” to look for to correctly assemble the cards in the “desired random order,” and would not know when the pack in the desired random order is complete.
Applicant opines that Cook is “sparse on detail” with respect to these functions. Remarks, pg. 7. However, the examiner maintains that Cook’s disclosure is commensurate in scope with the broad language of the claim, which does not specify any particular algorithm for keeping track of the number of cards, and broadly encompasses keeping track of a number of cards with, for example, an identification element sent to the card collecting means.
Second, Applicant argues that Cook’s discussion of sending some cards to an overflow buffer (col. 4:51-56) means that the processor rejects cards it is not currently looking for to fill the buffers and sends them to the overflow buffer. The examiner does not necessarily disagree with this reading of Cook. However, the examiner maintains that this approach falls within the scope of the claim language. The examiner understands Cook’s processor to be looking for “certain cards” to fill the buffers “in a desired random order.” This means that some of the cards which are fed into Cook’s system will not be fed into any of the buffers on the first pass (and are instead passed to the overflow buffer) precisely because the processor is “keeping track” of what has already been sent to the buffers and is looking for the specific cards that need to come next to satisfy the desired random order of each pack in each buffer.
Third, Applicant argues that Cook’s concern is “the order of cards, not the composition of the set.” Remarks, pg. 8. This argument is not persuasive because the order of the cards defines the composition of the set. In order to form “a pack of cards in a desired random order,” the pack of cards must necessarily be composed of the cards that make up the desired random order. Cook teaches that the packs of cards may be new decks of cards provided to casinos in a random order (col. 5:1-3). Clearly, the “random order” of a new deck of cards provided to a casino will necessarily be composed of specific ranks and suits of cards, in a desired random order.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
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/Laura Davison/Primary Examiner, Art Unit 3993
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