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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a movement instructor in claims 21-24, 36, and 40 and alignment features in claims 38 and 40.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 29 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.
The term “about” in claim 29 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This renders the volume of the reservoir filling container indefinite.
Regarding claim 21, the claim is drawn to an apparatus (multiplayer game) but the body of the claim describes a method (game play instructions). It is unclear how the game play instructions further structurally limit the claim.
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 21-27, 31-32, and 36-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weichselbaum (US 5,855,481).
Regarding claim 21, Weichselbaum discloses a multiplayer game, comprising: a mobile playing environment [1] defining a water reservoir [2] and a path (from Atlantic Ocean [3] to Pacific Ocean [5]) leading down into the reservoir [2]; a reservoir filling container (col. 5 lines 23-24: “simple pitcher”) defining a volume configured to hold a quantity of water for a player to pour into the reservoir [2] to increase a level of water within the reservoir [2] and cause the water level to rise along the path (from Atlantic Ocean [3] to Pacific Ocean [5]); player tokens [14] movable to and between various positions along the path (from Atlantic Ocean [3] to Pacific Ocean [5]); and a movement instructor (col. 5 lines 49-50: “two dice which are rolled or the use of a spinner”) manipulable by a player to generate an unselected movement instruction (Figure 6) from a limited set of possible instructions comprising moving a token [14] downward along the path (from Atlantic Ocean [3] to Pacific Ocean [5]) and adding water (from tanks [12]) to the reservoir [2] (col. 3 lines 39-41, col. 4 line 28 – col. 6 line 5, and Figures 1-6). Regarding the recitations of a player pouring water into the reservoir to increase a level of water within the reservoir and causing the water level to rise along the path and the limited set of possible instructions comprising moving a token downward along the path and adding water to the reservoir, although disclosed by Weichselbaum, the examiner would like to point out that it should be appreciated that the applicant’s functional language in the claims 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 italicized claim language, although disclosed by Weichselbaum, the examiner would like to point out that 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 game boards and pieces. 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 movement instructor 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.
Regarding claim 22, Weichselbaum discloses the multiplayer game of claim 21, wherein the movement instructor (col. 5 lines 49-50: “two dice which are rolled or the use of a spinner”) comprises a multi-faced die, with faces of the die marked (with numbers 1-6) to indicate movement instructions (col. 5 line 48 – col. 6 line 5 and Figures 5-6). Although disclosed by Weichselbaum, the italicized claim language amounts to printed matter which is not given patentable weight as outlined in paragraph 11 above.
Regarding claim 23, Weichselbaum discloses the multiplayer game of claim 22, wherein at least one die face indicates that a player is to add water to the reservoir, and at least one other die face indicates that a player is to move a token along the path. The italicized claim language amounts to printed matter which is not given patentable weight as outlined in paragraph 11 above.
Regarding claim 24, Weichselbaum discloses the multiplayer game of claim 21, wherein the movement instructor (col. 5 lines 49-50: “two dice which are rolled or the use of a spinner”) comprises a spinner having motion segments marked to indicate movement instructions (col. 5 line 48 – col. 6 line 5). The italicized claim language amounts to printed matter which is not given patentable weight as outlined in paragraph 12 above.
Regarding claim 25, Weichselbaum discloses the multiplayer game of claim 21, wherein the path (from Atlantic Ocean [3] to Pacific Ocean [5]) comprises a series of levels [3, 10, 4, 11, 5] separated by steps (col. 4 line 44 – col. 5 line 20 and Figures 1-5; wherein oceans [3, 5], locks [10, 11], and lake [4] are provided at different levels (i.e., steps)).
Regarding claim 26, Weichselbaum discloses the multiplayer game of claim 25, wherein the limited set of possible instructions includes different numbers of steps for a player to move a token down the path. The italicized claim language amounts to printed matter which is not given patentable weight as outlined in paragraph 11 above.
Regarding claim 27, Weichselbaum discloses the multiplayer game of claim 21, wherein the path (from Atlantic Ocean [3] to Pacific Ocean [5]) curves around a central portion (see four islands [42] in Figure 5) of the mobile playing environment [1] (col. 5 lines 29-40 and Figure 5; wherein the path curves around the southeast corner of the islands [42] as viewed from above in Figure 5).
Regarding claim 31, Weichselbaum discloses the multiplayer game of claim 21, further comprising a game termination indicator [43, 45] comprising a discrete number of game-end segments [46] (also see Figure 6) that together indicate an end of play (see “7. Jump to final destination….Instant win” in Figure 6 or completing objective to journey from Atlantic to Pacific) when manipulated (col. 5 line 48 – col. 6 line 5 and Figures 5-6).
Regarding claim 32, Weichselbaum discloses the multiplayer game of claim 31, wherein the limited set of possible instructions includes manipulating a next game-end segment [46] (col. 5 line 48 – col. 6 line 5 and Figures 5-6). Although disclosed by Weichselbaum, the italicized claim language amounts to printed matter which is not given patentable weight as outlined in paragraph 11 above. Additionally, regarding the recitation that a next game-end segment is manipulated, although disclosed by Weichselbaum, it should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability as outlined in paragraph 11 above.
Regarding claim 36, Weichselbaum discloses the multiplayer game of claim 21, further comprising game play instructions indicating that a player may move any one of the player tokens [14] in response to the movement instructor (col. 5 lines 49-50: “two dice which are rolled or the use of a spinner”) generating an instruction to move a token [14] downward along the path (from Atlantic Ocean [3] to Pacific Ocean [5]) (col. 5 line 48 – col. 5 line 5 and Figures 1-2 and 5). Regarding the recitation that a player may move any one of the player tokens in response to the movement instructor generating an instruction to move a token downward along the path, it should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability as outlined in paragraph 11 above. Additionally, Weichselbaum is capable of performing this function.
Regarding claim 37, Weichselbaum discloses the multiplayer game of claim 21, further comprising a basin [12] defining a basin reservoir (interior of tank [12]) configured to hold water for the player to remove with the reservoir filling container (col. 5 lines 23-24: “simple pitcher”) (col. 4 line 63 – col. 5 line 28 and Figures 1-5). Regarding the recitation that a player can remove water with the reservoir filling container, it should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability as outlined in paragraph 11 above. Additionally, Weichselbaum is capable of performing this function.
Regarding claim 38, Weichselbaum discloses the multiplayer game of claim 37, wherein the basin [12] and the mobile playing environment [1] are nestable (see Figure 4; wherein the tank [12] fits within the bottom [20] of pan [2]) and comprise one or more alignment features [27] configured to confirm alignment (col. 5 lines 11-12; wherein uprights [27] permit the tank [12] to move vertically) between the basin [12] and the mobile playing environment [1] (col. 5 lines 4-13 and Figure 4).
Regarding claim 39, Weichselbaum discloses the multiplayer game of claim 22, wherein at least two die faces indicate the same movement instruction (col. 5 line 60 – col. 6 line 5 and Figure 6). Additionally, the italicized claim language amounts to printed matter which is not given patentable weight as outlined in paragraph 11 above.
Regarding claim 40, Weichselbaum discloses a multiplayer game, comprising: a mobile playing environment [1] defining a water reservoir [2] and a path (from Atlantic Ocean [3] to Pacific Ocean [5]) leading down into the reservoir [2]; a reservoir filling container (col. 5 lines 23-24: “simple pitcher”) defining a volume configured to hold a quantity of water for a player to pour into the water reservoir [2] to increase a level of water within the water reservoir [2] and cause the water level to rise along the path (from Atlantic Ocean [3] to Pacific Ocean [5]); player tokens [14] movable to and between various positions along the path (from Atlantic Ocean [3] to Pacific Ocean [5]); a movement instructor (col. 5 lines 49-50: “two dice which are rolled or the use of a spinner”) manipulable by a player to generate an unselected movement instruction (Figure 6) from a limited set of possible instructions comprising moving a token [14] downward along the path (from Atlantic Ocean [3] to Pacific Ocean [5]) and adding water (from tanks [12]) to the reservoir [2]; and a basin [12] defining a basin reservoir (interior of tank [12]) configured to hold water for the player to remove with the reservoir filling container, wherein the basin [12] and the mobile playing environment [1] are nestable (see Figure 4; wherein the tank [12] fits within the bottom [20] of pan [2]) and comprise one or more alignment features [27] configured to confirm alignment (col. 5 lines 11-12; wherein uprights [27] permit the tank [12] to move vertically) between the basin [12] and the mobile playing environment [1] (col. 3 lines 39-41, col. 4 line 28 – col. 6 line 5, and Figures 1-6). Regarding the recitations of a player pouring water into the reservoir to increase a level of water within the reservoir and causing the water level to rise along the path and the limited set of possible instructions comprising moving a token downward along the path and adding water to the reservoir, although disclosed by Weichselbaum, the examiner would like to point out that it should be appreciated that the applicant’s functional language in the claims 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 the recitation that a player can remove water with the reservoir filling container, it should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability as outlined above. Additionally, Weichselbaum is capable of performing this function. Furthermore, regarding the italicized claim language, although disclosed by Weichselbaum, the examiner would like to point out that 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 game boards and pieces. 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 movement instructor 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Weichselbaum.
Regarding claim 29, Weichselbaum is silent as to the volume of the reservoir filling container compared to the total volume of the reservoir. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to choose from a finite number of identified, predictable filling containers (such as a measuring cup, drinking cup, shot glass, bowl, etc.) to use to fill Weichselbaum’s device, including a small container, having less than about 3% of a total volume of the reservoir, with a reasonable expectation of success. Using a small container to fill the device would not change the operation of the device.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Weichselbaum as applied to claim 21 above, and further in view of Piazza et al. (US 2012/0211529 A1; hereinafter Piazza).
Regarding claim 30, Weichselbaum discloses the multiplayer game of claim 21, wherein the reservoir filling container (col. 5 lines 23-24: “simple pitcher”) comprises a pitcher (col. 5 lines 21-28). Weichselbaum does not disclose the reservoir filling container being a ladle. Piazza, however, teaches typical liquid dispensers such as a pitcher or a ladle (paragraphs 0004-0005). 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 ladle as Weichselbaum’s reservoir filling container because Piazza teaches that both pitchers and ladles are known typical liquid dispensers (paragraphs 0004-0005).
Allowable Subject Matter
Claims 28 and 33-35 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 28, the combination including the central portion being adapted to hold the reservoir filling container between uses in the invention as claimed is neither disclosed nor rendered obvious by the prior art. Regarding claim 33, the combination including the game-end segments comprising wedge segments that together form a circle in the invention as claimed is neither disclosed nor rendered obvious by the prior art. Regarding claim 34, the combination including the game termination indicator comprising a circular base that is configured to receive the game-end segments in the invention as claimed is neither disclosed nor rendered obvious by the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Breslow (US 3,754,763), Barlow (US 4,348,028), and Rivet et al. (US 6,412,782 B1) which all disclose similar multiplayer games comprising a water feature.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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