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
Claim 1 is objected to because of the following informalities: On line 2, a board having a plurality of visually distinct designated player areas is expected. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 – 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
I. The claims are drawn to apparatus, process and CRM categories.
II. Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter.
Step 2a:
III. Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Representative claim 1 is analyzed below, with italicized limitations indicating recitations of an abstract idea.
A game comprising: a board having a plurality visually distinct designated playing areas; a set of regular-move pieces for placement on select ones of the designated playing areas, wherein the regular-move pieces are visually differentiated in a manner to identify separate subsets of the regular-move pieces as belonging to first and second players respectively, and for establishing a sequence wherein the first player moves a select one of the regular-move pieces belonging to the first player from one of the designated playing areas to another one of the designated playing areas according to a predetermined limitation specific to the select regular-move piece that is moved by the first player, whereafter the second player moves a select one of the regular-move pieces belonging to the second player from one of the designated playing areas to another one of the designated playing areas according to a predetermined limitation specific to the select regular-move piece that is moved by the second player, and the sequence is subsequently repeated; and a first randomness generator that, upon a predetermined event that occurs due to following the sequence over time, is used to generate a random character out of a set of available characters, wherein each one of the characters signifies a change in the sequence that is to be executed by one of the players, and the change in the sequence differs from one of the available characters to the next, before again commencing the sequence.
The underlined limitations fall within at least three of the groupings of abstract ideas enumerated in the 2019 PEG:
Fundamental economic principles or practices
Commercial or legal interactions
Managing personal behavior or relationships or interactions between people
The claims are directed towards incentivizing the behavior of users playing a game via group agreements or contract. This is viewed by the Examiner as a fundamental economic practice, an agreement in the form of contracts, and managing personal behavior or relationships between people, which are all considered to be abstract ideas according to the 2019 guidelines.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
iii. Although the claims recite additional limitations, such as random generator, the said additional limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations such as an interface and memory components.
iv. These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2b:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional and routine computer implementation and mere instructions for implementing the abstract idea on generic computing devices.
For example, the claim language does recite additional elements such as a random generator, however, viewed as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Viewing the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
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.
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 1 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fowler (U.S. 2010/0072702) in view of Busch et al. (U.S. 2002/0028708).
Regarding claim 1, Fowler discloses a game comprising a board having a plurality of visually distinct designated player areas, (“a top-plan view of an embodiment of a game board on which the Character Type A and Character Type B game pieces may be positioned”, par. 0005), a set of regular move pieces for placement on select ones of the designated playing areas, wherein the regular-move pieces are visually differentiated in a manner to identify separate subsets of the regular-move pieces as belonging to first and second players respectively, and for establishing a sequence wherein the first player moves a select one of the regular-move pieces belonging to the first player from one of the designated playing areas to another one of the designated playing areas according to a predetermined limitation specific to the select regular-move piece that is moved by the first player, whereafter the second player moves a select one of the regular-move pieces belonging to the second player from one of the designated playing areas to another one of the designated playing areas according to a predetermined limitation specific to the select regular-move piece that is moved by the second player, and the sequence is subsequently repeated, (“Chess, where two players each control 16 game pieces, including a king, queen, two rooks, two knights, two bishops, and eight pawns, and move these pieces by taking alternating turns in an attempt to be the first to capture their opponent's king; or Checkers, where two players control 20 game pieces each and take alternating turns in moving diagonally on a 10 square by 10 square checker board, attempting to be the first player to jump over and capture all of the opponents pieces to win the game”, par. 0007).
Fowler, however, is silent on disclosing a randomness generator that generates a random character. In a related art, Busch discloses a game comprising a board, (“chess”, par. 0048), wherein Busch further discloses a randomness generator that is used to generate a random character out of a set of available characters, (“Once a player's piece has been generated by the system, it may be sent to that player's "In-Box". The player may then play the piece on a message board or move it to one of the other boxes listed above”, par. 00120), wherein when combined with the board games disclosed by Fowler, is viewed by the Examiner as being equivalent to at least to the claim limitation of a first randomness generator that, upon a predetermined event that occurs due to following the sequence over time, is used to generate a random character out of a set of available characters, wherein each one of the characters signifies a change in the sequence that is to be executed by one of the players, and the change in the sequence differs from one of the available characters to the next, before again commencing the sequence.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the random generator of Busch into the art disclosed by Fowler in order to create more exciting and uniquely different games, as disclosed by Busch, (par. 0014).
Regarding claim 2, Fowler discloses wherein a first regular-move piece of the regular-move pieces belonging to the first player is movable to capture a first regular-move piece of the regular-move pieces belonging to the second player, (“move these pieces by taking alternating turns in an attempt to be the first to capture their opponent's king”, par. 0007).
Regarding claim 3, Fowler discloses wherein the designated playing form a matrix, (fig. 2).
Regarding claim 4, Fowler discloses wherein the regular-move pieces are visually differentiated by color to identify the regular-move pieces that belong to the first user as having a first color and the regular-move pieces as belonging to the second player as having a second color, (“Chess, where two players each control 16 game pieces”, par. 0007).
Regarding claim 5, Fowler discloses wherein a first regular-move piece of the regular-move pieces belonging to the first player has a first shape to specify a predetermined limitation specific to the first regular-move piece, and a second regular-move piece of the regular-move pieces belonging to the first player has a second shape that is different from the first shape to specify a predetermined limitation specific to the second regular-move piece that is different from the predetermined limitation specific to the first regular-move piece, (“Chess, where two players each control 16 game pieces, including a king, queen, two rooks, two knights, two bishops, and eight pawns, and move these pieces by taking alternating turns in an attempt to be the first to capture their opponent's king”, par. 0007).
Regarding claim 6, Fowler discloses wherein the first shape is one of a Pawn, a Rook, a Knight, a Bishop, a Queen or a King in a game of chess and the second shape is one of a Pawn, a Rook, a Knight, a Bishop, a Queen or a King in a game of chess, (“Chess, where two players each control 16 game pieces, including a king, queen, two rooks, two knights, two bishops, and eight pawns, and move these pieces by taking alternating turns in an attempt to be the first to capture their opponent's king”, par. 0007).
Regarding claims 7 – 9, 12 – 16, and 19, Fowler, as stated above, discloses chess characters, but is silent on disclosing a randomness generator, however, this is met by Busch as cited above.
Regarding claims 10, 11, Fowler discloses wherein a first of the available characters signifies moving, by the first player, a regular-move piece of the first player when it is a turn of the first player in the sequence to move a regular-move piece, (“Chess, where two players each control 16 game pieces”, par. 0007).
Regarding claims 17 and 20, Fowler discloses a processor; a computer-readable medium connected to the processor; a set of instructions on the computer-readable medium and executable by the processor, including a game, (“an electronic version of the game”, par. 0025).
Regarding claim 18, Fowler discloses a method of playing a game, (“a top-plan view of an embodiment of a game board on which the Character Type A and Character Type B game pieces may be positioned”, par. 0005), comprising placing a set of regular move pieces are visually differentiated in a manner to identify separate subsets of the regular-move pieces as belonging to first and second players respectively, and for establishing a sequence wherein the first player moves a select one of the regular-move pieces belonging to the first player from one of the designated playing areas to another one of the designated playing areas according to a predetermined limitation specific to the select regular-move piece that is moved by the first player, whereafter the second player moves a select one of the regular-move pieces belonging to the second player from one of the designated playing areas to another one of the designated playing areas according to a predetermined limitation specific to the select regular-move piece that is moved by the second player, and the sequence is subsequently repeated, (“Chess, where two players each control 16 game pieces, including a king, queen, two rooks, two knights, two bishops, and eight pawns, and move these pieces by taking alternating turns in an attempt to be the first to capture their opponent's king; or Checkers, where two players control 20 game pieces each and take alternating turns in moving diagonally on a 10 square by 10 square checker board, attempting to be the first player to jump over and capture all of the opponents pieces to win the game”, par. 0007).
As stated above, Fowler is silent on disclosing a randomness generator that generates a random character. In a related art, Busch discloses a game comprising a board, (“chess”, par. 0048), wherein Busch further discloses a randomness generator that is used to generate a random character out of a set of available characters, (“Once a player's piece has been generated by the system, it may be sent to that player's "In-Box". The player may then play the piece on a message board or move it to one of the other boxes listed above”, par. 00120), wherein when combined with the board games disclosed by Fowler, is viewed by the Examiner as being equivalent to at least to the claim limitation of a first randomness generator that, upon a predetermined event that occurs due to following the sequence over time, is used to generate a random character out of a set of available characters, wherein each one of the characters signifies a change in the sequence that is to be executed by one of the players, and the change in the sequence differs from one of the available characters to the next, before again commencing the sequence.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the random generator of Busch into the art disclosed by Fowler in order to create more exciting and uniquely different games, as disclosed by Busch, (par. 0014).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC M THOMAS whose telephone number is (571)272-1699. The examiner can normally be reached 9:00am - 5:00pm.
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/E.M.T/Examiner, Art Unit 3715 /DAVID L LEWIS/Supervisory Patent Examiner, Art Unit 3715