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 .
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.
Response to Amendment
The amendment filed on June 30, 2026 has been entered. Claims 1, 9, 18, and 19 have been amended. New claim 21 has been added. Claims 8 and 17 have been cancelled.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Melgoza, US 2013/0105492.
Regarding claim 21, Melgoza discloses a placemat (Fig. 1 #10); a magnetic rack (defined by Meriam Webster’s Dictionary as “a framework, stand, or grating on or in which articles are placed”) coupled to the placemat (Fig. 2A #M1, ¶0034); wherein the magnetic rack is raised above an upper or lower surface of the placement (Fig. 2A #M1, where the magnetic material is located on top of the bottom layer #30 of the placement) and a plurality of cups each including a magnetically attractable element (Fig. 7A #M5) coupled to a base of each of the plurality of cups, the plurality of cups being adapted to couple to the magnetic rack through the magnetically attractable element (¶0044, ¶0048). It is noted that the preamble limitations of “a game kit for playing a ball and cup game” is considered intended use and Melgoza’s magnetic tableware is capable of being a game kit for playing a ball and cup game.
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.
Claim(s) 1-3, 5, 6, 9-13, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over McDonnell (US 9,010,759 B2) in view of Melgoza (US 2013/0105492 A1) in further view of Silwy Magnetic System (You Tube https//www.youtube.com/watch?v= f-3rlQ3YKR4&t=12s).
Regarding claim 1, McDonnell discloses a game kit for playing a ball and cup game including a magnetic rack, wherein the magnetic rack has a generally triangular shape (McDonnell Fig. 1 #72) (defined by Meriam Webster’s Dictionary as “a framework, stand, or grating on or in which articles are placed”); and a plurality of cups (McDonnell Figs 2 & 3 #70) each including a magnetically attractable element (McDonnell Fig. 5 #76) coupled to a base of each of the plurality of cups, the plurality of cups being adapted to couple to the magnetic rack through the magnetically attractable element (McDonnell Fig. 1).
McDonnell lacks in disclosing that the magnetic rack is coupled to a placemat. Melgoza discloses a magnetic placemat for magnetically attracting dishware and other items to the placemat (Figs 1, 2A). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the game kit include a placemat and couple the magnetic rack of McDonnell to the placemat of Melgoza. By including the magnetic rack on a placemat any spill of liquid from the cups could easily be cleaned up and the table on which the game is being played can protected.
McDonnell further lacks in disclosing that the whole magnetic rack is constructed from a magnetically attractable material. Silwy Magnetic System teaches of a magnetic mat that can be cut into any shape including triangular and the whole magnetic rack is constructed of magnetically attractable material (see Silwy Magnetic System transcript). It would have been obvious to one of ordinary skill in the art at the time the invention was made to make the entire magnetic mat of McDonnell out of magnetically attractable material in order to position the cups for the ball in cup game at any location on the mat. By allowing the cups to be placed anywhere on the mat different configurations of the cups can be created for the game making a more the game more enjoyable to players. Furthermore, by having the whole magnetic rack made of magnetic material, a stronger magnetic force would be created to retain the cups throughout game play.
Regarding claim 2, McDonnell further discloses at least one magnetic holder separate from the placemat and the magnetic rack (McDonnell Fig. 48, 49 #70 is a cup that is magnetic and can hold plastic cups #106). It is noted that the placement of the at least one magnetic holder being positioned adjacent the placemat is intended use not differentiating a structural difference from the game of McDonnell and the game of McDonnell is capable of being positioned adjacent a placemat.
Regarding claim 3, McDonnell further discloses wherein the magnetic holder (McDonnell Fig. 48, 49 #70) comprises an inner component constructed from a magnetically attractable material (McDonnell Fig. 48, 49 #76) and an outer component covering the inner component and constructed from a non-magnetically attractable material (McDonnell col. 11 lines 18-25).
Regarding claim 5, McDonnell further discloses wherein the plurality of cups are adapted to couple to the magnetic holder through the magnetically attractable element of each of the plurality of cups (McDonnell Fig. 5 #76).
Regarding claim 6, Melgoza discloses wherein the placemat is a rectangularly shaped placemat, and wherein the placemat is constructed from a non-magnetically attractable material, i.e. vinyl (Fig. 1, ¶0035). As noted for claim 1, it is obvious to attach the magnetic rack of McDonnell to the placemat of Melgoza so that any spills of liquid from the cups could easily be cleaned up and the table on which the game is being played can protected.
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Regarding claims 9-13, please refer to annotated Fig 6 of McDonnell where parts of #72 may be considered to be the first and second support members.
Regarding claims 9, McDonnell further discloses wherein the magnetic rack includes a first support member and a second support member, and wherein the first support member is oriented perpendicular to the second support member. (See annotated Fig 6 of McDonnell where parts of #72 may be considered to be the first and second support members).
Regarding claims 10, McDonnell further discloses wherein the first support member extends from a flat side to a point of the of the triangularly shaped magnetic rack. (See annotated Fig 6 of McDonnell where parts of #72 may be considered to be the first and second support members).
Regarding claims 11, McDonnell further discloses wherein the first support member is oriented perpendicular to the flat side of the triangularly shaped magnetic rack. (See annotated Fig 6 of McDonnell where parts of #72 may be considered to be the first and second support members).
Regarding claims 12, McDonnell further discloses wherein the second support member extends from a first angled side to a second angled side of the triangularly shaped magnetic rack. (See annotated Fig 6 of McDonnell where parts of #72 may be considered to be the first and second support members).
Regarding claims 13, McDonnell further discloses wherein the second support member is oriented non-parallel and non-perpendicular to the first angled side and the second angled side of the triangularly shaped magnetic rack. (See annotated Fig 6 of McDonnell where parts of #72 may be considered to be the first and second support members).
Alternatively with respect to claims 9-13, if one does not interpret element #72 of McDonnell as having first and second supporting members, the Silwy Magnetic System teaches of a magnetic mat structure that may be cut into any shape (see Silwy Magnetic System transcript). It would be obvious to one of ordinary skill in the art at the time the invention was filed to use the mat of Silwy as element 72 in the game of McDonnell. It would have been obvious to therefore, cut the mat of Silwy into a triangular shape with first and second support members positioned as defined in claims 9-13 so as to reduce mass and weight of the magnetic mat for game play as the magnetic mat functions exactly the same for game play by coupling the cups to the magnetic surface. It is noted that a change in size or shape of a device is obvious In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 19, McDonnell discloses a game kit for playing a ball and cup game including a magnetic rack, wherein the magnetic rack has a generally triangular shape (McDonnell Fig. 1 #72) (defined by Meriam Webster’s Dictionary as “a framework, stand, or grating on or in which articles are placed”); and a plurality of cups (McDonnell Figs 2 & 3 #70) each including a magnetically attractable element (McDonnell Fig. 5 #76) coupled to a base of each of the plurality of cups, the plurality of cups being adapted to couple to the magnetic rack through the magnetically attractable element (McDonnell Fig. 1). McDonnell further discloses wherein the magnetic rack is centered about a width of a table, i.e. which can be considered a placemat, and wherein the magnetic rack is non-centered about a length of the table (McDonnell Fig.33, i.e. the magnetic portion of the table is centered about the width of the table and is off to one side of the table, i.e. non-centered length wise).
McDonnell lacks in disclosing that the magnetic rack is coupled to a placemat. Melgoza discloses a magnetic placemat for magnetically attracting dishware and other items to the placemat (Figs 1, 2A). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the game kit include a placemat and couple the magnetic rack of McDonnell to the placemat of Melgoza. By including the magnetic rack on a placemat any spill of liquid from the cups could easily be cleaned up and the table on which the game is being played can protected.
Regarding claim 20, McDonnell further discloses wherein the magnetic rack is positioned closer to a first end of the table in a lengthwise direction (McDonnell Fig.33). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to only have one magnetic rack in the table embodiment of McDonnell which would have the magnetic rack positioned closer to a first end of the placemat than positioned to a second end of the placemat in a lengthwise direction so that players play the game from just one side of the table.
Claim(s) 1, 6 and 14-16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Melgoza (US 2013/0105492 A1) in further view of Silwy Magnetic System (You Tube https//www.youtube.com/watch?v= f-3rlQ3YKR4&t=12s).
Regarding claim 1, Melgoza discloses a placemat (Fig. 1 #10); a magnetic rack (defined by Meriam Webster’s Dictionary as “a framework, stand, or grating on or in which articles are placed”) coupled to the placemat wherein the whole magnetic rack is constructed from a magnetically attractable material (Fig. 2A #M1, ¶0034, ¶0035, ¶0036); and a plurality of cups each including a magnetically attractable element (Fig. 7A #M5) coupled to a base of each of the plurality of cups, the plurality of cups being adapted to couple to the magnetic rack through the magnetically attractable element (¶0044, ¶0048). It is noted that the preamble limitations of “a game kit for playing a ball and cup game” is considered intended use and Melgoza’s magnetic tableware is capable of being a game kit for playing a ball and cup game.
Melgoza lacks in disclosing that the magnetic rack has a generally triangular shape. Silwy Magnetic System teaches of a magnetic mat structure that may be cut into any shape (see Silwy Magnetic System transcript). It would be obvious to one of ordinary skill in the art at the time the invention was filed to use the mat of Silwy as element M1 in the placemat of Melgoza. It would have been obvious to cut the mat of Silwy into a triangular shape. Having the shape of the magnetic rack be either rectangular or triangular is a design choice, as the purpose of the magnetic rack to attach cups to it is the same whether in a rectangular or triangular shape. It is noted that a change in size or shape of a device is obvious. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 6, Melgoza discloses wherein the placemat is a rectangularly shaped placemat, and wherein the placemat is constructed from a non-magnetically attractable material, i.e. vinyl (Fig. 1, ¶0035).
Regarding claim 14, Melgoza discloses wherein the magnetic rack is positioned between a first layer and a second layer of the placemat (Fig. 2A, M1, #20, #30, ¶0035)
Regarding claim 15, Melgoza discloses wherein the magnetic rack is free from direct contact with the plurality of magnetic cups when the plurality of magnetic cups are coupled to the magnetic rack (Fig. 2A, 11A, i.e. the vinyl separates the cups from item M1).
Regarding claim 16, Melgoza discloses wherein the magnetic rack is raised above the first layer or the second layer of the placemat when the magnetic rack is coupled to the placemat between the first layer and the second layer of the placemat (Fig. 2A, ¶0035, M1 is located above the bottom layer of the placemat).
Regarding claim 18, Melgoza discloses wherein the magnetic rack is constructed from an alloy steel (¶0035).
Claim(s) 4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over McDonnell in view of Melgoza in view Silwy in further view of Fynbo et al. (US 10,470,599).
Regarding claim 4, McDonnell discloses that the inner component is magnetic and can be constructed of a variety of different magnetic materials including iron, nickel, cobalt or ferromagnetic or ferrimagnetic material (McDonnell col. 5 lines 20-39). It is known that alloy steel can be made of iron and is primarily ferromagnetic. Therefore, it would have been obvious that to use alloy steel in the invention of McDonnell as any type of magnetic material may be used. McDonnell further discloses that the outer component can also be constructed of a variety of non-magnetic materials (McDonnell col. 11 lines 18-25). McDonnell lacks in specifically stating that the outer material is silicone. Fynbo teaches of a placemat that is constructed from a silicone material (Fynbo Fig 2A, col. 2 lines 32-35). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the outer component, i.e. cup #70 of McDonnell out of silicone. McDonnell states any type of appropriate material may be used and silicone is a durable material that can easily be cleaned and can be rated food grade; therefore, it would have been obvious to use silicone around cups and drinks.
Regarding claim 7, Melgoza lacks in disclosing the placemat is constructed from a silicone material. Fynbo teaches of a placemat that is constructed from a silicone material (Fynbo Fig 2A, col. 2 lines 32-35). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the placemat of Melgoza out of silicone. Silicone is a durable material that can easily be cleaned and can be rated food grade; therefore, it would have been obvious to use silicone in a placemat that is around food.
Alternatively claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Melgoza in view Silwy in further view of Fynbo et al. (US 10,470,599). Melgoza lacks in disclosing the placemat is constructed from a silicone material. Fynbo teaches of a placemat that is constructed from a silicone material (Fynbo Fig 2A, col. 2 lines 32-35). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to construct the placemat of Melgoza out of silicone. Silicone is a durable material that can easily be cleaned and can be rated food grade; therefore, it would have been obvious to use silicone in a placemat that is around food.
Response to Arguments
Applicant's arguments filed June 30, 2026 have been fully considered but they are not persuasive.
With respect to claim 1, Applicant argues that Melgoza does not teach a triangular magnetic rack. The examiner agrees, and notes that both McDonnell and Silwy teach this claim limitation. Furthermore, Silwy discloses where the whole rack is constructed from magnetically attractable material.
With respect to claim 19, Applicant argues that none of the cited references disclose the specific positional relationship in which the magnetic rack is centered about a width or the placemat and non-centered about the length of the placemat. It is noted that Figure 33 of McDonnell teaches this claim limitation in reference when the magnetic rack 72 may be in the form of a table and the magnetic rack components are centered as claimed with respect to the length and width of the table. It is further noted that a table as shown in Figure 33 can be considered a placemat. Nevertheless, the rejection above illustrates how the rack of McDonnell or Silwy can be incorporated into a placemat as taught by Melgoza.
With respect to claim 21, Applicant argues that Melgoza discloses that the metal plates are concealed or sandwiched between placemat layers and thus are not a magnetic rack raised above a surface of the placemat. The Examiner disagrees and notes that when the metal plate of Melgoza is on top of surface 30 of the placemat, i.e. the bottom surface, it is considered to be raised above a surface of the placemat as it is in a higher location than the bottom placemat surface.
Furthermore, Applicant argues that McDonnell does not disclose a placemat raised above a placemat surface. As noted in the office action above, it is obvious to place the pad 72 of McDonnell on any placemat, i.e. thereby raising it above the placemat surface, so as to catch any spills from the cups on the placemat for easy clean up.
In response to applicant's argument that Melgoza does not disclose a cup and ball game, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIE K BROCKETTI whose telephone number is (571)272-0206. The examiner can normally be reached M-Th 8:00 a.m. - 5:00 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Barrett can be reached at 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIE K BROCKETTI/Primary Examiner, Art Unit 3700
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