DETAILED ACTION
This Office action is in response to amendments received 8 September 2026.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8 September 2026 was filed after the mailing date of the Non-Final Rejection on 6 May 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings were received on 19 April 2024. These drawings are accepted.
Claim Objections
Claims 12-20 are objected to because of the following informalities: Regarding claim 12, the status identifier is incorrect. The status identifier should be “Currently Amended” not “Original.” 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 12-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 12-20 are directed to an idea in the form of rules for playing a game. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a game board and a set of projectiles do not add a meaningful limitation to the abstract idea because they are routine in tossing games. These claims are essentially an abstract idea in the form of rules for participating in/playing a game.
Under step 2A, prong I, claims 12 and 14 recite providing additional elements including a game board, a first set of projectiles, and a second set of projectiles. The rest of the limitations are directed towards the abstract idea of organizing human activity with the limitations directed toward different phases of playing a game. These steps describe the concept of steps and rules for playing/participating in a game. This is similar to the concepts held to be abstract by the courts in In re Brown, 645 Fed. Appx. 1014 (Fed Cir. 2016). Non-precedential with opinion. In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016), and In re Webb, 609 Fed. Appx. 643 (Fed. Cir. 2015), where steps for performing a task and steps for playing a game were held to be patent ineligible. Another example of a claim reciting following rules or instructions is In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. The Federal Circuit determined that the claims were directed to the abstract idea of "rules for playing games," which the court characterized as a certain method of organizing human activity. See MPEP 2106.04(a)(2) II C. Thus the examiner interprets the limitations of claims 12-20 to fall under methods of organizing human activity in the form of rules for playing a game such that the claims recite an abstract idea.
Under step 2A, prong II, the abstract idea is not integrated into a practical application. The rules to the game are applied using general gaming technology as opposed to a particular machine. There is no improvement to any functioning of computer technology. No transformation or reduction of a particular article occurs. The rules are generally linked to gaming technology elements.
Under step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The additional elements of a game board, a first set of projectiles, and a second set of projectiles are recited at a high level of generality and perform generic functions widely prevalent in the game art. Thus, taken alone, the additional elements do not amount to significantly more than the above identified judicial exception (the abstract idea). Looking at the additional elements in an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is nothing particular to the game board, the first set of projectiles, or the second set of projectiles, or how they interact, that makes them specific to this method. They are simply conventional game board elements present in nearly all tossing games. The claims, as a whole, are directed to the abstract concept of rules for participating in/playing a game. These abstract concepts are not patent eligible.
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.
Claims 1, 5-7, 10, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson (US 4,726,591).
Regarding claim 1, Johson discloses a game board [10] comprising: a top panel [34] having an upper surface with a target area [12] and a surrounding area (see solid front face [34]), the top panel [34] having a front side [A] (see annotated partial Figure 1 below for all reference letters), a back side [B] opposite the front side [A], a first lateral side [C], and a second lateral side [D] opposite the first lateral side [C]; a frame [E] (see triangular side panels and rear panel of housing [11]) supporting the top panel [34] such that, when the game board [10] is placed on a support surface (ground), the top panel [34] is inclined upwardly from the front side [A] toward the back side [B], the front side [A] defining a lower end of the top panel [34] and the back side [B] defining an upper end of the top panel [34]; and a plank [F] (see horizontal ledge which contains slot [36]) that extends out from the back side [B] of the top panel [34] (col. 2 lines 4-32, Figures 1-5, and annotated partial Figure 1 below).
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Regarding claim 5, Johnson discloses the game board of claim 1, wherein the plank [F] is fixed to the top panel [34] (annotated Figure 1 above).
Regarding claim 6, Johnson discloses the game board of claim 1, wherein the surrounding area (see solid front face [34]) comprises a first surrounding area (e.g., see lower half of front face [34] which contains targets [14, 16, 18]) and a second surrounding area (e.g., see upper half of front face [34] which contains target [12]) (Figures 1 and 3).
Regarding claim 7, Johnson discloses the game board of claim 1, wherein the frame [E] is a tapered frame that supports the top panel [34] (annotated partial Figure 1 above).
Regarding claim 10, Johnson discloses a game comprising: the game board [10] of claim 1; and a projectile [24, 36, 30, 32] (col. 2 lines 9-32 and Figures 1-5).
Regarding claim 12, Johnson discloses a method of playing the game of claim 10, the method comprising: arranging a first game board [10] a distance away from a throwing location; and playing a round of the game, the round comprising: selecting a player from a first team to throw a first projectile [24, 32] from a first set of projectiles onto the first game board [10] while standing behind the throwing location (col. 2 lines 9-32, claim 1, and Figures 1 and 4-5).
Claims 1, 5-8, 10, and 12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Skala (US 2019/0009156 A1).
Regarding claim 1, Skala discloses a game board [100] comprising: a top panel [105] having an upper surface with a target area (e.g., the center of landing zone [105]) and a surrounding area (e.g., the periphery of landing zone [105]), the top panel [105] having a front side [132], a back side (see [111] in Figure 2) opposite the front side [132], a first lateral side [180], and a second lateral side [185] opposite the first lateral side [180]; a frame [140, 141, 240, 241] (also see peripheral sides of game board [100] in Figures 1 and 6) supporting the top panel [105] such that, when the game board [100] is placed on a support surface [190], the top panel [105] is inclined upwardly from the front side [132] toward the back side (see [111] in Figure 2), the front side [132] defining a lower end of the top panel [105] and the back side (see [111] in Figure 2) defining an upper end of the top panel [105]; and a plank [110] that extends out from the back side (see [111] in Figure 2) of the top panel [105] (paragraphs 0029-0032 and Figures 1-3, 5-6, and 10-11).
Regarding claim 5, Skala discloses the game board of claim 1, wherein the plank [110] is fixed to the top panel [105] (paragraph 0029 and Figures 1-2).
Regarding claim 6, Skala discloses the game board of claim 1, wherein the surrounding area (e.g., the periphery of landing zone [105]) comprises a first surrounding area (e.g., a top half of periphery) and a second surrounding area (e.g., a bottom half of periphery) (Figure 1).
Regarding claim 7, Skala discloses the game board of claim 1, wherein the frame [140, 141, 240, 241] (also see peripheral sides of game board [100] in Figures 1 and 6) is a tapered frame that supports the top panel [105] (paragraphs 0029-0030 and Figures 1 and 6).
Regarding claim 8, Skala discloses the game board of claim 1, wherein the top panel [105] is oriented parallel with respect to the plank [110] (Figures 1-2 and 6).
Regarding claim 10, Skala discloses a game comprising: the game board [100] of claim 1; and a projectile [400] (paragraphs 0029, 0032, and Figures 10-11).
Regarding claim 12, Skala discloses a method of playing the game of claim 10, the method comprising: arranging a first game board [100] a distance away from a throwing location; and playing a round of the game, the round comprising: selecting a player [300, 310] from a first team to throw a first projectile [400] from a first set of projectiles onto the first game board [100] while standing behind the throwing location (paragraphs 0032 and Figures 10-11).
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.
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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson as applied to claim 1 above, and further in view of Bailey (US 2025/0099830 A1). Although the application claims priority to provisional application 63/497,302 which was filed 20 April 2023, the provisional application does not provide support for the top panel comprising an aluminum composite material such that the priority date of claim 9 is the date the application was actually filed, 19 April 2024. Thus, Bailey constitutes prior art.
Regarding claim 9, Johnson does not disclose the top panel comprising an aluminum composite material. Bailey, however, teaches a similar game board for a tossing game (Figure 1) comprising a top panel, wherein the top panel comprises an aluminum composite material (paragraphs 0008, 0026-0049, and Figure 1). 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 an aluminum composite material for Johnson’s top panel because Bailey teaches that this material has environmental resistance properties, maintains its shape and structural integrity, and is sound and vibration dampening (paragraphs 0027-0047).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson as applied to claim 10 above, and further in view of Deutsch (US 2022/0072400 A1).
Regarding claim 11, Johnson discloses the game of claim 10, wherein the projectile [24] is a projectile with filler material (beans) arranged therein (col. 2 lines 12-13 and Figure 1). Johnson does not disclose the projectile being inflated. Deutsch, however, teaches a similar projectile [170] for a tossing game [100], wherein the projectile [170] is an inflated projectile with filler material (paragraph 0030: “inflatable and/or weighted bags”) arranged therein (paragraph 0030 and Figure 2). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure Johnson’s projectiles to be inflated projectiles with filler material because Deutsch teaches that this type of projectile is known in the art for playing tossing games (paragraph 0030). Additionally, this amounts to a simple substitution of one known element for another to obtain predictable results.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Skala as applied to claim 1 above, and further in view of Bailey.
Regarding claim 9, Skala does not disclose the top panel comprising an aluminum composite material. Bailey, however, teaches a similar game board for a tossing game (Figure 1) comprising a top panel, wherein the top panel comprises an aluminum composite material (paragraphs 0008, 0026-0049, and Figure 1). 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 an aluminum composite material for Skala’s top panel because Bailey teaches that this material has environmental resistance properties, maintains its shape and structural integrity, and is sound and vibration dampening (paragraphs 0027-0047).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Skala as applied to claim 10 above, and further in view of Deutsch.
Regarding claim 11, Skala discloses that bean bags are known projectiles in the art (paragraph 0004) but does not disclose the projectile being inflated Deutsch, however, teaches a similar projectile [170] for a tossing game [100], wherein the projectile [170] is an inflated projectile with filler material (paragraph 0030: “inflatable and/or weighted bags”) arranged therein (paragraph 0030 and Figure 2). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure Skala’s projectiles to be inflated projectiles with filler material because Deutsch teaches that this type of projectile is known in the art for playing tossing games (paragraph 0030). Additionally, this amounts to a simple substitution of one known element for another to obtain predictable results.
Additional Subject Matter
Claims 13-20 are not rejected under art; however, they are rejected under 35 U.S.C. 101 and are therefore not allowable.
Allowable Subject Matter
Claims 21-22 are allowed.
Claim 2 is 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 2, the combination including the plank being arranged within a slit in the game board under the top panel of the game board, wherein the plank may be extended or retracted within the slit in the invention as claimed is neither disclosed nor rendered obvious by the prior art. Regarding claim 21, the combination including a plank being arranged within a slit in the game board under the top panel, the plank being movable within the slit between a retracted position and an extended position in the invention as claimed is neither disclosed nor rendered obvious by the prior art.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, newly found art to Johnson and Skala has been introduced as outlined above.
Applicant's arguments filed 8 September 2026 have been fully considered but they are not persuasive. Regarding pages 10-11 of the Remarks, the applicant argued that the method claims should not be rejected under 35 U.S.C. 101 because they require a particular game board and not just any generic game board. The game board is integral to the claimed method because the players throw projectiles onto specific physical portions of that particular board, including the target area, surrounding area, and plank. The examiner disagrees. Under step 2A, prong I, claim 12 recites rules for conducting a toss game (arranging players and a target, selecting who throws, throwing from behind a line). This is a method of organizing human activity (following rules/managing interactions between people). Under step 2A, prong II, and step 2B, the extra elements are conventional setup and throwing steps plus use of a particular target. Per MPEP 2106.05(b), a machine helps integrate a judicial exception into a practical application only if it is integral to performing the method, not merely the object the method is performed on. Claim 12 does not require any interaction that only the top panel and/or plank can provide. Every recited step could be performed on a flat board, a cornhole board, or a table. The plank is not used in a claimed physical way. Dependent claims 13-20 add scoring by zone, cancellation scoring, extra rounds, etc. These are classic game rules that are abstract ideas, not inventive concepts. As such, claims 12-20 are still rejected under 35 U.S.C. 101 as outlined above.
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 AUDREY B. WALTER whose telephone number is (571)270-5286. The examiner can normally be reached Monday - Friday: 8:30 am - 4:30 pm.
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/AUDREY B. WALTER/Primary Examiner, Art Unit 3711
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