DETAILED ACTION
In paragraph [0036], “48” and “52” have been used to designate upper game pieces; ”52” is used to designate upper game pieces as well as lower game pieces; “52” and “54” have been used to designate lower game pieces.
In claim 1, line 3, --another-- should be added before “game board” (first occurrence).
In claim 18, line 3, --surface-- should be added after “outer”.
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 Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 5,556,094 (Shiledar Baxi).
Regarding claims 1-3, Figures 1-3 of Shiledar Baxi show a foldable game board apparatus with the recited two game boards 28, end walls 20,22, sidewalls 19,21, inner walls 30,32,34,36. Figures 1 and 7 of Shiledar Baxi show pivotal members 110,112 that permit the game boards to pivot from an expanded position (Figure 1) into a closed position (Figure 7). Because Figure 1 of Shiledar Baxi shows the game boards being recessed due to the height of the inner walls, a storage space is inherently created when the game board apparatus is in a closed position. Although Shiledar Baxi shows the pivotal members to be on the sidewall, it would have been an obvious matter of design choice to place the pivotal members on the inner wall, since such a modification would have involved a mere change in the location of an element. To shift the location of parts is generally recognized as being within the level of ordinary skill in the art. See In re Japikse, 86 USPQ 70.
Regarding claims 4-6, Figures 1 and 2 of Shiledar Baxi shows an opening 86 beneath the sidewalls to connect a leg 82 to the game boards. Although Shiledar Baxi does not explicitly show an opening on each opposing edge of the end walls and the sidewalls, it would have been obvious to one having ordinary skill in the art to place openings on each opposing edge to connect legs all around the game board for better stability and support and it has been held to be within the general skill of a worker in the art to duplicate parts for a multiple effect as a matter of obvious engineering choice. See St. Regis Paper Co. v. Bemis Co., Inc., 193 USPQ 8.
Regarding claims 9-11, Figures 5 and 6 of Shiledar Baxi show game pieces 88 and game elements 90.
Claims 7, 8 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Shiledar Baxi in view of U.S. Patent Number 6,764,074 (Bangerter).
Regarding claims 7, 8 and 19, Shiledar Baxi does not show the recited inner walls. Bangerter shows a foldable game board with inner walls 22 to divide the playing area. See Bangerter, Figures 2-4 and 6. Therefore, it would have been recognized by one of ordinary skill in the art that applying the known technique taught by Bangerter to the game of Shiledar Baxi would have yielded predictable results and resulted in an improved game, namely, a game with a central obstacle to increase the difficulty of the game by requiring the players to strategically pass the playing piece through particular passages. Also, see Bangerter, column 5, lines 6-20.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Shiledar Baxi as applied above in view of U.S. Patent Application Publication Number 2006/0055106 (Cohen).
Regarding claims 12 and 13, Shiledar Baxi does not disclose the recited game pieces having magnets. Cohen discloses the concept of using magnets 155 in combination with game pieces 75,80,85,90,95,100 positioned above and below the game board 30,35. See Cohen, Figure 2; paragraphs [0037] and [0038]. To provide the device of Shiledar Baxi with magnetic game pieces would have been obvious to one of ordinary skill in the art, in view of the teachings of Cohen, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention, i.e., one skilled in the art would have recognized that the magnetic pieces used in Cohen would allow the game to be played with separate top and bottom pieces. Also, see Cohen, paragraph [0022].
Regarding claims 14 and 15, the Shiledar Baxi legs clearly raise the game board above a floor.
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Shiledar Baxi and Cohen as applied above in view of U.S. Patent Application Publication Number 2021/0267367 (Olsson).
Regarding claim 16, neither Shiledar Baxi nor Cohen shows the recited cross piece. Olsson discloses that table support legs 30 are known in the table art to be further supported by a cross piece 32. See Olsson, Figures 1 and 4. The substitution of one known element (table legs with a cross piece as shown in Olsson) for another (table legs without a cross piece as shown in Shiledar Baxi) would have been obvious to one of ordinary skill in the art at the time of the invention since the substitution of the cross piece shown in Olsson would have yielded predictable results, namely a more stable and better supported table.
Regarding claim 17, Figure 2 of Shiledar Baxi clearly shows the legs to be removable. Although Shiledar Baxi does not disclose that the storage space created when the game boards are folded is explicitly used for storing the legs and cross piece as modified above, it would have been obvious to change the size of that storage space to be inherently capable of storing the legs, since it has generally been recognized that changing the size of an element involves only routine skill in the art. See In re Rose, 105 USPQ 237.
Regarding claim 18, Figure 7 of Shiledar Baxi shows the folded position of the game boards wherein the playing surfaces define the storage space and the “bottom” side of the playing surfaces form the outer surface.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Shiledar Baxi and Bangerter as applied above in view of Cohen as applied above.
Shiledar Baxi does not disclose the recited game pieces having magnets. Cohen discloses the concept of using magnets 155 in combination with game pieces 75,80,85,90,95,100 positioned above and below the game board 30,35. See Cohen, Figure 2; paragraphs [0037] and [0038]. To provide the device of Shiledar Baxi as modified above with magnetic game pieces would have been obvious to one of ordinary skill in the art, in view of the teachings of Cohen, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention, i.e., one skilled in the art would have recognized that the magnetic pieces used in Cohen would allow the game to be played with separate top and bottom pieces. Also, see Cohen, paragraph [0022].
Response to Arguments
Applicant's arguments filed 18 April 2026 have been fully considered but they are not persuasive.
Applicant argues that the “claimed location of the pivotal member on the inner wall is not mere design choice but is critical to the function of forming the storage space when the apparatus is folded” and that “edges 26 of end walls 12, 14, sidewalls 16, 18, and edges 72 of the internal medial walls 58, 60 move toward each other and contact each other to form a closed storage space 74” (emphasis included). See Remarks, page 8. However, it is noted that Figures 1 and 7 of Shiledar Baxi show that when the apparatus is folded, the edges of end walls 20,22, sidewalls 19,21 move toward each other (and because playing surface 28 is lower than the top surface of end walls 20,22 and sidewalls 19,21), and form a closed storage space as well. As such, the examiner remains of the opinion that the claimed location of the pivotal member is not critical and the selection of the location of the pivotal member would have been obvious from the reasons expressed above.
Applicant also argues that “Shiledar Baxi’s hinges 110, 112 are disposed on the frame itself, not on inner walls”, serves a different structural purpose and “the inner walls [of the claimed configuration] themselves participate in forming the boundaries of the storage space when folded”. See Remarks, page 9. However, as similarly set forth above, the Shiledar Baxi hinges, in combination with the height of the end walls and sidewalls, create a cavity that inherently produces a storage space when the apparatus frame portions are folded.
The comments regarding claims 7, 8 and 12-20 are repeated. No specific arguments have been directed against the rejection of the claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 Raleigh Chiu whose telephone number is (571) 272-4408. The examiner can normally be reached on Monday-Tuesday.
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the commentary on policy (MPEP). Therefore, no telephone discussion may be controlling or considered authority of Petitioner’s/Caller’s action(s).
/RALEIGH W CHIU/ Primary Examiner, Art Unit 3711
