DETAILED ACTION
Claim Rejections - 35 USC § 112
1. 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 15-17 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. It is unclear if claim 15 depends from claim 1, such that it comprises a scope including the limitations of claim 1. For examining purposes, claim 15 will be construed to comprise a scope that incorporates the limitations of claim 1. This is consistent with the view taken in parent application 17/442516. Applicant should provide clarity to this issue, even upon making amendments to claim 15. Claims 16-17 are rejected based on their dependent to 15.
Claim Interpretation
2. 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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “magnetic … connection means” and “mechanic connection means” in claims 11-12.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 102
3. 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 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 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.
4. Claims 1-4, 7-8, 14-15 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kraegeloh et al. (US Pub. No. 2011/0272884).
With respect to claims 1-4, Kraegeloh et al. teaches a gaming unit 12/16/18 for a gaming system, the gaming system comprising the gaming unit and a plurality of playing pieces, each playing piece of the plurality of playing pieces comprising a magnet and having an identifier (identified using “position determination means 14”), wherein the gaming unit comprises: a play zone 12 (“transport surface”) for arranging one or more playing pieces 10 of the plurality of playing pieces on the gaming unit (Fig.’s 9A-9B; 10A-10C; paragraphs [0065], [0096]); a control unit 18 (paragraph [0067]); and a first magnetic unit 16 configured to generate or alter a magnetic field for magnetically affecting one or more playing pieces 10 arranged in the play zone 10 (Fig.’s 10A-10C; paragraphs [0096]-[0100]), the first magnetic unit 16 being operationally connected to the control unit 18, wherein the control unit 18 is configured to detect the identifier 14 of a playing piece arranged in the play zone 12 and responsive to the detection of one more particular identifiers 14 generate a control signal controlling the first magnetic unit 16 to generate or alter a magnetic field thereby magnetically affecting one or more playing pieces 10 in the play zone (paragraphs [0067], [0095]-[0100]), wherein the first magnetic unit 16 is configured to magnetically affect the one more playing pieces 10 in the play zone 12 by magnetically repelling the one or more playing pieces 10 (paragraphs [0095]-[0096]), wherein the first magnetic unit 16 is configured to magnetically affect the one more playing pieces 10 in the play zone 12 by magnetically attracting the one or more playing pieces Id; wherein the first magnetic unit 16 is configured to physically move the one or more playing pieces 10 arranged in the play zone 12 Id.
With respect to claims 7-8, Kraegeloh et al. teaches wherein a proximity zone is provided above the play zone and the control unit is further configured to detect an identifier of a playing piece held in the proximity zone and in response to the detection generate a control signal controlling the first magnetic unit to generate or alter a magnetic field thereby magnetically affecting the playing piece held in the proximity zone (paragraphs [0095]-[0096]). Per MPEP 2111, the Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard: The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In the instant case, the proximity zone is reasonably construed as the space immediately above the play zone. Moreover, as shown in Fig.’s 10A-10C, the playing pieces 10 occupy this space. Examiner further notes that, even when the playing pieces are in contact with the surface of the play zone 12, they will still occupy the proximity zone, and therefore will construed as being “held” in the proximity zone. As such, the claim limitation is considered met. Along the same lines, when the playing piece 10 is moved by the control unit 18 (i.e. the playing piece is in both the play zone and proximity zone) via instructing the magnetic unit 16 to move pieces 10 based on the position determination means 14, the movements of the game pieces is considered as a form of providing different feedback to a user. Per MPEP 2114 - 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 art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). If a prior art structure is inherently capable of performing the intended use as recited, then it shifts the burden to applicant to establish that the prior art does not possess the characteristic relied on. See In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
With respect to claim 14, Kraegeloh teaches wherein the control unit 18 is configured to be in one of a plurality of states (paragraph [0094]), each state of the plurality of states corresponds to a particular game, and wherein the control unit 18 is configured to be set in a particular state of the plurality of states by detecting a particular identifier of a playing piece (i.e. – the control unit 18 state is dependent upon the determination means 14, which is based on the game operations, and the game operations, including movement of playing pieces, is dependent upon the determination means reading the identifier of the playing piece).
With respect to claims 15 and 18, and in addition to the teachings of Kraegeloh set forth above in the rejection of claim 1, Kraegeloh further teaches a gaming system comprising a set of playing pieces 10 for use with the gaming unit, and a gaming unit, wherein the set of playing pieces 10 comprises a plurality of playing pieces 10, each playing piece of the plurality of playing pieces comprising a magnet (100 – Fig.’s 10A-10C) and having an identifier 14 (paragraphs [0123], [0133]).
Claim Rejections - 35 USC § 103
5. 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 of this title, 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.
6. Claims 5 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kraegeloh et al. (US Pub. No. 2011/0272884) in view of Chen (US Pub. No. 2013/0012313).
With respect to claim 5, Kraegeloh et al. teaches wherein the control unit 18 is configured to generate a control signal configured to control the first magnetic unit 16 to generate a time varying magnetic field (paragraph [0094], [0100]). Admittedly, Kraegeloh et al. does not expressly teach wherein this magnetic field is used to vibrate the one or more playing pieces arranged in the play zone. However, analogous art reference Chen teaches that it is known in the art to provide a tactile response – “vibrating”- of a game piece (paragraph [0034], [0049]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to vibrate the game pieces of Kraegeloh et al., as taught by Chen. The motivation to combine is to add entertainment value to the game, and provide game related information. For example, when the game piece vibrates, it expectantly alerts users of game feature. Within the game of Kraegeloh et al, the game pieces could be vibrated prior to, at the conclusion of, the translational movement of the game pieces. The vibration of the game piece will serve to mark these game move beginning events and/or end events. The proposed modification has a reasonable expectation of success. The control unit can modulate its current strength to the coils as is known in the art to induce the vibrational response.
With respect to claim 9, and in view of the rejection of claims 5 and the interpretation of “proximity zone” set forth in claim 7, the combination of Kraegeloh et al. and Chen teaches wherein the control unit is configured to generate a control signal configured to control the first magnetic unit to generate a time varying magnetic field configured to vibrate the one or more playing pieces held in the proximity zone. The motivation to combine is the same as stated above.
With respect to claim 10, time varying magnetic field inherently comprises a center frequency, but the applied references fail to expressly provide this numeric value. However, per MPEP 2144.05, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, the game unit of Kraegeloh would not operate different with a center frequency within the claimed range. It is known that the center frequency is a result effective variable for vibrational response decibels. See paragraph [0033] of Cranfill et al. (US Pub. No. 2005/0047621) cited as extrinsic evidence. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal center frequency, including within the claimed range, via routine experimentation. The motivation to modify the thickness is to provide a desired vibrational impact or response. Further, the applicant does not place criticality to the claimed range. No specific purpose for operability has been established in relation to the claimed range. The proposed modification has a reasonable expectation of success since the control unit can modulate its current strength to provide a desired center frequency.
7. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kraegeloh et al. (US Pub. No. 2011/0272884).
With respect to claim 6, Kraegeloh teaches wherein the play zone 12 comprises a first subzone and a second subzone (See Fig. 1 showing play zone 12, which inherently comprises subzones), the first subzone and the second subzone each being configured to receive a playing piece 10 of the plurality of playing pieces, and wherein the first magnetic unit 16 is configured to generate or alter a magnetic field for magnetically affecting a playing piece 10 arranged in the first subzone, wherein the control unit 18 is configured to detect the identifier 14 of a playing piece arranged in the first subzone and the identifier 14 of a play piece arranged in the second subzone and responsive to the detection of a particular identifier 14 or a particular combination of identifiers generate a control signal controlling the first magnetic unit 16 to generate or alter a magnetic field whereby playing pieces in the first subzone or in the second subzone are magnetically affected (Fig.’s 9A-9B; 10A-10C; paragraphs [0065], [0067], [0096]-[0100]).
Kraegeloh et al. uses a single magnetic unit 16 to operationally control all the playing pieces 10 in the various subzones of the play zone 12. As such, Kraegeloh et al. fails to teach wherein the gaming unit further comprising a second magnetic unit operationally connected to the control unit 18 and the second magnetic unit is configured to generate or alter a magnetic field for magnetically affecting a playing piece arranged in the second subzone. However, the Federal Courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced, see MPEP 2144.04, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Here, duplicating the first magnetic unit 16 to intorduce a second magnetic unit connected to the control unit 18 would have been obvious to a person ordinary skill in the art at time of applicant’s effective filing. The rationale to use a second magnetic unit will produce an expected result. Namely, movement of the game pieces can be divided between multiple magnetic units, instead of relying solely on a single unit. The components and required battery power for two units can be made smaller in scope, which is also known to provide improved durability. Moreover, one unit can operate in a first mode (i.e. attracting magnetism) and the second unit can operate in a second mode (i.e. repelling magnetism). This will allow proper functional movement for game pieces having different polarity orientations. Such modification has a reasonable expectation of success as it will not frustrate the intended function of Kraegeloh.
8. Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kraegeloh et al. (US Pub. No. 2011/0272884) in view of Appelbatt (US Pat. No. 8,505,918).
With respect to claims 11-13, the gaming unit of Kraegeloh has a first and second side – Fig.’s 9A-9B, but does not expressly teach wherein the first and second sides, oppositely oriented, comprise magnetic and/or mechanic connection means for connecting the gaming unit with an additional gaming unit. However, analogous art reference Appelbatt teaches such features to be known in the art – column 5, lines 19-38 teaching modules 14 being configured to be “connected to form an infinite variety of game board shapes” via mechanical means (i.e. tabs 26, grooves). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to provide mechanical connection means on the sides of the gaming unit of Kraegeloh, as taught by Appelbatt. The rationale to combine is to allow customization of the size of the gaming unit. This will expectantly add diversity in game length and difficulty level.
9. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kraegeloh et al. (US Pub. No. 2011/0272884) in view of OFFICIAL NOTICE.
With Respect to claim 16, Kraegeloh et al. teaches wherein the game unit is used for “chess or the like” (paragraph [0131]). Admittedly, chess pieces are not structured as a tile having a bottom surface and a top surface opposite to the bottom surface. However, OFFICIAL NOTICE is taken that Checkers pieces are shaped as a tile having a bottom surface and a top surface opposite to the bottom surface. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious use the game unit of Kraegeloh to play Checkers, using traditional checkers pieces. The motivation to combine is to play a classical board game in the new and exciting manner offered by Kraegeloh - - making passive game pieces automatically movable without having to use a robot or active drive within the game pieces. The proposed modification has a reasonable expectation of success since Kraegeloh expressly contemplates wherein the gaming unit is intended for “chess or the like”.
Regarding the claimed symbol, such limitations is directed to printed matter. Per MPEP 2111.05, If a new and unobvious functional relationship between the printed matter and the substrate does not exist. USPTO personnel need not give patentable weight to printed matter. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). 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 …. the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate. In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). The physical configuration of the claimed apparatus in the Gulack invention comprised three key elements: (1) a band, ring, or set of concentric rings; (2) a plurality of individual digits imprinted on the band or ring at regularly spaced intervals; and (3) an algorithm by which the appropriate digits are developed. The court noted that the claims required a particular sequence of digits to be displayed on the outside surface of a band. These digits were functionally related to the band in two ways: (1) the band supports the digits; and (2) there is an endless sequence of digits — each digit residing in a unique position with respect to every other digit in an endless loop. The digits exploit the endless nature of the band, and notably, these features are critical to the invention, thus constituting a functional relationship between the digits and the band. The product performed some function with respect to the printed matter it is associated because the claimed algorithm would not be satisfied without certain physical relationships of the string of numbers. In Miller, the printed indicia on a measuring device for use in fractioning recipes was at issue. Specifically, volumetric indicia on the measuring receptacle indicated volume in a certain ratio to actual volume. This relationship was held to constitute a functional relationship between the indicia and the substrate. The printed matter performs some function with respect to the product to which it is associated. Evidence against a functional relationship exists where a product merely serves as a support for printed matter. See MPEP 2111.05. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product. Another example in which a product merely serves as a support would occur for a deck of playing cards having images on each card. See In re Bryan, 323 Fed. App'x 898 (Fed. Cir. 2009) (unpublished). In Bryan the applicant asserted that the printed matter allowed the cards to be "collected, traded, and drawn"; "identify and distinguish one deck of cards from another"; and "enable[] the card to be traded and blind drawn". However, the court found that these functions do not pertain to the structure of the apparatus and where instead drawn to the method or process of playing a game. See also Ex parte Gwinn, 112 USPQ 439, 446-47 (Bd. Pat. App. & Int. 1955), in which the invention was directed to a set of dice by means of which a game may be played. The claims differed from the prior art solely by the printed matter in the dice. The claims were properly rejected on prior art because there was no new feature of physical structure and no new relation of printed matter to physical structure. For example, a claimed measuring tape having electrical wiring information thereon, or a generically claimed substrate having a picture of a golf ball thereupon, would lack a functional relationship as the claims as a whole are directed towards conveying wiring information (unrelated to the measuring tape) or an aesthetically pleasing image (unrelated to the substrate) to the reader. Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists. For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864. Unlike the fact situations in Miller and Gulack, the substrate (game piece surface) does not support the printed indicia and the indicia is not arranged such that it's positioned in a unique position with respect to the substrate. Moreover, the symbol appears to be related an abstract game related meaning to a human reader independent of the functionality of the supporting product. There is not a new and unobvious functional relationship therebetween. Instead, the indicia/symbol is akin to the images on a playing card in In re Bryan and the dice indicia of Ex parte Gwinn, neither of which were determined to establish a new and unobvious functional relationship with the substrate. As such, no patentable weight is given to the claimed printed matter.
10. Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Kraegeloh et al. (US Pub. No. 2011/0272884) in view of Aalund et al. (US Pat. No. 11,498,014).
With respect to claim 17, Kraegeloh does not expressly teach a playing piece control unit and display as claimed. However, analogous art reference Aalund teaches the following to be known in the art: a playing piece 112/222 comprising a playing piece control unit and display configured to display an image, wherein the playing piece control unit is configured to receive a signal from another unit and in response to the signal is configured to control the display to display a new image (column 10, lines 39-53; Fig. 1; See also Fig. 3). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add these features to the playing pieces of Kraegeloh et al. The rationale to combine is to provide visual information to the player. This information can provide positive or informative feedback related to the game operations. Examiner notes the claim does not limit or specify which “unit” sends the signal.
Double Patenting
11. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
12. Claims 1, 14-15 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,064,700. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the patented claims reads on the present claims.
13. Claims 2-4, 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,064,700 in view of Kraegeloh et al. (US Pub. No. 2011/0272884).
The patented claims do not expressly teach the elements of claims 2-4 and 6. However, analogous art reference Kraegeloh teaches the following to be known in the art:
With respect to claims 2-4, Kraegeloh teaches wherein a first magnetic unit 16 is configured to magnetically affect one more playing pieces 10 in a play zone 12 by magnetically repelling the one or more playing pieces 10 (paragraphs [0095]-[0096]), wherein the first magnetic unit 16 is configured to magnetically affect one more playing pieces 10 in the play zone 12 by magnetically attracting the one or more playing pieces Id; wherein the first magnetic unit 16 is configured to physically move the one or more playing pieces 10 arranged in the play zone 12. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add these features to the patented game. The rationale to combine is to provide haptic feedback to the user, and help guide movement of the playing piece(s).
With respect to claim 6, Kraegeloh teaches wherein the play zone 12 comprises a first subzone and a second subzone (See Fig. 1 showing play zone 12, which inherently comprises subzones), the first subzone and the second subzone each being configured to receive a playing piece 10 of the plurality of playing pieces, and wherein the first magnetic unit 16 is configured to generate or alter a magnetic field for magnetically affecting a playing piece 10 arranged in the first subzone, wherein the control unit 18 is configured to detect the identifier 14 of a playing piece arranged in the first subzone and the identifier 14 of a play piece arranged in the second subzone and responsive to the detection of a particular identifier 14 or a particular combination of identifiers generate a control signal controlling the first magnetic unit 16 to generate or alter a magnetic field whereby playing pieces in the first subzone or in the second subzone are magnetically affected (Fig.’s 9A-9B; 10A-10C; paragraphs [0065], [0067], [0096] - [0100]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add these features to the patented game. The rationale to combine is to provide haptic feedback to the user, and help guide movement of the playing piece(s). Admittedly, Kraegeloh et al. uses a single magnetic unit 16 to operationally control all the playing pieces 10 in the various subzones of the play zone 12. As such, Kraegeloh et al. fails to teach wherein the gaming unit further comprising a second magnetic unit operationally connected to the control unit 18 and the second magnetic unit is configured to generate or alter a magnetic field for magnetically affecting a playing piece arranged in the second subzone. However, the Federal Courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced, see MPEP 2144.04, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Here, duplicating the first magnetic unit 16 to intorduce a second magnetic unit connected to the control unit 18 would have been obvious to a person ordinary skill in the art at time of applicant’s effective filing. The rationale to use a second magnetic unit will produce an expected result. Namely, movement of the game pieces can be divided between multiple magnetic units, instead of relying solely on a single unit. The components and required battery power for two units can be made smaller in scope, which is also known to provide improved durability. Moreover, one unit can operate in a first mode (i.e. attracting magnetism) and the second unit can operate in a second mode (i.e. repelling magnetism). This will allow proper functional movement for game pieces having different polarity orientations. Such modification has a reasonable expectation of success as it will not frustrate the intended function of the patented game as modified by Kraegeloh.
14. Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,064,700 in view of Kraegeloh et al. (US Pub. No. 2011/0272884) and further in view of Chen (US Pub. No. 2013/0012313).
With respect to claim 5, Kraegeloh et al., cited above for its teaching of the elements of claim 4, further teaches wherein the control unit 18 is configured to generate a control signal configured to control the first magnetic unit 16 to generate a time varying magnetic field (paragraph [0094], [0100]). Admittedly, Kraegeloh et al. does not expressly teach wherein this magnetic field is used to vibrate the one or more playing pieces arranged in the play zone. However, analogous art reference Chen teaches that it is known in the art to provide a tactile response – “vibrating”- of a game piece (paragraph [0034], [0049]). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to vibrate the game pieces of the patented game as modified by Kraegeloh et al., as taught by Chen. The motivation to combine is to add entertainment value to the game, and provide game related information. For example, when the game piece vibrates, it expectantly alerts users of game feature. Within the patented game as modified by Kraegeloh et al, the game pieces could be vibrated prior to, at the conclusion of, the translational movement of the game pieces. The vibration of the game piece will serve to mark these game move beginning events and/or end events. The proposed modification has a reasonable expectation of success. The control unit can modulate its current strength to the coils as is known in the art to induce the vibrational response.
15. Claims 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,064,700 in view of in view of Appelbatt (US Pat. No. 8,505,918).
With respect to claims 11-13, the patented gaming unit does not expressly teach wherein first and second sides, oppositely oriented, comprise magnetic and/or mechanic connection means for connecting the gaming unit with an additional gaming unit. However, analogous art reference Appelbatt teaches such features to be known in the art – column 5, lines 19-38 teaching modules 14 being configured to be “connected to form an infinite variety of game board shapes” via mechanical means (i.e. tabs 26, grooves). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to provide mechanical connection means on the sides of the patented gaming unit, as taught by Appelbatt. The rationale to combine is to allow customization of the size of the gaming unit. This will expectantly add diversity in game length and difficulty level.
16. Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,064,700 in view of in view of OFFICIAL NOTICE.
With Respect to claim 16, the patented gaming unit does not expressly teach that the playing pieces are structured as a tile having a bottom surface and a top surface opposite to the bottom surface. However, OFFICIAL NOTICE is taken that playing pieces shaped as a tile having a bottom surface and a top surface opposite to the bottom surface is well known in the art. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious use the patented gaming unit. The motivation to combine is to providing a playing piece that is common within the art and easily manipulated by the player. Regarding the claimed symbol, examiner reiterates the legal conclusion and underlying rationale set forth above in the prior art rejection that this element is directed to printed matter that is not afforded patentable weight.
Conclusion
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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