Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 9 objected to because of the following informalities: the limitation “a game bad” construed as a typo as --a game bag--. 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 9-12 are rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more, as “human activity” as rules of conducting a game. 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. In accordance with MPEP 2106.04, each of the above claims has been analyzed to determine whether it is directed to any judicial exceptions. Step 2A, Prong 1 per MPEP 2106.04(a) Each of the above claims recites at least one step or instruction for “human activity” as instruction to play a toss game, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) or a certain method of organizing human activity in MPEP 2106.04(a)(2)(II) or mathematical concept in MPEP 2106.04(a)(2)(I). Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP 2106.04(a)(2)(II)).
With respect to step 1, claim 1 is directed to a method which is eligible at step 1. With respect to set 2A, the following elements are considered to be abstract: “providing one or more throwable game bags; providing a pair of playing platforms spaced a preselected distance apart, each playing platform comprising one or more steps having an openings located in one or more risers of each step capable of receiving game bags therethrough; pre-selecting a quantity of negative points assigned to each opening; pre-selecting a quantity of positive points assigned to a top surface of each step; and throwing a game bad at one of the gaming platforms”. The above limitations appear to be directed to certain methods of human activity of following rules of playing a conventional bag toss game, e.g., a cornhole type game. The following are additional elements that do not amount to a practical application at step 2A: such as “throwable game bags” and “point systems as indicia upon the platform/s”. In re-evaluating the additional elements under step 2B, the additional element (e.g., the throwable bags and point/indicia within the platform/s) appears to be routine and conventional in the art as exhibited by Gurgul US 2011/0092319 et al (e.g. Figs. 1-3 and paragraphs [0009]-[0012]).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because none of the claimed elements (e.g., ,throwable bags and platform with point system/indicia) do not transform the abstract idea into a patent-eligible application as the steps are merely steps of human activity following rules of a conventional bag toss game, without significantly more. The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982. In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’. Id. Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010. An 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. 911 F.3d at 1160; 129 USPQ2d at 1011. 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. 911 F.3d at 1160-61; 129 USPQ2d at 1011. In this case, the rules of playing the game, as “providing throwing bag/disc”, “providing platforms with point system/indicia” and “throwing a bag at the platforms”, as claimed, is an abstract idea that does 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, as rules according to a well-known game of bag toss, which as set forth above, the Federal Circuit determined that such claims were directed to the abstract idea of "rules for playing games", as organizing human activity, without significantly more.
The limitations of independent claim(s) 9 when considered individually and as an ordered combination do not amount to significantly more than the abstract idea for the reasons set forth above.
Dependent claims 10-12 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed. For example, Claim 10 recites “two raisers”-to-“two openings” therewith ; claim 11 recites different width of the openings, and claim 12, opening including a container for receiving a game bag. There are no additional elements, within the dependent claims to be more than “human activity”, to significantly add more than the judicial exception to transform the method from the abstract idea (i.e. an abstract idea of human activity in the form of playing a toss game following rules of the well-known bag toss game) into a patent eligible subject matter. Thus, the “number of openings”, the “different width of the openings ” and the “container to receive the game bag” do not transform the method of playing a conventional bag toss game into a patent-eligible application. Accordingly, as indicated above, each of the above-identified dependent claims 10-12 recites an abstract idea and when considered individually and as an ordered combination do not amount to significantly more than the abstract idea for the reasons set forth above.
Claim Rejections - 35 USC § 112
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 2-6 and 10-12 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.
With respect to claim 2, further clarification is require what applicant consider “wherein the one or more risers comprises at least two risers and the opening is formed in the at least two risers”, as according to the original disclosure an opening (i.e., a single opening) is not within two risers. As shown for example in applicant’s Fig. 1, each riser (18b-18d) includes an opening (24c-24d) and, thus “a single opening” is not within two riser, as claimed.
With respect to claims 3-6, each recites the limitation "wherein each opening ". There is insufficient antecedent basis for this limitation in the claims.
With respect to claim 6, further clarification is require if “a game bag” is any different than already claimed.
With respect to claim 10, same issues as discussed above with respect to claim 2.
With respect to claims 11 and 12, each recites the limitation "wherein each opening ". There is insufficient antecedent basis for this limitation in the claims.
With respect to claim 12 further clarification is require if “a game bag” is any different than already claimed.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim(s) 1-2 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sigmund US 1,125,194 (“Sigmund”).
As per claim 1, Sigmund discloses a platform (Figs. 1-5; page 1:12-page 2:46) comprising: one or more steps (steps 14), one or more risers (risers 15), and stringers (hypotensual members 9)(Figs. 1-2 and 5; page 1:56-102), the one or more steps, the one or more risers, and the stringers are connected to form a staircase shape (Figs. 1, 2 and 5); and an opening is formed in at least one of the one or more risers (opening 17 within risers 15)(Fig. 5; page 1:94-102).
With respect to the device as “a bag toss gaming platform” as recites in the preamble, it is noted that it has been held that a preamble is generally not
accorded any patentable weight where it merely recites the purpose of a process or the
intended use of a structure, and where the body of the claim does not depend on the
preamble for completeness but, instead, the process steps or structural limitations are
able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and
Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
In addition, with respect to the intended used of the device as “the opening is capable of receiving a game bag”, it is further noted that it has been held that 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.
Exparte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). The examiner takes the position that Sigmund’s device is fully capable to perform as claimed since his device included all the limitations as claimed.
As per claim 2, Sigmund discloses wherein the one or more risers comprises at least two risers and the opening is formed in the at least two risers (at least two risers 15 with opening 17)(Fig. 5 in conjunction to Fig. 1 and page 1:94-102).
As per claim 7, with respect to further comprising a foldable leg for supporting the platform, note Figs. 1, 2, and 5 (page 1:83-93) regarding foldable frame 3 (connected thereto by hinges 8).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sigmund as applied to claim 2 above, and further in view of Feraza US 8,393,684 (“Feraza”).
As per claim 3, Sigmund is not specific regarding wherein each opening has a different width.
However, in a similar field of platform devices, Feraza discloses wherein each riser has a different width (Figs. 3 and 9; 5:15-35). Therefore, 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 to form Sigmund’s riser a different width for the reason that a skilled artisan would have been motivated in utilizing known arrangement of staircase thus suitable to variety of users. Within the modified Sigmund- Feraza as each riser would have had different widths, so each respective opening would have had a different openings’ width.
The rational to the proposed combination is to facilitate the arrangement of the steps-to-raiser in a known manner. The proposed modification has a reasonable expectation of success as it will not frustrate the intended pursues of Sigmund to form a platform with steps-risers-stringers.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sigmund as applied to claim 2 above, and further in view of Bayles US 2,658,640 (“Bayles”).
As per claims 4-6, Sigmund is not specific regarding wherein each opening is provided with an attached container for receiving a game bag (claim 4), wherein each opening is provided with an attached net for receiving a game bag (claim 5); and wherein each opening is provided with an attached container for receiving a game bag (claim 6).
However, in a similar field of staircase platforms, Bayles discloses opening is provided with an attached container, wherein opening is provided with an attached net (; and wherein opening is provided with an attached container (such as opening 34 includes container/net means, as wicker material 22-22) (Figs. 1 and 2; 2:20-3:3). Therefore, 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 to form Sigmund’s opening provided with an attached container, wherein opening is provided with an attached net (; and wherein opening is provided with an attached container for the reason that a skilled artisan would have been motivated in utilizing known arrangement of platform with additional storage means. Such storage means would have been much desired within the platform of Sigmund, as his device is suitable to hold items upon shelves (e.g., page 1:72+). Within the modified Sigmund each opening (as taught by Sigmund) would have a container/net means (as taught by Bayles)
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sigmund.
As per claim 8, although Sigmund is not specific regarding further comprising indicia located on the one or more steps and the one or more risers, such amount to mere printed matter, without any more. 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).
In Miller (In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969).), 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. In this case the printed matter upon the riser is merely markings that obvious functional relationship between the printed matter and the substrate exist.
Claim(s) 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gurgul US 2011/0092319 (“Gurgul”) in view of Gelzinis et al US 7,942,419 (“Gelzinis”).
As per claim 9, Gurgul discloses a method of playing a bag toss game (Fig. 5; paragraphs [0011]-[0013] in conjunction to [0009] and [0010]) comprising the steps of: providing one or more throwable game bags (providing throwable discs 20)(Fig. 5; [0011]);
providing a pair of playing platforms spaced a preselected distance apart (Fig. 5), each playing platform comprising an openings capable of receiving game bags therethrough (each platform includes rungs 2 with openings 12 to receive the game bag/disc 20)(Figs. 1-3 and [0009]-[0010] in conjunction to Fig. 5 and [0011]);
pre-selecting a quantity of negative points assigned to each opening (Figs. 2-3 and 5 regarding scoring indicia value 13 in [0011] and [0012]; note in particular [0012] as the value indicia can be customized value such as negative value);
pre-selecting a quantity of positive points assigned to a top surface of each step (Figs. 2-3 and 5 regarding scoring indicia value 13; note in particular [0012]); and throwing a game bad at one of the gaming platforms (Fig. 5 and [0011]).
Gurgul is not specific regarding each playing platform comprising one or more steps having one or more risers of each step capable of receiving game.
However, in a similar field of method of playing toss, throw, game balls/bags, Gelzinis discloses each playing platform comprising one or more steps having one or more risers of each step capable of receiving game bags( steps 17-19-21-23 with risers 46, to receive toss, thrown, ball/bags thereto)(Figs. 1-5; 4:41+ regarding the structure; note Fig. 1, 3:15+, regarding the manner of playing the game). Therefore, 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 to form Gurgul’s each playing platform comprising one or more steps having one or more risers of each step capable of receiving game bags for the reason that a skilled artisan would have been motivated as matter of obvious design choice, without any more. The Federal Courts have held that the configuration of the claimed product was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product was significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
As per claim 10, with respect to wherein the one or more risers comprises at least two risers and the opening is formed in the at least two risers, note Gelzinis’s Figs. 2-5 (4:55+) regarding at least two risers 46. Therefore, 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 to form Gurgul’s wherein the one or more risers comprises at least two risers and the opening is formed in the at least two risers for similar reasons discussed above with respect to claim 9.
As per claim 11, Gurgul discloses wherein each opening has a different width (Figs. 1 and 4; [0009]).
As per claim 12, with respect to wherein each opening is provided with an attached container for receiving a game bag, construed as goal net 9 for each rung 2-to-openings 12 of Gurgul (Figs. 1-5; [0009] and [0010]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR ARIE KLAYMAN whose telephone number is (571)270-7131. The examiner can normally be reached Monday-Friday; 7:00 AM-4:30 PM.
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/A.A.K/Examiner, Art Unit 3711 8/24/2026
/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711
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