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 filed January 15, 2025 has been noted and entered into the record.
Claim Objections
Claims 1, 3, 4, 6, 12, 13, 14, 16, 17, 19 are objected to because of the following informalities:
In regards to claim 1, each instance of the word “having” in the phrase “wherein said planar board having at least three holes therethrough; and further wherein a first hole having a first score value, a second hole having a second score value, and a third hole having a third score value.” should read either as “has”, “includes”, or “comprises”.
In regards to claim 3, the word “having” in the phrase “wherein said first hole, said second hole, said third hole, and said fourth hole having the same size and same shape” should read as “have”.
In regards to claim 4, the word “having” in the phrase “wherein said first hole, said second hole, said third hole, and said fourth hole having different sizes” should also read as “have”.
In regards to claim 6, the word “wherein” should be appended after the section “claim 4,” so the claim reads “The bag toss and board hole game of claim 4, wherein said different sizes…”
In regards to claim 12, the word “having” in the phrase “wherein said bottom surface having a plurality of legs detachable to said bottom surface” should read either as “has”, “includes”, or “comprises”.
In regards to claim 13, the word “having” in the phrase “wherein each one of said at least three holes having a net thereunder for capturing said plurality of bags thrown through said at least three holes” should read either as “has”, “includes”, or “comprises”.
In regards to claim 14, each instance of the word “having” in the phrase “wherein said planar board having at least three holes therethrough, further wherein a first hole having a first score value, a second hole having a second score value, and a third hole having a third score value” should read either as “has”, “includes”, or “comprises”. Additionally, for better clarity, the phrase “tossing from a distance said plurality of bags at said planar board” should instead read “tossing, from a distance, said plurality of bags at said planar board.”
In regards to claim 16, the word “having” in the phrase “wherein said first hole, said second hole, said third hole, and said fourth hole having the same size and same shape” should read as “have”.
In regards to claim 17, the word “having” in the phrase “wherein said first hole, said second hole, said third hole, and said fourth hole having different sizes” should read as “have”.
In regards to claim 19, each instance of the word “having” in the phrase “wherein said planar board having at least three holes therethrough, further wherein a first hole having a first score value, a second hole having a second score value, a third hole having a third score value, and a fourth score having a fourth score value” should read either as “has”, “includes”, or “comprises”. Additionally, for better clarity, the phrase “tossing from a distance said plurality of bags at said planar board” should instead read “tossing, from a distance, said plurality of bags at said planar board.”
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 14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims amount to rules for playing a game, which are not significantly more than the judicial exception of an abstract idea because the game board and game pieces recited do not add a meaningful limitation to the rules recited as they are routine in any board game.
Under step 2A, prong I, claims 14-20 are directed to rules for playing a game, which the Federal Circuit has held is an abstract idea related to a method of organizing human activity that is ineligible for patent protection. See, e.g., In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160-61 (Fed. Cir. 2018), In re Smith, 815 F.3d 816, 818-19 (Fed. Cir. 2016). In In re Marco Guldenaar, the patentee claimed a method of playing a dice game that included betting on which die faces would appear. The Federal Circuit held that the claims were directed to an abstract idea and that the additional steps of placing a wager, rolling the dice, and paying a payout were conventional, both individually and in combination, and thus “insufficient to recite an inventive concept”. Id. at 1160-61. Claims 14-20 recite, in addition to the planar board and throwing bags, scoring the tosses of the bags for each round, totaling the scoring of each round, and accumulating the scores of each round to reach a target score, wherein claims 19 and 20 further recite positioning the first hole proximal to the front edge of the planar board and the fourth hole proximal to the rear edge of the planar board and resetting the score total to a second target score if a total score exceeds the first target score. These limitations are directed to the abstract idea of rules for playing games similar to the dice claims of In re Marco Guldenaar. Thus claims 14-20 are directed to an abstract idea.
Under step 2A, prong II, the rules of playing a board game is not integrated into a practical application because the steps of providing a planar board with a plurality of holes, bags, and tossing the bags into the holes to be scored is nothing more than insignificant pre-solution (extra-solution) activity, as providing a playing apparatus and projectiles (the bags) to play a game is merely conventional activity necessary to facilitate any game involving a planar board and bags. Additionally, the claims recited do not effect an improvement in the functioning of technology nor do the claims transform or reduce an article to a different state or a thing, as they merely relate to throwing tossing bags at a planar board with holes and scoring the throws. Thus claims 14-20 are not integrated into a practical application.
Under step 2B, the throwing bags and planar board, either individually or in combination, are not significantly more than the judicial exception because the additional elements are well-understood, routine, and conventional, as tossing games facilitated and scored using planar boards with three or more holes are well-known in the art. See, e.g., US 2008/0042360 (Veikley), US 2010/0320692 (Tookey), US 2012/0038109 (Battista), US 8,807,569 (Davis), US 2017/0173427 (Wolters) and US 2020/0147465 (Chille) (Also see Robershaw below). Furthermore, the additional elements as an ordered combination add nothing that the additional elements already perform individually, as neither the planar board nor the throwing bags affect the function of the other and perform the functions an ordinary person would expect them to perform. Therefore, the additional elements of claims 14-20 do not amount to significantly more than the abstract idea of rules for playing a game. Thus, in light of the foregoing findings, claims 14-20 are patent ineligible under 35 U.S.C. 101.
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 1-2, 7-12, 14-16, and 19-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Robershaw (US 2024/0082673).
In regards to claim 1, Robershaw teaches a bag toss and board hole game comprising a planar board having a top surface, a bottom surface, a front edge, and a bottom edge (FIG. 4, FIG. 5) and a plurality of bags (FIG. 4, FIG. 5), wherein said planar board has at least three holes therethrough (FIG. 4, FIG. 5) and further wherein a first hole has a first score value, a second hole has a second score value, and a third hole has a third score value (FIG. 4, FIG. 5).
In regards to claim 2, Robershaw teaches a bag toss and board hole game comprising a fourth hole having a fourth score value (FIG. 4, FIG. 5).
In regards to claim 7, Robershaw teaches a bag toss and board hole game wherein said first score value is 1 point, said second score value is 2 points, said third score value is 3 points, and said fourth score value is 4 points (Paragraph [0044] “In the embodiment illustrated in FIGS. 4-5, each player gets unlimited shots and are permitted to shoot under hand or over hand. The first opening 110 is worth 5 points. The second opening 120 is worth 4 points. The third opening 130 is worth 3 points. The fourth opening 140 is worth 2 points. The fifth opening 150 is worth 0 point. The sixth opening 160 is worth 1 point”).
In regards to claim 8, Robershaw teaches a bag toss and board hole game wherein said first hole is disposed proximal to said front edge (FIG. 4, FIG. 5).
In regards to claim 9, Robershaw teaches a bag toss and board hole game wherein said fourth hole is disposed proximal to said rear edge (FIG. 4, FIG. 5).
In regards to claim 10, Robershaw teaches a bag toss and board hole game wherein said second hole is disposed between said first hole and said third hole (FIG. 4, FIG. 5).
In regards to claim 11, Robershaw teaches a bag toss and board hole game wherein said third hole is disposed between said second hole and said fourth hole (FIG. 4, FIG. 5).
In regards to claim 12, Robershaw teaches a bag toss and board hole game wherein said bottom surface having a plurality of legs detachable to said bottom surface. (FIG. 3 (see legs at top of drawing), FIG. 4, FIG. 5). The examiner is interpreting the legs of Robershaw to be detachable as there is no limitation directed towards how the legs are connected and the legs of Robershaw are fully capable of being detached or separated as claimed.
In regards to claim 14, Robershaw teaches a method of playing a bag toss and board hole game, the method comprising the steps of: providing a planar board having a top surface, a bottom surface, a front edge, and a rear edge, and a plurality of bags, wherein said planar board having at least three holes therethrough, further wherein a first hole having a first score value, a second hole having a second score value, and a third hole having a third score value (FIG. 4, FIG. 5, paragraphs [0036], [0044], [0045]), tossing from a distance said plurality of bags at said planar board (FIG. 4, FIG. 5, paragraphs [0044], [0045]), scoring each of said plurality of bags in a round of said tossing said plurality of bags (FIG. 4, FIG. 5, paragraphs [0044], [0045], where each player’s turn is being interpreted as a round), totaling said scoring of each said round (Paragraph [0045] “If the second throw by player 1 results in the toss object 300 falling in the second opening 120, then player 1 will obtain 4 points which is then added to the 5 points from the first throw. Thus, player 1 now has 9 points in total which is only 18 points away from becoming the winner. In the present embodiment, player 1 and 2 each takes turn to throw the objects 300, 310 to obtain points. However, in different embodiments, player 1 can first throw all of the objects 300 allocated and only then player 2 can take turn to throw all of the objects 310 allocated”) and accumulating said totaling of said scoring to reach a target score of said totaling said scoring (Paragraphs [0045], [0046] “Further, a new rule comes into effect when either player has at least 23 points in possession or 4 points away from victory. The new rule dictates to subtract a newly obtained score from the accumulated score of the player if the sum of the accumulated score and the newly obtained score is greater than the target score”).
In regards to claim 15, Robershaw teaches a method of playing a bag toss and board hole game further comprising a fourth hole having a fourth score value (FIG. 4, FIG. 5, paragraphs [0036], [0044], [0045]).
In regards to claim 16, Robershaw teaches a method of playing a bag toss and board hole game wherein said first hole, said second hole, said third hole, and said fourth hole having the same size and same shape (FIG. 4, FIG. 5, paragraphs [0036], [0044], [0045]).
In regards to claim 19, Robershaw teaches a method of playing a bag toss and board hole game, the method comprising the steps of: providing a planar board having a top surface, a bottom surface, a front edge, and a rear edge, and a plurality of bags, wherein said planar board having at least three holes therethrough, further wherein a first hole having a first score value, a second hole having a second score value, a third hole having a third score value, and a fourth hole having a fourth score value (FIG. 4, FIG. 5, paragraphs [0036], [0045]); positioning said first hole proximal to said front edge and said fourth hole proximal to said rear edge value (FIG. 4, FIG. 5, paragraphs [0036], [0045], [0047]); tossing from a distance said plurality of bags at said planar board (FIG. 4, FIG. 5, paragraphs [0044], [0045]); scoring each of said plurality of bags in a round of said tossing said plurality of bags (FIG. 4, FIG. 5, paragraphs [0044], [0045], where each player’s turn is being interpreted as a round); totaling said scoring of each said round (Paragraph [0045] “If the second throw by player 1 results in the toss object 300 falling in the second opening 120, then player 1 will obtain 4 points which is then added to the 5 points from the first throw. Thus, player 1 now has 9 points in total which is only 18 points away from becoming the winner. In the present embodiment, player 1 and 2 each takes turn to throw the objects 300, 310 to obtain points. However, in different embodiments, player 1 can first throw all of the objects 300 allocated and only then player 2 can take turn to throw all of the objects 310 allocated”); and accumulating said totaling of said scoring to reach a first target score of said totaling of said scoring (Paragraphs [0045], [0046] “Further, a new rule comes into effect when either player has a t least 23 points in possession or 4 points away from victory. The new rule dictates to subtract a newly obtained score from the accumulated score of the player if the sum of the accumulated score and the newly obtained score is greater than the target score.”)
In regards to claim 20, Robershaw teaches the step of resetting said totaling of said scoring to a second target score if said totaling of said scoring is greater than said first target score. (Paragraph [0046], where the new accumulated score of 20 referenced in paragraph [0046] is being interpreted as a second target score.)
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.
Claims 3-6, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable under Robershaw (US 2024/0082673).
In regards to claim 3, Robershaw teaches a bag toss and board hole game wherein said first hole, said second hole, said third hole, and said fourth hole have the same shape (FIG. 4, FIG. 5, paragraph [0036]). However, Robershaw does not explicitly teach the holes having the same size, as the figures are not drawn to scale. That being said, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to identically size each of the holes taught by Robershaw, as modifying the holes to have the same size is a routine design choice that would be obvious to one of ordinary skill in the art. Additionally, modifications relating to a change in proportions have long been held to be unpatentable. See Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"), MPEP 2144.05.
In regards to claim 4, Robershaw teaches a bag toss and board hole game wherein said first hole, said second hole, said third hole, and said fourth hole have different sizes (Paragraph [0036] “However, in different embodiments, the openings 110, 120, 130, 140, 150, 160 can be configured to have different sizes, as long as the scores (and numerical marking) assigned to an opening is inversely proportional to an area of said opening”). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the teachings of Robershaw to arrive at the claimed invention, as modifying the size of the holes would be “obvious to try”, as Applicant’s specification (Specification, paragraphs [0004], [0006]) mentions a design need for an improved beanbag throwing game and as there are only a finite number of ways of modifying the prior art to make the game more difficult and enjoyable, under long-standing legal precedent such modifications are routine and thus insufficient to provide patentable weight. See, e.g., In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"), MPEP 2144.05.
In regards to claim 5, Robershaw teaches a bag toss and board hole game wherein said first hole, said second hole, said third hole, and said fourth hole are a shape selected from the group consisting of a circle, a rectangle, a triangle, and a paw print (Paragraph [0033] “Also, in the present embodiment, the openings 110, 120, 130, 140, 150 have circular shape, but are not limited thereto. In other embodiments, the openings of the present invention can be configured to have other shapes such as rectangle, oval, parallelogram, rhombus, trapezium, etc”, Paragraph [0036]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the teachings of Robershaw to arrive at a desired shape, as modifying the shape of the holes is a routine design choice that would be obvious to one of ordinary skill in the art. Additionally, modifications relating to a change in proportions or form have long been held to be unpatentable. See Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"), In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), MPEP 2144.05.
In regards to claim 6, Robershaw teaches a bag toss and board hole game where said different sizes of said first hole, said second hole, said third hole, and said fourth hole are inversely proportional to said first score value, said second score value, said third score value, and said fourth score value (Paragraph [0036] “However, in different embodiments, the openings 110, 120, 130, 140, 150, 160 can be configured to have different sizes, as long as the scores (and numerical marking) assigned to an opening is inversely proportional to an area of said opening”). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the teachings of Robershaw to arrive at the claimed invention for similar reasons as provided for claim 4. Also, Applicant is reminded that to patentably define over the prior art, claim limitations need to be structural, not functional, in nature, as a prior art reference that teaches all the structural limitations of a claimed invention reads on the claimed invention even if the claimed invention recites functional limitations not found in the prior art reference. See MPEP 2114.
In regards to claim 17, Robershaw teaches a method of playing a bag toss and board hole game wherein said first hole, said second hole, said third hole, and said fourth hole having different sizes (FIG. 4, FIG. 5, paragraphs [0036], [0044], [0045]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the teachings of Robershaw to arrive at the claimed invention, as modifying the size of the holes would be “obvious to try”, as Applicant’s specification (Specification, paragraphs [0004], [0006]) mentions a design need for an improved beanbag throwing game and as there are only a finite number of ways to modifying the prior art to make the game more difficult and enjoyable, under current legal precedent such modifications are routine and thus insufficient to provide patentable weight. See, e.g., Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"), MPEP 2144.05.
In regards to claim 18, Robershaw teaches a method of playing a bag toss and board hole game wherein said first score value is 1 point, said second score value is 2 points, said third score value is 3 points, said fourth score value is 4 points, and said target score is 11 points. (Paragraph [0044] “In the embodiment illustrated in FIGS. 4-5, each player gets unlimited shots and are permitted to shoot under hand or over hand. The first opening 110 is worth 5 points. The second opening 120 is worth 4 points. The third opening 130 is worth 3 points. The fourth opening 140 is worth 2 points. The fifth opening 150 is worth 0 point. The sixth opening 160 is worth 1 point.” Also, “[i]n the present embodiment, the target score for a player to claim victory is 27, i.e. a player must obtain exactly 27 points in order to be the winner. However, in other embodiments, the players can decide to set a different target score as appropriate.”). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the teachings of Robershaw to arrive at the claimed invention, as the target score is both a design choice and a player’s choice, as Robershaw teaches that players can modify a target score as they see fit.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable under Robershaw (US 2024/0082673) in view of Spillane (US 2023/0025001).
In regards to claim 13, Robershaw teaches all of the claim limitations of claim 1 as stated above (see FIG. 4, FIG. 5). However, Robershaw does not teach at least three holes having a net thereunder for capturing said plurality of bags thrown through said at least three holes. Spillane teaches the use of a net for capturing said plurality of bags thrown through said at least three holes (FIG. 2, paragraph [0024]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the net teachings of Spillane to the game apparatus taught by Robershaw to arrive at claim 13 in order to capture or hold beanbags (Spillane, paragraph [0004]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK FURY whose telephone number is (571)272-0215. The examiner can normally be reached Monday - Friday 8 AM - 5 PM.
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/FRANK JUSTIN FURY/Examiner, Art Unit 3711
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
