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 on January 28, 2025 has been considered and noted in the record.
Specification
The abstract of the disclosure is objected to because it exceeds 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Interpretation
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 words “configured for” 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 words “configured for” 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. These claims include claims 10-16, as each of the foregoing claims recite “means” language (configured for) modified by functional language (process/method steps) that is not modified by structure, as each of the claims involve instructions, and claim 17, which, inter alia, recites “means” language (a mechanism) modified by functional language (for determining a winner) that is not modified by structure.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-17 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. Specifically, in regards to claims 1 and 9, the term “the first player” in the “declaring the first player to achieve the alignment as a winner of the strategy game” step should read “a first player” and the term “the alignment” in the same step should read as “the straight row in any direction”, as that what alignment appears to refer to. Additionally, as claims 2-8 depend upon claim 1, and claims 10-16 depend upon claim 9, those claims are rejected as being indefinite under 35 U.S.C. 112(b) as well.
Furthermore, in regards to claim 17, the term “mechanism” in the claim limitation “a mechanism for determining a winner” is indefinite because no physical mechanism is described in the specification for determining a winner in the multiplayer board game. Steps 128, 130, and 132 in the flowchart of FIG. 16 mention a step or operation that can be performed in regards to determining a winner, but nothing is mentioned as to what part of the board game apparatus would be determining a winner. If the mechanism is simply a player determining a winner as part of the rules of the game recited in claim 17, than the mechanism would not be considered as a claim limitation in regards to claim 17 as it is not structural. See 103 rejection regarding claim 17 below.
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. Claims 1-16 recite a method of playing a stacking game on a hexagonal game board with hexagonal pieces with the object of placing six hexagonal pieces in a row or column prior to other players. These claims relate to rules for playing a game. The additional elements recited, a hexagonal game board, hexagonal pieces and, for claims 9-16, a processor and a memory, do not add a meaningful limitation to the rules as they are conventional elements which do not effect an improvement in technological functionality.
Under step 2A, prong I, as mentioned above, claims 1-16 are directed to rules for playing a game. Rules for playing a game have been held by the Federal Circuit to be a method of organizing human activity and thus 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 1-8 recite, in addition to the provision of the hexagonal game board and the hexagonal pieces (and, for claims, 9-16 a processor and a memory), taking turns to place the tiles on the board, continuing play until a player places six hexagonal tiles in a row, and declaring that player a winner. These claims are similar in nature to the claims discussed in In re Marco Guldenaar. Thus claims 1-16 are directed to an abstract idea.
Under step 2A, prong II, the game rules recited in claims 1-8 are not directed into a practical application because the provision of the hexagonal board and hexagonal pieces as recited by Applicant amounts to insignificant pre-solution activity, as providing the hexagonal board and colored hexagonal pieces is a conventional step necessary to facilitate the game. In addition, the game rule instructions stored in the memory and executed by the processor recited in claims 9-16 are not directed to a practical application because the recited claims amount to nothing more than mere instructions to apply the exception previously mentioned, as the processor and memory are recited at a very high level of generality. Furthermore, neither the hexagonal game pieces nor the game rules improve the functioning of technology but simply relate to playing a game. Thus claims 1-16 are not directed to a practical application of game rules.
Under step 2B, the hexagonal game board and hexagonal pieces (and in regards to claims 9-16, the processor and the memory) are not significantly more than the abstract idea of rules for playing a game because the foregoing elements perform the same functions individually as they do in combination. The hexagonal game board, hexagonal game pieces, processor, and memory are recited at a high level of generality, are routine or conventional as shown with prior art rejection, infra, and perform nothing beyond their ordinary functions. Additionally, the foregoing elements, when analyzed as an ordered combination, add nothing that the elements already provide, as there is no mode of interaction that makes them particular to the recited game rules and no improvement in technological functionality. Therefore, the additional elements of the hexagonal game pieces, processor, and memory do not add significantly more to the abstract idea of game rules. Thus claims 1-16 are rejected under 35 U.S.C. 101.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable under Joseph (GB 2293114) in view of Wanek (US 2023/0119955).
In regards to claim 1, Joseph teaches a method of playing a strategy game using a board game apparatus, the method comprising players of the strategy game taking turns to place tiles among the plurality of stackable playing tiles on the game board, continuing play until a player of the strategy game aligns tiles of their color in a straight row in any direction, including horizontal, vertical, or diagonal; and declaring the first player to achieve the alignment as a winner of the strategy game. (Pgs. 1-2)
However, Joseph does not teach providing a hexagonal game board configured as a 6x6x6 three-dimensional grid and a plurality of stackable hexagonal playing tiles, each player of the strategy game using tiles of a distinct color among the plurality of stackable hexagonal playing tiles, wherein the players place stackable hexagonal playing tiles on the hexagonal game board with each tile contacting at least one previously placed tile or being supported in a stable stack, and aligning six tiles of a color in a straight row with the 6x6x6 three-dimensional hexagonal grid.
Wanek teaches the provision of a hexagonal game board configured as a 6x6x6 three-dimensional grid and a plurality of stackable hexagonal playing tiles, wherein each player of the strategy game uses tiles of a distinct color among the plurality of stackable hexagonal playing tiles, wherein the players place stackable hexagonal playing tiles on the hexagonal game board with each tile contacting at least one previously placed tile or being supported in a stable stack (Paragraphs [0043], [0071], [0072], [0073]).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the hexagonal game board and hexagonal tiles of Wanek with the game board and game taught by Joseph to provide for a three-dimensional play surface for a game that is scalable, modular, stackable, easily assembled, disassembled, and rearranged before, during, and after gameplay (Wanek, paragraph [0073]).
However, neither Joseph nor Wanek specifically teach aligning six tiles of a color in a straight row in any direction, including vertical, horizontal, or diagonal, within a 6x6x6 three-dimensional hexagonal grid. That being said, a mere change in the number of tiles to win a game is analogous to a change in proportion or degree, and such changes are not entitled to patentable weight. See, e.g., In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."), Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"). Additionally, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to expand the combined teaching of Joseph and Wanek from four-in-a-row to six-in-a-row to increase difficulty, as paragraphs [0003] and [0004] in Applicant’s Background states that stackable hexagonal tiles introduce “new dimensions of strategy and engagement” and it would be routine to implement a stackable hexagonal game with an object to connect six-in-a-row.
In regards to claim 2, neither Joseph nor Wanek explicitly disclose automatically checking for a winning configuration after each tile placement. However, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to automatically check for a winning configuration after placing a tile, as this is how a winner would be determined after placing each tile. It is Examiner’s position that the modified Joseph teaches the “automatically checking” limitation comparable to applicant’s invention as this checking would be performed by all players to confirm or declare a winner.
In regards to claim 3, Joseph discloses identifying winning configurations based on four adjacent tiles of the same color forming a straight line (Joseph, pg. 2, Figures 2a-2d). However, Joseph does not disclose identifying winning configurations based on six adjacent tiles of the same color forming a straight line. 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 have expanded the teachings of Joseph and Wanek to encompass six tiles instead of four for the same reasons disclosed in regards to claim 1. Furthermore, since Joseph has its winning configurations based on the layout of the game board being a 4 x 4 array, the modified Joseph would naturally expand the winning configurations to match the modified game board of Wanek which has 6 tiles on the upper and lower portions of the game board.
In regards to claim 4, Joseph discloses identifying winning configurations based on four tiles of the same color forming a stairstep pattern in a diagonal plane (Joseph, pg. 2, Figures 5a-5d). However, Joseph does not disclose identifying winning configurations based on six tiles of the same color forming a stairstep pattern in a diagonal plane. 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 have expanded the teachings of Joseph and Wanek to encompass six tiles instead of four for the same reasons disclosed in regards to claim 1. Furthermore, since Joseph has its winning configurations based on the layout of the game board being a 4 x 4 array, the modified Joseph would naturally expand the winning configurations to match the modified game board of Wanek which has 6 tiles on the upper and lower portions of the game board.
In regards to claim 5, Joseph discloses identifying winning configurations based on four tiles of the same color forming a long stairstep pattern spanning multiple layers on a grid (Joseph, pg. 2, Figures 6a-6d). However, Joseph does not disclose identifying winning configurations based on six tiles of the same color forming a long stairstep pattern spanning multiple layers on a 6x6x6 three-dimensional grid. 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 have expanded the teachings of Joseph and Wanek to encompass six tiles instead of four and to stack the tiles in a 6x6x6 hexagonal grid for the same reasons disclosed in regards to claim 1. Furthermore, since Joseph has its winning configurations based on the layout of the game board being a 4 x 4 array, the modified Joseph would naturally expand the winning configurations to match the modified game board of Wanek which has 6 tiles on the upper and lower portions of the game board.
In regards to claim 6, Joseph discloses identifying winning configurations based on four tiles of the same color forming a diagonal line through any three-dimensional plane of a grid (Joseph, pg. 2, Figures 3a-3b). However, Joseph does not disclose identifying winning configurations based on six tiles of the same color forming a diagonal line through any three-dimensional plane of a 6x6x6 three-dimensional grid. 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 have expanded the teachings of Joseph and Wanek to encompass six tiles instead of four and to stack the tiles in a 6x6x6 hexagonal grid for the same reasons disclosed in regards to claim 1. Furthermore, since Joseph has its winning configurations based on the layout of the game board being a 4 x 4 array, the modified Joseph would naturally expand the winning configurations to match the modified game board of Wanek which has 6 tiles on the upper and lower portions of the game board.
In regards to claim 7, Joseph discloses identifying winning configurations based on four tiles of the same color forming a vertical line within a single column of a grid (Joseph, pg. 2, Figures 4a-4b). However, Joseph does not disclose identifying winning configurations based on six tiles of the same color forming a vertical line within a single column of a grid of a 6x6x6 three-dimensional grid. 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 have expanded the teachings of Joseph and Wanek to encompass six tiles instead of four and to stack the tiles in a 6x6x6 hexagonal grid for the same reasons disclosed in regards to claim 1. Furthermore, since Joseph has its winning configurations based on the layout of the game board being a 4 x 4 array, the modified Joseph would naturally expand the winning configurations to match the modified game board of Wanek which has 6 tiles on the upper and lower portions of the game board.
In regards to claim 8, Joseph inherently discloses highlighting a winning configuration for players upon detection. (Joseph, pg. 1 “One counter of colour P belonging to player 1 and one of colour Q belonging to player 2 are placed alternately in a vacant space, until one player has succeeded in obtaining a straight line of four of his counters”. It would be inherent for a player to highlight (e.g. declaring that they have four in a row) a winning configuration any time the player believes they have four-in-a-row, as otherwise there would be no point in playing.) See MPEP 2112. 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 combined the teachings of Joseph and Wanek to highlight a winning configuration in order to identify a winner (Joseph, pg. 1).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable under Hayes (GB 2481019) in view of Wanek (US 2023/0119955) and in further view of Balon (US 9,773,074).
In regards to claim 9, Hayes teaches a system of facilitating a strategy game comprising at least one processor and a memory, the memory storing instructions to cause the at least one processor to perform the instructions (FIG. 4, processor (50), memory (62, part of server), pg. 4, lines 6-23, pg. 11, lines 21-29, pg. 13, lines 21-27), providing a hexagonal game board (Fig 2a, pg. 11, lines 24-25) and a plurality of stackable playing tiles, each player of the strategy game using tiles of a distinct color among the plurality of stackable playing tiles (Pg. 8, lines 28-30, pg. 11, lines 24-25), players of the strategy game taking turns to place tiles among the plurality of stackable playing tiles on the hexagonal game board (Pg. 6, lines 23-25, pg. 10, lines 24-28, pg. 11, lines 24-25), continuing play until a player of the strategy game aligns tiles of their color in a straight row in any direction within the three-dimensional grid, including horizontal, vertical, or diagonal (Pg. 11, lines 12-19, pg. 11, lines 24-25), and declaring the first player to achieve the alignment as a winner of the strategy game (Pg. 11, lines 12-19).
However, Hayes does not explicitly teach a 6x6x6 three-dimensional hexagonal gameboard, hexagonal playing tiles, or aligning six tiles of a color in a straight row in any direction within the 6x6x6 three-dimensional grid, including horizontal, vertical, or diagonal. Wanek teaches a 6x6x6 hexagonal gameboard and hexagonal playing tiles (Paragraphs [0043], [0071], [0072], [0073]). Furthermore, while neither Hayes nor Wanek teach aligning six tiles of a color in a straight row in any direction within the 6x6x6 three-dimensional grid with hexagonal tiles, long standing legal precedent stipulates that a change in proportions or degree is insufficient to provide patentable weight, which is what the foregoing dimensional and difficulty changes amount to. 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"). Therefore, in light of the foregoing, 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 combined the 6x6x6 three-dimensional hexagonal gameboard and hexagonal game tile teachings disclosed by Wanek with the teachings of Hayes discussed above to create a 6x6x6 three-dimensional digital game board with digital hexagonal playing pieces with the object to get six tiles in a row in any relevant direction, as paragraphs [0003] and [0004] in Applicant’s Background state that stackable hexagonal tiles introduce “new dimensions of strategy and engagement” and it would be routine to implement a digital stackable hexagonal game with a 6x6x6 hexagonal game board with an object to connect six-in-a-row. Furthermore, long standing legal precedent stipulates that a change in proportions or degree is insufficient to provide patentable weight, which is what the foregoing dimensional and difficulty changes amount to. 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").
However, Hayes does not explicitly teach each tile contacting at least one previously placed tile or being supported in a stack in a digital game. Balon teaches each tile contacting at least one previously placed tile or being supported in a stack in a digital game (Col. 1, lines 23-27). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the tile contact taught by Balon with the computerized three-dimensional game taught by the combination of Hayes and Wanek such that the tiles “maintain their size, shape, character, and type” (Balon, col. 1, lines 40-45).
Claims 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable under Hayes (GB 2481019) in view of Wanek (US 2023/0119955) in further view of Balon (US 9,773,074) and in further view of Harpur (US 10,269,220).
In regards to claim 10, neither Hayes, Wanek, nor Balon disclose instructions further configured for automatically checking for a winning configuration after each tile placement. Harpur inherently discloses instructions further configured for automatically checking for a winning configuration after each placement (Col. 7, lines 16-25, lines 33-46, col. 21, lines 37-50. Examiner notes that in order for the server device disclosed by Harpur to perform this step, instructions must be provided). Therefore, 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 combined the teachings of Harpur with the digital game taught by the combination of Hayes, Wanek, and Balon to arrive at instructions further configured for automatically checking for a winning configuration after each tile placement in order to check for a winning pattern (Harpur, col. 22, lines 36-38).
In regards to claim 16, neither Hayes, Wanek, nor Balon explicitly disclose instructions further configured for highlighting a winning configuration for players upon detection. Harpur discloses this claim limitation (Col. 7, lines 16-25, lines 33-46, col. 21, lines 37-50. Examiner notes that notes that in order for the server device disclosed by Harpur to perform this step, instructions must be provided). Thus 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 combined the teachings of Hayes, Wanek, and Balon with the teachings of Harpur to highlight a winning configuration for players upon detection in order to check for a winning pattern (Harpur, col. 22, lines 36-38).
Claim 11-15 are rejected under 35 U.S.C. 103 as being unpatentable under Hayes (GB 2481019) in view of Wanek (US 2023/0119955) in further view of Balon (US 9,773,074) and in further view of Joseph (GB 2293114).
In regards to claim 11, neither Hayes, Wanek, nor Balon explicitly disclose instructions further configured for identifying winning configurations based on six adjacent tiles of the same color forming a straight line. Joseph discloses identifying winning configurations based on four adjacent tiles of the same color forming a straight line (Joseph, pg. 2, Figures 2a-2d). However, Joseph does not disclose instructions further configured for identifying winning configurations based on six adjacent tiles of the same color forming a straight line. 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 have combined the winning configuration teachings of Joseph with the digital game taught by the combination of Hayes, Wanek, and Balon to encompass six tiles instead of four for the same reasons disclosed in regards to claim 9.
In regards to claim 12, neither Hayes, Wanek, nor Balon explicitly disclose instructions further configured for identifying winning configurations based on six tiles of the same color forming a stairstep pattern in a diagonal plane. Joseph discloses identifying winning configurations based on four tiles of the same color forming a stairstep pattern in a diagonal plane (Joseph, pg. 2, Figures 5a-5d). However, Joseph does not disclose instructions further configured for identifying winning configurations based on six tiles of the same color forming a stairstep pattern in a diagonal plane. 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 have combined the winning configuration teachings of Joseph with the digital game taught by the combination of Hayes, Wanek, and Balon to encompass six tiles instead of four for the same reasons disclosed in regards to claim 9.
In regards to claim 13, neither Hayes, Wanek, nor Balon explicitly disclose instructions further configured for identifying winning configurations based on six tiles of the same color forming a long stairstep pattern spanning multiple layers of the 6x6x6 three-dimensional grid. Joseph discloses identifying winning configurations based on four tiles of the same color forming a long stairstep pattern spanning multiple layers on a grid (Joseph, pg. 2, Figures 6a-6d). However, Joseph does not disclose instructions further configured for identifying winning configurations based on six tiles of the same color forming a long stairstep pattern spanning multiple layers of the 6x6x6 three-dimensional grid. 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 have combined the winning configuration teachings of Joseph with the digital game taught by the combination of Hayes, Wanek, and Balon to encompass six tiles instead of four, to encompass a 6x6x6 three-dimensional grid, and to stack the tiles in the 6x6x6 three-dimensional for the same reasons disclosed in regards to claim 9.
In regards to claim 14, neither Hayes, Wanek, nor Balon explicitly disclose instructions further configured for identifying winning configurations based on six tiles of the same color forming a diagonal line through any three-dimensional plane of the 6x6x6 three-dimensional grid. Joseph discloses identifying winning configurations based on four tiles of the same color forming a diagonal line through any three-dimensional plane of a grid (Joseph, pg. 2, Figures 3a-3b). However, Joseph does not disclose instructions further configured for identifying winning configurations based on six tiles of the same color forming a diagonal line through any three-dimensional plane of the 6x6x6 three-dimensional grid. 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 have combined the winning configurations taught by Joseph to the digital game taught by the combination of Hayes, Wanek, and Balon to encompass six tiles instead of four, to encompass a 6x6x6 three-dimensional grid and to stack the tiles in the 6x6x6 three-dimensional grid for the same reasons disclosed in regards to claim 9.
In regards to claim 15, neither Hayes, Wanek, nor Balon explicitly disclose instructions further configured for identifying winning configurations based on six tiles of the same color forming a vertical line within a single column of the 6x6x6 three-dimensional grid. Joseph discloses identifying winning configurations based on four tiles of the same color forming a vertical line within a single column of a grid (Joseph, pg. 2, Figures 4a-4b). However, Joseph does not disclose instructions further configured for identifying winning configurations based on six tiles of the same color forming a vertical line within a single column of the 6x6x6 three-dimensional grid. 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 have combined the winning configurations taught by Joseph with the digital game taught by the combination of Hayes, Wanek, and Balon to encompass six tiles instead of four, to encompass a 6x6x6 three-dimensional grid, and to stack the tiles in the 6x6x6 three-dimensional grid for the same reasons disclosed in regards to claim 9.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable under Wanek (US 2023/0119955) in view of Joko (US 8,870,651).
In regards to claim 17, Wanek teaches a hexagonal gameboard configured with a grid having a three-dimensional arrangement of hexagonal spaces defining a 6x6x6 structure (Paragraphs [0071], [0072], [0073]) and a plurality of hexagonal tiles comprising a first set of tiles of a first color, a second set of tiles of a second color, and a third set of tiles of a third color, wherein each set includes a predetermined number of tiles and the tiles are stackable up to six tiles high within any given hexagonal space on the gameboard (Paragraphs [0042], [0043]). Examiner notes that the function of color of the tiles is to simply convey information, and claim limitations solely directed to conveying information independent of the supporting product are considered printed matter and not entitled to patentable weight. See MPEP 2111.
However, Wanek does not teach a set of game rules, wherein the game is designed for two to three players, with each player selecting a tile color, players alternating turns in a clockwise sequence, wherein during each turn, a player places a tile from their set onto the gameboard, either on an unoccupied hexagonal space or stacked atop an existing tile within a hexagonal space subject to the six-tile height limit, wherein an objective of the game is for a player to form a straight line of six of their tiles, either horizontally, vertically, or diagonally, before the other players, and a mechanism for determining a winner, based on achieving the objective of aligning six tiles in a straight line. Joko teaches a game apparatus with a mechanism for determining a winner (FIG. 82, col. 39, lines 23-41). Furthermore, in regards to the set of game rules, they do not connote structure. Claim limitations directed to what an apparatus does as opposed to the physical attributes of the apparatus are limited to the structure disclosed in the claim. See MPEP 2114. As rules have no structure, for prior art purposes, claim 17 is limited to the hexagonal gameboard, the plurality of hexagonal tiles, and the mechanism for determining a winner discussed above.
Therefore, 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 combined the game apparatus taught by Joko with the hexagonal gameboard and hexagonal tiles pieces of Wanek to arrive at claim 17 in order to provide for a three-dimensional play surface for a game that is scalable, modular, stackable, easily assembled, disassembled, and rearranged before, during, and after gameplay (Wanek, paragraph [0073]).
Conclusion
Prior art relevant to the claimed invention not directly relied upon in this action includes Lupo (US 2002/0111204), Park (US 7,114,723), Sheth (US 2012/0322528), Johnson (US 10,099,012), Kerrison (GB 2406287), Taylor (GB 2452084) and Pequet (CA 2256196).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK JUSTIN FURY whose telephone number is (571)272-0215. The examiner can normally be reached Monday - Friday 8 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FRANK FURY/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
