DETAILED ACTION
Claim Objections
1. Claims 1 and 13 are objected to because of the following informalities: “wherein the puzzle play grid having a combination” should be amended to “wherein the puzzle play grid [[having]]has a combination”. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: “back on the storage grid structure” should be amended to “back [[on]]to the storage grid structure”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
2. 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 1-19 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.
Claims 1 and 13 each recite the limitations "the number of storage spaces”, “the number of useable play spaces”, “the difference between the numerical value”. There is insufficient antecedent basis for this limitation in the claim. It is recommended to amend as follows: “wherein [[the]]a total number of storage spaces and [[the]]a total number of useable play spaces are [[the same]]equal”, “[[the]]a difference between the [[numerical value]]predetermined number of each of the plurality of numbered tiles”.
Claims 2-12 and 14-19 are rejected based on their respective dependency to claims 1 and 13.
Claim Rejections - 35 USC § 101
3. 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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a set of rules for a “method of playing a game”. For claim 1, the rules comprise game rules for “placing” and “moving” game pieces, and determining a “difference” between game piece values. For claim 13, the rules comprise game rules for “placing”, “setting”, and “moving” game pieces, and “confirming” and “determining” a “mathematical solution”. These rules are grouped under: 1) Certain Methods of Organizing Human Activity, subgroup ‘Managing Personal Behavior or Relationships or Interactions between People’, including following rules or instructions - MPEP 2106.04(a)(2)(II)C; and/or 2) Fundamental Economic Practices or Principles, including rules for conducting a wagering game –MPEP 2106.04(a)(2)(II)A.
4. This judicial exception is not integrated into a practical application. Under Step 2A: Prong Two, additional limitation(s) or a combination of additional elements are evaluated to determine if those elements integrate the judicial exception into a practical application of the exception. MPEP 2106.04(d).
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a);
Applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g); and
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Here, the Abstract idea (i.e. judicial exception) is not integrated into a practical application because 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. Regarding the game related printed matter on the surface of the tiles, grid and chart, printed matter generally falls outside the scope of patent-eligible subject matter under § 101. See In re Marco Guldenaar Holding B.V., 911 F.3d at 1157, 1160, and 1161 (Fed. Circ. 2018). The PTAB, in Ex parte Snow (Appeal 2017-001891) affirmed the examiner’s position that the card table indicia does not transform the abstract idea of a set of rules to a game into patent eligible subject matter (See pages 13-14). Similarly in Ex parte Tang (Appeal No. 2017-009438), the PTAB held that the game markings merely represent wagering game rules and indicate where cards and tokens should be placed, and does not find them to provide “an advance in gaming technology” (See page 8). “Such printed matter on an otherwise generic gaming table used to play a wagering game with standard game cards and wagering elements does not impose a meaningful limitation on the abstract idea recited in claim 1 to integrate those abstract ideas into a practical application.” Id.
5. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered separately and in ordered combination, and within the context and character of the claims as a whole, the claimed additional elements (listed below) are conventional and widely prevalent in the gaming art. MPEP 2106.05 – “Eligibility Step 2B: Whether a Claim Amounts to Significantly More”. The claimed additional elements other than the limitations pertaining to the abstract idea include:
- game board with storage grid structure and play gird structure, play spaces, tiles (claims 1-6, 13-14, 16-17, 19)
- color chart (claims 7, 18), scoring/recording book (claims 12, 15), magnetically attached tiles-gameboard spaces (claim 9), foldable and pivotable game board (claims 10-11),
The question of whether certain claim limitations represent well-understood, routine and conventional is a question of fact. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Circ. 2018). In view of the references of the record, and applicant’s specification, there is ample factually supported evidence that the additional limitations are conventional and widely prevalent in the gaming art. As recognized in applicant’s specification, SUDOKU utilizes receptacles of rows, columns and game board with playing tiles (paragraph [0007]). Moreover, classic games like Scrabble, Connect4, Checkers teach game boards with various grid structures. Regarding the use of a folding and pivotable game board, the classic game Battleship teaches this feature. See also Wang (US Pub. No. 2020/0197788) at paragraph [0007]; Oakley et al. (US Pub. No. 2015/0257494) at paragraph [0037]; Benedict, III (US Pub. No. 2015/0076767) at paragraph [0048]; Hasegawa (US Pub. No. 2009/0315256) at paragraph [0002]; Hill (US Pub. No. 2006/0273513) at paragraph [0002]; and Pak (US Pat. No. 4,565,374) at column 1; and Tamano (US Pat. No. 4,171,814) at column 1.
Lastly, official notice is taken that magnetic game pieces that magnetically attach to a game board, and scoring/recording books, are well-understood and conventional in the gaming art.
Regarding the printed matter under step 2B analysis as it relates to the tile indicia and a color chart, the examiner reiterates the reasoning from above in step 2A, Prong Two.
Conclusion
6. 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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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.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711