DETAILED ACTION
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 .
Drawings
The drawings are objected to because they contain improperly shaded Figures. Specifically, Figures 1, 3B and 3C are improperly shaded. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent Claims 14 and 19 recite that the flat bottom surface of the indented spaces comprises a "re-usably printable material for writing upon with an erasable writing implement." The phrase "re-usably printable material" represents an exceptionally broad genus of materials, and it is noted that the specification only provides written description support for a very narrow set of species—namely, wood, plastic, or acrylic bases finished with conventional chalkboard paint or standard, manual dry-erase whiteboard laminates. The broad term "re-usably printable material," however, encompasses a vast array of distinct technologies, including active digital electronic ink (e-paper) surfaces; Photothermal or photochromic chemical surfaces that alter state under light/heat; Magnetic particle drawing films (e.g., Magna Doodle structures); and Pressure-sensitive or chemical-color-changing substrates. The specification does not disclose enough representative species or common structural/chemical characteristics to demonstrate that the inventor possessed this broad genus of reusable materials. There is no evidence in the specification that the inventor contemplated or possessed electronic, magnetic, or chemically active materials configured as the bottom layer of a physical puzzle.
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 1-13 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.
The term “chalk-like writing implement” in claim 1 is a relative term which renders the claim indefinite. The term “chalk-like writing implement” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear whether this term refers strictly to physical composition (e.g., calcium carbonate or gypsum-based implements); or refers to writing characteristics (e.g., dry, powdery, easily erasable marks); or encompasses other non-chalk implements such as crayons, slate pencils, dry-erase crayons, or specialized wax pencils. Because the boundaries of "chalk-like" are subjective and dependent on the user's interpretation without an objective standard in the specification, the term renders Claim 1 and its dependent claims indefinite.
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.
Claim 19 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites a method of using a printable puzzle apparatus and specifically the abstract educational concept of matching physical items and performing writing exercises.
The claims do not integrate the abstract idea of an educational puzzle/writing game into a practical application because they do not recite additional elements that apply, limit, or use the exception in a manner that improves a technological field or solves a technical problem. Specifically, the physical components recited—a flat board layer, indented spaces, matching puzzle pieces, and a chalkboard or dry-erase writing surface—are described at a high level of generality. The specification does not disclose any novel physical structure or material. Furthermore, the additional structural elements function in their normal, expected, and conventional manner with the indented spaces receiving and holding matching puzzle pieces to prevent lateral movement; and the chalkboard/printable material serving as a standard surface to write upon with a writing implement (e.g., chalk or an erasable marker) and to erase. The claimed puzzle apparatus does not improve the technical operations of a puzzle or the physical composition of chalkboard materials. Instead, the claims merely use conventional physical components to facilitate the abstract idea of a handwriting and shape-matching educational concept. Consequently, the claims fail to integrate the abstract idea into a practical application under Alice Step 2A, Prong 2.
The additional elements, considered individually and as an ordered combination, do not amount to "significantly more" than the abstract idea. The prior art analysis (e.g., US-3359004-A to Ellis and US-5184822-A to Bognar et al.) demonstrates that puzzle boards with indented spaces, matching puzzle pieces, and dual-purpose educational play surfaces are routine, conventional, and well-known in the toy and educational arts. Combining a traditional matching puzzle board with a conventional chalkboard or dry-erase surface is a routine and logical aggregation of conventional elements. It does not yield an inventive concept or unexpected results, as both components function independently in their expected ways. Therefore, it is held that the recitation of a generic base, standard puzzle pieces, and standard printable surfaces represents nothing more than a generic hardware environment utilized to carry out the abstract concept.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 1,364,778 (Matthews).
US 1,512,677 (Cress).
US 2,984,489 (Parlato).
US 3,359,004 (Ellis).
US 3,992,010 (Mattenson).
US 5,184,822 (Bognar).
US 2005/0035544 (Cooke).
US 2015/0111182 (Nelson).
US 2015/0269853 (Raad).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERRY-DARYL FLETCHER whose telephone number is (571)270-5054. The examiner can normally be reached Monday -Thursday (7-5).
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, Marivelisse Santiago-Cordero can be reached at 571-272-7839. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JERRY-DARYL FLETCHER/ Supervisory Patent Examiner, Art Unit 3763
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