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 .
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.
Claim(s) ) 1, 4-6, 8, 11-12, 14-15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walker Jr. (8932099 and Briody (520155). Walker Jr. discloses a racing game device (Fig. 1) having a sloped basin (534) with a hole at the lowest point of the basin (Fig. 5B), a stand configured to support the basin on a flat surface (Fig. 1), a plurality of color coded balls (118) configured to roll in the basin and pass through the hole (Fig. 5B) and a channel (548) configured to collect the one or more balls that fall out of the hole which connects beneath and slopes away from the hole in the basin to an accessible point located laterally away from the hole (550). The balls are capable of being released around a top of the basin for traveling over a surface of the basin to the hole (Figs. 1 & 5B). The stand includes a skirt (524) that supports the basin around at least a portion of a periphery of the basin and a base section (542) that extends beyond the skirt and contains the channel (Fig. 5B). The channel extends outside of the skirt and ends in a runway (550) having an open-top flat base with upward-extending sides and a stop at the end of the runway configured to allow the plurality of balls to roll down the channel and along the runway until the balls contact the stop with a width that allows only one ball at a time to traverse there over to preserve an order of the balls (Fig. 5C). The base section and skirt are removable to allow the sloped basin to be removed from the stand (Figs. 5B-5C). The device further includes a hand-held runway (102a) configured to introduce a ball into the basin with sufficient momentum to traverse the basin (column 5 lines 17-44). Walker Jr. further discloses a method of racing balls by introducing the plurality of balls into the basin with the hole and a winning ball being the first of the balls to fall through the hole (column 8 lines 8-46 & column 10 lines 17-43). Walker Jr. discloses the basic inventive concept, with the exception of including a larger-radius ball that is larger than a radius of the hole in the basin such that it blocks other balls from passing through the hole. Briody discloses a game using balls having openings wherein at least one ball (m) has a larger radius than a radius of an opening (k) to prevent other balls (p) from passing through the hole when the larger radius ball covers the hole (Fig. 1). It would have been obvious to one of ordinary skill in the art from the teaching of Briody to include a larger diameter ball to the game device of Walker Jr. for the predictable result of making the game more interesting and entertaining by providing additional randomness.
Claim(s) 2 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walker Jr. and Briody as applied above and further in view of Philpot (3559990). Walker Jr. and Briody disclose the basic inventive concept with the exception of the basin being a spherical basin with curved upwardly extending sides along an edge that allow balls to travel in a decaying orbit around the hole. Philpot discloses a game device for balls having a sloped spherical basin with curved upwardly extending sides along an edge and a hole in a lowest point to permit balls to travel in a decaying path to the hole (Figs. 1-2). Since both Walker Jr. and Philpot disclose sloped basins with holes at a lowest point useable with balls, it would have been obvious to modify the shape of the basin of Walker Jr. as a spherical basin with curved sides as taught by Philpot since such a modification would have involved a mere change in shape which has been held to be obvious. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Allowable Subject Matter
Claims 9-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 7/7/26 have been fully considered but they are not persuasive.
In response to applicant's argument that Briody is a puzzle game and not a racing game, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, the reference teaches that a known obstacle that can be incorporated into games using balls traveling over a game surface can include balls of different sizes in order to affect how the different balls traverse a game surface to provide more interesting game play.
In response to applicant's argument that the use of a larger ball in a “racing game” would perform differently and provide a different purpose than the larger ball as provided in Briody, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Furthermore, the claims are directed to an apparatus and even if desired game play outcomes were recited in the claims (the larger ball providing a random timing element, the larger ball not being moveable once it reaches the hole and thus ends the game), it is noted that recitations of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant’s argument that Walker Jr. utilizes different obstacles to effect game play and as such teaches away from the larger ball obstacle taught by Briody, the examiner notes that disclosed examples and embodiments in the prior art does not constitute a teaching away unless the disclosure actually criticizes, discredits or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/A.M.H/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
