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 .
Response to Amendment
This is in response to the amendments filed on 1/18/21. Claims 1 and 13 have been amended and claims 7 – 12 were previously withdrawn. Claims 1 – 6 and 13 – 20 are pending in the current application.
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 1 and 13 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. The claim limitation of “prediction” is considered to be new matter.
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 and 13 recite the limitation “based on said prediction” in lines 10 – 11 in claim 1 and lines 11 – 12 in claim 13. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1 is/are rejected under 35 U.S.C. 102(a) as being anticipated by Geisner et al. (U.S. 2013/0095924).
Regarding claims 1 and 13, Geisner discloses a tangible computer-readable storage medium for generating instructional content for the challenged, ("the avatar may be a virtual coach for whom audio and virtual data is displayed representing the coach as giving verbal and demonstrative instructions”, par. 0142), comprising a set of instructions executable by a processor to perform a method, (“The one or more processors determine a physical sport movement recommendation based on a sport being played”, par. 0007), the method including recording images of at least one human subject, ("cameras, for recording digital image data such as still images, videos or both, and transmitting the visual recordings”, par. 0038), processing the recorded images to determine a sequence of gestures made by the human subject, (“the reference data for a physical sport movement is gesture filter (see below) which may be registered with the gesture recognition engine so it can notify the sport engine when a movement has occurred”, par. 0062), synchronizing the recorded images with a narrative corresponding to the determined sequence of gestures into a synchronized image-supportive narrative, (fig. 9g), storing the synchronized image supported narrative to permit reproduction of the synchronized image on a processor enabled under device, ("storing data about a user, objects and places”, par. 0166).
Regarding claims 2 and 14, Geisner discloses interpreting the determined sequence of gestures by a processor, and generating the narrative by a processor based on the interpreted determined sequence of gestures, (“the reference data for a physical sport movement is gesture filter (see below) which may be registered with the gesture recognition engine so it can notify the sport engine when a movement has occurred”, par. 0062).
Regarding claims 3 – 6 and 15 - 19, wherein the narrative incudes spoken verbal content, and the reproduction includes reproduction of the spoken verbal content in audible form, (“giving verbal and demonstrative instructions”, par. 0142).
Regarding claim 20, Geisner discloses wherein the generating generates a sequence of steps followed on a processor-enabled device, wherein the generating is performed such that when the generated sequence of steps is reproduced, the second user must follow each step to permit the second user to advance to the next successive step, (“the sport engine 414 may provide a selection, e.g. a menu, of avatars for a highly skilled player, an intermediate player, an advanced beginner player and a beginner player from which a user can select an avatar to play against or watch performing similar movements as the user for skill improvement purposes”, par. 0144).
Response to Arguments
Applicant's arguments filed on 1/18/21 have been fully considered but they are not persuasive. Regarding claims 1 and 13, Applicants argue that “Geisner does not teach, anticipate, or make obvious the present independent claim 1 as amended.” More specifically, it is argued that in Geisner “there are no games and no predictability to the outcome of a human being with disabilities”, and that “the present amended claims are directed to teach a person with coping skills”. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., games with predictability and coping skills) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Conclusion
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/E.M.T/Examiner, Art Unit 3715 /DAVID L LEWIS/Supervisory Patent Examiner, Art Unit 3715