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 .
This action is in response to applicant’s remarks and amendments dated 10/10/2025. Claims 1, 2, and 9 have been amended. Claim 5 has been cancelled. Claims 1-4 and 6-9 are currently pending.
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 1-4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Bramm (US Patent No. 6,497,412 B1) in view of Mintz et al. (US PGPub. No. 2017/0186411 A1).
In Reference to Claim 1-3 and 8
Bramm teaches (Claim 1) A music game comprising: a music player (item 101, fig. 1) being configured to access and play a recorded form of one of a plurality of songs when a select actuation is initiated with the music player, the accessed and played song defining a selected song (column 3 lines 22-32; column 5 lines 29-40); a plurality of cards, each of the cards having one of the categories indicated thereon, a previously determined category used during the select actuation being identified by the category indicated on a drawn one of the plurality of cards (items 103 / 104, column 3 lines 33-41, categories on items 103/104 disclosed as alternately being embodied in a deck of cards; also see column 4 lines 22-40 and column 5 lines 9-17; further note that the language “a previously determined category used during the selection actuation...” is functional language which does not add structure to the claims); a score table comprising a plurality of cells, the plurality of cells being arranged in a plurality of rows and a plurality of columns (item 110, fig. 5), the plurality of cells being configured for tracking a number of rounds of the game, a score for each of a plurality of game players in each round, and a total score (all of these things could be tracked using sheet 110, this is merely intended use language that does not add any particular structure to the claims); and the music player including a [interface] for initiating the select actuation, wherein the select actuation includes one of the plurality of game players [] instructing the music player to play the selected song (column 3 lines 23-32; column 5 lines 29-40);
(Claim 2) further comprising the recorded form of each of the plurality of songs being distributed within a plurality of categories, the selected song being chosen from a previously determined one of the categories (column 3 lines 23-32, column 4 lines 22-40; column 5 lines 27-40; also note this is inconcrete and indefinite);
(Claim 3) further comprising each category being a defined genre of music (column 4 lines 22-40; column 5 lines 27-40; column 9 lines 16-37);
(Claim 8) further comprising the cells of the score table being configured for tracking a title of the selected song for each of a plurality of player turns (item 110, again, anything could be written or “tracked” on this grid, meeting these limitations, this is merely an intended use and does not define any particular structure beyond a grid / table).
Bramm fails to teach the actuation being a microphone of claim 1.
Mintz teaches a microphone being an actuator (paragraph 0056).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the musical system of Bramm with the feature of a microphone for actuation as taught by the musical system of Mintz for the purpose of making the controls more intuitive, easier to use, and making the system more attractive to the users.
Further, the examiner notes that it has been held that the selection of a known element based on its suitability for its intended use is an obvious matter of engineering design choice. See Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Since an actuator for selecting a song based on a category is taught in Bramm, merely claiming a particular type of known actuator (audio input, physical input, buttons, microphones, etc.) is an obvious matter of engineering design choice, and is not a patentable advance.
As discussed above, the examiner believes that all of the limitations of these claims, except where specifically noted, are taught in Bramm, as discussed above. However, in the alternate view that the indicia content of the cards or the indicia content of the score table were intended to be something more specific / distinct from what is taught in Bramm, an alternate rejection is set forth below:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided any particular card content / category indicia and any score table indicia simply as a matter of engineering design choice, since, it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of playing card or score table not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. category / genre indicia and score table indicia and the substrate e.g. playing card / score card, which is required for patentability.
In Reference to Claim 4
Bramm teaches all of claim 1 as discussed above.
Bramm further teaches (Claim 4) further comprising the music player having a [] connection for accessing the plurality of songs (column 8 lines 12-39).
Bramm fails to teach an internet connection for accessing the songs, specifically.
However, alternate embodiments of Bramm teach playing the game using the internet for accessing / storing the game information (column 12 lines 50-66).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Bramm with the feature of an internet connection for accessing the songs as taught by alternate embodiments of Bramm for the purpose of allowing game information to be stored remotely, freeing up processing power in the local device, as well as allowing for a larger number of songs to be stored / accessed, making the game more comprehensive, more versatile, and more interesting and attractive to the users.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Bramm in view of Nobe et al. (US PGPub. No. 2001/0014620 A1).
In Reference to Claims 6 and 7
Bramm teaches all of claim 1 as discussed above.
Bramm further teaches (Claim 6) further comprising the music player being in communication with at least one of [song files] to access the plurality of song (column 8 lines 12-39).
(Claim 7) further comprising the music player being in communication with each of the [song files] to access the plurality of songs (column 8 lines 12-39).
Bramm fails to teach communication with music services.
Nobe teaches communication with music services (paragraph 0063).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the music system of Bramm with the feature of communication with music services as taught by the music system of Nobe for the purpose of providing access to a wider range of music / songs, making the system more comprehensive, more versatile, and more attractive to the users.
Further, the examiner notes that it has been held that the selection of a known element based on its suitability for its intended use is an obvious matter of engineering design choice. See Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). And, that duplication of parts is an obvious matter of engineering design choice unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
Since communication with a database of songs is taught in Bramm, merely claiming another well known way to access songs (via the internet and one or a plurality of music services) is an obvious matter of engineering design choice, and is not a patentable advance. Replacing a physical database with one or a plurality of remote databases is simply substituting one known element for another, and is not a patentable advance.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bramm in view of Mintz et al. and Nobe et al.
In Reference to Claim 9
Bramm teaches (Claim 9) A music game comprising: a music player (item 101, fig. 1) being configured to access and play a recorded form of one of a plurality of songs when a select actuation is initiated with the music player, the accessed and played song defining a selected song (column 3 lines 24-32), the plurality of songs being distributed within a plurality of categories, the selected song being chosen from a previously determined one of the categories (column 3 lines 23-32, column 4 lines 22-40; column 5 lines 27-40), the music player having a [] connection for accessing the plurality of songs (column 8 lines 12-39), the music player including a [interface] for initiating the select actuation, wherein the select actuation includes one of a plurality of game players audibly instructing the music player to play the selected song (column 3 lines 23-32), the music player being in communication with a plurality of [song files] to access the plurality of songs (column 8 lines 12-39); a plurality of cards, each of the cards having one of the categories indicated thereon, a previously determined category used during the select actuation being identified by the category indicated on a drawn one of the plurality of cards (items 103 / 104, column 3 lines 33-41, categories on items 103/104 disclosed as alternately being embodied in a deck of cards; also see column 4 lines 22-40 and column 5 lines 9-17; further note that the language “a previously determined category used during the selection actuation...” is functional language which does not add structure to the claims); and a score table comprising a plurality of cells, the plurality of cells being arranged in a plurality of rows and a plurality of columns (item 110, fig. 5), the plurality of cells being configured for tracking a number of rounds of the game, a score for each of the plurality of game players in each round, a title of the selected song for each of a plurality of player turns, and a total score (all of these things could be tracked using sheet 110, this is merely intended use language that does not add any particular structure to the claims).
Bramm fails to teach the actuation being a microphone, an internet connection for accessing the songs, and communication with music services of claim 9.
However, alternate embodiments of Bramm teach playing the game using the internet for accessing / storing the game information (column 12 lines 50-66).
Mintz teaches a microphone being an actuator (paragraph 0056).
Nobe teaches communication with music services (paragraph 0063).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the game of Bramm with the feature of an internet connection for accessing the songs as taught by alternate embodiments of Bramm for the purpose of allowing game information to be stored remotely, freeing up processing power in the local device, as well as allowing for a larger number of songs to be stored / accessed, making the game more comprehensive, more versatile, and more interesting and attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the music system of Bramm with the feature of communication with music services as taught by the music system of Nobe for the purpose of providing access to a wider range of music / songs, making the system more comprehensive, more versatile, and more attractive to the users.
Further, the examiner notes that it has been held that the selection of a known element based on its suitability for its intended use is an obvious matter of engineering design choice. See Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). And, that duplication of parts is an obvious matter of engineering design choice unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
Since communication with a database of songs is taught in Bramm, merely claiming another well known way to access songs (via the internet and one or a plurality of music services) is an obvious matter of engineering design choice, and is not a patentable advance. Replacing a physical database with one or a plurality of remote databases is simply substituting one known element for another, and is not a patentable advance.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the musical system of Bramm with the feature of a microphone for actuation as taught by the musical system of Mintz for the purpose of making the controls more intuitive, easier to use, and making the system more attractive to the users.
Further, the examiner notes that it has been held that the selection of a known element based on its suitability for its intended use is an obvious matter of engineering design choice. See Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Since an actuator for selecting a song based on a category is taught in Bramm, merely claiming a particular type of known actuator (audio input, physical input, buttons, microphones, etc.) is an obvious matter of engineering design choice, and is not a patentable advance.
As discussed above, the examiner believes that all of the limitations regarding the content of the card and score table are taught in Bramm, as discussed above. However, in the alternate view that the indicia content of the cards or the indicia content of the score table were intended to be something more specific / distinct from what is taught in Bramm, an alternate rejection is set forth below:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided any particular card content / category indicia and any score table indicia simply as a matter of engineering design choice, since, it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of playing card or score table not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. category / genre indicia and score table indicia and the substrate e.g. playing card / score card, which is required for patentability.
Functional / Intended Use Language Note
The examiner further notes that it has been held that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Further still, it has also been held that "The recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “Apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). The claims are replete with functional / intended use language that does not add structure to the claims.
Response to Arguments
Applicant’s arguments, see Remarks, filed 10/10/2025, with respect to the previous 112 and 102 rejections have been fully considered and are persuasive. The 112 and 102 rejections have been withdrawn.
Applicant's remaining arguments filed 10/10/2025 have been fully considered but they are not persuasive.
Applicants’ argument regarding the purpose of the microphone of Mintz is noted, but is not persuasive.
Applicant appears to point to other purposes / uses of the Mintz reference that have not been used in the rejection and are not germane to it. Applicant specifically notes that “the microphone of Mintz is taught as a tool for composition or synthesizing music.”
While this is noted, the teaching specifically used from Mintz, in the rejection, is the teaching in paragraph 0056, which states that a microphone can be used as an external controller, “similar to a mouse, keyboard or any other device that can provide communication with the computing device,” to provide prompts “vocal input” (i.e. command prompts) from a player through the microphone. This meets applicant’s claimed limitations of including a microphone for initiation action.
Further, as noted in the above action, the selection of a known input device or actuation mechanism to accomplish the same purpose that is explicitly taught in the primary reference of Bramm (performing a selection actuation function; Bramm, column 3 lines 23-32; column 4 lines 22-40; column 5 lines 27-40), is an obvious matter of engineering design choice. Using a microphone with vocal inputs for this function instead of buttons, a mouse, a keyboard, or any other known type of input means is simply substituting one known element for another, and is not a patentable distinction.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711