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 .
Election/Restrictions
Newly submitted claims 46-60 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Newly presented claims 46-51, are drawn to a method of operating a video game console, involving selective physical configurations and modes classified in G06F 1/16 & 3/14. Newly presented claims 52-60, are drawn to a Neural Processing AI Engine, classified in G06N 3/08 & 20/00.
Claims 46-60 represent separate and distinct inventions from the invention of claims 21-40 as previously presented and examined in the Non-Final Office action dates March 31st, 2025 and drawn to a linked video game system for touchscreen devices involving the detection and translation of input directives, classified in A63F 13/28, 13/92, & 13/2145.
The originally claimed invention and the newly presented inventions of claims are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a materially different design, mode of operation, function, or effect, that do not involve a linked video game system for touchscreen devices involving the detection and translation of input directives as was reflected in the originally presented and examined claim set. Additionally, the newly presented inventions do not overlap in scope and would be mutually exclusive to the originally presented invention because would not anticipate and/or reflect an obvious variant of the originally claimed and examined invention. The inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because the inventions have acquired a separate status in the art in view of their different classification.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 46-60 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 41, 61-62, and 65-66 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,155,960 in view of Cheng (US 7,806,777).
Pending claims 41, 61-62, and 65-66 and patented claim 1, are substantially similar to one another with the exceptions of minor differences in nomenclature and the additional incorporation of Artificial intelligence and/or a Joystick input in the pending claims that was not provided in the patented claim. In an analogous invention however, Cheng teaches that the incorporation of Artificial intelligence and/or a Joystick inputs was known at the time of invention (Cheng Col 4:56-5:15, 6:11-26). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have incorporated the use of Artificial intelligence and/or a Joystick input as taught by Cheng, into the patented claimed invention because such would have provided the expected and predictable result of utilizing known additional interface device type and/or provided additional game assets to enhance the functional capabilities of the patented invention.
Declarations Submitted under 1.132
Applicant refers to an affidavit or declaration filed in the prior application (See Applicant Remarks of September 30th, 2025 Page 20). Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application do not automatically become a part of this application. Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior 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 42-45 and 63-64 are replete with lack of enablement issues because they contain subject matter that was not described in the instant application specification as originally filed. Additionally, while the Applicant’s remarks for support of the claimed elements are noted as citing to elements of one or both Application 14/881,144 and US Patent 9,155,960 (noted as being incorporated by reference in the first paragraph of the applicant’s specification as filed on January 19th, 2023) review of these sections does not support the disclosure of these elements as proposed.
The following illustrative examples with respect to claim 42 are reflective of the lack of enablement issues presented in the rejected claims. As a point of clarity while the Applicant’s table as presented on pages 15-20 of their remarks is helpful in clarifying where the Applicant believes the newly presented limitations to be supported, it is respectfully noted that they do not use the correct standard for demonstrating support for these features in the instant application. Specifically, the enablement standard requires that any presented claim be support by the instant application specification as originally filed, and while the Applicant may amend their specification to include content unintentionally omitted from the instant application but present in incorporated by reference sources in the originally presented specification they may not rely on these documents to demonstrate that the claimed subject matter has been disclosed in the instant application (See MPEP § 217, 608.01(p) & 2164). Broadly speaking content that was not specifically described including arrangements of disclosed elements that were not described are not enabled unless the content or arrangements in question are shown to be inherent components of disclosed elements. Applicant proposed support for claim limitations based on the elements being previously known but not disclosed by the instant application (or incorporated by reference originally) do not meet the requirements for enablement under this section.
Claim 42 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for” The wireless input controller601 input, capable of vibrotactile feedback, may further comprise its own touchscreen and/or touchpad interface604,” (Instant Specification Page 56), does not reasonably provide enablement for “(a) the touchscreen device transmits haptic input directives as commands, which the controller receives and uses to activate its haptic motors, generating a corresponding tactile game feedback felt by the user”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
Claim 42 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the use of wired and wireless controllers as shown in figure 1, does not reasonably provide enablement for “(b) two controllers are attached to the touchscreen device during use in a handheld mode, wherein as attached the controllers connect and communicate through a physical connection on the sides of the touchscreen device as opposed to Bluetooth or wireless signals when operated remotely or in the remote position;”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. The applicant’s proposal that this limitation is not specifically excluded by the disclosure of the specification does not demonstrate that the specification as filed discloses this particular arrangement and as such does not meet the requirements of 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
Claim 42 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for “The animated image may be programmed to playfully bow down towards the player120 and may, exempli gratia, see its behaviour modelled under an artificial intelligence (AI) engine that ‘learns’ from actions taken by a player for added immersion. A neural-network model may also be exploited for co-operative and multi-player game play.”(Specification Page 26), does not reasonably provide enablement for “(d)…wherein the device's CPU actively executes the non-AI instructions of the game, while AI-related computations, comprising the in-game AI tasks, are offloaded to the device's AI engine for accelerated processing;”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. The applicant’s proposal that this limitation would be recognized as possible by a POSITA does not demonstrate that the specification as filed discloses this particular arrangement and as such does not meet the requirements of 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
Claim 42 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for “The animated image may be programmed to playfully bow down towards the player120 and may, exempli gratia, see its behaviour modelled under an artificial intelligence (AI) engine that ‘learns’ from actions taken by a player for added immersion. A neural-network model may also be exploited for co-operative and multi-player game play.”(Specification Page 26) does not reasonably provide enablement for “(e) the external media further comprises any, up to all, of the following: a physical game card;…a base game comprising an instance of the running game application, distributed either via physical game card or digital download, further comprising access to additional content added through free or paid downloadable content stored separately on the touchscreen device's internal memory or an inserted data-storage device;”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Even if elements are well-known avenues of game distribution as argued by the Applicant, the Applicant cannot claim features that were not explicitly or implicitly part of their specification as originally filed (including elements incorporated by reference as originally filed). As previously noted, the Applicant cannot claim features that were not explicitly or implicitly part of their specification as originally filed (including elements incorporated by reference as originally filed).
Claim 42 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for “The animated image may be programmed to playfully bow down towards the player120 and may, exempli gratia, see its behaviour modelled under an artificial intelligence (AI) engine that ‘learns’ from actions taken by a player for added immersion. A neural-network model may also be exploited for co-operative and multi-player game play.”(Specification Page 26), does not reasonably provide enablement for “(f) the AI Engine comprises specialized execution units, or AI cores, an AI-optimized hardware designed to accelerate machine learning, including deep learning, and data processing tasks including: audio signal processing; image signal processing; graphics rendering processing; and/or video signal processing”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
Each of these elements do not meet the enablement requirements of 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the absence of the disclosure of these elements in the applicant’s specification, the lack of direction provided by the inventor, including the lack of described working examples, and the state of the prior art would require undue experimentation in order to make and/or use the invention as now claimed based on the originally presented disclosure.
Claims 43-45 and 63-64 reflect a similar incorporations of non-enabled subject matter noted with respect claim 42 and are accordingly additionally rejected under this section.
Claims 42-45 and 63-64 are additionally 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 ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee [inventor] was in possession of the invention that is claimed."(See MPEP 2163).
The following illustrative examples with respect to claim 42 are reflective of the lack of written description issues presented in the rejected claims. As a point of clarity while the Applicant’s table as presented on pages 15-20 of their remarks is helpful in clarifying where the Applicant believes the claimed elements are supported the same identifies where support is not provided in the written description of the instant application such as:
i. “(a) the touchscreen device transmits haptic input directives as commands, which the controller receives and uses to activate its haptic motors, generating a corresponding tactile game feedback felt by the user”, wherein the proposed support is presented as elements of Application 14/811,144 directed to “the wireless input controller 601 input capable of vibrotactile feedback”. The proposed support is not presented in the instant application and the cited support even if incorporated into the instant application does not recite the same feature as now particularly claimed.
ii. “(b) two controllers are attached to the touchscreen device during use in a handheld mode, wherein as attached the controllers connect and communicate through a physical connection on the sides of the touchscreen device as opposed to Bluetooth or wireless signals when operated remotely or in the remote position;”, wherein the proposed support for this feature is that this limitation is not specifically excluded by the disclosure of the specification however this does not demonstrate that the specification as filed discloses this particular arrangement.
iii. “(d)…wherein the device's CPU actively executes the non-AI instructions of the game, while AI-related computations, comprising the in-game AI tasks, are offloaded to the device's AI engine for accelerated processing;” , wherein the proposed support for this feature is that this limitation would be recognized as possible by a POSITA, does not demonstrate that the specification as filed discloses this particular arrangement.
iv. “(e) the external media further comprises any, up to all, of the following: a physical game card;…a base game comprising an instance of the running game application, distributed either via physical game card or digital download, further comprising access to additional content added through free or paid downloadable content stored separately on the touchscreen device's internal memory or an inserted data-storage device;”, wherein the proposed support for this feature is that the listed element represent well-known categories of video game distribution, does not demonstrate that the specification as filed discloses this particular arrangement.
v. “(f) the AI Engine comprises specialized execution units, or AI cores, an AI-optimized hardware designed to accelerate machine learning, including deep learning, and data processing tasks including: audio signal processing; image signal processing; graphics rendering processing; and/or video signal processing”, wherein the proposed support for this feature is that these are inherent element of AI yet the cited sources including MPEP 2163.07(a) & Ex Parte Cutlip (PTAB June 2, 2014) do not support the Applicant’s argument of inherency and as such does not demonstrate that the specification as filed discloses this particular arrangement.
Claims 43-45 and 63-64 reflect a similar concerns of lack of written description as noted with respect claim 42 and described by the applicant presented table and are accordingly additionally rejected under this section.
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 42 and 45 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.
Claim 42 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.
See claim element (c) “…as exemplified in FIG. 1”
Claim 45 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.
See claim element (h) “…as exemplified in FIG. 1”
Response to Arguments
Applicant's arguments filed September 30th , 2025 have been fully considered but they are not persuasive.
The Applicant has cancelled the previously presented and examined claims 21-40 and introduced new claims 41-66. While this introduction has overcome the previously presented statutory double patenting rejection as presented in the March 31st, 2025 office action, the same has introduced new issues as summarized herein above.
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
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 ROBERT E MOSSER whose telephone number is (571)272-4451. The examiner can normally be reached M-F 6:45-3:45.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at 571-272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715