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 § 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 1-20 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.
In claim 1, line 9, “simultaneously communicating”, line 12, “simultaneously combine”, and line 13, “the simultaneously selected” are considered new matter.
In claim 3, line 2, “to simultaneously access” is considered new matter.
In claim 6, line 4, “simultaneously” is considered new matter.
In claim 11, line 2, “simultaneously use” is considered new matter.
In claim 13, line 5, “simultaneously select” is considered new matter.
In claim 14, line 3, “simultaneously separately select” is considered new matter.
In claim 17, line 8, “simultaneously select”, and line 9, “simultaneously from” are considered new matter.
In claim 18, line 4, “simultaneously select” is considered new matter.
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, 2 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barr (2005/0278764) in view of Copper et al. (6,301,243).
Regarding claim 1, Barr discloses a set-top entertainment device (Fig. 1) comprising: a set-top housing (32) configured to be arranged between a television audio source and a television; an input port (66) arranged to connect the entertainment device to the television audio source to receive a television input signal, said television input signal comprising an audio signal for playing through a television audio output (70); a storage device (50, 52) arranged in the housing and storing an audio file database comprising a plurality of user-selectable audio files; communication module (48) for communicating with one or more remote control devices (par. 25); a processor (60); and a output port (70) arranged to provide a combined output signal (64) to the television, wherein the entertainment device is programmed to output the combined output signal substantially in real-time with the television input signal being received into the input port (note par. 12); except
the communications module (48, 60) arranged in the housing for simultaneously communicating with multiple controllers (note par. 25 and 30), wherein each controller is usable by a separate user to simultaneously select a desired audio file from the audio file database (par. 25, 30, 45); and
the processor (60) arranged in the housing and configured to combine the audio signal from the television input signal with all of the selected audio files into a combined output signal substantially in real-time with the input signal being received into the input port (note 62a, 62b, 64).
In par. 25 and 45, Barr teaches that one or more remote controls can be used as the users’ remote control devices which enable a group of participants to spontaneously and dynamically add supplemental audio contents to live or recorded television or video programs.
Copper, from the similar field of endeavor, teaches the use of multiple remote controls (25, 26, 27, 28) for a set-to box (9). The remote controls (25, 26,2 7, 28) enable multiple players to play video games on the monitor 12 simultaneously (note col. 5, lines 7-48). Especially, in col. 5, lines 37-44, Copper states that each of the remote controls (25, 26, 27, 28) is configured to control or move a respective cursor so that an item displayed on the display screen 12 can be selected.
Knowing that Barr can employ or requires multiple remote controls, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include Copper into Barr so that the system could be used by multiple players instead of one. By including Copper into Barr, the audio files as shown in Fig. 4-13 could be selected independently and simultaneously by each of the remote controls (25, 26, 27, 28) and combined and played back by the processor 60 as digital audio data inputting to stereo digital to analog converter 62A. Thus, the combination of Barr and Copper clearly meets the claimed invention.
Regarding claim 2, the combination of Barr and Copper meets the controller is a wireless controller configured to communicate with the entertainment device to individually select the audio file from the audio file database.
Regarding claim 9, Barr discloses the controller is a specially-adapted handheld remote control designed and configured to only control the entertainment device, wherein the handheld remote control communicates with the entertainment device via a wireless signal (note par. 25).
Claim(s) 3, 6, 7, 11, 13, 14, 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barr (2005/0278764) in view of Copper et al. (6,301,243), and further in view of Kapell et al. (5,774,172).
Regarding claim 3, the combination of Barr and Copper does not disclose each separate controller is a wireless controller further configured to simultaneously access and control the entertainment device to individually select one or more overlay images from an overlay image database along with a screen position for placement of the selected overlay images on the television display. Kapell, from the similar field of endeavor, discloses an apparatus for superimposing a video or image selected by the user from a storage file onto an input video signal along with screen position for placement of the selected overlay image (col. 3, line 56, to col. 6, line 3). The superimposing operation enhances entertainment value of the TV watching experience (col. 4, lines 7-11) and decreases the chance of destruction of the TV itself (note col. 1 lines 10-40). Hence, in view of Kapell, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include Kapell into the combination of Barr and Copper so that the TV watching experience could be enhanced while the chance of destruction of the TV itself could be reduced.
Regarding claims 6 and 7, see rejection to claim 3 as set forth above. It should be noted that the combination of Barr, Copper and Kapell allows the overlay images and audio files to be selected separately and independently due to the images and audio files are located in different memory locations.
Regarding claim 11, the combination of Barr, Copper and Kapell discloses that each user is further able to simultaneously use the respective controller to select one or more overlay images from a separate overlay image database separately from the selection of any audio file to include in the combined output signal substantially in real-time with the input signal being received in the input port. It should be noted that the combination of Barr, Copper and Kapell allows the overlay images and audio files to be selected separately and independently due to the images and audio files are located in different memory locations.
Regarding claims 13, 14, 17 and 18, see similar rejections as set forth above.
Claim(s) 4, 5, 16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barr (2005/0278764) in view of Copper et al. (6,301,243), and further in view of Heyworth et al. (2008/0227500).
Regarding claim 4, the combination of Barr and Copper does not disclose that the controller is a handheld phone, and wherein multiple users can each use a separate handheld phone to control the entertainment device at the same time. Instead, Barr discloses an infrared remote control 30; however, Barr teaches that any conventional remote control can replace the infrared remote control (note par. 27) and multiple remote controls can be used (note par. 25). Heyworth, from the similar field of endeavor, teaches the use of multiple mobile telephones for controlling an interactive entertainment system for a plurality of users simultaneously (note Fig. 1). The system greatly enhances the overall interactivities of the entertainment system (note par. 13). Hence, in view the advantages of Heyworth and teaching of Barr, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include Heyworth into Barr so that the interactivities in Barr could be further enhanced by including more than one players.
Regarding claim 5, Heyworth discloses each of the handheld phones communicating with the entertainment device comprises an application that permits it to communicate with and control the entertainment device (note par. 13 and 31).
Regarding claims 16 and 20, see rejection to claim 5.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barr (2005/0278764) in view of Copper et al. (6,301,243), and further in view of Park et al. (2020/0219976).
Regarding claim 10, the combination of Barr and Copper does not disclose the remote control comprises a display screen and a touch pad as claimed. However, Barr does teach that the remote control can be any conventional remote control (note par. 25). Park, from the similar filed of endeavor, discloses a remote control with a display screen and a touch pad (note remote controls 200 and 201 in Fig. 2). Hence, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include Park into the combination of Barr and Copper to perform the well known functions as claimed.
A new non-final rejection as set forth above is required in order to address the new matter issue. The examiner apologizes for the delay.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL LEE whose telephone number 571-272-7349. The examiner can normally be reached on Monday through Thursday from 9:00 am to 6:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, John Miller, can be reached on 571-272-7353. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/MICHAEL LEE/ Primary Examiner,
Art Unit 2422