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 Status
After the amendments filed 03/27/2026, claim 23 was cancelled, therefore, claims 1-13, 15-18, 21-22, and 24 are currently pending, of which 1, 9, and 18 were amended and 24 was newly added.
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, 9 and 18 (as well as each claim which depends therefrom) 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 1, 9 and 18 recite limitations which, given their broadest reasonable interpretation, result in a recording being generated, wherein the generated recording includes mixed editability states (e.g., editable digital content and un-editable pre-recorded content). The specification fails to teach how to construct such a generated recoding or enforce said editing constraints. To implement the claimed invention, one must derive a method for combining pre-recorded content associated with an electronic game with digital content associated with the electronic game in a single recording and implement a mechanism to allow for removing a portion of the recording (i.e., the digital content) while not allowing another portion of the recoding to be removed (i.e., the pre-recorded content). Standard video editors generally treat video files with a single editing scheme (i.e., either the entire file is editable or the entire file is un-editable). In order to provide for such a separation of editing parameters one would need to develop a custom file format or a custom player/editor with allows for a single video file to include multiple Digital Rights Management protections. The development of such a mechanism would be substantial. Further, the specification provides no guidance, nor does it provide any protocols or data schemas which show the mechanism by which the generated recording would allow a portion thereof to be removed while preventing another portion to not be removed. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 1, 9 and 18.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-13, 15-18, 21-22, and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walker et al (U.S. 2008/0274798).
In Regards to claims 1, 9, and 17-18, Walker discloses:
an electronic gaming device (¶145, gaming device 250) comprising:
a display device (¶154-156, gaming device 250 includes a display device 265);
at least one memory in communication with the display device, the at least one memory with instructions stored thereon (¶159-160, gaming device 250 includes a memory 280 storing a program for controlling processor 255); and
at least one processor in communication with the at least one memory (¶158-160, gaming device 250 includes a processor 255), wherein the instructions, when executed by the at least one processor, cause the at least one processor to:
store, on the at least one memory, pre-recorded content associated with the electronic game, wherein the pre-recorded content comprises at least one of video data or audio data (¶36-7, ¶41-42, video images of players at gaming devices are captured continuously during gameplay);
store, on the at least one memory, digital content associated with a play of the electronic game the play including a trigger condition occurring during the electronic game, the play occurring after the prerecorded content is stored on the at least one memory (¶227, based on a predetermined trigger occurring during gameplay (e.g., the player receiving a flush during a play of a poker game), the event is recorded);
generate a recording including the digital content based on the trigger condition occurring during the electronic game (¶79, ¶227, documentation is generated including the game event which met the trigger condition (i.e., did result in a flush) and includes a timestamp indicating the time the event occurred);
add the pre-recorded content to the recording (¶41-42, ¶79, ¶227, images of the player just prior to realizing the game event may be recorded and included in the documentation);
transmit the recording to a player account associated with a player of the electronic game (¶306, a player may store documented events to their player account),
wherein at least part of the digital content in the recording is editable as being removable from the recording (¶283, ¶361-363, the player may digitally edit the picture, audio and/or video associated with the event, such as by removing identifying features of the player), and wherein the pre-recorded content in the recording is un-editable as not being removeable from the recording (¶79, text of the date of the event is superimposed on the video of the event, the examiner interprets the date/time at which an event occurs as being fixed and thus un-editable).
In Regards to claims 2 and 10, Walker discloses that which is discussed above. Walker further discloses that:
the instructions further cause the at least one processor to:
capture at least one digital image of the player (¶93, an image of a player’s reaction to the event may be captured); and
include the digital image in the recording (¶485, the picture of the player’s reaction is overlaid with an image of the game event).
In Regards to claims 3 and 11, Walker discloses that which is discussed above. Walker further discloses that:
the instructions further cause the at least one processor to include the digital image in the recording by overlaying the digital image on at least part of the recording (Fig. 13, reference character 1320 overlaid on game display 1310).
In Regards to claims 4 and 12, Walker discloses that which is discussed above. Walker further discloses that:
the instructions further cause the at least one processor to capture the at least one digital image using at least one of 1) a camera of the electronic gaming device or 11) a camera of an end-user device (EUD), the EUD comprising at least one of a smartphone, a personal computer, or a tablet computing device (¶191, ¶323, ¶478, each slot machine is equipped with a camera that records a player’s reaction or the player’s reaction may be recorded using a handheld device equipped with a camera).
In Regards to claims 5 and 20, Walker discloses that which is discussed above. Walker further discloses that:
the instructions further cause the at least one processor to:
receive an input associated with an edit to the recording (¶364, the player requests the event to be processed or edited); and
update the recording with the edit (¶377, the event is processed or edited).
In Regards to claim 6, Walker discloses that which is discussed above. Walker further discloses that:
the edit includes at least one of i) a visual edit to at least part of the recording or 11) audio data to be included in the recording (¶379, verbal or written annotation may be added to the documentation of the event).
In Regards to claims 7 and 15, Walker discloses that which is discussed above. Walker further discloses that:
the instructions further cause the at least one processor to transmit provide access to the recording by:
causing display of a player selectable option that enables the player to enter at least one of 1) an email address or ii) a telephone number (¶442, a player is given the option to email the documentation); and
transmitting the recording or instructions to access the recording to the at least one of the email addresses or the telephone number (¶442, the document is emailed to the recipient specified by the player).
In Regards to claims 8 and 16, Walker discloses that which is discussed above. Walker further discloses that:
the instructions further cause the at least one processor to transmit provide access to the recording by at least one of causing display of an encoded link to the recording, causing display of a link to a website that provides access to the recording, or causing display of a quick response (QR) code that provides access to the recording when the QR code is scanned (¶482, the documentation is published to a website, wherein a link is displayed, for example, on a casino website).
In Regards to claim 13, Walker discloses that which is discussed above. Walker further discloses that:
the instructions further cause the at least one processor to:
receive an input associated with an edit to the recording, the edit includes at least one of i) a visual edit to at least part of the recording or 11) audio data to be included in the recording (¶364, ¶379, the player requests the event to be processed or edited, wherein verbal or written annotation may be added to the documentation of the event); and
update the recording with the edit (¶377, the event is processed or edited).
In Regards to claim 14, Walker discloses that which is discussed above. Walker further discloses:
automatically remove the pre-recorded content from the generated recording based on the predetermined player option (¶362, a player may request to edit the documented event, wherein the editing includes removal of unwanted audio); and
store a copy of the generated recording including the stored, digital content and the stored, pre-recorded content independent of the automatic removal of the pre-recorded content (¶306, a player may store documented events to their player account).
In Regards to claim 21, Walker discloses that which is discussed above. Walker further discloses that:
the instructions further cause the at least one processor to store the recording on the at least one memory before transmitting the recording to the player account, the recording stored on the at least one memory being un-editable by the player (¶38, ¶227, a series of losing outcomes is documented and stored prior to a winning outcome being generated, documented and transmitted to the player).
In Regards to claim 22, Walker discloses that which is discussed above. Walker further discloses that:
the instructions further cause the recording transmitted to the player account to be a local copy of the recording for the player account, wherein at least the part of the digital content the local copy of the recording is editable (¶227, ¶361-363, based on a predetermined trigger occurring during gameplay (e.g., the player receiving a flush during a play of a poker game, the player may digitally edit the picture, audio and/or video associated with the event), the event is recorded).
In Regards to claim 24, Walker discloses that which is discussed above. Walker further discloses that:
the instructions further cause the at least one processor to transmit additional digital content to the player account, wherein the additional digital content is optionally addable to the digital content (¶383-375, a player may access additional footage or generated outcomes and add it to their documentation).
Response to Arguments
Applicant’s arguments, see Remarks, filed 03/27/2026, with respect to the rejection(s) of the claim(s) under 35 U.S.C. 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of a new interpretation of the previously applied prior art reference in light of the amendments, as discussed 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 JASON PINHEIRO whose telephone number is (571)270-1350. The examiner can normally be reached M-F 8:00A-4:30P ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason Pinheiro/ Examiner, Art Unit 3715
/DMITRY SUHOL/ Supervisory Patent Examiner, Art Unit 3715
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