DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
Claim limitation “memory means”, “audio and/or video play means” and “control means” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “means for” coupled with functional language “adapted to play game media files” and “designed to play at least one of said game media files” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) 1-2, 4-8 and 14 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
Memory means being a memory card. See “-memory means 33 (in the form of a memory card)”
Control means being a microprocessor. See “- the control means 36 (in the form of a microprocessor),”
Audio and/or video play means being a loud speaker and/or display. See “(c) audio and/or video play means, for example of the loudspeaker and/or screen type”
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Pursuant to 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181, applicant is required to:
(a) Amend the claim so that the claim limitation will no longer be a means (or step) plus function limitation under 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites the corresponding structure, material, or acts that perform the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9, 11-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dropmix_NPL (https://www.boardgamequest.com/dropmix-review/).
Regarding claim 1, Dropmix_NPL teaches 1. (Currently Amended) A media file play game for one or more players, which game comprises: -at least two game theme baseplates, each corresponding to one game theme among several game themes, said game theme baseplates each comprising a game theme baseplate radio-communicating chip that contains data comprising a first identifier intended to correspond to at least one game media file, and See Dropmix_NPL noting "Each DropMix card is embedded with an NFC chip that, when played onto the DropMix board, quickly mixes that card into your song.", a game base comprising: (a) at least one chip reader associated with at least one reading surface, said at least one chip reader being adapted to perform a reading of the data contained in said radio- communicating chip fitted to the game theme baseplate supported on said reading surface, See Dropmix_NPL noting "Each DropMix card is embedded with an NFC chip that, when played onto the DropMix board, quickly mixes that card into your song." and reference the images which shows the cards placed into the base., (b) memory means in which are recorded game media files, said first identifiers each being associated with at least one game media file among said game media files, See Dropmix_NPL wherein the phone or other electronic device attached to the end includes the memory., (c) audio and/or video play means adapted to play game media files, (d) a human/machine interface, (e) control means designed to play at least one of said game media files, via said audio and/or video play means, which is associated with said first identifier collected by said at least one chip reader. See Dropmix_NPL wherein the base and/or the electronic device attached thereto is the audio and/or video play means, the human/machine interface and the control means.
Regarding claim 2, Dropmix_NPL teaches 2. (Currently Amended) The media file play game according to claim 1, wherein it comprises a multi-sided structure delimited by a plurality of sides, the external surfaces of which are identical to each other, said multi-sided structure includes several radio-communicating chips each fitted to one of said sides of said multi-sided structure, said second radio-communicating chips each containing data comprising a second identifier intended to correspond to one game theme, among said several game themes, at least two of said second radio-communicating chips including second identifiers that are different from each other, each corresponding to one game theme among said several game themes, wherein said at least one chip reader is adapted to perform a reading of the data contained in said second radio-communicating chip fitted to the side of said multi-sided structure supported on said reading surface, wherein theme media files are recorded in said memory means, said second identifiers each being associated with one theme media file among said theme media files, wherein said control means are designed to play said game media file, via said audio and/or video play means, which is associated with said second identifier collected by said at least one chip reader. See Dropmix_NPL.
Regarding claim 3, Dropmix_NPL teaches 3. (Currently Amended) The media file play game according to claim 1, wherein said game theme baseplate radio-communicating chips, is chosen among the radio-communicating chips operating according to the "Near Field Communication" (NFC) wireless technology. See Dropmix_NPL referenceing "Each DropMix card is embedded with an NFC chip that, when played onto the DropMix board, quickly mixes that card into your song.".
Regarding claim 4, Dropmix_NPL teaches 4. (Currently Amended) The media file play game according to claim 1, wherein said game media files are grouped into at least two groups of game media files, wherein said groups of game media files each are associated with a first identifier among said first identifiers, and wherein said control means are designed, after selection of a group of game media files, to play successively each game media file of said selected group of game media files, after an interaction with said human/machine. See Dropmix_NPL wherein the cards may be grouped if desired. As shown in the pictures, the cards include icons for the different sounds such as piano or vocals.
Regarding claim 5, Dropmix_NPL teaches 5. (Currently Amended) The media file play game according to claim 4, wherein the memory means comprise groups of game media files each comprising a succession of a plurality of game media files that comprise: - a primary game media file, corresponding to a defined sound or to a defined video, and - at least one secondary game media file, corresponding to said defined sound or to said defined video, to which is applied a sound or visual disturbance and/or truncation, and wherein the control means are designed to play said at least one secondary game media file then said primary game media file, after an interaction with said human/machine interface. See Dropmix_NPL wherein the selection of a primary and/or secondary game media file may be completed by the user. The cards include identification markings for sounds like guitars or vocals etc...
Regarding claim 6, Dropmix_NPL teaches 6. (Currently Amended) The media file play game according to claim 1, wherein said control means are designed, for a same game theme, to play the game media files or the groups of game media files of said game theme in a defined order, and to change this order after all the game media files or all the groups of game media files of said game theme have been played. See Dropmix_NPL wherein the sequential placement of the cards may be considered the defined order which when the game is played again changes this order.
Regarding claim 7, Dropmix_NPL teaches 7. (Currently Amended) The media file play game according to claim 1, wherein said control means are designed to: - play a theme sound file, by said audio and/or video play means, as a function of data contained in said radio-communicating chip of the game theme baseplate supported on the reading surface, collected by said at least one chip reader, or, as the case may be, as a function of said second identifier collected by said at least one chip reader (31), then - select a plurality of game media files or a group of game media files to be played among said game media files or said groups of game media files that are associated with the first identifier contained in the game theme baseplate (2, 2') supported on the reading surface (32), then - play successively the game media files of said selected plurality of game media files or said selected group of game media files, after each interaction with said human/machine interface (35). See Dropmix_NPL reference the video which shows this successive playing.
Regarding claim 8, Dropmix_NPL teaches 8. (Currently Amended) The media file play game according to claim 1, further comprising score indicator means to view the score of the player(s),said score indicator means comprising a plurality of pieces provided with means for their mutual assembly and capable of forming together a predefined shape. See Dropmix_NPL reference the images which show the score (i.e. 964") displayed on the screen.
Regarding claim 9, Dropmix_NPL teaches 9. (Currently Amended) The media file play game according to claim 1, wherein said game theme baseplates each comprise an external game theme identification mark. See Dropmix_NPL refence the cards which each have their own unique indicia.
Regarding claim 11, Dropmix_NPL teaches 11. (Currently Amended) The media file play game according to claim 9, wherein the game theme baseplates each comprise: - a lower dock containing said game theme baseplate radio-communicating chip, and - an upper display stand carrying said external game theme identification mark. See Dropmix_NPL as the NFC ship is embedded in the card, the chip location can be considered the lower dock and the upward facing surface the upper display stand.
Regarding claim 12, Dropmix_NPL teaches 12. (Currently Amended) The media file play game according to claim 1, wherein the game base comprises a case with a recess, the bottom of which forms said reading surface, the shape and size of said recess being suitable for receiving the game theme baseplates and, as the case may be, said multi-sided structure. See Dropmix_NPL and reference the recesses into which the cards are placed.
Regarding claim 13, Dropmix_NPL teaches 13. (New) The media file play game according to claim 2, wherein said game theme baseplate radio-communicating chips, and said second radio-communicating chips fitted to the multi-sided structure, are chosen among the radio-communicating chips operating according to the "Near Field Communication" (NFC) wireless technology. See Dropmix_NPL wherein the Dropmix system plays the music based on the different NFC chips in each card that are at the different locations.
Regarding claim 14, Dropmix_NPL teaches 14. (New) The media file play game according to claim 2, wherein said control means are designed to: - play a theme sound file, by said audio and/or video play means, as a function of data contained in said radio-communicating chip of the game theme baseplate supported on the reading surface, collected by said at least one chip reader, or as a function of said second identifier collected by said at least one chip reader, then- select a plurality of game media files or a group of game media files to be played among said game media files or said groups of game media files that are associated with the first identifier contained in the game theme baseplate supported on the reading surface, then - play successively the game media files of said selected plurality of game media files or said selected group of game media files, after each interaction with said human/machine interface. See Dropmix_NPL wherein the Dropmix system plays the different sounds based on one card NFC chip being read or as many cards that are placed on the base.
Claim Rejections - 35 USC § 103
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Dropmix_NPL (https://www.boardgamequest.com/dropmix-review/) in view of JP '861 (JP 2008148861 A).
Regarding claim 10, JP '861 teaches 10. (Currently Amended) The media file play game according to claims 9, wherein said external game theme identification mark, applied on the game theme baseplates, comprises a Braille mark. See "Further, each face of the polyhedral dice having the novel structure displays a braille corresponding to the numeral together with one numeral, a numerical symbol, or a graphic pattern, so that a visually impaired person can feel the tactile sense of his / her hand, etc." which mentions the use of Braille on game pieces to allow the visually impaired play a game.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Dropmix_NPL with JP '861 to provide means for the visually impaired to play the game.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yu US 20100041456 A1 - which teaches an electronic game that senses game pieces being placed on a game board.
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711