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 .
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 05/06/2026. Presently, claims 1-20 are pending.
Specification
The amendment filed 05/06/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Applicant has amended paragraph 0109 of the original specification in various ways. Such amendments appear to be trying to overcome the previous rejections based upon 35 USC 112, however, such amendments are not inherently true and appear to be to overcome a rejection rather than clearly asserted at the time of original filing.
Applicant is required to cancel the new matter in the reply to this Office Action.
Drawings
The drawings were received on 05/06/2026. These drawings are unacceptable. The drawings are not entered as they contain new matter including the “local control unit” now being included in the bottom box of figures 1 and 2 whereas it was not there before.
Claim Objections
Claim 1 is objected to because of the following informalities: in claim 1, Applicant has amended the claim on line 14 to say, “and configured is to generate” this is not proper English. It is believed that Applicant may have meant “and is configured to generate”. Appropriate correction is required.
Claim Interpretation
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a local control unit;” “a game controlling unit;” and “a video capture device;” in claims 1, 10 and 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. With regard to “a gaming control unit” this is interpreted based on applicant’s specification paragraph 0111; a video capture device appears to be a video camera.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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. As discussed above, the claims invoke 35 USC 112f; however “a local control unit” is never clearly defined in the specification.
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 1-20 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.
As discussed above “a local control unit” is not clearly defined in the specification, thus the metes and bounds of what Applicant is trying to claim here cannot be determined based upon 35 USC 112(f) invocation.
All dependent claims are rejected as depending from a previously rejected claim.
For the art rejected below, claims are interpreted as best understood.
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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2018110792 to Yamaguchi.
With regard to claim 1, Yamaguchi discloses a system for remote game play comprising: a game machine comprising local game controls and a local control unit comprising one or more inputs configured to receive signals or commands from one or more local player input devices and one or more outputs for providing the signals or the commands, the local game controls configured to receive local player input and the local control unit configured to control an operation of the game machine based on the local player input (page 3, paragraphs 8 and 9 starting with “An operation console 18…;”) a game controlling unit, the game controlling unit comprising one or more digital or analog inputs and analog or digital outputs coupled to the local control unit and configured to control the operation of the game machine via the local control unit (Page 2, paragraph 6, starting with “The game server 102…”; page 4, paragraph 4, “The game apparatus 1…”; Page 6, paragraph 4, “The communication unit 162…”); a media streaming unit comprising a video capture device and a network communication interface, wherein the video capture device has a field of view of an exterior of the game machine and configured is to generate a video stream coupled to the video capture device and configured to receive a video stream therefrom (Page 3, paragraph 3, “That is, in order to display the video of the play space S online, cameras 10a and 10b (herein after, collectively referred to as ‘camera 10’ as appropriate) are respectively arranged in front and side of the prize storage unit 4”; are respectively arranged in front and side of the prize storage unit 4”; page 7, paragraph 4); wherein the game controlling unit and the media streaming unit are communicatively coupled, by the network communication interface, to a communication network (Page 3, paragraph 3; Page 6, paragraph 4); and wherein the media streaming unit transmits the video stream to a remote gaming application via the communication network and the game controlling unit receives remote player input from the gaming application via the communication network and controls the operation of the game machine using the local control unit based on the remote player input (Page 3, paragraph 3; Page 6, paragraph 4).
With regard to claim 2, Yamaguchi discloses that the media streaming unit streams a live view of the field of view of the game machine over the communication network (Page 3, paragraph 3; Page 6, paragraph 4).
With regard to claim 3, Yamaguchi discloses that the media streaming unit is external to the game machine (fig. 2; Page 3, paragraph 3).
With regard to claim 4, Yamaguchi discloses that the media streaming unit is configured to change the field of view based on the remote player input (page 7, paragraph 4; “The camera display button 182 is a button for switching an image captured by the camera 10.”).
With regard to claim 5, Yamaguchi discloses that the game controlling unit converts the remote player input into local control unit input (Page 3, paragraph 3; Page 6, paragraph 4).
With regard to claim 6, Yamaguchi discloses that the game controlling unit converts a digital signal based on the remote player input into mechanical or optical in0person control unit input (Page 3, paragraph 3; Page 6, paragraph 4).
With regard to claim 7, Yamaguchi discloses that the game controlling unit comprises a programmable logic control (PLC) or a microprocessor (Page 4, paragraph 4).
With regard to claim 8, Yamaguchi discloses a second video capture device unit having a second field of view different from the first field of view and coupled to them media streaming device (fig. 2; Page, 3, paragraph 3).
With regard to claim 9, Yamaguchi discloses that the game of the game machine is initiated based on the remote player input (page 10, paragraph 6, “The control unit 30…”).
Claims 10-14 are mirrored claims to claims 1, 7, 6, 3, and 2 respectively and are rejected in like manner.
With regard to claim 15¸Yamaguchi discloses comprising synchronizing the video stream and the operation of the game machine (Page 3, paragraph 3; Page 6, paragraph 4).
With regard to claim 16, Yamaguchi discloses comprising determining if the game machine is available for remote game play or unavailable for remote game play (Page 7, paragraphs 1 and 2, “The waiting number of persons 174…”).
With regard to claim 17, Yamaguchi discloses comprising enabling the game controlling unit to control the operation of the game machine based on a determination that the game machine is available (Page 7, paragraphs 1 and 2).
With regard to claim 18, Yamaguchi discloses disabling control of the game machine by the game controlling unit based on a determination that the game machine is unavailable (Page 7, paragraphs 1 and 2).
With regard to claim 19, Yamaguchi discloses a real-time remote game play system, comprising: a game machine provided at a first location, the game machine configured for in-person game play, wherein the game machine comprises a local control unit for receiving local player input and comprising one or more inputs configured to receive signals or commands from one or more local play input devices and one or more outputs for providing the signals or the commands (page 3, paragraphs 8 and 9); a user device provided at a second location different than the first location, the user device configured to transmit remote player input from a remote player to the game machine (Page 3, paragraph 3; Page 6, paragraph 4); a communication network communicatively coupling the game machine and the user device (Page 3, paragraph 3; Page 6, paragraph 4); a media streaming unit comprising a video capture device capturing a video stream having a field of view including an exterior of the game machine and transmitting the video stream to the user (fig. 2; Page 3, paragraph 3; Page 6, paragraph 5); a turn broker configured to determining is the game machine is available for gameplay (Page 7 paragraphs 1 and 2); a game controlling unit coupled to the local control unit and the communication network the game controlling unit comprising one or more digital or analog inputs and analog or digital outputs (Page 3, paragraph 3; Page 6, paragraph 4); wherein based upon a determination that the game machine is available for gameplay, the game controlling unit converts the remote player input into local player input using the local control unit, for controlling the game machine (Page 3, paragraph 3; Page 6, paragraph 4, Page 7, paragraphs 1 and 2).
With regard to claim 20, Yamaguchi discloses a second game machine having a second local control unit configured to control the second game machine based upon input from a second local player; wherein the communication network communicatively couples the second game machine and the user device; a second game controlling unit coupled to the second local control unit; and wherein, based upon a determination by the turn broker that the second game machine is available for gameplay, the second game controlling unit converts the remote player input into second locally player inputs for controlling the second game machine (Page 2,paragraph 1, wherein it describes by a large number of game machines; Page 3, paragraph 3; Page 6, paragraph 4, Page 7, paragraphs 1 and 2).
Response to Arguments
With regard to the interpretation under 35 USC 112(f) Applicant argues that a The term ‘local control unit’ as recited in the claims is structurally defined by its claim context…This recitation identifies the local control unit as the pre-existing, internal controller of the game machine,” (Arguments, page 1). However, this argument is not found to be convincing. Indeed, the words “local control unit” are never mentioned in the originally filed specification but for in the claims. Applicant clearly used the term “unit” which is a nonce term and then provided a function thereafter, which squarely puts it into 35 USC 112(f). Secondly, applicant argues that the term “is a well-understood physical component comprising the processor memory, and input/output interfaces native to the game machine hardware which would readily understood a person [sic] having ordinary skill in the art reading the claims,” (Arguments, page 1). However, that is NOT what 35 USC 112(f) requires. As mentioned before, Applicant has used a nonce term with a function thus invoking 35 USC 112(f) and the specification makes no mention of the term “local control unit” and thus, Applicant has not met their burden.
With regard to the other interpretations under 35 USC 112(f) all other instances noted above have been found to have structure defined in the specification and thus do not create a problem. Applicant’s arguments that they do not invoke 35 USC 112(f) have been noted but are not agreed upon. For example, Applicant argues that a “video capture device” is “a hardware device capable of capturing video imagery such as for example a camera or image sensor assembly,” (Arguments, page 2), which the Office already noted to that interpretation from the specification.
Applicant has amended the specification in order to try to overcome the 35 USC 112 rejections. However, this is objected to as it introduces new matter to the specification. In addition, such an amendment does not even align with Applicant’s arguments. Applicant was first trying to argue that a “local control unit” included a whole system of a processor and input and output devices. However, now in the amendments to 0109 Applicant is amending so it is only the controller that is “a local control unit.” Thus, it is clear that even Applicant is not sure what “a local control unit” ACTUALLY refers to, which supports the rejection based upon 35 USC 112.
With regard to the prior art, Applicant seems to be arguing that Yamaguchi does not have an intermediary and thus does not read on the claims (Arguments, claim 5). However, Yamaguchi clearly has a server that receives the inputs from the remote device and then passes them on to the crane game machine. This server is still viewed as coupled to the local control unit as it has to send signals to it and thus there is a connection, even if only electronically. Applicant’s own amendments support this interpretation in that “the game controlling unit comprising one or more digital or analog inputs and analog or digital outputs,” (emphasis added). Such disclosure can be found in Yamaguchi at page 6, paragraphs 3 and 4.
As such, Applicant’s arguments are not found to be convincing and the rejection is maintained.
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 Jay Liddle whose telephone number is (571)270-1226. The examiner can normally be reached M-F 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/Jay Trent Liddle/Primary Examiner, Art Unit 3715
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