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 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 8 and 10 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. The Claim 8 recites a display of a countdown from a predetermined amount of time and a player then tries to stop the counter for the predetermined time. Yet, it is confusing because it is unknown if the two predetermined times are meant to be the same. Further in Claim 10, the term “predetermined time” both refers to the countdown amount of time as well as the count which causes confusion and potentially more confusion with future claim amendments. To advance prosecution, Claims 8 and 10 are construed that the countdown and counter are associated with separate but predetermined amounts of time. One suggestion is to refer to the respective predetermined times as “first” and “second” predetermined times; or a “countdown predetermined time” and a “counter predetermined time”. Appropriate attention is required.
Claim Rejections - 35 USC § 102
4. 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.
(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.
5. Claims 1-2 are rejected under 35 U.S.C. § 102 (a1) as being anticipated by UNIS Technology (“UNIS”) located at https://www.youtube.com/watch?v=NvbeNHmlYNU poasted Aug 30, 2023 and accessed on Jan 10, 2026.
In Reference to Claims 1 and 2
UNIS discloses a method for game play of an arcade game machine where a user tries to stop an LED light on or at a specific location in time, comprising (UNIS provides a 1:02 video of their Time Out arcade game):
a game machine with a cabinet displaying prizes on its interior and having player controls or inputs on its exterior and a counter (0:05, cabinet, prizes, and tap button control);
presenting game play where a player tries to stop an LED counter at exactly a
predetermined time (On screen text “A game that tests your timing skills; Stop the timer at exactly 10.000 seconds 0:12 to 0:17);
when the player starts the game, the counter begins at 0.000 seconds and begins to
count upward (0:12 to 017); and
when the counter gets close to the predetermined time, a player input is used to try
and stop the counter exactly at the predetermined time (0:12 to 0:17 using tap button).
Claim Rejections - 35 USC § 103
6. 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.
7. 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.
8. 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 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.
9. Claims 3-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over UNIS in view of U.S. Pat. Pub. No. 2010/0084421 to Lazalier.
In Reference to Claims 3-5
UNIS discloses the invention substantially as claimed to include major and near-miss minor prizes available to a player starting gameplay (0:12 to 0:117). However, the reference does not explicitly disclose gameplay starting when a player chooses a prize or wherein inside the game cabinet, there is a plurality of number prizes, which corresponds to of at least five numbered circular prize buttons on the outside of the game cabinet. One of skill in the art would be aware of the teachings of Lazalier.
Lazalier teaches of vending machines (Fig. 1a, 1e, 3) where veding starts after a customer chooses their product selection (Fig. 1e steps 174 followed by 186). Lazalier also teaches wherein inside of the machine of products [0004] a consumer is able to make a product code identifier selection by entering a product identifying code associated with each of the products in the cabinet into a keypad 126 with corresponding circular buttons (Fig. 1c) on the face of the vending machine [0004]. See also Fig. 1e step 174 and the product is vended 186, [0031-0036, 0045].
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(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; and
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Here, it would require only routine skill in the art to modify the arcade game of UNIS displaying at least five prizes with the operational start following selection of one of a plurality of desired prizes having product identifiers and corresponding circular prize buttons on an interface of the vending machine of Lazalier to achieve the predictable result of allowing a player of the Time Out arcade game to not only enjoy demonstrating skill to earn a prize from at least five prizes but also to input for a selection of a particular displayed prize that they are vying to win. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
In Reference to Claims 6 and 7
Lazalier teaches wherein vending starts with first selecting the desired prize by pressing the corresponding numerically numbered prize button matching the desired numerically numbered prize inside the cabinet (Fig. 1e 174); and once the prize is selected, rather than the vending starting, in combination with UNIS, the counter starts and the player then tries to stop the counter exactly on at the predetermined time of 10.000 seconds (UNIS 0:12 to 0:17).
10. Claims 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over UNIS, Lazalier further in view of U.S. Pat. Pub. No. 2006/0040735 to Baerlocher.
In Reference to Claim 8
UNIS discloses the invention substantially as claimed where the player then tries to stop the counter exactly on at the predetermined time (0:12 to 0:17). However, UNIS does not explicitly disclose display of a countdown from a predetermined amount of time before the counter starts from zero.
Baerlocher teaches of gaming devices to include arcade skill games ([0011]) and of a countdown from a predetermined amount of time. According to Baerolocher “[e]ach of the first display devices displays a count down from 10 to 0 enabling potential players time to place a wager and play the initiated interactive game on one of the unoccupied linked gaming machines.” ([0120]).
Here, it would require only routine skill in the art to modify the game of UNIS with the display of a count down timer of Bearlocher to achieve the predictable result of allowing a player to pay for the game and to get mentally and physically prepared before the start of the counter. The Courts have held that the use of a known technique to improve similar devices (methods, or products) in the same way to be indicia of obviousness.
In Reference to Claim 9
Examiner construes the claimed three seconds as a mere design choice so long as there is some period of time prior to the game counter that serves as notice to a player as to when the counter will begin for the game. This is akin to calling ready-set-go in a footrace or watching a number of lights illuminate to begin a car race. In this regard, Bearlocher readies the players where “[e]ach of the first display devices displays a count down from 10 to 0 enabling potential players time to place a wager and play the initiated interactive game on one of the unoccupied linked gaming machines.” ([0120]). According to Applicant (Spec. [0023]), there is a countdown timer of three seconds, but it is not explained why three seconds serves any particular purpose or solves any specific problem and the countdown timer of Bearlocher would work equally as well.
In Reference to Claim 10
As was stated above in the rejection under 35 USC § 112, Claim 10 is construed as the count timer that has a predetermined time of 10.000 seconds. UNIS discloses “Stop the timer at exactly 10.000 seconds 0:12 to 0:17).
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
13. 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.
14. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached on (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/Primary Examiner, Art Unit 3715