Case 2:21-cv-00040-JRG Document 70-3 Filed 09/02/21 Page 1 of 7 PageID #: 1307
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`Exhibit H
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`Case 2:21-cv-00040-JRG Document 70-3 Filed 09/02/21 Page 2 of 7 PageID #: 1308
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`Doc Code· AP PRE REQ
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`Customized Form PTO/SB/33 (07-05)
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`PRE-APPEAL BRIEF
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`REQUEST FOR REVIEW
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`Aoolication # 10/893,534
`Confirmation # 2395
`Filing Date July 19, 2004
`First Inventor PRYOR
`Art Unit 3711
`Examiner Mendiratta, Vishu K.
`Docket # P0641 0US02/DEJ
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`Applicant requests review of the final rejection in the above-identified application.
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`No amendments are being filed with this request.
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`This request is being filed with a NOTICE OF APPEAL.
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`The review is requested for the reason(s) stated on the attached sheet(s).
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`Note: No more than five (5) pages may be provided.
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`I am the Attorney of Record.
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`Date: April 24, 2008
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`By:
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`Registration No.: 28,518
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`STITES & HARBISON PLLC • 1199 North Fairfax St. • Suite 900 • Alexandria, VA 22314
`TEL: 703-739-4900 • FAX: 703-739-9577 • CUSTOMER NO. 00881
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`524L T:20116:63246: 1 :ALEXANDRIA
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`Case 2:21-cv-00040-JRG Document 70-3 Filed 09/02/21 Page 3 of 7 PageID #: 1309
`APR 2 4 2008
`· /i.
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`SN 10/893,534
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`Docket# P0641 0US02/DE ~-
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`REMARKS AND ARGUMENTS IN SUPPORT OF
`PRE-APPEAL BRIEF REQUEST FOR REVIEW
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`Remarks/Arguments for
`Pre-Appeal Brief Request
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`In the outstanding final Office Action, the examiner has again refused to consider
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`important functional limitations in the claims, asserting that such "only represent
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`intended use". However, such functional limitations are part of a "means or step plus
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`function" limitation, so that such limitations do not represent "intended use" but are used
`to functionally define the invention are specifically authorized by 35 USC § 112, 6th
`paragraph. Therefore, when such limitations are properly considered, the present
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`claims are all not anticipated or made obvious over the applied art and hence are in
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`condition for allowance.
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`What is claimed in both amended independent claims 9 and 21 is an invention
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`where a board game is played. A computer is used to analyze an output of a TV
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`camera viewing the board game, and to recognize a relative position of at least one of
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`the markers with respect to information on the board. Then, when the marker is moved
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`to a new position during the play of the game, the computer recognizes the new position
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`of the marker. As a result of the newly recognized position, the computer also is then
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`used to automatically generate a sensory output, associated with the new position of the
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`marker, which is designed (intended) to be perceived by the person(s) playing the
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`game.
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`Independent claims 9 and 21 are (initially) rejected under 35 USC§ 102 as being
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`anticipated by the Hedges patent. In particular, the examiner has stated (see final
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`Office Action of January 24, 2008, pages 4-5), when describing the prior art Hedges
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`patent and in response to applicant's arguments and claim changes:
`As explained in previous office action all casinos are equipped with
`cameras that constantly monitor in real time all movements of every
`casino activity on every table including identifying all game pieces and
`their positions. Cameras placed in strategic locations constantly record all
`casino movements that are monitored. Newly added limitations do not
`further add any structure to the claimed apparatus. With reference to
`"generating sensation" such limitations are personal reactions and not part
`of apparatus.
`Newly added limitations in a computer means phrase only represent
`intended use "for analyzing", "for recognizing", etc. do not specifically
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`Case 2:21-cv-00040-JRG Document 70-3 Filed 09/02/21 Page 4 of 7 PageID #: 1310
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`SN 10/893,534
`Docket# P0641 0US02/DEJ
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`Remarks/Arguments for
`Pre-Appeal Brief Request
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`claim structure that would limit the apparatus claimed. (Emphasis not
`added.)
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`By making this last statement, the examiner has in effect refused to give any
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`patentable weight to the "function" part of the computer "means". Such is contrary to 35
`USC § 112, 6th ,i, as well as various sections of the MPEP and long established case
`law. As well appreciated,§ 112, 6th ,i specifically authorizes the use of "means or step
`plus function" limitations in a claim. And when such limitations are used, it would be
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`absurd to then ignore the "function" portion as "only representing intended use" as the
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`examiner has done with the present claims.
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`With a proper appreciation that the "function" part of every means/step plus
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`function limitation in a claim must not be ignored, it will be appreciated that independent
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`apparatus claim 9 and independent method claim 21 both clearly and particularly
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`differentiate from the prior art apparatus and method of the Hedges patent (and the
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`other cited references, the Levy patent and the Karmakar patent, which have similar
`disclosures) where casino games, or any such live game, are (merely) monitored 1 by a
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`TV camera and the output of the TV camera recorded to a suitable computer. In
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`particular, it is claimed that the apparatus of the present invention includes a computer
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`means for performing the following specific functions (and likewise the method recites a
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`computer performing the noted steps and functions):
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`a) analyzing the output of said TV camera and recognizing from the analysis a relative
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`position of said marker with respect to the information on said board,
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`b) analyzing and then recognizing, after a movement of said marker during the play of
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`the game which is viewed by said TV camera, a new position of said marker with
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`respect to the information on said board, and
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`c) automatically generating. after the new position of said marker is recognized, a
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`sensory output designed to be capable of being perceived by the person, said
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`sensory output being different from a view of said board and marker thereon and
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`being associated with the recognized new position of said marker with respect to the
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`information on said board.
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`1 One convenient dictionary definition of "monitor" being: "keep under surveillance".
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`Case 2:21-cv-00040-JRG Document 70-3 Filed 09/02/21 Page 5 of 7 PageID #: 1311
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`SN 10/893,534
`Docket# P0641 0US02/DEJ
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`Remarks/Arguments for
`Pre-Appeal Brief Request
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`No such analyzing2 and recognizing 3 by a computer takes place in the situation
`described by the examiner of a casino which monitors activity with TV cameras as in the
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`Hedges patent, the Levy patent and the Karmakar patent. In particular, such a
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`monitoring system does not "analyze" the TV camera output in order to "recognize" a
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`relative position of a marker and a new position of the marker with respect to the
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`information on the board. The actions of "analyzing" and "recognizing" together are
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`definitionally different from the action to "display" or even to "monitor", as would be
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`readily recognized by those of ordinary skill in computer vision which is the standard
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`which should be applied. Further, and significantly, such a prior art monitoring system
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`does not generate a "sensory output" after the new position is "recognized", where the
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`sensory output is different from a view of the board or game. Rather, the monitoring
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`system of the Hedges patent (and the Levy patent and the Karmakar patent) described
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`by the examiner merely displays, without any analysis or recognition, whatever is within
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`the field of view of the TV camera.
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`The examiner also particularly noted that the term "generating sensation" was a
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`"personal reaction" and hence did not limit the claimed apparatus. Even if this were
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`true, it is irrelevant as this is not what is now claimed. What is now claimed is a
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`computer means "for automatically generating ... a sensory output designed to be
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`capable of being perceived by a person". It is thus made clear that it is the computer
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`means which functions to generate this "output", and this generated output (e.g., an
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`emitted sound or image shown in a video display) is not an intended use, but a feature
`of the claimed apparatus.
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`Admittedly, the phrase "designed to be capable of being perceived by the
`person" is an intended use, but even if this phrase were omitted4 there still remains the
`positive functional limitation of the "means" limitation which must not be ignored. And it
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`will further be appreciated that each of the prior art monitoring systems obviously does
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`not generate any such "output", as they are incapable of recognizing the need to
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`2 One convenient dictionary definition of "analyze" being: "an investigation of the component parts of a
`whole and their relations in making up the whole".
`3 One convenient dictionary definition of "recognize" being: "be fully aware or cognizant of', which is
`obviously more than using a TV camera to record the activities of a board game under surveillance.
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`Case 2:21-cv-00040-JRG Document 70-3 Filed 09/02/21 Page 6 of 7 PageID #: 1312
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`SN 10/893,534
`Docket# P0641 0US02/DEJ
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`Remarks/Arguments for
`Pre-Appeal Brief Request
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`generate a sensory output and instead they merely displays the game(s) (or game
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`board(s)) in the field of view of the TV cameras.
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`The examiner's rejections under 35 USC § 102 for anticipation of independent
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`claims 9 and 21 by the Hedges patent, the Levy patent, or the Karmakar patent are all
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`based on the presence in the references of a computer means, and thereafter the
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`ignoring of the "functional" limitations of the claims because such limitations are
`"intended use". However, as evident from the above, and further from the MPEP5
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`, the
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`examiner has failed to provide a prima facie showing of an equivalent element in each
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`of these prior art references since "unless an element performs the identical function
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`specified in the claim, it cannot be an equivalent for the purposes of 35 U.S.C. 112,
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`sixth paragraph" (see MPEP § 2183.11, quoting from the Pennwalt case. As further
`noted in the MPEP6 [emphasis added]:
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`Among the indicia that will support a conclusion that one element is or is
`not an equivalent of another are:
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`(A) Whether the prior art element performs the identical function specified
`in the claim in substantially the same way, and produces substantially the
`same results as the corresponding element disclosed in the specification.
`Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 54 USPQ2d
`1308 (Fed. Cir. 2000) ....
`(B) Whether a person of ordinary skill in the art would have recognized the
`interchangeability of the element shown in the prior art for the
`corresponding element disclosed in the specification. [Followed by
`numerous citations.] ...
`(C) Whether there are insubstantial differences between the prior art
`element and the corresponding element disclosed in the specification.
`(D) Whether ... the prior art element performs the function specified in the
`claim in substantially the same manner as the function is performed by the
`corresponding element described in the specification.
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`As noted above, none of the Hedges patent, the Levy patent, or the Karmakar
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`patent disclose or teach a computer means with the above noted functions of
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`"analyzing", "recognizing" or "generating" as specifically and functionally claimed.
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`4 Which can be done if the examiner so desires, but it is believed that this phrase provides more
`definiteness and is hence desired for that reason.
`5 See§§ 2183 or 2184.11.
`6 Again see either §§ 2183 or 2184.11.
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`Case 2:21-cv-00040-JRG Document 70-3 Filed 09/02/21 Page 7 of 7 PageID #: 1313
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`SN 10/893,534
`Docket# P06410US02/DEJ
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`Remarks/Arguments for
`Pre-Appeal Brief Request
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`Therefore, the mere presence of a computer means is not an equivalent to the recited
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`limitations as each cited computer means: a) does not perform the identical function
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`specified in the claim in substantially the same way, and does not produce substantially
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`the same result; b) is not recognized as interchangeable with the functional computer
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`means of the present invention; c) has substantial differences from the disclosed
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`computer means as defined by the functional limitations; and d) does not perform the
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`function specified in the claim in substantially the same manner as the function is
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`performed by the corresponding element.
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`In view of the above, independent claims 9 and 21, as properly interpreted with
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`their functional limitations, are neither anticipated by nor made obvious by any of the
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`Hedges patent, the Levy patent or the Karmakar patent. Therefore, these claims are
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`allowable over these references; and likewise all of the remaining dependent claims are
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`likewise allowable based on their respective dependency from one of the independent
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`claims.
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`Withdrawal of the final Office Action and allowance of the application is thus
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`solicited.
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