Case 2:21-cv-00040-JRG Document 70-4 Filed 09/02/21 Page 1 of 8 PageID #: 1314
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`Exhibit I
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`Case 2:21-cv-00040-JRG Document 70-4 Filed 09/02/21 Page 2 of 8 PageID #: 1315
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PA TENTS
`P.O. Box 1450
`Alexandria. Virginia 22313-14 50
`www.U>l'to.gov
`
`APPLICATION NO.·
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`10/893,534
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`07/19/2004
`
`Timothy R. Pryor
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`P064 I 0US02/DEJ
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`2395
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`01/24/2008
`7590
`881
`STITES & HARBISON PLLC
`1199 NORTH FAIRFAX STREET
`SUITE 900
`ALEXANDRIA, VA 22314
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`EXAMINER
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`MENDIRATTA, VISHU K
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`ART UNIT
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`PAPER NUMBER
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`3711
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`MAIL DATE
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`01/24/2008
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`

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`Case 2:21-cv-00040-JRG Document 70-4 Filed 09/02/21 Page 3 of 8 PageID #: 1316
`Application No.
`Applicant(s)
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`Office Action Summary
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`10/893,534
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`Examiner
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`PRYOR, TIMOTHY R.
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`Art Unit
`
`Vishu K. Mendiratta
`3711
`- The MAILING DA TE of this communication appears on the cover sheet with the co"espondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE~ MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1. 704(b).
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`Status
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`1 )[8J Responsive to communication(s) filed on 29 October 2007.
`2a)[8J This action is FINAL.
`2b)O This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)[8J Claim(s) 9-14 and 21-31 is/are pending in the application.
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[8J Claim(s) 9-14, 21-31 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
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`Application Papers
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`9)0 The specification is objected to by the Examiner.
`10)0 The drawing(s) filed on __ is/are: a)O accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some* c)D None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3. 0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) [] Notice of References Cited (PTO-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) 0 Information Disclosure Statement(s) (PTO/SB/OB)
`Paper No(s)/Mail Date __ .
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`4) 0 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other:
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`U.S. Patent and Trademarll Office
`PTOL-326 (Rev. 08-06)
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`Office Action Summary
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`Part of Paper No./Mail Date 20080107
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`

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`Case 2:21-cv-00040-JRG Document 70-4 Filed 09/02/21 Page 4 of 8 PageID #: 1317
`Page 2
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`, Application/Control Number:
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`10/893,534
`Art Unit: 3711
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`DETAILED ACTION
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`1.
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`Claims 9-13,21-28 rejected under 35 U.S.C. 102(b) as being anticipated
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`by Hedges (4339798)
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`Hedges teaches monitoring a live game by a TV camera, the game table having
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`information such as roulette game rules/betting spaces etc., and camera
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`monitoring while players place game markers (chips). Hedges also teaches a
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`computer processor (41 ), identifying and displaying game markers on a iive
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`game 9isplay screen (44), establishing co-ordinate system (5:21-26). Applicant
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`may note that roulette boards are stiff as well known in the art and the limitation
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`is inherently taught.
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`As explained in previous office action all casinos are equipped with cameras that
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`constantly monitor in real time all movements of every casino activity on every
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`table including identifying all game pieces and their positions. TV Cameras
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`placed in strategic locations constantly record all casino movements that are
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`monitored on monitors 60. Hedges clearly teaches physical markers at a remote
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`location "capable of being moved" on a casino table (abstract). Newly added
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`limitations in a computer means phrase only represent intended use "for
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`analyzing". "for recognizing". etc. do not specifically claim structure that would
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`limit the apparatus claimed. Limitations With reference to "generating sensation",
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`such limitations are personal reactions and not part of apparatus.
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`2.
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`Claims 9-13,21--28 rejected under 35 U.S.C. 102(b) as being anticipated
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`by Levy (3909002)
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`Case 2:21-cv-00040-JRG Document 70-4 Filed 09/02/21 Page 5 of 8 PageID #: 1318
`Application/Control Number:
`Page 3
`10/893,534
`Art Unit: 3711
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`\ ,
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`Levy teaches playing a game board (100) with markers , a TV camera placed
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`above a live game board (5:10-31).
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`3.
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`Claims 9-13 rejected under 35 U.S.C. 102(e) as being anticipated by
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`Karmakar (6508709).
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`Karmakar teaches monitoring a live game by TV camera (60,70,80), the game
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`table having information (9:46-65) rules etc., and camera monitoring while
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`players place game markers (cards 76 or game pieces for monopoly type
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`games). Hedges also teaches a computer processor (41), identifying (Fig.6) and
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`displaying game markers on a live game display screen (Fig.1 C).
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`4.
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`Claim 14 rejected under 35 U.S.C. 102(b) as being anticipated by Gilboa
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`(5853327).
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`Gilboa teaches a horizontal (Fig.22) display (8), computer means (2), markers
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`(10), the game being placed at a comfortable height (Fig.22), having image of a
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`conventional game (11).
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`5.
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`Claim 14 rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Hedges or Karmakar on view of Gilboa (5853327).
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`Hedges or Karmakar teach all limitations except that they do not teach the game
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`board being video display. Gilboa teaches a display game board (8). Electronic
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`display game boards are capable of displaying multiple/variable game
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`indicia/picture/video and enhance amusement value. In order to make the game
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`attractive to potential players, it would have been obvious to suggest modifying
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`game boards to include electronic/video displays. One of ordinary skill in art at
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`Case 2:21-cv-00040-JRG Document 70-4 Filed 09/02/21 Page 6 of 8 PageID #: 1319
`Page4
`Application/Control Number:
`10/893,534
`Art Unit: 3711
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`the time the invention was made would have suggested modifying game boards
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`to include electronic/video displays to attract potential players.
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`6.
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`Claims 27 rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Gilboa.
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`Gilboa might not expressly indicate playing monopoly. However Gilboa teaches a
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`preferred embodiment where it can call any game by the game program. In order
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`to make the game attractive to monopoly type games, it would have been
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`.obvious to provide monopoly games.
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`One of ordinary skill in art at the time the invention was made would have
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`suggested any theme including monopoly theme games.
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`7.
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`Claims 28 rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Gflboa in official notice.
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`Playing games on internet is common in this day and age. In order to attract
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`potential players, it would have been obvious to make the game available on
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`internet.
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`Response to Arguments
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`Applicant's arguments filed 3/19/07 have been fully considered but they are not
`persuasive.
`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.
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`

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`Case 2:21-cv-00040-JRG Document 70-4 Filed 09/02/21 Page 7 of 8 PageID #: 1320
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`;
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`J\pplication/Control Number:
`10/893,534
`Art Unit: 3711
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`Page 5
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`Newly added limitations in a computer means phrase only represent intended
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`use "for analyzing", "for recognizing", etc. do not specifically claim structure that
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`would limit the apparatus claimed.
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`1.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of
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`time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire
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`THREE MONTHS from the mailing date of this action. In the event a first reply is
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`filed within TWO MONTHS of the mailing date of this final action and the advisory
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`action is not mailed until after the end of the THREE-MONTH shortened statutory
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`period, then the shortened statutory period will expire on the da~e the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
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`calculated from the mailing date of the advisory action. In· no-event, however, will
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`the statutory period for reply expire later than SIX MONTHS from the mailing
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`date of this final action.
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`Any inquiry concerning this communication or earlier communications from
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`the examiner should be directed to Vishu K. Mendiratta whose telephone number
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`is (571) 272-4426. The examiner can normally be reached on Mon-Fri 8AM to
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`5PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the
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`examiner's supervisor, Eugene Kim can be reached on (571) 272-4463. The fax
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`phone number for the organization where this application or proceeding is
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`assigned is 571-273-8300.
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`

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`Case 2:21-cv-00040-JRG Document 70-4 Filed 09/02/21 Page 8 of 8 PageID #: 1321
`...
`Application/Control Number:
`Page6
`10/893,534
`Art Unit: 3711
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`Information regarding the status of an application may be obtained from
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`the Patent Application Information Retrieval (PAIR) system. Status information
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`for published applications may be obtained from either Private PAIR or Public
`
`PAIR. Status information for unpublished applications is available through
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`Private PAIR only. For more information about the PAIR system, see http://pair(cid:173)
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`direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll(cid:173)
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`free). If you would like assistance from a USPTO Customer Service
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`Representative or access to the automated information system, call 800-786-
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`9199 (IN USA OR CANADA) or 571-272-1000.
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`Vishu K Mendiratta
`Primary Examiner
`Art Unit 3711
`
`VKM
`January 8, 2008
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