Case 2:21-cv-00040-JRG Document 70-5 Filed 09/02/21 Page 1 of 10 PageID #: 1322
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`Exhibit J
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`Case 2:21-cv-00040-JRG Document 70-5 Filed 09/02/21 Page 2 of 10 PageID #: 1323
`~ '1)
`OCT 2 9 2001 ~
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`lication # 10/893,534
`A
`Confirmation# 2395
`Filing Date July 19, 2004
`First Inventor PRYOR
`Art Unit 3711
`Examiner Mendiratta, Vishu K.
`Docket # P064 l 0US02/DEJ
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`AMENDMENT
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`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`SIR:
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`In response to the Office Action dated May 29, 2007:
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`A) please consider the responsive Remarks provided herewith in Attachment A; and
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`B) please amend the above identified application as follows:
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`• Amendments to the Claims are reflected in the listing of the claims provided herewith
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`in Attachment B.
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`In view of the amendments made and the remarks provided, it is submitted that the
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`present application is in condition for allowance.
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`Date: October 29, 2007
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`Respectfully submitted,
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`~ ! :~
`By: Dug1as EJ kson
`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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`S24LT:201 l6:5502S:l:ALEXANDRIA
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`Case 2:21-cv-00040-JRG Document 70-5 Filed 09/02/21 Page 3 of 10 PageID #: 1324
`Responsive to Office
`Action of 05/29/2007
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`Application # 10/893,534
`Docket# P064 I 0US02/DEJ
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`ATTACHMENT A
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`Remarks
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`By this Amendment, independent claims 9 and 21 have been amended to better define the
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`invention over the cited prior art.· Other dependent claims have also been amended consistent
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`with the changes to the independent claims and/or for clarity. 1t is submitted that the present
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`application is in condition for allowance for the following reasons.
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`What is now claimed in both amended independent claims is that where a board game is
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`played, a computer is used to analyze an output of a TV camera viewing the board game and to
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`recognize a relative position at least one of the markers with respect to information on the board.
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`Then, when the marker is moved to a new position during the play of the game, the computer
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`recognizes the new position. As a result of the newly recognized position, the computer also is
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`then used to automatically generate a sensory output, associated with the new position, which is
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`designed to be perceived by the person(s) playing the game.
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`In paragraphs 1-3 of the outstanding Acti~n, the examiner rejected the independent
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`claims (and most of the dependent claims) under 35 USC§ 102 as being anticipated by the
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`Hedges patent, the Levy patent, or the Karmarkar patent. In this rejection, as noted in paragraph
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`1 and again in the Response to Arguments section, it is the examiner's (re-stated) position that
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`these patents disclose casino monitoring systems and that:
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`The newly added limitations do not further limit the game as claimed. 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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`524LT:20116:55025: I :ALEXANDRIA
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`1
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`Remarks
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`Case 2:21-cv-00040-JRG Document 70-5 Filed 09/02/21 Page 4 of 10 PageID #: 1325
`Responsive to Office
`Action of 05/29/2007
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`Application# l0/893,534
`Docket# P064 I OUS02/DEJ
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`Therefore_, it will be appreciated that the presently amended independent apparatus claim
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`9 and the presently amended independent method claim 21 both now clearly and more
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`particularly differentiate from the apparatus and method where casino games, or any such live
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`game, are monitored. In particular, it is claimed that the apparatus includes a computer means
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`performing the following specific functions (and likewise the method recites a computer
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`performing the noted steps):
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`a) analyzing the output of said TV camera and recognizing from the analysis a relative position
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`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 the game
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`which is viewed by said TV camera, a new position of said marker with respect to the
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`information on said board, and
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`c) automatically generating. after the new position of said marker is recognized, a sensory
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`output designed to be capable of being perceived by the person, said sensory output being
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`different from a view of said board and marker thereon and being associated with the
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`recognized new position of said marker with respect to the information on said board.
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`No such analyzing and recognizing by a computer takes place in the situation described
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`by the examiner of a casino which monitors activity with TV cameras. In particular, such a
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`monitoring system does not "analyze" the TV camera output in order to "recognize" (which
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`together are definitionally different from to "display" or even "monitor", as readily recognized
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`by those of ordinary skill in computer vision which is the standard which should be applied) a
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`relative position of a marker and a new position of the marker with respect to the information on
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`the board. Further, and significantly, such a prior art monitoring system does not generate a
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`"sensory output" after the new position is "recognized", where the sensory output is different
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`524LT:20116:55025:I :ALEXANDRIA
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`2
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`Remarks
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`Case 2:21-cv-00040-JRG Document 70-5 Filed 09/02/21 Page 5 of 10 PageID #: 1326
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`Application # I 0/893,534
`Docket # P064 l 0US02/DEJ
`
`Responsive to Office
`Action of 05/29/2007
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`from a view of the board or game. Rather, the monitoring system described by the examiner
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`merely displays, without any analysis or recognition, whatever is within the field of view of the
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`TV camera.
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`The examiner also particularly noted that the term "generating sensation" was a personal
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`reaction and hence did not limit the claimed apparatus. By this Amendment, this term has been
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`changed to "sensory output" by which it is made clear that it is the computer means which
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`functions to generates this "output", and this generated output (e.g., an emitted sound or image
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`shown in a video display) is "designed to be capable of being perceived by the person" playing
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`the game. The prior art monitoring system obviously does not generate any such "output", as it
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`incapable of recognizing the need to generate a sensory output and instead merely displays the
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`game(s) (or game board(s)) in the field of view of the TV cameras.
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`In view of the above, it is submitted that ~hese specified functions of a computer means of
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`independent apparatus claim 9 (and the method steps performed by the computer of independent
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`method claim 21) are neither disclosed or made obvious by the Hedges patent, the Levy patent,
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`or the Karmarkar patent. Therefore, it is submitted that:
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`the rejection of independent claims 9 and 21 together with dependent claims 10-13 and 22-28
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`under 35 USC § 102 as being anticipated by the Hedges patent should be withdrawn;
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`the rejection of independent claims 9 and 21 together with dependent claims 10-13 and 22-28
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`under 35 USC § 102 as being anticipated by the Levy patent should be withdrawn; and
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`the rejection of independent claim 9 and dependent claims 10-13 under 35 USC § 102 as
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`being anticipated by the Karmarkar patent should be withdrawn.
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`Likewise, the various rejections of the other dependent claims based on these references
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`should likewise be withdrawn; and the other rejections directed to various other dependent
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`3
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`Remarks
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`Case 2:21-cv-00040-JRG Document 70-5 Filed 09/02/21 Page 6 of 10 PageID #: 1327
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`Application# 10/893,534
`Docket# P064 I 0US02/DEJ
`
`Responsive to Office
`Action of 05/29/2007
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`claims should also be withdrawn based at least on the allowability of the independent claims
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`from which they depend.
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`The examiner's attention is also directed to claims 29-31, added in the previous
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`amendment. These claims were not discussed, and in particular, were not rejected in the present
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`action. The limitations of these claims similarly show the differences between the present
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`invention and that of a monitoring system; which limitations are likewise not shown by any of
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`the cited references so that these claims are likewise allowable for this reason as well as for at
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`least for the same reasons as the independent claims from which they respectively depend.
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`For all of the foregoing reasons, it is submitted that all of the claims are allowable and
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`hence that the application is now in condition for immediate allowance.
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`524LT:20116:55025: I :ALEXANDRIA
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`4
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`Remarks
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`Case 2:21-cv-00040-JRG Document 70-5 Filed 09/02/21 Page 7 of 10 PageID #: 1328
`
`Application # 10/893,534
`Docket# P06410US02/DEJ
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`Responsive to Office
`Action of 05/29/2007
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`ATTACHMENT B
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`Amendments to the Claims
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`This listing of claims will replace all prior versions, and listings, of claims in the
`application.
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`1-8. (canceled)
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`9. (currently amended) A board game apparatus comprising:
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`a board on which a play of a game takes place, said board containing information
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`relating to the play of the game;
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`a physical marker used for the play of the game, said marker resting on said board and
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`capable of being moved by a person during the play of the game;
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`at least one TV Camera positioned to view said board and said marker, said TV camera
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`producing an output; and
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`~computer means ... connected to said at least one TV camera.,_
`a) for analyzing identifying, from an the output of said TV camera, and recognizing
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`from the analysis a relative position of said marker with respect to the information
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`on said board,
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`b) for identifying analyzing and recognizing. after a movement of said marker during
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`the play of the game which is viewed by said TV camera, a new position of said
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`marker with respect to the information on said board, and
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`c) for automatically generating, after the new position of said marker is identified
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`recognized, a sensation sensory output designed to be capable of being
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`perceived by the person.,_ J.vhich sensation is said sensory output being different
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`from a view of said board and marker thereon and being associated with the
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`recognized new position of said marker with respect to the information on said
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`board.
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`10. (currently amended) Apparatus according to claim 9, wherein said computer means
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`also identifies recognizes at least one identifying characteristic of said marker from the
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`output of said TV camera.
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`524L T:20116:55011: 1 :ALEXANDRIA
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`- 1 -
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`claims listing
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`Case 2:21-cv-00040-JRG Document 70-5 Filed 09/02/21 Page 8 of 10 PageID #: 1329
`
`Application# 10/893,534
`Docket# P06410US02/DEJ
`
`Responsive to Office
`Action of 05/29/2007
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`11. (currently amended) Apparatus according to claim 9, further including means to
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`· display video imagery or to output audio information to the person as said sensory
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`output sensation which is generated by said computer means.
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`12. {previously presented) Apparatus according to claim 9, wherein said computer
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`means also determines information concerning other objects used in the game or other
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`persons playing the game.
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`13. (previously presented) Apparatus according to claim 9, wherein said board is stiff
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`so as to not easily be deformed during transport or play.
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`14. (previously presented) Apparatus according to claim 9, wherein said board is
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`information provided on a computer generated video display.
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`15-20 (canceled)
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`21. {currently amended) A method for board game play comprising the steps of:
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`• providing a board on which ~physical markers are-is moved by a person during a
`play of the game, said board containing information relating to the play of said game;
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`• providing at least one TV Camera positioned to view said board and said marker
`thereon, the TV camera producing an output which is fed to a computer;
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`• utilizing the computer to analyze the output of the TV camera and then to
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`recognizedetermining, using a computer,from the analyzed output a relative position
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`of said marker with respect to the information provided on said board;
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`•
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`identifying with the computer, after a movement of said marker during the play of the
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`game to a new position on the board which is viewed by the TV camera, utilizing the
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`computer to analyze the output of the TV camera and then to recognize, from the
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`analyzed output, a-the new position of said marker with respect to the information on
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`said board; and
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`524L T:20116:55011 :1 :ALEXANDRIA
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`- 2 -
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`claims listing
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`Case 2:21-cv-00040-JRG Document 70-5 Filed 09/02/21 Page 9 of 10 PageID #: 1330
`
`Application# 10/893,534
`Docket# P06410US02/DEJ
`
`Responsive to Office
`Action of 05/29/2007
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`• generating with the computer, as a result of the new position identifiedrecognized by
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`the computer, a video or audio sensation sensory output different from a view of said
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`board and associated with the recognized new position of said marker with respect to
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`the information on said board which sensation is designed to be capable of being
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`perceived by the person playing said game.
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`22. (previously presented) A method according to claim 21, including the further step of
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`establishing in the computer a reference coordinate system for the board and marker.
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`23. (currently amended) A method according to claim 21, including the further step of
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`identifying recognizing the marker with the computer.
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`24. {currently amended) A method according to claim 23, wherein said identifioation
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`recognition pertains as well to the player associated with the identified marker.
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`25. (currently amended) A method according to claim 21, wherein said marker has a
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`specialized datum to aid in recognizing position determination or identifioation by said
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`computer.
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`26. (previously presented). A method according to claim 21, wherein said sensation is
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`selected from a computer memory to correspond to one of a plurality of choices for a
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`given game.
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`27. (previously presented) A method according to claim 26, in which a MONOPOL y®
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`game is enhanced by using local or otherwise familiar scenes or sounds to represent
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`the various properties .and other features in the game.
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`28. (currently amended) A method according to claim 21, wherein said sensory output
`sensation is downloaded by said computer from remote sources.
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`29. (previously presented) Apparatus according to claim 11:
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`524L T:20116:55011 :1 :ALEXANDRIA
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`- 3 -
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`claims listing
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`Case 2:21-cv-00040-JRG Document 70-5 Filed 09/02/21 Page 10 of 10 PageID #: 1331
`
`Application# 10/893,534
`Docket # P0641 0US02/DEJ
`
`Responsive fo Office
`Action of 05/29/2007
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`wherein said means to output is a video display, and
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`wherein said computer means outputs image data of a structure maintained in a
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`computer memory, which structure is associated with the new position of said
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`marker.
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`30. (previously presented) Apparatus according to claim 14, wherein said computer
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`means further provides a signal to said video display to output an image therein
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`associated with the new position of said marker.
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`31. (currently amended) A method according to claim 21,
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`wherein said generating step provides a video sensation sensory output which is an
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`image on a video display, and
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`. . wherein the video sensory output sensation is derived from image data of a structure
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`maintained in computer memory which is associated with the new position of said
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`marker.
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`524L T:20116:55011 :1 :ALEXANDRIA
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`-4-
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`claims listing
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