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 amendments dated 1/20/26 are hereby entered.
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 1-2, 4-10, and 12-18 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.
Claims 1 and 8-9 recite the limitations of “matching a user profile to the game client account using the play information” and “play information being data comprising at least one of user login information…a tutorial”, however, Applicant’s PGPUB only discloses employing “login” information to perform the claimed “matching”. See paragraph 57.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 4-10, and 12-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-2, 4-10, and 12-18 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being and/or recite the rules of a game.
In regard to Claims 1 and 8-9, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or claiming the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming:
[a] method for [providing] a game […] the method comprising:
starting installation of the game […];
establishing a first session when [provision] of a game […] has started, the first session being a temporary interface for allowing a user to play a game;
storing play information…during the first session, the play information…of a tutorial; and
updating, based on the [provision] of the game […] being completed, an account of the game […] by matching…using the play information acquired during the first session.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being and/or recite the rules of a game.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., embodying Applicant’s abstract idea in computer software that is provided/installed via a client/server model by a computing “apparatus”, employing user interfaces, a non-transitory computer-readable medium, a computer program, and/or an apparatus comprising a memory and a controller, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., embodying Applicant’s abstract idea in computer software that is provided/installed via a client/server model by a computing “apparatus”, employing user interfaces, a non-transitory computer-readable medium, a computer program, and/or an apparatus comprising a memory and a controller, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F1-2 in Applicant’s PGPUB.
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 4-10 and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over PGPUB US 20140171205 A1 by Morrison, III et al (“Morrison”) in view of PGPUB US 20130012310 A1 by Shepard et al (“Shepard”).
In regard to Claims 1, 7, and 8-9, Morrison teaches a method for installing a game client, configured to support play of a game, on an apparatus, the method comprising:
(see, e.g., F1);
starting installation of the game client on the apparatus based on executing an execution program of the game client stored in a memory of the apparatus;
(see, e.g., p13 in regard to “starting installation of the game client on the apparatus”; see, e.g., claim 12 in regard to “based on executing an execution program”);
establishing a first session when installation of a game client has started…to play a game;
(see, e.g., F2A; F3, 304);
storing play information acquired…progress of a tutorial; and
(see, e.g., p18-21);
updating…game client […] using the play information acquired during the first session
(see, e.g., F3, 312);
Furthermore, Shepard teaches employing an account that a player logs into to periodically store updated game play information (see, e.g., p78);
Furthermore, the combination of the cited prior art would have been obvious to one of ordinary skill in the art at the time of filing because the cited prior art includes each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the cited prior art being the lack of actual combination of the elements in a single prior art reference; one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately; and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Specifically, it would have been obvious to have added the functionality taught by Shepard to the method otherwise taught by Morrison, in order to provide a convenient way for the player to keep track of his/her accomplishments.
In regard to Claim 2, Morrison teaches this functionality. See, e.g., F2A and p18.
In regard to Claim 4, Morrison teaches this functionality. See, e.g., F2C.
In regard to Claim 5, Morrison teaches this functionality. See, e.g., F3, 310 and 312.
In regard to Claim 6, Morrison teaches this functionality. See, e.g., F2C and F3, 312.
In regard to Claims 10 and 12-13, see rejections of Claims 2-5.
In regard to Claims 14-15, see, e.g., F2A, 2B, and 2C.
In regard to Claim 16, see rejection of Claim 6.
In regard to Claims 17-18, Morrison teaches this functionality. See, e.g., F2A and p18.
Response to Arguments
Applicant argues on page 8 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is unpersuasive. The rejection made under 101 does not identify any “processor” as being part of the alleged mental process. Furthermore, its is unclear how to apply the 101 Examples provides by the Office given that the Mayo test is a legal test and the Office cannot make law; the Examples by and large do not cite to relevant case law; and the Examples are not provided with specifications that would allow for the BRI of the limitations in question to be determined. What is more, Applicant’s claimed invention does not concern re-arranging icons on a computer GUI in order to make them more efficient to use. Instead, Applicant’s claimed invention is more closely analogous to collecting data (e.g., play information for a game received during a first session), analyzing that data and providing an output based on that analysis (e.g., updating an account of a game client based on the play information), and thereby abstract as a mental process consistent with the CAFC’s decisions in, e.g., University of Florida Research Foundation, Electric Power Group, and Yousician (non-precedential). Furthermore, Applicant’s claimed invention may also be characterized as being abstract as being directed to the rules of a game wherein game play is commenced in a first session prior to all of the components/rules of the game being provided, and then the record of that game play from the first session being used to determine the later outcome of the game once all of the components are present.
Applicant argues that it has claimed a “practical application” and thereby claimed patent eligible subject matter under the Mayo test. Applicant’s argument is not persuasive. The Mayo test is a legal test and “practical application” is not part of the Mayo test but is, instead, a burden placed on examiners by the Office when they are making a 101 rejection employing the Mayo test. Simply invoking “practical application” but without citing specific legal authority in support of Applicant’s argument that it has claimed patent eligible subject matter under the two-part Mayo test, therefore, does not provide a proper basis or rationale as to why the 101 rejection being made is allegedly deficient.
Applicant further argues in regard to the rejections made under 35 USC 101 that it has claimed “unconventional features” (emphasis original) and thereby claimed “significantly more” than an abstract idea. Applicant’s argument is not persuasive because to the extent Applicant claims elements in addition to its abstract idea, embodying Applicant’s claimed abstract idea as computer code executing on a processor is well-known, routine, and conventional, as evidenced by the limited disclosure in that regard in Applicant’s specification.
Applicant’s arguments regarding the art rejections are addressed by the updated statements of those rejections made supra, which were necessitated by Applicant’s amendments.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715