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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/11/25 has been entered.
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 1-4 and 15-20 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.
The claims are directed to identifying and providing notification of next available items (mental processes and organizing methods of human activity) involving:
a virtual award trophy to be given to a user who is playing a game when an unlock condition (mental process, provide someone an item, title, or status for completing a task);
identifying a virtual trophy that a user is predicted to acquire next during a game play of a game on a basis of virtual trophies that have been obtained previously during the game play of the game, wherein the virtual trophy is identified based on a set of relations regarding an acquisition order of the virtual trophies that have been obtained previously during the game play of the game (mental process – using related historical data to determine order of upcoming item, title, status, e.g., medal, badge, player’s experienced level);
display the information (present on paper)
Claims 1 and 4 do not integrate the abstract ideas into a practical application.
The claim does not improve the functioning of the computer itself or another technology; rather, it uses the computer components as tools to implement the abstract idea of identifying and providing notification of next available items.
No particular machine beyond generic components. Claims 1 and 4 recite “information processing device”, “an output device”. Claim 1 recites “circuitry”; yet, these are generic computing elements. See MPEP 2106.05(b), (f).
The additional elements (information processing device, circuitry, virtual trophy) are generally linking the use of a judicial exception to a particular technological environment or field of use and do not impose a meaningful limit on the abstract idea.
Accordingly, the claim does not integrate the abstract idea into a practical application under MPEP § 2106.04(d).
Considered individually and as an ordered combination, the claims do not recite an inventive concept (“significantly more”) beyond the abstract ideas.
Generic computer components and environments (information processing device, circuity, virtual trophy, output device) acquiring and identifying information are well-understood, routine, and conventional (WURC) activities in the field of computer gaming.
Under Berkheimer v. HP, 881 F.3d 1360, absent evidence in the record that any claimed element or arrangement is not WURC, it is proper to treat generic information processing device, circuity, output device, and information acquiring/identifying as conventional. The claims do not recite non-conventional computer functionality or architecture.
No specific algorithm, data structure, or hardware improvement is claimed that would transform the abstract idea into patent-eligible subject matter.
Therefore, claims 1-4 and 15-20 are ineligible under 35 U.S.C. § 101. The claims are directed to judicial exceptions—mental process and organizing methods of human activity —and do not integrate those exceptions into a practical application. The additional elements, viewed individually and in combination, amount to no more than the abstract idea of identifying and providing notification of next available items, implemented on a generic computer, and therefore do not add “significantly more.”
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries 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.
Claims 1-4 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. 20120172131 to Boswell et al (Boswell) in view of Tiny Tales: Heart of Forest video game as evidence YouTube video Tiny Tales: Heart of the Forest - Gameplay Part 1 - Hidden Object Games Walkthrough [STEAM] [PC] - https://www.youtube.com/watch?v=GCP1fmItGiw&list=PLkV2DBonV2yG6UJQP-M8fhzE7GfQ2-HhX&index=2 (herein referred to Tiny Tales).
Claims 1 and 4. Boswell discloses an information processing device comprising a circuitry configured to:
(see claim 4) a method for displaying information regarding a virtual trophy to be given to a user who is playing a game when an unlock condition is satisfied in an information processing device (Figs. 20G-H, ¶¶120-121 “an award (e.g., certificate, ribbon or plaque) may be issued at intervals throughout the games, completing a level in a game or, in some embodiments, upon completing a project”), the method comprising:
acquire information identifying a virtual trophy that a user is predicted to acquire next during a game play of a game on a basis of virtual trophies that have been obtained previously during the game play of the game (Fig. 20G-H, and ¶¶120-121, in this case, a list of next certificates, ribbons, plaques are shown in relation to previously obtained certificates, ribbons, plaques); and
display the information on an output device (Fig. 20G-H, and ¶¶4 and 108).
However, Boswell fails to explicitly disclose wherein the virtual trophy is identified based on a set of relations regarding an acquisition order of the virtual trophies that have been obtained previously during the game play of the game (emphasis added).
Tiny Tales teaches wherein a virtual trophy is identified based on a set of relations regarding an acquisition order of the virtual trophies that have been obtained previously during the game play of the game (at 20:08 objectives – collect coins, create a spell, i.e., collect game items in relation to objectives, for example, at 33:13 items needed to earn a pass to enter tournament).
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The gaming system of Boswell would have motivation to use the teachings of Tiny Tales in order to track required items for a player in a particular sequence in order for the player to advance in a video game in doing so would make the game more goal-based so that players know specific objectives and items that will be received upon completion of the tasks.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the gaming system of Boswell with the teachings of Tiny Tales in order to track collectible items for a player and require specific items in a particular sequence in order for the player to advance in a video game in doing so makes the game more goal-based so that players know specific objectives required and items that will be received upon completion of the tasks.
Claims 2 and 15. Boswell discloses wherein the information comprises an indication that there is a possibility of acquiring the virtual award trophy (Fig. 20G-H, and ¶¶120-121, in this case, a list of possible certificates, ribbons, plaques are shown).
Claims 3 and 16. Boswell in view of Tiny Tales teaches wherein the information comprises an indication regarding the virtual award trophy that has a highest possibility of being acquired (see Boswell Fig. 20G-H, and ¶¶120-121; and see Tiny Tales at 20:08 and 33:31, there is a 100% chance that a player will obtain associated virtual award for completing an objective in Tiny Tales).
Claims 17 and 19. Boswell in view of Tiny Tales teaches wherein the virtual trophy is identified based on a relation of the set of relations (see Boswell Fig. 20G-H, and ¶¶120-121) that determines one or more virtual trophies that need be acquired before the identified virtual trophy is acquired (see Tiny Tales at 20:08 and 33:31, objectives – collect coins, create a spell, i.e., collect game items in relation to objectives, at 33:13 items needed to earn a pass to enter tournament).
Claims 18 and 20. Boswell in view of Tiny Tales teaches wherein the virtual trophy is identified based on a relation of the set of relations that determines, for each previously obtained virtual trophy (see Boswell Fig. 20G-H, and ¶¶120-121 shows previously earned items and spaces for items that are still available to be earned by the player), a likelihood that a virtual trophy to be acquired subsequent to acquisition of the previously obtained virtual trophy (see Tiny Tales at 20:08 and 33:31, there is a 100% likelihood that a player will obtain associated virtual award for completing an objective in Tiny Tales).
Response to Arguments
Applicant’s arguments with respect to claims 1-4 and 15-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAMON J PIERCE whose telephone number is (571)270-1997. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at 571-270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAMON J PIERCE/Primary Examiner, Art Unit 3715