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 .
Response to Amendment
This Final Office action is responsive to the amendment and response filed on September 2, 2025 (hereafter “Response”). The amendments to the claims are acknowledged and have been entered.
Claims 1, 5–10, 13, 14, 16–20, 22, 24, and 25 are now amended.
Claims 1, 5–11, 13–20, 22, 24, and 25 are pending in the application.
Response to Arguments
The 35 U.S.C. § 112(b) rejection is maintained, because the newly claimed “sex toy” continues to invoke 35 U.S.C. § 112(f) despite a lack of sufficient description for the corresponding structure in the written description.
All grounds of rejection based on prior art are hereby withdrawn, and replaced with new grounds of rejection necessitated by the change in scope brought on by the amendment. The Examiner will now address each argument presented by the Applicant, as it pertains to the new grounds of rejection raised herein.
Regarding the Applicant’s arguments that MacAuley does not explicitly teach or suggest a deliberate filtering process of second users who are not already in a friend relationship with the user (Response 15–17, and also the last paragraph of Response 18), the Examiner agrees, and therefore, the rejection has been updated with additional prior art to show the obviousness of this limitation.
Regarding the Applicant’s argument that MacAuley “belongs to an entirely different technical field and solves a fundamentally distinct problem,” (Response 17), the Examiner respectfully disagrees.
As an initial matter, the Applicant’s argument is incomplete. The allegation that MacAuley belongs to a “different technical field” and “solves a fundamentally distinct problem” merely alludes to the concept of analogous art, without ever actually saying whether or not the Applicant is making an analogous art argument. The Examiner will assume, for the sake of clarity on the record, that this argument is an argument concerning whether or not MacAuley is analogous art, as described in MPEP § 2141.01(a).
MacAuley is analogous art because the Applicant’s specification explicitly says this invention “relates to an online system and application (e.g., social media platform and/or application) enabling interaction between at least first and second users,” (Spec. 1), and MacAuley’s field of invention similarly relates to an online platform that facilitates communication between users. MacAuley ¶ 2. “A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention),” MPEP § 2141.01(a), and therefore, since (1) is addressed, we need not further address (2) for MacAuley.
The Applicant’s arguments concerning Anderson on page 18 of the Response are also not persuasive, as they fail to consider the references as a combination. Anderson isn’t relied-upon to show the obviousness of the claimed invention’s social networking features. Anderson is merely presented to show why the hardware conflict resolution technique recited in the claims was known prior to the effective filing date of the claimed invention, and therefore, would have been obvious to apply to MacAuley’s social networking platform.
Finally, with respect to the Applicant’s arguments concerning claim 24 (Response 19), the findings for the rejection of that claim are now updated to reflect its narrowed scope.
Accordingly, since the claims stand rejected, the Applicant’s request for a notice of allowance (Response 20) is respectfully denied.
Claim Interpretation
The following is a quotation of 35 U.S.C. § 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. § 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claims 1 and 20, and all claims depending therefrom, the “sex toy” (a generic placeholder), which is linked to the function of “perform a predetermined operation.”
In claim 17 and all claims depending therefrom, the “sex toy” is also the generic placeholder, and the function linked to the generic placeholder is “controlling parameters of” the sex toy “based on predetermined control instructions,” and/or being “remotely operated.”
The claimed sex toy meets the three-prong test from above as follows.
Regarding prong (A), the Applicant expressly admits that the phrase “sex toy” is defined by its function of “providing sexual stimulation,” rather than its structure. (See Amendment and Reply to Non-Final Office Action, page 12 (Sep. 2, 2025)) (citing paragraphs 4 and 20 of the pre-grant publication). Furthermore, the term “sex toy” cannot possibly be tied to any particular structure (or even any broader category of similar structures), because the function of providing sexual stimulation is entirely dependent upon the shape of the anatomy undergoing stimulation. The structure of a sex toy designed to penetrate depends upon the shape and size of the orifice it is meant to penetrate, and is entirely different from the structure of a sex toy designed to be penetrated, for example.
Regarding prong (B), the “sex toy” is linked to the function of “perform[ing] a predetermined operation” to the user who is operating it in claims 1 and 20, or, in the case of claim 17, being “remotely operated” and “controlling” its “parameters” “based on predetermined control instructions.”
Finally, under prong (C), there is nothing else in the claim that modifies the claimed “sex toy” with structure. Indeed, if there were something in the claim that modified the sex toy to include structure, it would be new matter, as the specification is devoid of such structure.
Accordingly, the claimed sex toy is understood to invoke 35 U.S.C. § 112(f).
Because this/these claim limitation(s) are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. However, as will be discussed in the § 112(b) rejection below, there is no corresponding structure described in the specification for this generic placeholder.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Claim Objections
The Examiner objects to claims 1, 17, and 20 for having the following informalities:
In claim 1, lines 10–11 and 14 each recite the element of “information on accessory information,” rather than merely “accessory information.”1 The formulation of “information on accessory information” is confusing, because it is not clear whether the Applicant is merely claiming information about the accessory (e.g., model, operational capabilities, control instructions), or meta-information about the accessory’s information, rather than the accessory itself (e.g., the amount of data or number of fields included amongst the accessory information).
The Examiner objects to claims 17 and 20 for containing the same language.
Appropriate correction is required, i.e., “the status information including (i) information on [[(i)]] an active state of the second user and (ii) accessory information for the second user, the information on the active state of the second user comprising information indicating whether the second user is at least one of busy and currently online,
Claim Rejections – 35 U.S.C. § 112(a)
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, 5–11, 13–20, 22, 24, and 25 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.
The specification fails to disclose a method or system with a computer program that includes the step of “selecting a subset of the second users who have not yet established a friend relationship with the first user on the platform,” as recited in all three independent claims 1, 17, and 20.
[AltContent: textbox (Annotated screenshot of Applicant’s remarks on page 15)]According to the Applicant, this claim limitation requires a “deliberate filtering process” of the subset, using the absence of a friend relationship as explicit criteria. (See Amendment and Reply to Non-Final Office Action, page 15 (Sep. 2, 2025)). And, according to the Applicant, we must read this claim limitation such that mere happenstantial selection of second users who are non-friends is not sufficient:
In addition to the Applicant’s own opinion about the claim language, the text of the amendment itself provides evidence that it requires the selection of non-friend users to the exclusion of friend users. In particular, while the transitional phrase “comprising” allows the claim to be open-ended (and therefore inclusive of additional elements), principles of English grammar require the word “subset” in this specific claim element to override the general provision that the claim, as a whole, is open-ended.
The Applicant has not pointed out where the amendments to the claims are supported, nor is there a written description of a method or computer system affirmatively “selecting a subset of the second users who have not yet established a friend relationship with the first user on the platform” (e.g., via the so-called deliberate filtering process as suggested in the Applicant’s remarks).
The only time the concept of a “friend” relationship is even mentioned anywhere in this application is at the top of page 13 (paragraph 41 of the PG-Pub.), which explains that some versions of the user interface in the present application may enable a user “initiat[e] a friend request to [a] second user.” (Spec. 13, lines 5–6).
This mere disclosure that some parts of the user interface may, “for example,” include a mechanism for initiating a friend request, is clearly not the same as disclosing a deliberate filtering process that ensures that only non-friend second users appear in the same user interface, to the exclusion of second users who are in a friend relationship with the first user.
Accordingly, each of the independent claims are rejected for containing new matter, and each of their dependent claims are rejected because they incorporate the new matter of their parent claims by reference.
Claim Rejections – 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 5–11, 13–20, 22, 24, and 25 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. § 112, the applicant), regards as the invention.
Claim limitations “sex toy” to “perform a predetermined operation” (claims 1 and 20), and/or to be “remotely operated” and have its parameters “controll[ed]” (claim 17), invokes 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. At most, the specification merely repeats the structureless description from the claims. (See Spec. 4). Therefore, the claim is indefinite and is rejected under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. § 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 C.F.R. § 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections – 35 U.S.C. § 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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential 35 U.S.C. § 102(a)(2) prior art against the later invention.
I. MacAuley, Anderson, and Rad teach claims 1, 5–7, 9–20, 22, 24, and 25.
Claims 1, 5–7, 9–20, 22, 24, and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Application Publication No. 2006/0015560 A1 (“MacAuley”) in view of U.S. Patent Application Publication No. 2022/0387240 A1 (“Anderson”), and further in view of U.S. Patent Application Publication No. 2016/0154569 A1 (“Rad”).
Claim 1
MacAuley teaches:
A system providing an online platform to facilitate interaction between plural users of the platform, the system comprising:
“FIG. 3 shows an exemplary network gaming environment 300 that interconnects multiple gaming systems 100(1), . . ., 100(g) via a network 302.” MacAuley ¶ 55. “In addition to gaming systems 100, one or more online services 304(1), . . ., 304(s) may be accessible via the network 302 to provide various services for the participants, such as hosting online games, serving downloadable music or video files, hosting gaming competitions, serving streaming audio/video files, and the like.” MacAuley ¶ 56.
a software application executed on a first terminal operable by a first user from among the plural users of the platform;
“The game console 102 implements a uniform media portal model that provides a consistent user interface and navigation hierarchy to move users through various entertainment areas.” MacAuley ¶ 52.
a memory; and a hardware processor configured to, under control of a program stored in the memory, execute processes comprising:
“As one suitable implementation, the CPU 200, memory controller 202, ROM 204, and RAM 206 are integrated onto a common module 214. In this implementation, ROM 204 is configured as a flash ROM that is connected to the memory controller 202 and a ROM bus (not shown).” MacAuley ¶ 46. “To implement the uniform media portal model, a console user interface (UI) application 260 is stored on the hard disk drive 208. When the game console is powered on, various portions of the console application 260 are loaded into RAM 206 and/or caches 210, 212 and executed on the CPU 200. The console application 260 presents a graphical user interface that provides a consistent user experience when navigating to different media types available on the game console.” MacAuley ¶ 53.
maintaining status information for each of a plurality of second users of the platform, the second users being users other than the first user from among the plural users of the platform,
“Presence server(s) 416 hold and process data concerning the status or presence of a given user logged in to data center 410 for online gaming.” MacAuley ¶ 72.
the status information including information on (i) an active state of the second user and (ii) accessory information for the second user, the information on the active state of the second user comprising information indicating whether the second user is at least one of busy and currently online,
Presence and status data includes information about whether each respective user is signed-in. See MacAuley ¶¶ 72, 78, and 81. Moreover, environment 300 also maintains additional information about each user’s presence that is more granular than merely the sign-in information. As one example, in addition to maintaining the users’ online/offline status, the environment 300 may maintain information about whether a user is in “whisper mode.” MacAuley ¶ 97. As another example, users have the ability “to appear offline to non-voice chat participants when in a voice chat session.” MacAuley ¶ 96. This latter example falls within the scope of the “busy” status, because the user is online, yet unavailable for contact due to engaging in another activity.
the information on the accessory information for the second user comprising information indicating whether a sex toy of the second user, which is communicably coupled with a second terminal operated by the second user is in at least one of a connected state, a remotely operable state, and an idle state, and the idle state being a state in which the sex toy of the second user is not currently being remotely operated by another user from among the plural users of the platform;
The presence data further includes information about whether a user has a video camera peripheral connected to his or her game console, MacAuley ¶ 99, and whether a speaker and/or microphone is appropriately connected. MacAuley ¶ 84. These three accessories each fall within the broadest reasonable interpretation of “adult toy,” because “[c]laim scope is not limited . . . by claim language that does not limit a claim to a particular structure,” MPEP § 2111.04, and the term “sex toy” does not require a particular structure. We know that this term does not require a particular structure because differences in male and female anatomy necessitate different physical structures to provide sexual stimulation. Furthermore, the Specification does not even disclose any particular examples of “sex toys” to provide context to the broadest reasonable interpretation. See MPEP § 2111 (“claims must be ‘given their broadest reasonable interpretation consistent with the specification.’”).
Since MacAuley teaches a system that maintains status information comprising at least information about whether a peripheral device is in a connected state, MacAuley necessarily teaches maintaining information about the peripheral device being “at least one of in a connected state, in a remotely operable state, and idle” (emphasis added).
In addition to those three peripheral devices, MacAuley further teaches a fourth peripheral device—controller 104—that is capable of entering into any of all three claimed states (i.e., “in a connected state, a remotely operable state, and an idle state”), although MacAuley does not explicitly disclose maintaining status information on the same. Specifically, each controller 104 may be in:
(i) a connected state, MacAuley ¶ 41 (“each controller 104 may be coupled to the game console 102 via a wire or wireless interface”);
(ii) a remotely operable state, MacAuley ¶¶ 103–104 (describing the controller 104 being available to receive “emoticon” commands from a remote user that cause the controller 104 to rumble or vibrate); and
(iii) an idle state, see MacAuley ¶ 119 (teaching that the game console knows whether or not a first emoticon is currently executing for purposes of deciding if or when it is time to execute a second emoticon).
To be clear, unlike the claimed invention, MacAuley does not explicitly disclose a system that maintains status information about the three states of controller 104 described above. However, as will be discussed later in this rejection, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the known technique of maintaining status information about the other three peripheral devices to the status of controller 104.
With respect to the limitation of the sex toy being communicably coupled with a second terminal operated by the second user, MacAuley further teaches that “[e]ach controller 104 may be coupled to the game console 102 via a wired or wireless interface,” MacAuley ¶ 41, with each user operating his or her own respective game console having its own respectively coupled controller 104. See MacAuley ¶¶ 55, 58, and FIGS. 3 and 4.
selecting a subset of the second users of the platform
A “host” user—which can be anyone on the gaming platform, including a third user distinct from whoever is mapped to the claimed first or second users—may create a Voice Chat session, and invite any number of his own friends to the voice chat, regardless of whether those users are friends with each other. MacAuley ¶¶ 86–87. Similarly, users that the host invites to the chat may also invite their own friends to the chat, even if those friends are not mutual friends with one another. “For example, A and B are friends, and B and C are friends. A invites B to the chat, and B then invites C to the chat. A, B and C are all then in the chat, but A and C are not presently friends.” MacAuley ¶ 93. Naturally, this creates a situation where a first and second user who have not established a friend relationship with one another are now members of the same subset of users who are in the voice chat session, which, while not the same as deliberately “filtering” the friends from the non-friends, is an initial step in that direction. As will be discussed later in this rejection, presenting a list of strictly non-friend second users to a first user was also known in the art prior to the claimed invention.
whose status information matches a predetermined status, the predetermined status at least including a status whereby the second user is online and the sex toy of the second user is connected
Regardless of who invites whom to the chat, the invitation process involves selecting from a list of users who are “concurrently signed in to the online gaming environment 400” at the time when they are selected for invitation. MacAuley ¶ 81. Furthermore, the menu of online friends available to send an invite may be further narrowed by those who have a connected microphone, MacAuley ¶ 96, or a connected camera. MacAuley ¶ 99. Hence, in at least one case, the voice chat may be limited to a group of users whose status includes being online, and having a specified peripheral device connected to their client device.
It is acknowledged that the above-described selection process may sometimes be performed by different users and at different times, but the claim language does not limit who may cause the “selecting,” or when the “selecting” must occur.
controlling to display, on the first terminal, at least one of a plurality of first selectable items, each of the first selectable items corresponding to a respective one of the second users from among the subset of second users
“Voice chat list 603 displays all gamers currently in the voice chat session. The console application may display a Friends button 605 at the top of the voice chat list which, upon selection by the user, causes the console application to display the user’s Friends list.” MacAuley ¶ 83. Each of the gamertags in the list are selectable as potential recipients. See MacAuley ¶¶ 102 and 116 (“in step 1201, User A selects emoticon recipient User B, e.g., the participant with gamertag GamerTag001, from voice chat screen 601 (FIG. 6).”).
and including the status information pertaining to the respective one of the second users;
For each gamertag in the list 603, the platform may display multiple different pieces of information, e.g., “the console application may use visual feedback to identify a current speaker by flashing a speaker icon 607 next to the player currently speaking in the voice chat session, or provide a Friends icon 609 to identify players currently on a player's own Friends list.” the names of each user’s gamertag, MacAuley ¶ 94, “a Friends icon 609 to identify players currently on a player's own Friends list,” MacAuley ¶ 93, speaker icon 607, and friends icon 609. MacAuley ¶¶ 93–94.
Additionally, when the voice chat screen 601 is further displaying the friends list, see MacAuley ¶ 83, “the console [will] retrieve and update the host’s Friends list, including online/offline status of users on the Friends list, and outstanding Friend invitations, and outstanding game invitations,” allowing the host “to see which Friends (if any) are also online.” MacAuley ¶ 86.
receiving, from the first user, a selection operation selecting one of the first selectable items,
“Next, in step 1203, User A selects the emoticon to send to User B by selecting the emoticon from one or more menus (see, e.g., FIGS. 9–11, and above description thereof) displayed as a result of selecting a voice chat participant from screen 601.” MacAuley ¶ 116.
the selected one of the first selectable items corresponding to a selected one of the second users from among the subset of the second users;
In this example, since the emoticon in the menu represents a command to send the emoticon to User B specifically, this menu item “corresponds to” User B as claimed. Again, as explained earlier, users A and B may be two users who have not yet established a friend relationship, e.g., if they were invited to the chat by a mutual third friend.
in response to the selection operation, providing, on the first terminal, an interface by which the first user can remotely control the sex toy of the selected one of the second users;
“In one illustrative embodiment, with reference to FIG. 6 and FIG. 9, when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant.” MacAuley ¶ 108. Via this interface, “the game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109.
In the case of the speaker as the connected peripheral, sending the emoticon “causes sound to be output via another participant's gaming system 102, or [the emoticon is] one which affects sound output via another participant's gaming system 102.” MacAuley ¶ 106.
In the case of the controller 104 as the connected peripheral, sending the emoticon causes “rumbling or vibrating [of] another voice chat participant’s controller 104, and caus[es] another voice chat participant’s joystick . . . to physically move without receiving input from the other voice chat participant.” MacAuley ¶ 104.
generating a control instruction based on input by the first user via the interface, and outputting the control instruction to the sex toy of the selected one of the second users, the control instruction comprising instructions which remotely control the sex toy of the selected one of the second users to perform a predetermined operation.
“In one illustrative embodiment, the emoticon execution may occur for as long as the selecting voice chat participant continues pressing the select button ‘A,’ optionally up to a maximum length of time.” MacAuley ¶ 111. “In one illustrative embodiment, where buttons 136 on controller 104 are pressure sensitive, the intensity level may be based on the pressure with which the button is pressed.” MacAuley ¶ 112.
Accordingly, based on all of the findings presented above, the only difference between MacAuley and the claimed invention is that MacAuley’s environment 300 does not consider the status of its controller 104 when selecting its subset of users on the basis of a predetermined status. That is, MacAuley’s platform maintains accessory information for each of the users about all three states (connected, remotely operable, and idle), but does not necessarily use all three states as the criteria for selecting a subset of the plural users.
This is an obvious difference for two reasons. For one, the application of a known technique to a known device ready for improvement to yield predictable results is prima facie obvious. MPEP § 2143 (subsection (I.)(D.)). Consistent with the guidance in that subsection of the MPEP, the evidence from MacAuley fully supports the following findings of fact that lead to the conclusion that the claimed invention is obvious, a priori any further evidence from a secondary reference:
(1) The prior art contained a “base” device (method, or product) upon which the claimed invention can be seen as an “improvement.” In this case, the “base” device is MacAuley’s environment 300, in which each user operates a controller 104 that is remotely operable by transmitting “haptic emoticons” to respective controllers 104. The claimed invention can be seen as an improvement because it facilitates matchmaking among users who are online, willing, and capable of using compatible accessory devices (e.g., controller 104) with one another.
(2) The prior art contained a known technique that is applicable to the base device (method, or product). The evidence for this finding is MacAuley’s technique for helping the user select a subset of platform users whose online state and connected devices match that of a predetermined status. Specifically, as explained above, the disclosed technique includes “quer[ying] the presence and notification servers 416 and 418, respectively, to determine which Friends 505, if any, are concurrently signed in to the online gaming environment 400,” MacAuley ¶ 81, and then further narrowing the friends list by those who are capable of engaging in voice chat with a connected microphone, MacAuley ¶ 96, or video chat with a connected camera. MacAuley ¶ 99.
(3) One of ordinary skill in the art would have recognized that applying the known technique for the other peripheral devices to the controller 104 would have yielded predictable results and resulted in an improved system, because this technique would prevent erroneous situations where one user sends MacAuley’s haptic emoticons to another user who is unable to receive them. Furthermore, as a matter of obviousness law, it is recognized that “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
Therefore, for at least this reason, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply aforementioned known technique in MacAuley’s disclosure to MacAuley’s controller 104.
Additionally, assuming for the sake of argument that the foregoing rationale was not sufficient, the claimed invention is also obvious because the feature missing from MacAuley was taught by the Anderson reference, as well as the motivation for combining the references, which will be discussed below.
Specifically, Anderson teaches:
maintaining status information for each of a plurality of second users of the platform, the second users being users other than the first user from among the plural users of the platform, the status information including information on (i) an active state of the second user and (ii) accessory information for the second user,
“Mobile application 140 may provide one or more user interfaces which may allow an authenticated person to view a listing of connected therapeutic apparatuses, or details of a single connected therapeutic apparatus which may include information regarding status of the therapeutic apparatus or information regarding an operational state of the therapeutic apparatus.” Anderson ¶ 93.
the information on the accessory information for the second user comprising . . . at least one of a connected state, a remotely operable state, and an idle state, and the idle state being a state in which the sex toy of the second user is not currently being remotely operated
“In an embodiment, the status of each listed therapeutic apparatus may be displayed as a colored circle indicating whether the therapeutic apparatus may be in a ready state (for example, green), a running state (for example, blue), a paused state (for example, orange), an error state (for example, red), a calibrating state (for example, blue-green), an initiating state (for example, orange), or a not calibrated state (for example, red).” Anderson ¶ 93.
selecting a subset of the second users of the platform who have not yet established a friend relationship with the first user on the platform and whose status information matches a predetermined status,
“Mobile application 140 may provide one or more user interfaces which may allow an authenticated person to cause a treatment command to execute on a selected therapeutic apparatus.” Anderson ¶ 94. Anderson’s system does not maintain any “friend” relationships, so it is necessarily the case that the selected users will have not yet established a friend relationship with the first user on the platform. This is still not the “deliberate filtering process” that the Applicant urges we read into the claims, but, as will be discussed below, such a filtering process was obvious at the time of the claimed invention.
the predetermined status at least including a status whereby the second user is online and the sex toy operated by the second user is connected, in the remotely operable state, and in the idle state;
“In embodiments, mobile application 140 may be configured to require that the selected therapeutic apparatus is in a status ready to accept a treatment command, which may comprise the therapeutic apparatus having first been calibrated.” Anderson ¶ 94.
The “ready state” is a state that falls within the scope of both the “connected” state and the “remotely operable” state, since that is the only way for a command to reach the device and successfully execute.
The “ready state” is also a state that falls within the scope of the claimed “idle state,” because Anderson explicitly discloses that the “ready state” is a separate state from “a running state.” See Anderson ¶ 93.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve MacAuley’s platform by maintaining all of the state information taught by Anderson, and utilizing the same as a perquisite for selecting a device to remotely control (as also taught by Anderson). One would have been motivated to improve MacAuley’s platform with Anderson’s enhanced state information and state criteria because the status information makes it easier to discover which users’ devices are truly available for use, rather than merely guessing.
Neither MacAuley nor Anderson explicitly disclose a deliberate filtering process for selecting second users who have not yet established a friend relationship with the first user.
Rad, however, teaches a system that executes processes comprising:
selecting a subset of the second users of the platform who have not yet established a friend relationship with the first user on the platform and whose status information matches a predetermined status,
“In some embodiments, matching server 20 may be configured to encourage user 14 to interact with entities in [a] pool 30,” by selecting for presentation, “a list of limited entries from pool 30,” except that “entities that have been presented previously may be excluded,” and/or “entities that have been blocked by user 14 may also be excluded.” Rad ¶ 74.
controlling to display, on the first terminal, at least one of a plurality of first selectable items, each of the first selectable items corresponding to a respective one of the second users from among the subset of the second users and including the status information pertaining to the respective one of the second users;
Matching server 20 then presents the list of limited entities that it selected from pool 30. Rad ¶ 74. Each of the entities in the list is displayed together with a selectable button for expressing interest or contacting that entity. See Rad ¶ 41 and FIG. 5 step 72.
receiving, from the first user, a selection operation selecting one of the first selectable items,
“Possible interaction with these entities may include viewing more information regarding the entity, expressing a positive or negative preference for the entity, and choosing to contact the entity.” Rad ¶ 74.
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 MacAuley’s system to filter second users presented a first user to only a subset who have not yet established a friend relationship with the first user on the platform, as taught by Rad. One would have been motivated to modify MacAuley’s platform in this way, because Rad’s technique provides a way to meet new people who have similar interests as the user. See Rad ¶¶ 5–6.
Claim 5
MacAuley, Anderson, and Rad teach the system according to claim 1,
wherein the interface comprises an interface by which the first user can directly remotely control parameters of the sex toy of the selected one of the second users.
“[T]he game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109. “In one illustrative embodiment, the emoticon execution may occur for as long as the selecting voice chat participant continues pressing the select button ‘A,’ optionally up to a maximum length of time.” MacAuley ¶ 111. “In one illustrative embodiment, where buttons 136 on controller 104 are pressure sensitive, the intensity level may be based on the pressure with which the button is pressed.” MacAuley ¶ 112.
Claim 6
MacAuley, Anderson, and Rad teach the system according to claim 5,
wherein remote control of the sex toy of the selected one of the second users via the interface by the first user is enabled during a period of time during which the first user is viewing a profile of the selected one of the second users.
“In one illustrative embodiment, with reference to FIG. 6 and FIG. 9, when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant.” MacAuley ¶ 108. “Upon selection of emoticon option 902, the game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109.
Claim 7
MacAuley, Anderson, and Rad teach the system according to claim 5,
wherein the interface comprises an interface for the first user to flag the selected one of the second users as a user of interest.
“In one illustrative embodiment, with reference to FIG. 6 and FIG. 9, when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant. As discussed above, options may include inviting the selected voice chat participant to join the selecting participant's Friends list.” MacAuley ¶ 108.
Claim 9
MacAuley, Anderson, and Rad teach the system according to claim 1,
wherein the interface comprises an interface enabling the first user and the selected one of the second users to communicate with each other by at least one of text, video, and voice.
“In some embodiments there may be a whisper mode (also referred to as `secret` mode) whereby a voice chat participant can optionally speak to only a designated other voice chat participant, even when there are more than two voice chat participants in a given voice chat session.” MacAuley ¶ 97. “In some embodiments voice chat may include a video chat option. In such an embodiment, a user need only have a video camera peripheral connected to game console 102 and have a video chat option selected.” MacAuley ¶ 99.
Claim 10
MacAuley, Anderson, and Rad teach the system according to claim 9,
wherein the interface comprises interface components enabling operations including
“In one illustrative embodiment, with reference to FIG. 6 and FIG. 9, when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant.” MacAuley ¶ 108.
(i) switching a currently displayed user profile,
Menu 901 includes a “BACK” button, which teaches (if not at least suggests) a return to the previous screen. MacAuley FIG. 9. In this case, the previous screen is the voice chat screen 601 from FIG. 6, which includes a “[v]oice chat list 603 [that] displays all gamers currently in the voice chat session,” MacAuley ¶ 83, instead of the single user’s profile in FIG. 9.
(ii) initiating a friend request to the selected one of the second users to establish the friend relationship,
Menu 901 further includes an option for “inviting the selected voice chat participant to join the selecting participant's Friends list.” MacAuley ¶ 108.
and (iii) sending a greeting to the selected one of the second users.
Menu 901 further includes an option for “sending a whisper or private chat to a user.” MacAuley ¶ 108.
Claim 11
MacAuley, Anderson, and Rad teach the system according to claim 1, wherein the hardware processor is configured to:
display a first list including at least a portion of the plurality of first selectable items; and
“The console application may display a Friends button 605 at the top of the voice chat list which, upon selection by the user, causes the console application to display the user's Friends list. The user can select a Friend from his or her Friends list,” which initiates a process of inviting and ultimately navigating the invited friend into the voice chat. MacAuley ¶ 83.
display a second list including plural user profiles in response to selection by the first user of a plurality of the first selectable items displayed in the first list, each user profile included in the second list corresponding to a respective one of the selected plurality of first selectable items.
“Voice chat list 603 displays all gamers currently in the voice chat session.” MacAuley ¶ 83. As explained above, the “gamers currently in the voice chat session” may include of all the Friends that the user selected from his friends list earlier.
Claim 13
MacAuley teaches the system according to claim 1,
wherein the hardware processor is further configured to select the subset of the second users by matching based on predetermined rules, the predetermined rules being definable by the first user
“In some embodiments, where each voice chat session is registered with match server 422 and a voice chat session host has designated the session as being open to non-Friend participants, users may be able search for a chat session based on various criteria and/or user profile information.” MacAuley ¶ 95.
and including rules pertaining to
“For example, a user may search for an open voice chat session based on ranking or skill level of voice chat participants (or simply the host)” or “game attitude (e.g., hard core, spare time player, socialite, etc.), or any other information tracked by the online game environment 400.” MacAuley ¶ 95.
and accessory compatibility.
The user may also search based on “games or game types played” by the potential matches. MacAuley ¶ 95. The other user’s game history falls within the scope of “accessory compatibility” because claim 13 does not mention whether the “accessory” recited in this claim is the same accessory mentioned in the ancestor claims. Therefore, claim 13 does not require “accessory compatibility” to pertain to the same accessory mentioned in the previous claims. Under that scope, each of the “games” may be an accessory to the console 102, because they are stored on separate removable media (e.g., CD and DVD-ROM). MacAuley ¶ 43.
All of that being said, MacAuley’s game console lacks provisions for rules pertaining to geographical location and sexual orientation.
Rad, however, teaches a system configured to provide a plurality of selectable items corresponding to a set of user profiles,
wherein the users selectable from among the first selectable items are selected by matching based on predetermined rules, the predetermined rules being definable by the first user
“Matching server 20 may be configured to parse the profiles of the users in set 52, e.g., collecting data and applying algorithms,” Rad ¶ 91, to determine which potential profile matches to present to a user. Rad ¶ 94.
and including rules pertaining to geographical location, values, sexual orientation,
“For example, matching server 20 may use explicit signals from social networking platform 50 such as common friends, common interests, common network, location, gender, sexuality, or age to evaluate potential matches between users 14.” Rad ¶ 91.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve MacAuley’s profile searching feature with Rad’s technique of matching users by their “location, gender, [and] sexuality,” (inter alia) resulting in a combined system that enables users to search for one another based on a more robust set of factors. One would have been motivated to improve MacAuley’s profile searching feature with Rad’s technique because presenting “irrelevant entities to the searcher . . . costs the user of the service time and may deter them from continuing through all of the search results.” Rad ¶ 8.
Claim 14
MacAuley, Anderson, and Rad teach the system according to claim 1,
wherein the interface comprises at least one piece of information regarding the selected one of the second users, the at least one piece of information being definable by the selected one of the second users.
“In some embodiments, where each voice chat session is registered with match server 422 and a voice chat session host has designated the session as being open to non-Friend participants, users may be able search for a chat session based on various criteria and/or user profile information. For example, a user may search for an open voice chat session based on ranking or skill level of voice chat participants (or simply the host), games or game types played, game attitude (e.g., hard core, spare time player, socialite, etc.), or any other information tracked by the online game environment 400.” MacAuley ¶ 95.
Claim 15
MacAuley, Anderson, and Rad teach the system according to claim 14,
wherein the at least one piece of information comprises at least one of personal introduction information, signature information, and user accessory information.
The searchable user profile information may include “ranking or skill level of voice chat participants (or simply the host), games or game types played, game attitude (e.g., hard core, spare time player, socialite, etc.), or any other information tracked by the online game environment 400.” MacAuley ¶ 95.
Claim 16
MacAuley, Anderson, and Rad teach the system according to claim 15,
wherein each of the personal introduction information and the signature information comprises at least one of text information, voice information, and video information, and the user accessory information comprises at least control mode information indicating controllable features of the sex toy of the second user.
The searchable user profile information may include “ranking or skill level of voice chat participants (or simply the host), games or game types played, game attitude (e.g., hard core, spare time player, socialite, etc.), or any other information tracked by the online game environment 400.” MacAuley ¶ 95.
Claim 17
MacAuley teaches
A system providing an online platform to facilitate interaction between plural users of the platform, the system comprising:
“FIG. 3 shows an exemplary network gaming environment 300 that interconnects multiple gaming systems 100(1), . . . , 100(g) via a network 302.” MacAuley ¶ 55. “In addition to gaming systems 100, one or more online services 304(1), . . . , 304(s) may be accessible via the network 302 to provide various services for the participants, such as hosting online games, serving downloadable music or video files, hosting gaming competitions, serving streaming audio/video files, and the like.” MacAuley ¶ 56.
a memory; and a hardware processor configured to, under control of a program stored in the memory, execute processes comprising:
“As one suitable implementation, the CPU 200, memory controller 202, ROM 204, and RAM 206 are integrated onto a common module 214. In this implementation, ROM 204 is configured as a flash ROM that is connected to the memory controller 202 and a ROM bus (not shown).” MacAuley ¶ 46.
“The game console 102 implements a uniform media portal model that provides a consistent user interface and navigation hierarchy to move users through various entertainment areas.” MacAuley ¶ 52. “To implement the uniform media portal model, a console user interface (UI) application 260 is stored on the hard disk drive 208. When the game console is powered on, various portions of the console application 260 are loaded into RAM 206 and/or caches 210, 212 and executed on the CPU 200. The console application 260 presents a graphical user interface that provides a consistent user experience when navigating to different media types available on the game console.” MacAuley ¶ 53.
maintaining status information for each of a plurality of second users of the platform, the second users being users other than the first user from among the plural users of the platform,
“Presence server(s) 416 hold and process data concerning the status or presence of a given user logged in to data center 410 for online gaming.” MacAuley ¶ 72.
the status information including information on (i) an active state of the second user and (ii) accessory information for the second user, the information on the active state of the second user comprising information indicating whether the second user is at least one of busy and currently online,
Presence and status data includes information about whether each respective user is signed-in. See MacAuley ¶¶ 72, 78, and 81. Moreover, environment 300 also maintains additional information about each user’s presence that is more granular than merely the sign-in information. As one example, in addition to maintaining the users’ online/offline status, the environment 300 may maintain information about whether a user is in “whisper mode.” MacAuley ¶ 97. As another example, users have the ability “to appear offline to non-voice chat participants when in a voice chat session.” MacAuley ¶ 96. This latter example falls within the scope of the “busy” status, because the user is online, yet unavailable for contact due to engaging in another activity.
the information on the accessory information for the second user comprising information indicating whether a sex toy of the second user, which is communicably coupled with a second terminal operated by the second user, is in at least one of a connected state, a remotely operable state, and an idle state, and the idle state being a state in which the adult toy is not currently being remotely operated by another user from among the plural users of the platform;
The presence data further includes information about whether a user has a video camera peripheral connected to his or her game console, MacAuley ¶ 99, and whether a speaker and/or microphone is appropriately connected. MacAuley ¶ 84. These three accessories each fall within the broadest reasonable interpretation of “adult toy,” because “[c]laim scope is not limited . . . by claim language that does not limit a claim to a particular structure,” MPEP § 2111.04, and the term “sex toy” does not require a particular structure. We know that this term does not require a particular structure because differences in male and female anatomy necessitate different physical structures to provide sexual stimulation. Furthermore, the Specification does not even disclose any particular examples of “sex toys” to provide context to the broadest reasonable interpretation. See MPEP § 2111 (“claims must be ‘given their broadest reasonable interpretation consistent with the specification.’”).
Since MacAuley teaches a system that maintains status information comprising at least information about whether a peripheral device is in a connected state, MacAuley necessarily teaches maintaining information about the peripheral device being “at least one of in a connected state, in a remotely operable state, and idle” (emphasis added).
In addition to those three peripheral devices, MacAuley further teaches a fourth peripheral device—controller 104—that is capable of entering into any of all three claimed states (i.e., “in a connected state, a remotely operable state, and an idle state”), although MacAuley does not explicitly disclose maintaining status information on the same. Specifically, each controller 104 may be in:
(i) a connected state, MacAuley ¶ 41 (“each controller 104 may be coupled to the game console 102 via a wire or wireless interface”);
(ii) a remotely operable state, MacAuley ¶¶ 103–104 (describing the controller 104 being available to receive “emoticon” commands from a remote user that cause the controller 104 to rumble or vibrate); and
(iii) an idle state, see MacAuley ¶ 119 (teaching that the game console knows whether or not a first emoticon is currently executing for purposes of deciding if or when it is time to execute a second emoticon).
To be clear, unlike the claimed invention, MacAuley does not explicitly disclose a system that maintains status information about the three states of controller 104 described above. However, as will be discussed later in this rejection, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the known technique of maintaining status information about the other three peripheral devices to the status of controller 104.
selecting a subset of the second users of the platform
A “host” user—which can be anyone on the gaming platform, including a third user distinct from whoever is mapped to the claimed first or second users—may create a Voice Chat session, and invite any number of his own friends to the voice chat, regardless of whether those users are friends with each other. MacAuley ¶¶ 86–87. Similarly, users that the host invites to the chat may also invite their own friends to the chat, even if those friends are not mutual friends with one another. “For example, A and B are friends, and B and C are friends. A invites B to the chat, and B then invites C to the chat. A, B and C are all then in the chat, but A and C are not presently friends.” MacAuley ¶ 93. Naturally, this creates a situation where a first and second user who have not established a friend relationship with one another are now members of the same subset of users who are in the voice chat session, which, while not the same as deliberately “filtering” the friends from the non-friends, is an initial step in that direction. As will be discussed later in this rejection, presenting a list of strictly non-friend second users to a first user was also known in the art prior to the claimed invention.
whose status information matches a predetermined status, the predetermined status at least including a status whereby the second user is online and the sex toy of the second user is connected
Regardless of who invites whom to the chat, the invitation process involves selecting from a list of users who are “concurrently signed in to the online gaming environment 400” at the time when they are selected for invitation. MacAuley ¶ 81. Furthermore, the menu of online friends available to send an invite may be further narrowed by those who have a connected microphone, MacAuley ¶ 96, or a connected camera. MacAuley ¶ 99. Hence, in at least one case, the voice chat may be limited to a group of users whose status includes being online, and having a specified peripheral device connected to their client device.
It is acknowledged that the above-described selection process may sometimes be performed by different users and at different times, but the claim language does not limit who may cause the “selecting,” or when the “selecting” must occur.
controlling to display, on a first terminal operated by the first user, at least one of a plurality of first selectable items, each of the first selectable items corresponding to a profile page of a respective one of the second users from among the subset of the second users
“Voice chat list 603 displays all gamers currently in the voice chat session. The console application may display a Friends button 605 at the top of the voice chat list which, upon selection by the user, causes the console application to display the user’s Friends list.” MacAuley ¶ 83. Each of the gamertags in the list are selectable as potential recipients. See MacAuley ¶¶ 102 and 116 (“in step 1201, User A selects emoticon recipient User B, e.g., the participant with gamertag GamerTag001, from voice chat screen 601 (FIG. 6).”).
and including the status information pertaining to the respective one of the second users;
For each gamertag in the list 603, the platform may display multiple different pieces of information, e.g., the names of each user’s gamertag, MacAuley ¶ 94, “a Friends icon 609 to identify players currently on a player's own Friends list,” MacAuley ¶ 93, speaker icon 607, and friends icon 609. MacAuley ¶¶ 93–94.
Additionally, when the voice chat screen 601 is further displaying the friends list, see MacAuley ¶ 83, “the console [will] retrieve and update the host’s Friends list, including online/offline status of users on the Friends list, and outstanding Friend invitations, and outstanding game invitations,” allowing the host “to see which Friends (if any) are also online.” MacAuley ¶ 86.
receiving, from the first user, a selection operation selecting one of the first selectable items,
“Next, in step 1203, User A selects the emoticon to send to User B by selecting the emoticon from one or more menus (see, e.g., FIGS. 9–11, and above description thereof) displayed as a result of selecting a voice chat participant from screen 601.” MacAuley ¶ 116.
the selected one of the first selectable items corresponding to a selected one of the second users from among the subset of the second users;
In this example, since the emoticon in the menu represents a command to send the emoticon to User B specifically, this menu item “corresponds to” User B as claimed.
in response to the selection operation, controlling parameters of each of at least one remotely operable sex toy
“In one illustrative embodiment, with reference to FIG. 6 and FIG. 9, when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant.” MacAuley ¶ 108. Via this interface, “the game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109. In particular, “haptic emoticons may include rumbling or vibrating another voice chat participant's controller 104, and causing another voice chat participant's joystick, flight yoke, or driving wheel to physically move without receiving input from the other voice chat participant.” MacAuley ¶ 104.
each of the at least one remotely operable sex toy being communicably connected with at least one of the first terminal operated by the first user and the second terminal operated by the selected one of the second users, and each of the at least one remotely operable sex toy being operated by a respective one of the first user and the selected one of the second users,
“Each controller 104 may be coupled to the game console 102 via a wired or wireless interface,” MacAuley ¶ 41, with each user operating his or her own respective game console having its own respectively coupled controller 104. See MacAuley ¶¶ 55, 58, and FIGS. 3 and 4.
wherein the controlling the parameters comprises controlling the parameters of each of the at least one remotely operable sex toy based on predetermined control instructions associated with the selected one of the second users.
“In one illustrative embodiment, the emoticon execution may occur for as long as the selecting voice chat participant continues pressing the select button ‘A,’ optionally up to a maximum length of time.” MacAuley ¶ 111. “In one illustrative embodiment, where buttons 136 on controller 104 are pressure sensitive, the intensity level may be based on the pressure with which the button is pressed.” MacAuley ¶ 112.
Accordingly, based on all of the findings presented above, the only differences between MacAuley and the claimed invention is that MacAuley’s environment 300 does not maintain the status of its controller 104 (it only maintains the status of the other remotely operable devices) and that there is no deliberate filtering of non-friend users in the chat.
The second difference will be discussed below. However, regarding the first difference, controller 104 is certainly capable of being in any number of the three claimed statuses, and MacAuley also teaches the technique of selecting a subset of users by considering a predetermined status of peripheral devices other than controller 104, but MacAuley never explicitly instructs the person of ordinary skill in the art to apply that technique to controller 104.
This is an obvious difference for two reasons. For one, the application of a known technique to a known device ready for improvement to yield predictable results is prima facie obvious. MPEP § 2143 (subsection (I.)(D.)). Consistent with the guidance in that subsection of the MPEP, the evidence from MacAuley fully supports the following findings of fact that lead to the conclusion that the claimed invention is obvious:
(1) The prior art contained a “base” device (method, or product) upon which the claimed invention can be seen as an “improvement.” In this case, the “base” device is MacAuley’s environment 300, in which each user operates a controller 104 that is remotely operable by transmitting “haptic emoticons” to respective controllers 104. The claimed invention can be seen as an improvement because it facilitates matchmaking among users who are online, willing, and capable of using compatible accessory devices (e.g., controller 104) with one another.
(2) The prior art contained a known technique that is applicable to the base device (method, or product). The evidence for this finding is MacAuley’s technique for helping the user select a subset of platform users whose online state and connected devices match that of a predetermined status. Specifically, as explained above, the disclosed technique includes “quer[ying] the presence and notification servers 416 and 418, respectively, to determine which Friends 505, if any, are concurrently signed in to the online gaming environment 400,” MacAuley ¶ 81, and then further narrowing the friends list by those who are capable of engaging in voice chat with a connected microphone, MacAuley ¶ 96, or video chat with a connected camera. MacAuley ¶ 99.
(3) One of ordinary skill in the art would have recognized that applying the known technique for the other peripheral devices to the controller 104 would have yielded predictable results and resulted in an improved system, because this technique would prevent erroneous situations where one user sends MacAuley’s haptic emoticons to another user who is unable to receive them. Furthermore, as a matter of obviousness law, it is recognized that “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
Therefore, for at least this reason, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply aforementioned known technique in MacAuley’s disclosure to MacAuley’s controller 104.
Additionally, assuming for the sake of argument that the foregoing rationale was not sufficient, the claimed invention is also obvious because the feature missing from MacAuley was taught by the Anderson reference, as well as the motivation for combining the references, which will be discussed below.
Specifically, Anderson teaches:
maintaining status information for each of a plurality of second users of the platform, the second users being users other than a first user from among the plural users of the platform, the status information including information on (i) an active state of the second user and (ii) accessory information for the second user,
“Mobile application 140 may provide one or more user interfaces which may allow an authenticated person to view a listing of connected therapeutic apparatuses, or details of a single connected therapeutic apparatus which may include information regarding status of the therapeutic apparatus or information regarding an operational state of the therapeutic apparatus.” Anderson ¶ 93.
the accessory information for the second user comprising . . . at least one of a connected state, a remotely operable state, and an idle state, and the idle state being a state in which the sex toy of the second user is not currently being remotely operated by another user from among the plural users of the platform;
“In an embodiment, the status of each listed therapeutic apparatus may be displayed as a colored circle indicating whether the therapeutic apparatus may be in a ready state (for example, green), a running state (for example, blue), a paused state (for example, orange), an error state (for example, red), a calibrating state (for example, blue-green), an initiating state (for example, orange), or a not calibrated state (for example, red).” Anderson ¶ 93.
selecting a subset of the second users of the platform who have not yet established a friend relationship with the first user and whose status information matches a predetermined status,
“Mobile application 140 may provide one or more user interfaces which may allow an authenticated person to cause a treatment command to execute on a selected therapeutic apparatus.” Anderson ¶ 94. Anderson’s system does not maintain any “friend” relationships, so it is necessarily the case that the selected users will have not yet established a friend relationship with the first user on the platform. This is still not the “deliberate filtering process” that the Applicant urges we read into the claims, but, as will be discussed below, such a filtering process was obvious at the time of the claimed invention.
the predetermined status at least including a status whereby the second user is online and the sex toy operated by the second user is connected, in the remotely operable state, and in the idle state;
“In embodiments, mobile application 140 may be configured to require that the selected therapeutic apparatus is in a status ready to accept a treatment command, which may comprise the therapeutic apparatus having first been calibrated.” Anderson ¶ 94.
The “ready state” is a state that falls within the scope of both the “connected” state and the “remotely operable” state, since that is the only way for a command to reach the device and successfully execute.
The “ready state” is also a state that falls within the scope of the claimed “idle state,” because Anderson explicitly discloses that the “ready state” is a separate state from “a running state.” See Anderson ¶ 93.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve MacAuley’s platform by maintaining all of the state information taught by Anderson, and utilizing the same as a perquisite for selecting a device to remotely control (as also taught by Anderson). One would have been motivated to improve MacAuley’s platform with Anderson’s enhanced state information and state criteria because the status information makes it easier to discover which users’ devices are truly available for use, rather than merely guessing.
As mentioned above, neither MacAuley nor Anderson explicitly disclose a deliberate filtering process for selecting second users who have not yet established a friend relationship with the first user.
Rad, however, teaches a system that executes processes comprising:
selecting a subset of the second users of the platform who have not yet established a friend relationship with the first user on the platform and whose status information matches a predetermined status,
“In some embodiments, matching server 20 may be configured to encourage user 14 to interact with entities in [a] pool 30,” by selecting for presentation, “a list of limited entries from pool 30,” except that “entities that have been presented previously may be excluded,” and/or “entities that have been blocked by user 14 may also be excluded.” Rad ¶ 74.
controlling to display, on the first terminal, at least one of a plurality of first selectable items, each of the first selectable items corresponding to a respective one of the second users from among the subset of the second users and including the status information pertaining to the respective one of the second users;
Matching server 20 then presents the list of limited entities that it selected from pool 30. Rad ¶ 74. Each of the entities in the list is displayed together with a selectable button for expressing interest or contacting that entity. See Rad ¶ 41 and FIG. 5 step 72.
receiving, from the first user, a selection operation selecting one of the first selectable items,
“Possible interaction with these entities may include viewing more information regarding the entity, expressing a positive or negative preference for the entity, and choosing to contact the entity.” Rad ¶ 74.
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 MacAuley’s system to filter second users presented a first user to only a subset who have not yet established a friend relationship with the first user on the platform, as taught by Rad. One would have been motivated to modify MacAuley’s platform in this way, because Rad’s technique provides a way to meet new people who have similar interests as the user. See Rad ¶¶ 5–6.
Claim 18
MacAuley, Anderson, and Rad teach the system according to claim 17,
wherein each of the at least one remotely operable sex toy is communicably connected with a respective one of the first terminal and the second terminal via which the adult toy is remotely operated.
“Each controller 104 may be coupled to the game console 102 via a wired or wireless interface,” MacAuley ¶ 41, with each user operating his or her own respective game console having its own respectively coupled controller 104. See MacAuley ¶¶ 55, 58, and FIGS. 3 and 4.
Claim 19
MacAuley, Anderson, and Rad teach the system according to claim 18,
wherein the predetermined control instructions comprise at least one set of control instructions for controlling the parameters of each of the at least one remotely operable sex toy.
“[T]he game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109. “In one illustrative embodiment, the emoticon execution may occur for as long as the selecting voice chat participant continues pressing the select button ‘A,’ optionally up to a maximum length of time.” MacAuley ¶ 111. “In one illustrative embodiment, where buttons 136 on controller 104 are pressure sensitive, the intensity level may be based on the pressure with which the button is pressed.” MacAuley ¶ 112.
Claims 20 and 22
Claims 20 and 22 recite the same method that the respective systems of claims 1 and 6 perform as part of their normal operation. Therefore, claims 20 and 22 are rejected over all of the findings provided above for respective claims 1 and 6. See MPEP § 2112.02 (“Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device.”).
Claim 24
MacAuley, Anderson, and Rad teach the system according to claim 1,
wherein the sex toy of the second user is selectively operable in both (i) a first remotely operable state in which the sex toy of the second user is able to be directly remotely controlled by the first user without requiring authorization by the second user and (ii) a second remotely operable state in which the sex toy of the second user cannot be directly remotely controlled by the first user unless authorized by the second user.
Regarding (i), MacAuley discloses that “when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant.” MacAuley ¶ 108. Via this interface, “the game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109.
Sending the emoticon causes “rumbling or vibrating [of] another voice chat participant’s controller 104, and caus[es] another voice chat participant’s joystick . . . to physically move without receiving input from the other voice chat participant.” MacAuley ¶ 104.
Regarding (ii), MacAuley does not explicitly disclose a second state where the controller 104 is remotely operable, yet also not controllable by an unauthorized user.
Anderson, however, teaches both (i) and (ii):
(i) a first remotely operable state in which the sex toy of the second user is able to be directly remotely controlled by the first user without requiring authorization by the second user and (ii) a second remotely operable state in which the sex toy of the second user cannot be directly remotely controlled by the first user unless authorized by the second user.
“In an embodiment, the status of each listed therapeutic apparatus may be displayed as a colored circle indicating whether the therapeutic apparatus may be in a ready state (for example, green), a running state (for example, blue), a paused state (for example, orange), an error state (for example, red), a calibrating state (for example, blue-green), an initiating state (for example, orange), or a not calibrated state (for example, red).” Anderson ¶ 93.
Among these states, (i) corresponds to the ready state, while (ii) corresponds to the paused state (since the device is operable, but not yet authorized for operation, due to the manual pause).
Claim 25
MacAuley, Anderson, and Rad teach the system according to claim 6,
wherein the hardware processor is configured to provide the interface by at least one of (i) superimposing the interface over the profile of the selected one of the second users and (ii) displaying the interface adjacent to the profile of the selected one of the second users.
“Upon selection of emoticon option 902, the game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109. As shown in FIG. 10, the list is adjacent to the “GAMERTAG 001” text depicting the second user’s gamer tag information.
Accordingly, since MacAuley at least discloses limitation (ii), MacAuley discloses the “at least one of” limitations (i) and (ii) required by the claim.
II. MacAuley, Anderson, and Leonard teach claims 1, 5–7, 9–11, 14–20, 22, 24, and 25.
Claims 1, 5–7, 9–11, 14–20, 22, 24, and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Application Publication No. 2006/0015560 A1 (“MacAuley”) in view of U.S. Patent Application Publication No. 2022/0387240 A1 (“Anderson”), and further in view of U.S. Patent Application Publication No. 2010/0125632 A1 (“Leonard”).
Claim 1
MacAuley teaches:
A system providing an online platform to facilitate interaction between plural users of the platform, the system comprising:
“FIG. 3 shows an exemplary network gaming environment 300 that interconnects multiple gaming systems 100(1), . . ., 100(g) via a network 302.” MacAuley ¶ 55. “In addition to gaming systems 100, one or more online services 304(1), . . ., 304(s) may be accessible via the network 302 to provide various services for the participants, such as hosting online games, serving downloadable music or video files, hosting gaming competitions, serving streaming audio/video files, and the like.” MacAuley ¶ 56.
a software application executed on a first terminal operable by a first user from among the plural users of the platform;
“The game console 102 implements a uniform media portal model that provides a consistent user interface and navigation hierarchy to move users through various entertainment areas.” MacAuley ¶ 52.
a memory; and a hardware processor configured to, under control of a program stored in the memory, execute processes comprising:
“As one suitable implementation, the CPU 200, memory controller 202, ROM 204, and RAM 206 are integrated onto a common module 214. In this implementation, ROM 204 is configured as a flash ROM that is connected to the memory controller 202 and a ROM bus (not shown).” MacAuley ¶ 46. “To implement the uniform media portal model, a console user interface (UI) application 260 is stored on the hard disk drive 208. When the game console is powered on, various portions of the console application 260 are loaded into RAM 206 and/or caches 210, 212 and executed on the CPU 200. The console application 260 presents a graphical user interface that provides a consistent user experience when navigating to different media types available on the game console.” MacAuley ¶ 53.
maintaining status information for each of a plurality of second users of the platform, the second users being users other than the first user from among the plural users of the platform,
“Presence server(s) 416 hold and process data concerning the status or presence of a given user logged in to data center 410 for online gaming.” MacAuley ¶ 72.
the status information including information on (i) an active state of the second user and (ii) accessory information for the second user, the information on the active state of the second user comprising information indicating whether the second user is at least one of busy and currently online,
Presence and status data includes information about whether each respective user is signed-in. See MacAuley ¶¶ 72, 78, and 81. Moreover, environment 300 also maintains additional information about each user’s presence that is more granular than merely the sign-in information. As one example, in addition to maintaining the users’ online/offline status, the environment 300 may maintain information about whether a user is in “whisper mode.” MacAuley ¶ 97. As another example, users have the ability “to appear offline to non-voice chat participants when in a voice chat session.” MacAuley ¶ 96. This latter example falls within the scope of the “busy” status, because the user is online, yet unavailable for contact due to engaging in another activity.
the information on the accessory information for the second user comprising information indicating whether a sex toy of the second user, which is communicably coupled with a second terminal operated by the second user is in at least one of a connected state, a remotely operable state, and an idle state, and the idle state being a state in which the sex toy of the second user is not currently being remotely operated by another user from among the plural users of the platform;
The presence data further includes information about whether a user has a video camera peripheral connected to his or her game console, MacAuley ¶ 99, and whether a speaker and/or microphone is appropriately connected. MacAuley ¶ 84. These three accessories each fall within the broadest reasonable interpretation of “adult toy,” because “[c]laim scope is not limited . . . by claim language that does not limit a claim to a particular structure,” MPEP § 2111.04, and the term “sex toy” does not require a particular structure. We know that this term does not require a particular structure because differences in male and female anatomy necessitate different physical structures to provide sexual stimulation. Furthermore, the Specification does not even disclose any particular examples of “sex toys” to provide context to the broadest reasonable interpretation. See MPEP § 2111 (“claims must be ‘given their broadest reasonable interpretation consistent with the specification.’”).
Since MacAuley teaches a system that maintains status information comprising at least information about whether a peripheral device is in a connected state, MacAuley necessarily teaches maintaining information about the peripheral device being “at least one of in a connected state, in a remotely operable state, and idle” (emphasis added).
In addition to those three peripheral devices, MacAuley further teaches a fourth peripheral device—controller 104—that is capable of entering into any of all three claimed states (i.e., “in a connected state, a remotely operable state, and an idle state”), although MacAuley does not explicitly disclose maintaining status information on the same. Specifically, each controller 104 may be in:
(i) a connected state, MacAuley ¶ 41 (“each controller 104 may be coupled to the game console 102 via a wire or wireless interface”);
(ii) a remotely operable state, MacAuley ¶¶ 103–104 (describing the controller 104 being available to receive “emoticon” commands from a remote user that cause the controller 104 to rumble or vibrate); and
(iii) an idle state, see MacAuley ¶ 119 (teaching that the game console knows whether or not a first emoticon is currently executing for purposes of deciding if or when it is time to execute a second emoticon).
To be clear, unlike the claimed invention, MacAuley does not explicitly disclose a system that maintains status information about the three states of controller 104 described above. However, as will be discussed later in this rejection, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the known technique of maintaining status information about the other three peripheral devices to the status of controller 104.
With respect to the limitation of the sex toy being communicably coupled with a second terminal operated by the second user, MacAuley further teaches that “[e]ach controller 104 may be coupled to the game console 102 via a wired or wireless interface,” MacAuley ¶ 41, with each user operating his or her own respective game console having its own respectively coupled controller 104. See MacAuley ¶¶ 55, 58, and FIGS. 3 and 4.
selecting a subset of the second users of the platform
A “host” user—which can be anyone on the gaming platform, including a third user distinct from whoever is mapped to the claimed first or second users—may create a Voice Chat session, and invite any number of his own friends to the voice chat, regardless of whether those users are friends with each other. MacAuley ¶¶ 86–87. Similarly, users that the host invites to the chat may also invite their own friends to the chat, even if those friends are not mutual friends with one another. “For example, A and B are friends, and B and C are friends. A invites B to the chat, and B then invites C to the chat. A, B and C are all then in the chat, but A and C are not presently friends.” MacAuley ¶ 93. Naturally, this creates a situation where a first and second user who have not established a friend relationship with one another are now members of the same subset of users who are in the voice chat session, which, while not the same as deliberately “filtering” the friends from the non-friends, is an initial step in that direction. As will be discussed later in this rejection, presenting a list of strictly non-friend second users to a first user was also known in the art prior to the claimed invention.
whose status information matches a predetermined status, the predetermined status at least including a status whereby the second user is online and the sex toy of the second user is connected
Regardless of who invites whom to the chat, the invitation process involves selecting from a list of users who are “concurrently signed in to the online gaming environment 400” at the time when they are selected for invitation. MacAuley ¶ 81. Furthermore, the menu of online friends available to send an invite may be further narrowed by those who have a connected microphone, MacAuley ¶ 96, or a connected camera. MacAuley ¶ 99. Hence, in at least one case, the voice chat may be limited to a group of users whose status includes being online, and having a specified peripheral device connected to their client device.
It is acknowledged that the above-described selection process may sometimes be performed by different users and at different times, but the claim language does not limit who may cause the “selecting,” or when the “selecting” must occur.
controlling to display, on the first terminal, at least one of a plurality of first selectable items, each of the first selectable items corresponding to a respective one of the second users from among the subset of second users
“Voice chat list 603 displays all gamers currently in the voice chat session. The console application may display a Friends button 605 at the top of the voice chat list which, upon selection by the user, causes the console application to display the user’s Friends list.” MacAuley ¶ 83. Each of the gamertags in the list are selectable as potential recipients. See MacAuley ¶¶ 102 and 116 (“in step 1201, User A selects emoticon recipient User B, e.g., the participant with gamertag GamerTag001, from voice chat screen 601 (FIG. 6).”).
and including the status information pertaining to the respective one of the second users;
For each gamertag in the list 603, the platform may display multiple different pieces of information, e.g., “the console application may use visual feedback to identify a current speaker by flashing a speaker icon 607 next to the player currently speaking in the voice chat session, or provide a Friends icon 609 to identify players currently on a player's own Friends list.” the names of each user’s gamertag, MacAuley ¶ 94, “a Friends icon 609 to identify players currently on a player's own Friends list,” MacAuley ¶ 93, speaker icon 607, and friends icon 609. MacAuley ¶¶ 93–94.
Additionally, when the voice chat screen 601 is further displaying the friends list, see MacAuley ¶ 83, “the console [will] retrieve and update the host’s Friends list, including online/offline status of users on the Friends list, and outstanding Friend invitations, and outstanding game invitations,” allowing the host “to see which Friends (if any) are also online.” MacAuley ¶ 86.
receiving, from the first user, a selection operation selecting one of the first selectable items,
“Next, in step 1203, User A selects the emoticon to send to User B by selecting the emoticon from one or more menus (see, e.g., FIGS. 9–11, and above description thereof) displayed as a result of selecting a voice chat participant from screen 601.” MacAuley ¶ 116.
the selected one of the first selectable items corresponding to a selected one of the second users from among the subset of the second users;
In this example, since the emoticon in the menu represents a command to send the emoticon to User B specifically, this menu item “corresponds to” User B as claimed. Again, as explained earlier, users A and B may be two users who have not yet established a friend relationship, e.g., if they were invited to the chat by a mutual third friend.
in response to the selection operation, providing, on the first terminal, an interface by which the first user can remotely control the sex toy of the selected one of the second users;
“In one illustrative embodiment, with reference to FIG. 6 and FIG. 9, when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant.” MacAuley ¶ 108. Via this interface, “the game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109.
In the case of the speaker as the connected peripheral, sending the emoticon “causes sound to be output via another participant's gaming system 102, or [the emoticon is] one which affects sound output via another participant's gaming system 102.” MacAuley ¶ 106.
In the case of the controller 104 as the connected peripheral, sending the emoticon causes “rumbling or vibrating [of] another voice chat participant’s controller 104, and caus[es] another voice chat participant’s joystick . . . to physically move without receiving input from the other voice chat participant.” MacAuley ¶ 104.
generating a control instruction based on input by the first user via the interface, and outputting the control instruction to the sex toy of the selected one of the second users, the control instruction comprising instructions which remotely control the sex toy of the selected one of the second users to perform a predetermined operation.
“In one illustrative embodiment, the emoticon execution may occur for as long as the selecting voice chat participant continues pressing the select button ‘A,’ optionally up to a maximum length of time.” MacAuley ¶ 111. “In one illustrative embodiment, where buttons 136 on controller 104 are pressure sensitive, the intensity level may be based on the pressure with which the button is pressed.” MacAuley ¶ 112.
Accordingly, based on all of the findings presented above, the only difference between MacAuley and the claimed invention is that MacAuley’s environment 300 does not consider the status of its controller 104 when selecting its subset of users on the basis of a predetermined status. That is, MacAuley’s platform maintains accessory information for each of the users about all three states (connected, remotely operable, and idle), but does not necessarily use all three states as the criteria for selecting a subset of the plural users.
This is an obvious difference for two reasons. For one, the application of a known technique to a known device ready for improvement to yield predictable results is prima facie obvious. MPEP § 2143 (subsection (I.)(D.)). Consistent with the guidance in that subsection of the MPEP, the evidence from MacAuley fully supports the following findings of fact that lead to the conclusion that the claimed invention is obvious, a priori any further evidence from a secondary reference:
(1) The prior art contained a “base” device (method, or product) upon which the claimed invention can be seen as an “improvement.” In this case, the “base” device is MacAuley’s environment 300, in which each user operates a controller 104 that is remotely operable by transmitting “haptic emoticons” to respective controllers 104. The claimed invention can be seen as an improvement because it facilitates matchmaking among users who are online, willing, and capable of using compatible accessory devices (e.g., controller 104) with one another.
(2) The prior art contained a known technique that is applicable to the base device (method, or product). The evidence for this finding is MacAuley’s technique for helping the user select a subset of platform users whose online state and connected devices match that of a predetermined status. Specifically, as explained above, the disclosed technique includes “quer[ying] the presence and notification servers 416 and 418, respectively, to determine which Friends 505, if any, are concurrently signed in to the online gaming environment 400,” MacAuley ¶ 81, and then further narrowing the friends list by those who are capable of engaging in voice chat with a connected microphone, MacAuley ¶ 96, or video chat with a connected camera. MacAuley ¶ 99.
(3) One of ordinary skill in the art would have recognized that applying the known technique for the other peripheral devices to the controller 104 would have yielded predictable results and resulted in an improved system, because this technique would prevent erroneous situations where one user sends MacAuley’s haptic emoticons to another user who is unable to receive them. Furthermore, as a matter of obviousness law, it is recognized that “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
Therefore, for at least this reason, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply aforementioned known technique in MacAuley’s disclosure to MacAuley’s controller 104.
Additionally, assuming for the sake of argument that the foregoing rationale was not sufficient, the claimed invention is also obvious because the feature missing from MacAuley was taught by the Anderson reference, as well as the motivation for combining the references, which will be discussed below.
Specifically, Anderson teaches:
maintaining status information for each of a plurality of second users of the platform, the second users being users other than the first user from among the plural users of the platform, the status information including information on (i) an active state of the second user and (ii) accessory information for the second user,
“Mobile application 140 may provide one or more user interfaces which may allow an authenticated person to view a listing of connected therapeutic apparatuses, or details of a single connected therapeutic apparatus which may include information regarding status of the therapeutic apparatus or information regarding an operational state of the therapeutic apparatus.” Anderson ¶ 93.
the information on the accessory information for the second user comprising . . . at least one of a connected state, a remotely operable state, and an idle state, and the idle state being a state in which the sex toy of the second user is not currently being remotely operated
“In an embodiment, the status of each listed therapeutic apparatus may be displayed as a colored circle indicating whether the therapeutic apparatus may be in a ready state (for example, green), a running state (for example, blue), a paused state (for example, orange), an error state (for example, red), a calibrating state (for example, blue-green), an initiating state (for example, orange), or a not calibrated state (for example, red).” Anderson ¶ 93.
selecting a subset of the second users of the platform who have not yet established a friend relationship with the first user on the platform and whose status information matches a predetermined status,
“Mobile application 140 may provide one or more user interfaces which may allow an authenticated person to cause a treatment command to execute on a selected therapeutic apparatus.” Anderson ¶ 94. Anderson’s system does not maintain any “friend” relationships, so it is necessarily the case that the selected users will have not yet established a friend relationship with the first user on the platform. This is still not the “deliberate filtering process” that the Applicant urges we read into the claims, but, as will be discussed below, such a filtering process was obvious at the time of the claimed invention.
the predetermined status at least including a status whereby the second user is online and the sex toy operated by the second user is connected, in the remotely operable state, and in the idle state;
“In embodiments, mobile application 140 may be configured to require that the selected therapeutic apparatus is in a status ready to accept a treatment command, which may comprise the therapeutic apparatus having first been calibrated.” Anderson ¶ 94.
The “ready state” is a state that falls within the scope of both the “connected” state and the “remotely operable” state, since that is the only way for a command to reach the device and successfully execute.
The “ready state” is also a state that falls within the scope of the claimed “idle state,” because Anderson explicitly discloses that the “ready state” is a separate state from “a running state.” See Anderson ¶ 93.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve MacAuley’s platform by maintaining all of the state information taught by Anderson, and utilizing the same as a perquisite for selecting a device to remotely control (as also taught by Anderson). One would have been motivated to improve MacAuley’s platform with Anderson’s enhanced state information and state criteria because the status information makes it easier to discover which users’ devices are truly available for use, rather than merely guessing.
Neither MacAuley nor Anderson explicitly disclose a deliberate filtering process for selecting second users who have not yet established a friend relationship with the first user.
Leonard, however, teaches a system that executes processes comprising:
selecting a subset of the second users of the platform who have not yet established a friend relationship with the first user on the platform and whose status information matches a predetermined status,
As shown in FIG. 2, Leonard’s matchmaking system initially “determine[s] potential matches for the client user,” (the claimed second users), but then selects only a subset of those potential matches by filtering them according to the criteria shown in 125–130. Leonard ¶ 42. Notably, among the criteria used for filtering, “a prospect may not be displayed as a match for the user if the user has already added the prospect as a friend.” Leonard ¶ 44.
controlling to display, on the first terminal, at least one of a plurality of first selectable items, each of the first selectable items corresponding to a respective one of the second users from among the subset of the second users and including the status information pertaining to the respective one of the second users;
“If the prospect is to be displayed as a match for the user, the prospect's profile information may be displayed or otherwise made available to the user, as appropriate, at 131.” Leonard ¶ 44.
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 MacAuley’s system to filter second users presented a first user to only a subset who have not yet established a friend relationship with the first user on the platform, as taught by Leonard. One would have been motivated to modify MacAuley’s platform in this way, because Leonard’s technique provides a way to meet new people who have similar interests as the user. See Leonard ¶¶ 7–9.
Claim 5
MacAuley, Anderson, and Leonard teach the system according to claim 1,
wherein the interface comprises an interface by which the first user can directly remotely control parameters of the sex toy of the selected one of the second users.
“[T]he game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109. “In one illustrative embodiment, the emoticon execution may occur for as long as the selecting voice chat participant continues pressing the select button ‘A,’ optionally up to a maximum length of time.” MacAuley ¶ 111. “In one illustrative embodiment, where buttons 136 on controller 104 are pressure sensitive, the intensity level may be based on the pressure with which the button is pressed.” MacAuley ¶ 112.
Claim 6
MacAuley, Anderson, and Leonard teach the system according to claim 5,
wherein remote control of the sex toy of the selected one of the second users via the interface by the first user is enabled during a period of time during which the first user is viewing a profile of the selected one of the second users.
“In one illustrative embodiment, with reference to FIG. 6 and FIG. 9, when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant.” MacAuley ¶ 108. “Upon selection of emoticon option 902, the game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109.
Claim 7
MacAuley, Anderson, and Leonard teach the system according to claim 5,
wherein the interface comprises an interface for the first user to flag the selected one of the second users as a user of interest.
“In one illustrative embodiment, with reference to FIG. 6 and FIG. 9, when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant. As discussed above, options may include inviting the selected voice chat participant to join the selecting participant's Friends list.” MacAuley ¶ 108.
Claim 9
MacAuley, Anderson, and Leonard teach the system according to claim 1,
wherein the interface comprises an interface enabling the first user and the selected one of the second users to communicate with each other by at least one of text, video, and voice.
“In some embodiments there may be a whisper mode (also referred to as `secret` mode) whereby a voice chat participant can optionally speak to only a designated other voice chat participant, even when there are more than two voice chat participants in a given voice chat session.” MacAuley ¶ 97. “In some embodiments voice chat may include a video chat option. In such an embodiment, a user need only have a video camera peripheral connected to game console 102 and have a video chat option selected.” MacAuley ¶ 99.
Claim 10
MacAuley, Anderson, and Leonard teach the system according to claim 9,
wherein the interface comprises interface components enabling operations including
“In one illustrative embodiment, with reference to FIG. 6 and FIG. 9, when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant.” MacAuley ¶ 108.
(i) switching a currently displayed user profile,
Menu 901 includes a “BACK” button, which teaches (if not at least suggests) a return to the previous screen. MacAuley FIG. 9. In this case, the previous screen is the voice chat screen 601 from FIG. 6, which includes a “[v]oice chat list 603 [that] displays all gamers currently in the voice chat session,” MacAuley ¶ 83, instead of the single user’s profile in FIG. 9.
(ii) initiating a friend request to the selected one of the second users to establish the friend relationship,
Menu 901 further includes an option for “inviting the selected voice chat participant to join the selecting participant's Friends list.” MacAuley ¶ 108.
and (iii) sending a greeting to the selected one of the second users.
Menu 901 further includes an option for “sending a whisper or private chat to a user.” MacAuley ¶ 108.
Claim 11
MacAuley, Anderson, and Leonard teach the system according to claim 1, wherein the hardware processor is configured to:
display a first list including at least a portion of the plurality of first selectable items; and
“The console application may display a Friends button 605 at the top of the voice chat list which, upon selection by the user, causes the console application to display the user's Friends list. The user can select a Friend from his or her Friends list,” which initiates a process of inviting and ultimately navigating the invited friend into the voice chat. MacAuley ¶ 83.
display a second list including plural user profiles in response to selection by the first user of a plurality of the first selectable items displayed in the first list, each user profile included in the second list corresponding to a respective one of the selected plurality of first selectable items.
“Voice chat list 603 displays all gamers currently in the voice chat session.” MacAuley ¶ 83. As explained above, the “gamers currently in the voice chat session” may include of all the Friends that the user selected from his friends list earlier.
Claim 14
MacAuley, Anderson, and Leonard teach the system according to claim 1,
wherein the interface comprises at least one piece of information regarding the selected one of the second users, the at least one piece of information being definable by the selected one of the second users.
“In some embodiments, where each voice chat session is registered with match server 422 and a voice chat session host has designated the session as being open to non-Friend participants, users may be able search for a chat session based on various criteria and/or user profile information. For example, a user may search for an open voice chat session based on ranking or skill level of voice chat participants (or simply the host), games or game types played, game attitude (e.g., hard core, spare time player, socialite, etc.), or any other information tracked by the online game environment 400.” MacAuley ¶ 95.
Claim 15
MacAuley, Anderson, and Leonard teach the system according to claim 14,
wherein the at least one piece of information comprises at least one of personal introduction information, signature information, and user accessory information.
The searchable user profile information may include “ranking or skill level of voice chat participants (or simply the host), games or game types played, game attitude (e.g., hard core, spare time player, socialite, etc.), or any other information tracked by the online game environment 400.” MacAuley ¶ 95.
Claim 16
MacAuley, Anderson, and Leonard teach the system according to claim 15,
wherein each of the personal introduction information and the signature information comprises at least one of text information, voice information, and video information, and the user accessory information comprises at least control mode information indicating controllable features of the sex toy of the second user.
The searchable user profile information may include “ranking or skill level of voice chat participants (or simply the host), games or game types played, game attitude (e.g., hard core, spare time player, socialite, etc.), or any other information tracked by the online game environment 400.” MacAuley ¶ 95.
Claim 17
MacAuley teaches
A system providing an online platform to facilitate interaction between plural users of the platform, the system comprising:
“FIG. 3 shows an exemplary network gaming environment 300 that interconnects multiple gaming systems 100(1), . . . , 100(g) via a network 302.” MacAuley ¶ 55. “In addition to gaming systems 100, one or more online services 304(1), . . . , 304(s) may be accessible via the network 302 to provide various services for the participants, such as hosting online games, serving downloadable music or video files, hosting gaming competitions, serving streaming audio/video files, and the like.” MacAuley ¶ 56.
a memory; and a hardware processor configured to, under control of a program stored in the memory, execute processes comprising:
“As one suitable implementation, the CPU 200, memory controller 202, ROM 204, and RAM 206 are integrated onto a common module 214. In this implementation, ROM 204 is configured as a flash ROM that is connected to the memory controller 202 and a ROM bus (not shown).” MacAuley ¶ 46.
“The game console 102 implements a uniform media portal model that provides a consistent user interface and navigation hierarchy to move users through various entertainment areas.” MacAuley ¶ 52. “To implement the uniform media portal model, a console user interface (UI) application 260 is stored on the hard disk drive 208. When the game console is powered on, various portions of the console application 260 are loaded into RAM 206 and/or caches 210, 212 and executed on the CPU 200. The console application 260 presents a graphical user interface that provides a consistent user experience when navigating to different media types available on the game console.” MacAuley ¶ 53.
maintaining status information for each of a plurality of second users of the platform, the second users being users other than the first user from among the plural users of the platform,
“Presence server(s) 416 hold and process data concerning the status or presence of a given user logged in to data center 410 for online gaming.” MacAuley ¶ 72.
the status information including information on (i) an active state of the second user and (ii) accessory information for the second user, the information on the active state of the second user comprising information indicating whether the second user is at least one of busy and currently online,
Presence and status data includes information about whether each respective user is signed-in. See MacAuley ¶¶ 72, 78, and 81. Moreover, environment 300 also maintains additional information about each user’s presence that is more granular than merely the sign-in information. As one example, in addition to maintaining the users’ online/offline status, the environment 300 may maintain information about whether a user is in “whisper mode.” MacAuley ¶ 97. As another example, users have the ability “to appear offline to non-voice chat participants when in a voice chat session.” MacAuley ¶ 96. This latter example falls within the scope of the “busy” status, because the user is online, yet unavailable for contact due to engaging in another activity.
the information on the accessory information for the second user comprising information indicating whether a sex toy of the second user, which is communicably coupled with a second terminal operated by the second user, is in at least one of a connected state, a remotely operable state, and an idle state, and the idle state being a state in which the adult toy is not currently being remotely operated by another user from among the plural users of the platform;
The presence data further includes information about whether a user has a video camera peripheral connected to his or her game console, MacAuley ¶ 99, and whether a speaker and/or microphone is appropriately connected. MacAuley ¶ 84. These three accessories each fall within the broadest reasonable interpretation of “adult toy,” because “[c]laim scope is not limited . . . by claim language that does not limit a claim to a particular structure,” MPEP § 2111.04, and the term “sex toy” does not require a particular structure. We know that this term does not require a particular structure because differences in male and female anatomy necessitate different physical structures to provide sexual stimulation. Furthermore, the Specification does not even disclose any particular examples of “sex toys” to provide context to the broadest reasonable interpretation. See MPEP § 2111 (“claims must be ‘given their broadest reasonable interpretation consistent with the specification.’”).
Since MacAuley teaches a system that maintains status information comprising at least information about whether a peripheral device is in a connected state, MacAuley necessarily teaches maintaining information about the peripheral device being “at least one of in a connected state, in a remotely operable state, and idle” (emphasis added).
In addition to those three peripheral devices, MacAuley further teaches a fourth peripheral device—controller 104—that is capable of entering into any of all three claimed states (i.e., “in a connected state, a remotely operable state, and an idle state”), although MacAuley does not explicitly disclose maintaining status information on the same. Specifically, each controller 104 may be in:
(i) a connected state, MacAuley ¶ 41 (“each controller 104 may be coupled to the game console 102 via a wire or wireless interface”);
(ii) a remotely operable state, MacAuley ¶¶ 103–104 (describing the controller 104 being available to receive “emoticon” commands from a remote user that cause the controller 104 to rumble or vibrate); and
(iii) an idle state, see MacAuley ¶ 119 (teaching that the game console knows whether or not a first emoticon is currently executing for purposes of deciding if or when it is time to execute a second emoticon).
To be clear, unlike the claimed invention, MacAuley does not explicitly disclose a system that maintains status information about the three states of controller 104 described above. However, as will be discussed later in this rejection, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the known technique of maintaining status information about the other three peripheral devices to the status of controller 104.
selecting a subset of the second users of the platform
A “host” user—which can be anyone on the gaming platform, including a third user distinct from whoever is mapped to the claimed first or second users—may create a Voice Chat session, and invite any number of his own friends to the voice chat, regardless of whether those users are friends with each other. MacAuley ¶¶ 86–87. Similarly, users that the host invites to the chat may also invite their own friends to the chat, even if those friends are not mutual friends with one another. “For example, A and B are friends, and B and C are friends. A invites B to the chat, and B then invites C to the chat. A, B and C are all then in the chat, but A and C are not presently friends.” MacAuley ¶ 93. Naturally, this creates a situation where a first and second user who have not established a friend relationship with one another are now members of the same subset of users who are in the voice chat session, which, while not the same as deliberately “filtering” the friends from the non-friends, is an initial step in that direction. As will be discussed later in this rejection, presenting a list of strictly non-friend second users to a first user was also known in the art prior to the claimed invention.
whose status information matches a predetermined status, the predetermined status at least including a status whereby the second user is online and the sex toy of the second user is connected
Regardless of who invites whom to the chat, the invitation process involves selecting from a list of users who are “concurrently signed in to the online gaming environment 400” at the time when they are selected for invitation. MacAuley ¶ 81. Furthermore, the menu of online friends available to send an invite may be further narrowed by those who have a connected microphone, MacAuley ¶ 96, or a connected camera. MacAuley ¶ 99. Hence, in at least one case, the voice chat may be limited to a group of users whose status includes being online, and having a specified peripheral device connected to their client device.
It is acknowledged that the above-described selection process may sometimes be performed by different users and at different times, but the claim language does not limit who may cause the “selecting,” or when the “selecting” must occur.
controlling to display, on a first terminal operated by the first user, at least one of a plurality of first selectable items, each of the first selectable items corresponding to a profile page of a respective one of the second users from among the subset of the second users
“Voice chat list 603 displays all gamers currently in the voice chat session. The console application may display a Friends button 605 at the top of the voice chat list which, upon selection by the user, causes the console application to display the user’s Friends list.” MacAuley ¶ 83. Each of the gamertags in the list are selectable as potential recipients. See MacAuley ¶¶ 102 and 116 (“in step 1201, User A selects emoticon recipient User B, e.g., the participant with gamertag GamerTag001, from voice chat screen 601 (FIG. 6).”).
and including the status information pertaining to the respective one of the second users;
For each gamertag in the list 603, the platform may display multiple different pieces of information, e.g., the names of each user’s gamertag, MacAuley ¶ 94, “a Friends icon 609 to identify players currently on a player's own Friends list,” MacAuley ¶ 93, speaker icon 607, and friends icon 609. MacAuley ¶¶ 93–94.
Additionally, when the voice chat screen 601 is further displaying the friends list, see MacAuley ¶ 83, “the console [will] retrieve and update the host’s Friends list, including online/offline status of users on the Friends list, and outstanding Friend invitations, and outstanding game invitations,” allowing the host “to see which Friends (if any) are also online.” MacAuley ¶ 86.
receiving, from the first user, a selection operation selecting one of the first selectable items,
“Next, in step 1203, User A selects the emoticon to send to User B by selecting the emoticon from one or more menus (see, e.g., FIGS. 9–11, and above description thereof) displayed as a result of selecting a voice chat participant from screen 601.” MacAuley ¶ 116.
the selected one of the first selectable items corresponding to a selected one of the second users from among the subset of the second users;
In this example, since the emoticon in the menu represents a command to send the emoticon to User B specifically, this menu item “corresponds to” User B as claimed.
in response to the selection operation, controlling parameters of each of at least one remotely operable sex toy
“In one illustrative embodiment, with reference to FIG. 6 and FIG. 9, when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant.” MacAuley ¶ 108. Via this interface, “the game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109. In particular, “haptic emoticons may include rumbling or vibrating another voice chat participant's controller 104, and causing another voice chat participant's joystick, flight yoke, or driving wheel to physically move without receiving input from the other voice chat participant.” MacAuley ¶ 104.
each of the at least one remotely operable sex toy being communicably connected with at least one of the first terminal operated by the first user and the second terminal operated by the selected one of the second users, and each of the at least one remotely operable sex toy being operated by a respective one of the first user and the selected one of the second users,
“Each controller 104 may be coupled to the game console 102 via a wired or wireless interface,” MacAuley ¶ 41, with each user operating his or her own respective game console having its own respectively coupled controller 104. See MacAuley ¶¶ 55, 58, and FIGS. 3 and 4.
wherein the controlling the parameters comprises controlling the parameters of each of the at least one remotely operable sex toy based on predetermined control instructions associated with the selected one of the second users.
“In one illustrative embodiment, the emoticon execution may occur for as long as the selecting voice chat participant continues pressing the select button ‘A,’ optionally up to a maximum length of time.” MacAuley ¶ 111. “In one illustrative embodiment, where buttons 136 on controller 104 are pressure sensitive, the intensity level may be based on the pressure with which the button is pressed.” MacAuley ¶ 112.
Accordingly, based on all of the findings presented above, the only differences between MacAuley and the claimed invention is that MacAuley’s environment 300 does not maintain the status of its controller 104 (it only maintains the status of the other remotely operable devices) and that there is no deliberate filtering of non-friend users in the chat.
The second difference will be discussed below. However, regarding the first difference, controller 104 is certainly capable of being in any number of the three claimed statuses, and MacAuley also teaches the technique of selecting a subset of users by considering a predetermined status of peripheral devices other than controller 104, but MacAuley never explicitly instructs the person of ordinary skill in the art to apply that technique to controller 104.
This is an obvious difference for two reasons. For one, the application of a known technique to a known device ready for improvement to yield predictable results is prima facie obvious. MPEP § 2143 (subsection (I.)(D.)). Consistent with the guidance in that subsection of the MPEP, the evidence from MacAuley fully supports the following findings of fact that lead to the conclusion that the claimed invention is obvious:
(1) The prior art contained a “base” device (method, or product) upon which the claimed invention can be seen as an “improvement.” In this case, the “base” device is MacAuley’s environment 300, in which each user operates a controller 104 that is remotely operable by transmitting “haptic emoticons” to respective controllers 104. The claimed invention can be seen as an improvement because it facilitates matchmaking among users who are online, willing, and capable of using compatible accessory devices (e.g., controller 104) with one another.
(2) The prior art contained a known technique that is applicable to the base device (method, or product). The evidence for this finding is MacAuley’s technique for helping the user select a subset of platform users whose online state and connected devices match that of a predetermined status. Specifically, as explained above, the disclosed technique includes “quer[ying] the presence and notification servers 416 and 418, respectively, to determine which Friends 505, if any, are concurrently signed in to the online gaming environment 400,” MacAuley ¶ 81, and then further narrowing the friends list by those who are capable of engaging in voice chat with a connected microphone, MacAuley ¶ 96, or video chat with a connected camera. MacAuley ¶ 99.
(3) One of ordinary skill in the art would have recognized that applying the known technique for the other peripheral devices to the controller 104 would have yielded predictable results and resulted in an improved system, because this technique would prevent erroneous situations where one user sends MacAuley’s haptic emoticons to another user who is unable to receive them. Furthermore, as a matter of obviousness law, it is recognized that “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
Therefore, for at least this reason, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply aforementioned known technique in MacAuley’s disclosure to MacAuley’s controller 104.
Additionally, assuming for the sake of argument that the foregoing rationale was not sufficient, the claimed invention is also obvious because the feature missing from MacAuley was taught by the Anderson reference, as well as the motivation for combining the references, which will be discussed below.
Specifically, Anderson teaches:
maintaining status information for each of a plurality of second users of the platform, the second users being users other than a first user from among the plural users of the platform, the status information including information on (i) an active state of the second user and (ii) accessory information for the second user,
“Mobile application 140 may provide one or more user interfaces which may allow an authenticated person to view a listing of connected therapeutic apparatuses, or details of a single connected therapeutic apparatus which may include information regarding status of the therapeutic apparatus or information regarding an operational state of the therapeutic apparatus.” Anderson ¶ 93.
the accessory information for the second user comprising . . . at least one of a connected state, a remotely operable state, and an idle state, and the idle state being a state in which the sex toy of the second user is not currently being remotely operated by another user from among the plural users of the platform;
“In an embodiment, the status of each listed therapeutic apparatus may be displayed as a colored circle indicating whether the therapeutic apparatus may be in a ready state (for example, green), a running state (for example, blue), a paused state (for example, orange), an error state (for example, red), a calibrating state (for example, blue-green), an initiating state (for example, orange), or a not calibrated state (for example, red).” Anderson ¶ 93.
selecting a subset of the second users of the platform who have not yet established a friend relationship with the first user and whose status information matches a predetermined status,
“Mobile application 140 may provide one or more user interfaces which may allow an authenticated person to cause a treatment command to execute on a selected therapeutic apparatus.” Anderson ¶ 94. Anderson’s system does not maintain any “friend” relationships, so it is necessarily the case that the selected users will have not yet established a friend relationship with the first user on the platform. This is still not the “deliberate filtering process” that the Applicant urges we read into the claims, but, as will be discussed below, such a filtering process was obvious at the time of the claimed invention.
the predetermined status at least including a status whereby the second user is online and the sex toy operated by the second user is connected, in the remotely operable state, and in the idle state;
“In embodiments, mobile application 140 may be configured to require that the selected therapeutic apparatus is in a status ready to accept a treatment command, which may comprise the therapeutic apparatus having first been calibrated.” Anderson ¶ 94.
The “ready state” is a state that falls within the scope of both the “connected” state and the “remotely operable” state, since that is the only way for a command to reach the device and successfully execute.
The “ready state” is also a state that falls within the scope of the claimed “idle state,” because Anderson explicitly discloses that the “ready state” is a separate state from “a running state.” See Anderson ¶ 93.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve MacAuley’s platform by maintaining all of the state information taught by Anderson, and utilizing the same as a perquisite for selecting a device to remotely control (as also taught by Anderson). One would have been motivated to improve MacAuley’s platform with Anderson’s enhanced state information and state criteria because the status information makes it easier to discover which users’ devices are truly available for use, rather than merely guessing.
As mentioned above, neither MacAuley nor Anderson explicitly disclose a deliberate filtering process for selecting second users who have not yet established a friend relationship with the first user.
Leonard, however, teaches a system that executes processes comprising:
selecting a subset of the second users of the platform who have not yet established a friend relationship with the first user on the platform and whose status information matches a predetermined status,
As shown in FIG. 2, Leonard’s matchmaking system initially “determine[s] potential matches for the client user,” (the claimed second users), but then selects only a subset of those potential matches by filtering them according to the criteria shown in 125–130. Leonard ¶ 42. Notably, among the criteria used for filtering, “a prospect may not be displayed as a match for the user if the user has already added the prospect as a friend.” Leonard ¶ 44.
controlling to display, on the first terminal, at least one of a plurality of first selectable items, each of the first selectable items corresponding to a respective one of the second users from among the subset of the second users and including the status information pertaining to the respective one of the second users;
“If the prospect is to be displayed as a match for the user, the prospect's profile information may be displayed or otherwise made available to the user, as appropriate, at 131.” Leonard ¶ 44.
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 MacAuley’s system to filter second users presented a first user to only a subset who have not yet established a friend relationship with the first user on the platform, as taught by Leonard. One would have been motivated to modify MacAuley’s platform in this way, because Leonard’s technique provides a way to meet new people who have similar interests as the user. See Leonard ¶¶ 7–9.
Claim 18
MacAuley, Anderson, and Leonard teach the system according to claim 17,
wherein each of the at least one remotely operable sex toy is communicably connected with a respective one of the first terminal and the second terminal via which the adult toy is remotely operated.
“Each controller 104 may be coupled to the game console 102 via a wired or wireless interface,” MacAuley ¶ 41, with each user operating his or her own respective game console having its own respectively coupled controller 104. See MacAuley ¶¶ 55, 58, and FIGS. 3 and 4.
Claim 19
MacAuley, Anderson, and Leonard teach the system according to claim 18,
wherein the predetermined control instructions comprise at least one set of control instructions for controlling the parameters of each of the at least one remotely operable sex toy.
“[T]he game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109. “In one illustrative embodiment, the emoticon execution may occur for as long as the selecting voice chat participant continues pressing the select button ‘A,’ optionally up to a maximum length of time.” MacAuley ¶ 111. “In one illustrative embodiment, where buttons 136 on controller 104 are pressure sensitive, the intensity level may be based on the pressure with which the button is pressed.” MacAuley ¶ 112.
Claims 20 and 22
Claims 20 and 22 recite the same method that the respective systems of claims 1 and 6 perform as part of their normal operation. Therefore, claims 20 and 22 are rejected over all of the findings provided above for respective claims 1 and 6. See MPEP § 2112.02 (“Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device.”).
Claim 24
MacAuley, Anderson, and Leonard teach the system according to claim 1,
wherein the sex toy of the second user is selectively operable in both (i) a first remotely operable state in which the sex toy of the second user is able to be directly remotely controlled by the first user without requiring authorization by the second user and (ii) a second remotely operable state in which the sex toy of the second user cannot be directly remotely controlled by the first user unless authorized by the second user.
Regarding (i), MacAuley discloses that “when a voice chat participant selects another voice chat participant from voice chat screen 601 (FIG. 6), for example selecting the voice chat participant with gamertag GamerTag001, the game console 102 may display a menu 901 (FIG. 9) displaying options with respect to the selected voice chat participant.” MacAuley ¶ 108. Via this interface, “the game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109.
Sending the emoticon causes “rumbling or vibrating [of] another voice chat participant’s controller 104, and caus[es] another voice chat participant’s joystick . . . to physically move without receiving input from the other voice chat participant.” MacAuley ¶ 104.
Regarding (ii), MacAuley does not explicitly disclose a second state where the controller 104 is remotely operable, yet also not controllable by an unauthorized user.
Anderson, however, teaches both:
(i) a first remotely operable state in which the sex toy of the second user is able to be directly remotely controlled by the first user without requiring authorization by the second user and (ii) a second remotely operable state in which the sex toy of the second user cannot be directly remotely controlled by the first user unless authorized by the second user.
“In an embodiment, the status of each listed therapeutic apparatus may be displayed as a colored circle indicating whether the therapeutic apparatus may be in a ready state (for example, green), a running state (for example, blue), a paused state (for example, orange), an error state (for example, red), a calibrating state (for example, blue-green), an initiating state (for example, orange), or a not calibrated state (for example, red).” Anderson ¶ 93.
Among these states, (i) corresponds to the ready state, while (ii) corresponds to the paused state (since the device is operable, but not yet authorized for operation, due to the manual pause).
Claim 25
MacAuley, Anderson, and Leonard teach the system according to claim 6,
wherein the hardware processor is configured to provide the interface by at least one of (i) superimposing the interface over the profile of the selected one of the second users and (ii) displaying the interface adjacent to the profile of the selected one of the second users.
“Upon selection of emoticon option 902, the game console may display an emoticon submenu 1001, such as that illustrated in FIG. 10, that provides a list of emoticons that may be sent from one voice chat participant to another.” MacAuley ¶ 109. As shown in FIG. 10, the list is adjacent to the “GAMERTAG 001” text depicting the second user’s gamer tag information.
Accordingly, since MacAuley at least discloses limitation (ii), MacAuley discloses the “at least one of” limitations (i) and (ii) required by the claim.
III. MacAuley, Anderson, Rad, and Decker teach claim 8.
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over MacAuley, Anderson, and Rad as applied to claim 7 above, and further in view of U.S. Patent Application Publication No. 2006/0106466 A1 (“Decker”).
Claim 8
MacAuley, Rad, and Anderson teach the system according to claim 7, but do not appear to explicitly disclose, in a case in which both users flag each other as users of interest, making additional controllable functions of the sex toy of the selected one of the second users not previously made available in the interface are made available to at least one of the first user and the second user.
That said, Rad teaches a substantially similar concept, whereby additional features of the platform are not made available until both users flag each other as users of interest. See Rad ¶ 103 (“matching server 20 may be configured to allow direct communication between users when there has been a mutual expression of preference. This may be advantageous because users can avoid browsing, deleting, or responding to unwanted messages”).
Additionally, Decker teaches a system wherein:
in a case in which both the first user and the selected one of the second users flag each other as a user of interest, additional controllable functions of the sex toy of the selected one of the second users not previously made available in the interface are made available to at least one of the first user and the selected one of the second users.
“FIG. 2 is a flow chart describing how the recipient defines, evaluates, and (if appropriate) alters the limits defined for the device. In step 50 the recipient defines one, or more values that constrain the behavior of the device. In steps 51 and 52 the recipient evaluates the remote operator attempts to control device. If desired, as noted in step 53, the recipient can increase or decrease one or more of the values that constrain the device.” Decker ¶ 50. Steps 51 and 53 respectively describe “a case in which both the first user and the second user flag each other as a user of interest,” because in step 51, Decker’s “remote operator” (the claimed first user) has expressed an interest in controlling the recipient’s (second user) device in a certain way, and in step 53, the recipient expresses interest that he or she wishes to have the device controlled in that way.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve MacAuley’s game console 100 and controllers 104 with Decker’s technique of requiring communication partners to express mutual interest in one another before allowing the remote operator (or emoticon sender, in the case of MacAuley) to access particular features of the remotely controlled device.
There would have been a reasonable expectation in the success of the combination because Decker explicitly says that Decker’s “invention is applicable to any situation in which an operator uses a communications network to partially or completely control an electrical or mechanical device,” including “vehicles, children's toys, pet toys, home/kitchen appliances, lighting, systems, heat/air conditioning, irrigation/plumbing/water management systems, and/or industrial equipment.” Decker ¶ 54.
One would have been motivated to improve MacAuley’s game console with Decker’s technique because setting limits “create a safer environment and more comfortable environment for the recipient.” Decker ¶ 53.
IV. MacAuley, Anderson, Leonard, and Decker teach claim 8.
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over MacAuley, Anderson, and Leonard as applied to claim 7 above, and further in view of U.S. Patent Application Publication No. 2006/0106466 A1 (“Decker”).
Claim 8
MacAuley, Leonard, and Anderson teach the system according to claim 7, but do not appear to explicitly disclose, in a case in which both users flag each other as users of interest, making additional controllable functions of the sex toy of the selected one of the second users not previously made available in the interface are made available to at least one of the first user and the second user.
Decker, however, teaches a system wherein:
in a case in which both the first user and the selected one of the second users flag each other as a user of interest, additional controllable functions of the sex toy of the selected one of the second users not previously made available in the interface are made available to at least one of the first user and the selected one of the second users.
“FIG. 2 is a flow chart describing how the recipient defines, evaluates, and (if appropriate) alters the limits defined for the device. In step 50 the recipient defines one, or more values that constrain the behavior of the device. In steps 51 and 52 the recipient evaluates the remote operator attempts to control device. If desired, as noted in step 53, the recipient can increase or decrease one or more of the values that constrain the device.” Decker ¶ 50. Steps 51 and 53 respectively describe “a case in which both the first user and the second user flag each other as a user of interest,” because in step 51, Decker’s “remote operator” (the claimed first user) has expressed an interest in controlling the recipient’s (second user) device in a certain way, and in step 53, the recipient expresses interest that he or she wishes to have the device controlled in that way.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to improve MacAuley’s game console 100 and controllers 104 with Decker’s technique of requiring communication partners to express mutual interest in one another before allowing the remote operator (or emoticon sender, in the case of MacAuley) to access particular features of the remotely controlled device.
There would have been a reasonable expectation in the success of the combination because Decker explicitly says that Decker’s “invention is applicable to any situation in which an operator uses a communications network to partially or completely control an electrical or mechanical device,” including “vehicles, children's toys, pet toys, home/kitchen appliances, lighting, systems, heat/air conditioning, irrigation/plumbing/water management systems, and/or industrial equipment.” Decker ¶ 54.
One would have been motivated to improve MacAuley’s game console with Decker’s technique because setting limits “create a safer environment and more comfortable environment for the recipient.” Decker ¶ 53.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 Justin R. Blaufeld whose telephone number is (571)272-4372. The examiner can normally be reached M-F 9:00am - 4:00pm ET.
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Justin R. Blaufeld
Primary Examiner
Art Unit 2151
/Justin R. Blaufeld/Primary Examiner, Art Unit 2151
1 The instance at lines 10–11 is grammatically imputed via the lead-in phrase “information on” for the enumerated list (i) and (ii).
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