Detailed Action
Notice of Pre-AIA or AIA status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination under 37 C.F.R. § 1.114
A request for continued examination under 37 C.F.R. § 1.114, including the fee set forth in 37 C.F.R. § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 C.F.R. § 1.114, and the fee set forth in 37 C.F.R. § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 C.F.R. § 1.114. Applicant's submission filed on May 14, 2025 has been entered.
Response to Amendment
This Non-Final Office action is responsive to the Request for Continued Examination filed on May 14, 2025 (hereafter “Response”). The amendments to the claims are acknowledged and have been entered.
Claims 1, 5, 10, 11, 16, 17, 20, and 24 are now amended.
Claims 1, 5–11, 13–20, 22, 24, and 25 are pending in the application.
Response to Arguments
As an initial matter, the Applicant is reminded that the previous Advisory Action was not merely an explanation of “why [the Examiner] believes he could reject the claims as amended on February 14, 2025.” (See Response 11) (emphasis added). The Advisory Action fully entered the Applicant’s After Final Amendment filed on February 14, 2025 (responsive to the Applicant’s request), and provided a complete rejection on the merits as necessitated by the entry of the claims. Accordingly, the current status of this application is that a request for continued examination has been filed with an amendment relative to the After Final Amendment, which was finally-rejected by the Advisory Action.
With that in mind, the Applicant’s amendments and arguments will now be addressed.
The rejection of claims 1, 5–7, 9–11, 14–20, 22, 24, and 25 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2006/0015560 A1 (“MacAuley”) in view of U.S. Patent Application Publication No. 2016/0199249 A1 (“Dunham”) is hereby withdrawn, and replaced with a similar ground of rejection involving U.S. Patent Application Publication No. 2022/0387240 A1 (“Anderson”) as the secondary reference, instead of Dunham.
To the extent the new ground of rejection continues to rely upon elements MacAuley’s directly challenged in the Applicant’s Response, the Examiner’s responses to those arguments are as follows.
The Applicant first contends that “in MacAuley et al, any determination with respect to the implied ‘idle’ state merely relates to determining a staggered timing at which to execute a received emoticon relative to another received emoticon,” and that this determination “is made independently of information indicating whether or not the controller thereof is ‘currently being operated’.” (Response 12). The Examiner respectfully disagrees. In MacAuley, a controller’s vibrator may be “operated” by a remote user by sending a command (the “emoticon”) to the controlled user’s game controller—the remote user is “controlling” the motor in the other user’s game controller. The “staggered timing” employed by MacAuley’s platform is not “independent” from information about whether or not the controller is currently being operated; it directly depends upon that information. That is, the platform decides whether or not a remote user can immediately send and execute a command on another user’s device based on whether or not the other user’s device is currently executing a different remote user’s command. The Examiner acknowledges that MacAuley doesn’t perform any selecting or filtering based on the idle state, but that is the crux of the entire combination under 35 U.S.C. § 103.
The Applicant also contends that “MacAuley et al and Dunham et al also fail to disclose or suggest the feature recited in amended claim 1 whereby the at least one second user is a user from among the plural users of the platform that has not yet established a friend relationship with the first user on the platform. In MacAuley et al, a friend relationship is assumed between the first and second users thereof.” (Response 13).
Respectfully, the Applicant has overlooked a part of MacAuley’s disclosure that directly contradicts this assertion. As now discussed in the rejection below, MacAuley explicitly teaches that users who are not friends with each other may be selected for the same voice chat room, see MacAuley ¶ 93, and the voice chat room is where the users are able to send the emoticons (including the vibration emoticons). MacAuley ¶¶ 108–109 and 111–112.
To the extent the Applicant argues any other deficiencies of MacAuley and/or Dunham, those deficiencies are remedied by the newly cited Anderson reference in the rejection.
Accordingly, since the claims stand rejected, the Applicant’s request for a notice of allowance (Response 15) 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: “an adult toy that is operated by a second user and that is configured to provide sexual stimulation to the second user” in each independent claim (mutatis mutandis for “a user” in claim 17), and therefore, in each dependent claim by virtue of each dependent claim’s incorporation of parent claim limitations by reference.
The claimed adult toy meets the three-prong test from above as follows. Regarding prong (A), the phrase “adult toy” is a generic placeholder for an object that performs the claimed function of providing sexual stimulation. This phrase is a generic placeholder because it does not have a sufficiently definite meaning as the name for a structure. Even if narrowly construed, the phrase “adult toy” cannot possibly be limited to any particular structure, at least owing to anatomical differences in all of the possible body parts that a male or a female would use with an adult toy. Under prong (B), the “adult toy” is linked to the function of “providing sexual stimulation” to the user who is operating it via the linking phrase “configured to.” Finally, under prong (C), there is nothing else in the claim that modifies the claimed “adult toy” with structure. Accordingly, the claimed adult toy is understood to invoke 35 U.S.C. § 112(f).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, it/they is/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 this/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 it/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 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 computer program that includes the step of “selecting a subset of the plural users of the platform whose status information matches a predetermined status, the predetermined status at least including a status whereby the second user is online,” which is recited in all three independent claims.
When read literally, this claim language requires everyone in the subset to have status information that describes the second user’s status (e.g., as opposed to each subset member’s own respective status). For example, if the subset of users includes a third user and a fourth user, then the claim language requires the third user must to have status information about the second user’s presence, and the fourth user must have status information about the second user’s presence as well. The specification does not disclose a platform that maintains the status information of one particular user in association with all other users on the platform.
Said differently, the claim language allows for the “subset of the plural users” to include more than merely the second user, but the specification does not disclose that users other than the second user are capable having a status that indicates the second user is online.
Accordingly, each of the independent claims are rejected for containing new matter, and each of the 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 limitation “adult toy that is operated by a second user and that is configured to provide sexual stimulation to the second user” 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 and Anderson 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”).
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 at least one second 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.
that has not yet established a friend relationship with the first user on the platform,
“Each user of the network gaming environment may maintain a ‘Friends list’ identifying players with whom that user wants to be kept informed when the players are online,” MacAuley ¶ 78, but, naturally, individual Friends lists do not include everyone on the platform, so not all of the users tracked by presence server(s) 416 are friends with each other. Indeed, as will be discussed below, MacAuley’s environment 300 even allows users who are not friends with one another to be part of the same group chat. See MacAuley ¶ 93 (“A, B and C are all . . . in [a] chat, but A and C are not presently friends”).
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 an adult toy operated by the second user and configured to provide sexual stimulation to the second user is at least one of in a connected state, in a remotely operable state, and in an idle state, the idle state being a state in which the adult toy is not currently being operated;
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 “adult 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 “adult 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, in a remotely operable state, and in an idle state”), although MacAuley does not explicitly disclose maintaining status information on the same. Specifically, each controller 104 may be:
(i) in a connected state, MacAuley ¶ 41 (“each controller 104 may be coupled to the game console 102 via a wire or wireless interface”);
(ii) in 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) in 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/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 plural users of the platform whose status information matches a predetermined status, the predetermined status at least including a status whereby the second user is online and the adult toy is connected
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.
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 user from among the subset of plural 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 user;
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 the second user from among the plural 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 adult 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 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 adult toy, the control instruction comprising instructions which remotely control the adult toy 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.
and the adult toy being communicably coupled with a second terminal operated by the second user.
“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.
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 at least one second 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 comprising . . . at least one of in a connected state, in a remotely operable state, and in an idle state, and the idle state being a state in which the adult toy is not currently being 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 plural users of the platform 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.
the predetermined status at least including a status whereby the second user is online and the adult 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.
Claim 5
MacAuley and Anderson 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 adult 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.
Claim 6
MacAuley and Anderson teach the system according to claim 5,
wherein remote control of the adult toy 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 second user.
“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 and Anderson teach the system according to claim 5,
wherein the interface comprises an interface for the first user to flag the second user 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 and Anderson teach the system according to claim 1,
wherein the interface comprises an interface enabling the first user and the second user 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 and Anderson 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 second user 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 second user.
Menu 901 further includes an option for “sending a whisper or private chat to a user.” MacAuley ¶ 108.
Claim 11
MacAuley and Anderson 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 and Anderson teach the system according to claim 1,
wherein the interface comprises at least one piece of information regarding the second user, the at least one piece of information being definable by the second 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. 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 and Anderson 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 and Anderson 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 adult toy.
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 at least one second 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.
that has not yet established a friend relationship with the first user on the platform,
“Each user of the network gaming environment may maintain a ‘Friends list’ identifying players with whom that user wants to be kept