DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 03/04/2026. Presently, claims 1-9 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims have been amended to include “a human character,” (emphasis added). However, there is no mention in the original specification that the character has to be human, this includes the drawings. All dependent claims are rejected as depending from a previously rejected claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Forza Horizon 4 as evidenced by “Forza Horizon 4 – How Car Mastery Works & FORZATHON SHOP” (herein after “Mastery” and “Forza Horizon 4 Beginner’s Guide | Tips & Tricks” (hereinafter “Guide”) in view of Runescape as evidenced by “Mage Training Arena” (hereinafter “Mage”).
With regard to claim 1, Mastery discloses a non-transitory computer readable recording medium storing instructions for an information processing device that comprises a control device connected via a network to a terminal device that comprises a controller and a display, the instructions causing the control device to execute: causing the controller to execute a challenge game in which the character attempts to achieve a target, in a specific order (1:25-2:10); awarding a skill point to the character based on an execution state of the training game or the challenge game (1:25-2:10); causing the display to display a skill acquisition screen in which the character acquires one or more skills from among acquirable skills of the character by consuming the skill point (1:25-2:10); when the character has acquired a skill that matches a condition included in the challenge game, activating the skill to be exhibited in the challenge game; and causing the display to display, on the skill acquisition screen, a list of effects of acquirable skills corresponding to the skill parameter, and information on a condition included in a subsequently-executed challenge game (1:25-2:10; wherein characters go throughout the game and earn skill points based on things that they do; then they are able to take those skill points and by skills in the shop as shown that are then available in their car for use).
Mastery does not appear to be explicitly clear about having a training game per se or a human character. However, Mage teaches in a training scenario for training a human character, a training game to change a skill parameter of the human character awarding a skill point to the human character based on an execution of the training game (under the title, “The Mage Training Arena is a members'-only Magic minigame located to the north of the Duel Arena. Using various spells, players earn pizazz points in different minigames which they can use to buy items in a shop on the top floor of the arena. This is not to be confused with the Mage Arena, which is a dangerous Wilderness minigame.” History, “After the discovery of runes by humans.” Requirements describing different levels needed).
With regard to claim 2, Mastery discloses a non-transitory computer readable recording medium storing instructions for an information processing device that comprises a control device connected via a network to a terminal device that comprises a controller and a display, the instructions causing the control device to execute: causing the controller to execute, a challenge game in which the character attempts to achieve a target, in a specific order; awarding a skill point to the character based on an execution state of the training game or the challenge game (1:25-2:10); causing the display to display a skill acquisition screen in which the character acquires one or more skills from among acquirable skills of the character by consuming the skill point (1:25-2:10); when the character has acquired a skill that matches a condition included in the challenge game, activating the skill to be exhibited in the challenge game (1:25-2:10); and causing the display to display, on the skill acquisition screen, a list skill effects of acquirable skills corresponding to the skill parameter, wherein among the skill effects in the list, a skill effect of an acquirable skill that matches a condition included in a subsequently-executed challenge game is indicated as a recommended skill effect (1:25-2:10 as discussed above and additionally that you can see that some skills are highlighted and other skills are grayed out).
Mastery does not appear to be explicitly clear about having a training game per se nor a human character. However, Mage teaches in a training scenario for training a human character, a training game to change a skill parameter of the human character in which the human character attempts to achieve a target in a specific order (under the title, “The Mage Training Arena is a members'-only Magic minigame located to the north of the Duel Arena. Using various spells, players earn pizazz points in different minigames which they can use to buy items in a shop on the top floor of the arena. This is not to be confused with the Mage Arena, which is a dangerous Wilderness minigame.” History, “After the discovery of runes by humans.” Requirements describing different levels needed).
With regard to claim 3, Mastery discloses wherein the instructions further cause the control device to add, to the acquirable skills, a skill selected with a predetermined probability through execution of the training game or the challenge game (1:25-2:10 wherein the player can see the cost of the various skills they can buy and thus know a probability of what they can afford).
With regard to claim 4, Mastery discloses wherein the predetermined probability changes depending on a support character used by a player in the training scenario (1:25-3:15; wherein they discuss different skill trees for different cars).
With regard to claim 5, the combination of Guide and Tutorials teaches wherein the instructions further cause the control device to restrict continuation of the training scenario when a performance of the character in the challenge game does not satisfy a clearance condition of the challenge game (Guide at 07:00-07:30 wherein there is discussion of a rival event; Tutorials at Method: The Tutorial Room).
With regard to claim 6, Guide discloses wherein the challenge game is a race in which the character competes in a race course, and the clearance condition is to place within a specific finish order (07:00-07:30).
With regard to claim 7, Guide discloses teaches wherein the condition included in the subsequently-executed challenge game includes at least one of a race course attribute, a race distance, a lap direction, a season, and a weather (07:00-07:30).
Claims 8 and 9 are mirrored to claims 1 and 2 and are rejected in like manner.
It would have been obvious to combine the teachings of Mage with the game of Forza Horizon 4 in order to give players a chance to learn skills in order to provide players a chance to advance in a location that they can practice on their own to achieve mastery rather than in a live battle thus allowing the user to progress in their own time and way. Additionally, it would have been obvious to use human character over cars as this is merely a genre of a game and thus switching out the character for a different genre would have been obvious to one of ordinary skill in the art.
Response to Arguments
Applicant states that “character” has been replaced with “human character” and that support can be found in 0052, 0074, and 0097 and Fig. 6. None of these cited areas discuss humans. The word human is never mentioned once in the specification and there is additionally no wording in the specification that implies that it is limited to human characters.
Applicant argues that “Mastery is silent with respect to the ‘skill’ acquired by the ‘human character’,” (Arguments, page 10). While Mastery does not have a human character, it does have a skill acquisition screen, which Applicant has noted as being the pop-up (See Arguments, page 10).
All other arguments put forth by Applicant are answered in the new grounds of rejection presented above.
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 Jay Liddle whose telephone number is (571)270-1226. The examiner can normally be reached M-F 9-5.
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/Jay Trent Liddle/Primary Examiner, Art Unit 3715
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