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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-20 is/are directed towards a statutory category they are directed to either a process, machine, manufacture, or composition of matter (Step 1, Yes).
Claim 1 recites, in part, the limitations of […]; and starting the game from the game starting point of the game part corresponding to the selection […] that is selected based on an input by the player from the selection […] included in the selection image. These limitations, individually and in combination, describe or set forth the abstract idea in claim 1 (substantially similar to claims 17 and 19). The Examiner notes that the specific limitations that describe or set forth the abstract idea in Step 2A Prong 1 can be identified either individually or in combination (see p. 54 of 2019 Revised Patent Subject Matter Eligibility Guidance).
Under the broadest reasonable interpretation, the claims recite limitations that can be practically performed in the human mind or by a human using pen and paper. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Thus, the claims recite a mental process.
The claims also recite limitations that are considered a fundamental economic principle or practice (e.g., relating to commerce and economy), commercial interactions, business relations, managing personal behavior or relationships or interactions between people. The Examiner notes that certain activity between a person and a computer may fall within the certain methods of organizing human activity grouping (see p. 5 of the October 2019 Update: Subject Matter Eligibility).
Therefore, the claims fall under the following enumerated groupings of abstract ideas: mental processes (e.g., concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)), and/or certain methods of organizing human activity (e.g., fundamental economic principles or practices (including hedging, insurance, mitigating risk), commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)) (Step 2A, Prong 1, Yes).
Claim 1 recites the additional elements of “one or more processors”, and “selection user interfaces”. These additional elements, when considered individually or in combination, are not integrated into a practical application because they are all recited at a high level of generality and are merely used as tools to implement or perform the steps of the abstract idea. The additional elements when considered alone and in combination amount to no more than using generic computing components to apply the judicial exception. The recitations “displaying a selection image including…” are insignificant extra-solution activity i.e., data gathering and/or data output. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application (Step 2A Prong 2, No). Thus, the claim is directed to an abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to Step 2A - Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components and the insignificant extra-solution activity of displaying selection images is no more than data gathering and data output. The same analysis applies here in step 2B and does not provide an inventive concept (Step 2B, No).
The dependent claims fail to add “significantly more” because they merely represent further use of generic computers for routine data-processing functions related to steps/rules for generating modified game content based on user interaction with content in another game (Claims 2-16, 18, and 20).
For these reasons, there is no inventive concept. The claims are not patent eligible. Even when viewed as a whole, nothing in the claims add significantly more to the abstract idea.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 11-16, 18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Super Mario Bros. 3 Manual (henceforth, “SMB3 Manual”).
Regarding claims 1, 17, and 19, SMB3 Manual teaches a game system, game control method, and one or more non-transitory computer-readable storage media having stored therein one or more game programs (SMB3 Game Cartridge), wherein the game program is for a game that a scenario is sectioned into a plurality of successive game parts and a game starting point is set at a beginning of each of the plurality of game parts, wherein the game program causes one or more processors to execute game processing (SMB3 Game Cartridge together with the NES) comprising:
displaying a selection image including at least one of first-type selection user interfaces and second-type selection user interfaces, the first-type selection user interfaces corresponding to respective game parts that are playable by the player when a previous game part is cleared (e.g., World 1 map screen, level 2 is playable when level 1 is cleared, level 3 is playable when level 2 is cleared, etc. as shown in SMB3 Manual Pg16), the second-type selection user interfaces corresponding to respective game parts that are playable by the player irrespective of whether a previous game part is cleared (e.g., World 1 map screen, level 4 is playable irrespective of level 3 being cleared, as shown in SMB3 Manual Pg16); and
starting the game from the game starting point of the game part corresponding to the selection user interface that is selected based on an input by the player from the selection user interfaces included in the selection image (e.g., selecting a level in World 1 allows said level to be played from the beginning of selected level, as shown in SMB3 Manual Pg16).
Regarding claims 2, 18, and 20, SMB3 Manual teaches determining based on an input by the player either a first game starting method or a second game starting method as a method of starting the game; displaying the selection image to allow the player to select the selection user interface based on an input by the player, and starting the game from the game starting of the game part corresponding to the selection user interface that is selected by the player, when the first game starting method is determined; and starting the game from the starting point of a first game part of the scenario, when the second game starting method is determined (e.g., selecting any playable level and starting said level).
Regarding claim 3, SMB3 Manual teaches starting the game from the starting point of the first game part of the scenario without displaying the selection image, when the second game starting method is determined (e.g., character on level 2 to select level, image not displayed).
Regarding claim 4, SMB3 Manual teaches displaying the selection image including the first-type selection user interfaces corresponding to the game part that the previous game part is cleared in the game that is started by the first game starting method and to the game part that the previous game part is cleared in the game that is started by the second game starting method (e.g., level 1 cleared by Mario shows an M on level 1).
Regarding claim 11, SMB3 Manual teaches displaying the selectin image that includes information regarding the game part corresponding to the selection user interface (e.g., cleared levels and uncleared levels images).
Regarding claim 12, SMB3 Manual teaches the information regarding the game part includes at least one of a number of the game part corresponding to the selection user interface and a title of the game part (e.g., uncleared level numbers).
Regarding claim 13, SMB3 Manual teaches the information regarding the game part includes at least either a description of the game part corresponding to the selection user interface selected based on an input by the player or an image regarding the game part corresponding to the selection user interface (e.g., M or level number image).
Regarding claim 14, SMB3 Manual teaches displaying the selection image not including the plurality of second-type selection user interfaces, when at least a predetermined game part including a first game part of the scenario is not cleared (e.g., not cleared level shows a number); and displaying the selection image including the plurality of second-type selection user interfaces, when the predetermined game part is cleared (e.g., level 1 cleared by Mario shows an M on level 1).
Regarding claim 15, SMB3 Manual teaches displaying the selection image including the plurality of second-type selection user interfaces as user interfaces each of which cannot be selected by the player, when at least a predetermined game part including a first game part of the scenario is not cleared (e.g., if previous level 1 is not cleared uncleared level 2 cannot be selected); and displaying the selection image including the plurality of second-type selection user interfaces as user interfaces each of which can be selected by the player, when the predetermined game part is cleared (e.g., when level 2 is cleared levels 3 and 4 can be selected).
Regarding claim 16, SMB3 Manual teaches displaying a mode selection image including a first mode selection user interface corresponding to the first game starting method and a second mode selection user interface corresponding to the second game starting method; determining based on an input by the player either the first game starting method or the second game starting method as a game starting method; displaying the mode selection image not including the first mode selection user interfaces, when at least a predetermined game part including a first game part of the scenario is not cleared (e.g., no M is shown); and displaying the mode selection image including the first mode selection user interfaces, when the predetermined game part is cleared (e.g., showing an M where Mario has cleared a level).
Allowable Subject Matter
Claims 5-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and is listed on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHASE E LEICHLITER whose telephone number is (571)270-7109. The examiner can normally be reached Monday-Friday (9-5).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at (571)272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHASE E LEICHLITER/Primary Examiner, Art Unit 3715