Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed 04/14/2026 have been fully considered but they are not persuasive. Applicant’s arguments are contradictory and self-defeating. In the reference, content, beginning with an A or all content is requested, as the device needs to determine what content is available and thus does not know it. There is no particular content requested, simply what content is available. Once the content is known it is requested, thus the art meets the claim as it is an identical process.
Applicant has further added a multitude of new claims, some of which are not directed to the examined invention, and those will not be examined.
Election/Restrictions
Newly submitted claims 74-77, 79, 89-93, and 95-172 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Applicant has no support in the specification for a request where the content is not indicated, further the claims present new issues which shift the scope to a different invention.
For claims 74-77, 79 and 89-93 applicant has added what amounts to a species claims, as it is categorically established the base claims are not patentable and can thus claims 32 and 55 are considered generic. Each of these species require separate and new search and consideration and there is no reason they could not have been presented earlier in prosecution, as applicant may not add new inventions after examination has begun.
Claims 74-77 relate to an embodiment/species for prompting a user agreement, this being done after a display (the act of displaying having no antecedent basis in the claims)
Claim 79 relates to user based removal of content. (some content, it is not specified that is the content processed in claim 32)
Claims 89 relates to a motion sensor and locations within the game.
Claims 90 relates to a random process of choosing display content.
Claim 91-92 are directed to scheduling a first and second request, and aside from being a new species, this aspect appears to have no basis in the specification.
Claim 93 is directed to an operating state of the video game during requests. (this is not specifically in the specification, it is only broadly state that at some times during some embodiments the game may not be operating.)
For claims 95-138, the newly added invention deals with aspects of checking with a user for content download which is distinct from the request aspect of the invention as in claims 1-94, as it focuses on determining user’s wishes and amounts to a separate species, and will not be examiner on the merits.
For claims 139-172, the newly added invention deals with aspects with a user subscription aspect which is a distinct invention, and would require substantially new search and consideration.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 95-172 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 32-48, 50-66, 68-69, 71-73, 80-82, 84-88 and 94 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Diez (US 2006/0080702 A1) further in view of Hays (US 2008/0102947 A1)
Regarding claim 32, Diez discloses a method performed by a mobile communication device [0126] for obtaining available updated video-game content for use in a mobile video game, the method comprising:
issuing a first request to one or more servers; wherein the first request does not specify particular video-game content in the mobile video game to be updated; [0127]
after issuing the first request, receiving, in response to the first request, a message describing the available updated video-game content available on one or more servers, [0127, certain available content is presented to the user]
wherein the received message is based on at least one of a device type of the mobile communication device, a model type of the mobile communication device, a telecom service associated with the mobile communication device, a service associated with the mobile communication device, a subscription associated with the mobile communication device, or a service provider associated with the mobile communication device; [0128, The received message is based on a service associated with the mobile device]
after receiving the message relating to the updated video game content, sending a second request for at least a portion of the available updated video-game content, wherein the second request is based on the received message; [0128, the request is based on the content listed]
and receiving the requested at least a portion of the available updated video-game content identified in the second request. [0128, if allowed, not barred by parent controls or access rights, the device may request to the server to download the content]
Diez discloses game data for an emulator and updating content but not expressly update for a game already on the device based on request.
Hays discloses updating content for use in a game already existing on a mobile communication based on a request [Hays, 0032, a game application requests and receives updated advertisements]
Therefore it would have been obvious to one of ordinary skill in that art at the time of the invention to use requests to update data, as it can first be determined if an update is necessary and then download thereby avoiding wasted bandwidth.
Regarding claim 33, the combination discloses the method of claim 32, wherein the requested at least a portion of the available updated video-game content is promotional content. [Hays 0079]
Regarding claim 34, the combination discloses the method of claim 32, further comprising receiving information providing at least one in-game placement location associated with the requested at least a portion of the available updated video-game content. [Hays 0018, designated geometry and specific in game locations are listed]
Regarding claim 35, the combination discloses the method of claim 32, further comprising displaying the requested at least a portion of the available updated video-game content at a placement location based on user interaction. [Hays 0045 the location or level a user as at in the game affects the displayed ad]
Regarding claim 36, the combination discloses the method of claim 32, further comprising receiving coordinates specifying time information for displaying the requested at least a portion of the available updated video-game content. [Hays 0021, shown at the appropriate time]
Regarding claim 37, the combination discloses the method of claim 32, wherein the received at least a portion of the available updated video-game content is based on at least one of a base location of the mobile communication device or a current location of the mobile communication device. [Hays 0044, geographic location]
Regarding claim 38, the combination discloses the method of claim 32, wherein the requested at least a portion of the available updated video-game content is selected based on user information specific to a user of the mobile communication device. [Hays, 0044, location is user specific, but the reference also points out player statistics and habits may be used]
Regarding claim 39, the combination discloses the method of claim 32, wherein the received message includes at least one version identifier for the available updated video-game content. [Diez 0112, it is determined whether a latest version is downloaded, in order to request the latest version, an id is necessary]
Regarding claim 40, the combination discloses the method of claim 39, further comprising comparing at least one version identifier saved at the mobile communication device against the at least one version identifier included in the received message describing the available updated video- game content. [Diez 0112, it is determined whether a latest version is downloaded, in order to request the latest version, an id is necessary]
Regarding claim 41, the combination discloses the method of claim 32, wherein the available updated video-game content includes user-generated content. [this amounts to non-functional descriptive material, who created content makes no difference to the structure or function of the system]
Regarding claim 43, the combination discloses the method of claim 32, further comprising displaying the requested at least a portion of the available updated video-game content in a pop-up window. [Hays 0071, popup advertisement]
Regarding claim 44, the combination discloses the method of claim 32, wherein the second request is based on at least one of the sex, age, or interests of a user of the mobile communication device. [Hays, 0044 notes sex, age and statistics showing user interests]
Regarding claim 45, the combination discloses the method of claim 32, wherein the first request includes a version identifier associated with the mobile video game. [Diez 0112, it is determined whether a latest version is downloaded, a version number is necessarily present to request the latest version]
Regarding claim 46, the combination discloses the method of claim 32, wherein the second request includes a version identifier associated with the mobile video game. [Diez 0112, it is determined whether a latest version is downloaded]
Regarding claim 47, the combination discloses the method of claim 32, wherein the received at least a portion of the available updated video-game content includes one or more levels for the already existing video game. [Hays, 0034, the user may download ads in exchange for weapons or levels]
Regarding claim 48, the combination discloses the method of claim 32, wherein the received at least a portion of the available updated video-game content includes at least one of weapons, characters, or items. [Hays, 0034, the user may download ads in exchange for weapons of levels]
Regarding claim 50, the combination discloses the method of claim 32, wherein the received at least a portion of the available updated video-game content includes at least one of a background or a background information element. [Hays, 0075 scenery includes background design]
Regarding claim 52, the combination discloses the method of claim 32, further comprising receiving coordinates specifying a location for the requested at least a portion of the available updated video-game content. [Hays 0021, shown at the appropriate time, time is defined by applicant as coordinates]
Regarding claim 53, the combination discloses the method of claim 52, wherein the coordinates include scene information, level information, or time information for displaying the requested at least a portion of the available updated video-game content. [Hays 0021, shown at the appropriate time]
Regarding claim 54, the combination discloses the method of claim 52, further comprising delaying the receiving of the requested at least a portion of the available updated video-game content to not disrupt gameplay. [Hays, 0034, background downloading]
Regarding claim 55, Diez discloses a method performed by a mobile communication device for declining available video-game content for use in a mobile video game [0126] on a mobile communication device, the method comprising:
Issuing a first request to a server wherein the first request does not specify particular video-game content in the mobile video game to be updated; [0127]
receiving a message relating to the updated video-game content available on one or more servers, [0127, certain available content is presented to the user]
wherein the received message is based on at least one of a device type of the mobile communication device, a model type of the mobile communication device, a telecom service associated with the mobile communication device, a service associated with the mobile communication device, a subscription associated with the mobile communication device, or a service provider associated with the mobile communication device; [These features are all claimed in the alternative, using “or” making each optional; 0128, The received message is based on a service associated with the mobile device]
determining that the mobile communication device should not receive at least a portion of the available updated video-game content; and determining to refrain from sending a second request for the at least a portion of the updated video-game content to the server. [0148, access rights and parental control options can prevent a user locally from trying to request access to the content]
Hays discloses updating content for use in a game already existing on a mobile communication based on a request [Hays, 0032, a game application requests and receives updated advertisements]
Therefore it would have been obvious to one of ordinary skill in that art at the time of the invention to use requests to update data, as it can first be determined if an update is necessary and then download thereby avoiding wasted bandwidth.
Regarding claim 56, the combination discloses the method of claim 55, wherein the received message includes at least one version identifier for the available updated video-game content. [Diez 0112, it is determined whether a latest version is downloaded, a version number must be received to be compared]
Regarding claim 57, the combination discloses the method of claim 55, further comprising comparing at least one version identifier saved at the mobile communication device against the at least one version identifier included in the received message describing the available updated video- game content. [Diez 0112, it is determined whether a latest version is downloaded]
Regarding claim 58, the combination discloses the method of claim 55, wherein the first request includes a version identifier associated with the mobile video game. [Diez 0112, it is determined whether a latest version is downloaded, in order to request the latest version, an id is necessary]
Regarding claim 59, the combination discloses the method of claim 55, wherein the at least a portion of the available updated video-game content is promotional content. [Hays 0079]
Regarding claim 60, the combination discloses the method of claim 55, wherein the at least a portion of the available updated video-game content is based on at least one of a base location of the mobile communication device or a current location of the mobile communication device. [Hays 0044, geographic location]
Regarding claim 61, the combination discloses the method of claim 55, wherein the at least a portion of the available updated video-game content is selected based on user information specific to a user of the mobile communication device. [Hays, 0044 notes sex, age and statistics showing user interests]
Regarding claim 62, the combination discloses the method of claim 55, wherein the available updated video-game content includes user-generated content. [this amounts to non-functional descriptive material, who created content makes no difference to the structure or function of the system]
Regarding claim 64, the combination discloses the method of claim 55, wherein the second request is based on at least one of the sex, age, or interests of a user of the mobile communication device. [Hays, 0044 notes sex, age and statistics showing user interests]
Regarding claim 65, the combination discloses the method of claim 55, wherein the at least a portion of the available updated video-game content includes one or more levels for the already existing video game. [Hays, 0034, the user may download ads in exchange for weapons or levels]
Regarding claim 66, the combination discloses the method of claim 55, wherein the at least a portion of the available updated video-game content includes at least one of weapons, characters, or items. [Hays, 0034, the user may download ads in exchange for weapons or levels]
Regarding claim 68, the combination discloses the method of claim 55, wherein the at least a portion of the available updated video-game content includes at least one of a background or a background information element. [Hays, 0075, in game scenery]
71. (New) The method of claim 55, wherein the updated video-game content comprises non-promotional video-game content. [this constitutes non functional descriptive material and is not a patentable distinction, see MPEP 2111.05]
72. (New) The method of claim 55, wherein the at least a portion of the updated video-game content comprises promotional content. [this constitutes non functional descriptive material and is not a patentable distinction, see MPEP 2111.05]
73. (New) The method of claim 32, wherein: the updated video-game content comprises one or more levels or scenes; and the method further comprises after receiving the requested at least a portion of the updated video-game content, presenting a user with an explanation of the received at least a portion of the updated video-game content. [this constitutes non functional descriptive material and is not a patentable distinction, see MPEP 2111.05]
80. (New) The method of claim 32, further comprising: after receiving the requested at least a portion of the updated video-game content, restoring original video-game content to the mobile video game. [Diez 0122, In one embodiment, the system is configured for removing or corrupting all critical content units after the user is finished playing the game. In an alternative embodiment, the system is configured for removing or corrupting only a portion of the content units in a randomized manner. The added date is corrupted or removed thus restoring the content to its original form. ]
81. (New) The method of claim 32, wherein the updated video-game content comprises non-promotional video-game content. [this constitutes non functional descriptive material and is not a patentable distinction, see MPEP 2111.05]
82. (New) The method of claim 32, further comprising: replacing existing content within the mobile video game with the received at least a portion of the updated video-game content. [This is by definition what an update is, replacing part of a program with new information]
84. (New) The method of claim 32, wherein the received at least a portion of the updated video-game content comprises an in-game item with which a user interacts. [this constitutes non functional descriptive material and is not a patentable distinction, see MPEP 2111.05]
85. (New) The method of claim 32, wherein the received at least a portion of the updated video-game content comprises at least one graphic. [this constitutes functional descriptive material and is not a patentable distinction, see MPEP 2111.05]
86. (New) The method of claim 32, wherein the received at least a portion of the updated video-game content comprises at least one animation. [this constitutes non functional descriptive material and is not a patentable distinction, see MPEP 2111.05]
87. (New) The method of claim 32, wherein the received at least a portion of the updated video-game content comprises at least one message. [this constitutes non functional descriptive material and is not a patentable distinction, see MPEP 2111.05]
88. (New) The method of claim 32, wherein the received at least a portion of the updated video-game content comprises sound. [this constitutes non functional descriptive material and is not a patentable distinction, see MPEP 2111.05]
94. (New) The method of claim 32, wherein the second request is based on comparing available version identifiers in the message received from the one or more servers with one or more version identifiers of video-game content on the mobile communication device. [Diez 0112, it is determined whether a latest version is downloaded]
Claims 49 and 67 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Diez (US 2006/0080702 A1) further in view of Hays (US 2008/0102947 A1) further in view of Ho (WO 2008/008038 A1)
Regarding claim 49, the combination discloses the method of claim 32, but does not expressly disclose hot spots. Ho discloses an analogous system wherein the received at least a portion of the available updated video-game content includes hot spots. [See page 2 lines 20-29, wherein interaction information elements can display hidden information such as an advertisement when activation by a user and thus are hot spots in a manner commensurate to those as defined in the application] Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to use hot spots as a convenient way of location based advertisement updating that is in widespread use.
Regarding claim 67, the combination discloses the method of claim 55, but does not expressly disclose hot spots. Ho discloses an analogous system wherein the received at least a portion of the available updated video-game content includes hot spots. [See page 2 lines 20-29, wherein interaction information elements can display hidden information such as an advertisement when activation by a user and thus are hot spots in a manner commensurate to those as defined in the application] Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to use hot spots as a convenient way of location based advertisement updating that is in widespread use.
Claims 70 and 78 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Diez (US 2006/0080702 A1) further in view of Hays (US 2008/0102947 A1) further in view of Examiner’s Official Notice.
Regarding claim 70, the combination discloses the method of claim 55, but does not expressly disclose that the received message comprises file size or number of files. Examiner takes official notice that it was notoriously well known in the art prior to the effective filing date of the claimed invention to inform a user about the number and size of files in a potential download or FTP communication. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention for a received message to comprise any one or more of a file size or a number of files so that the user may account for the space available on their device, the bandwidth available for transfer and/or the amount of time the download would take and determine if the transfer is possible, timely and convenient to the user.
Regarding claim 78, the combination discloses the method of claim 32, but does not expressly disclose that the received message comprises file size or number of files. Examiner takes official notice that it was notoriously well known in the art prior to the effective filing date of the claimed invention to inform a user about the number and size of files in a potential download or FTP communication. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention for a received message to comprise any one or more of a file size or a number of files so that the user may account for the space available on their device, the bandwidth available for transfer and/or the amount of time the download would take and determine if the transfer is possible, timely and convenient to the user.
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 LEWIS G WEST whose telephone number is (571)272-7859. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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, George Eng can be reached at (571) 272-7495. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEWIS G WEST/Primary Examiner, Art Unit 2699
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