DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This is in response to the amendments filed on 12/3/25. Claims 1 and 11 have been amended and claim 12 has been added. Claims 1 – 12 are now pending in the current application.
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 – 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
I. The claims are drawn to apparatus, process and CRM categories.
II. Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter.
Step 2a:
III. Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Representative claim 1 is analyzed below, with italicized limitations indicating recitations of an abstract idea.
A non-transitory computer readable recording medium storing instructions that cause a terminal device comprising a display to execute a game and function as: a storage device that stores a usage status of each of player's possessed game characters; and a control device that: extracts, from the possessed game characters , an unused character
The underlined limitations fall within at least three of the groupings of abstract ideas enumerated in the 2019 PEG:
Fundamental economic principles or practices
Commercial or legal interactions
Managing personal behavior or relationships or interactions between people
The claims are directed towards incentivizing the behavior of users playing a game via group agreements or contract. This is viewed by the Examiner as a fundamental economic practice, an agreement in the form of contracts, and managing personal behavior or relationships between people, which are all considered to be abstract ideas according to the 2019 guidelines.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
iii. Although the claims recite additional limitations, such as random generator, the said additional limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations such as an interface and a processor.
iv. These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2b:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional and routine computer implementation and mere instructions for implementing the abstract idea on generic computing devices.
For example, the claim language does recite additional elements such as a recording medium and a display, however, viewed as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Viewing the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
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.
Claims 1 – 12 are rejected under 35 U.S.C. 103 as being unpatentable over the video game “Clash of Clans” (released August 2012) in view of Bentz et al. (U.S. 2006/0205462).
Regarding claims 1 and 11, Clash of Clans, hereinafter Clans, discloses a non-transitory computer-readable recording medium storing instructions , (0:00 – 16:07 of NPL), that cause a terminal device comprising a display to execute a game, (0:00 – 16:07 of NPL), computer to functions as a storage device that stores a usage status of each of player’s possessed game characters, (7:50 – 7:55 of NPL), and a control device that extracts, from the possessed game characters, an unused character group having the usage status that satisfies a specific condition, (7:50 – 7:55 of NPL), receives, from a player via the display of the terminal device, a first request to browse the possessed game characters, (6:25 – 6:40 of NPL), and in response to the first request, causes the display of the terminal device to display a screen including the possessed game characters except the unused character, wherein the first request is a request for selecting, from the possessed game characters, a game character to be sold, or discarded as an evolution resource game character, (7:50 – 7:55 of NPL).
Clans, however, is silent on the issue of selling or discarding game characters. In a related art, Bentz discloses a non-transitory computer-readable recording medium storing instructions that cause a terminal device comprising a display to execute a game, (“Each of the plurality of first characters and/or rosters may be of a first video game of a first sport”, par. 0011), wherein Bentz further discloses extracting, selling, or discarding an unused game character, (“The method may sell and/or rent the character and/or roster itself to import into a first video game, and may separately sell and/or rent the character and/or roster itself to import into a second video game”, par. 0025).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the selling of game characters of Bentz into the art disclosed by Clans in order to meet the need to provide new ways to enhance a user’s game experience, as disclosed by Bentz, (par. 0003).
Regarding claim 2, Clans discloses wherein the usage status includes a number of uses during a period from a specific prior time up to a present time, (7:50 – 7:55 of NPL).
Regarding claim 3, Clans discloses wherein the number of uses is a number of uses by the player in the game, and the specific condition is that the number of uses is equal to or greater than a first specific number of times, (7:50 – 7:55 of NPL).
Regarding claim 4, Clans discloses wherein the number of uses is a number of uses by a plurality of players in the game, and the specific condition is that the number of uses is equal to or greater than a second specific number of times, (7:50 – 7:55 of NPL).
Regarding claims 5 and 6, Clans discloses wherein the number of uses is a number of uses in a quest, (7:50 – 7:55 of NPL).
Regarding claim 7, Clans discloses wherein the number of uses is a number of times a breeding game has been played, (6:25 – 6:40 of NPL).
Regarding claim 8, Clans discloses wherein the control device further: receives, from the player via the terminal device, a second request to browse the content group after receiving the first request, and in response to the second request, causes the display of the terminal device to display the content group on the screen, (7:50 – 7:55 of NPL).
Regarding claim 9, Clans discloses wherein the control device extracts, as the content group, any content having the usage status that does not satisfy the specific condition and to which an evolved content has been added via a game update during a period from a specific prior time up to a present time, (7:50 – 8:20 of NPL).
Regarding claim 10, Clans discloses wherein the control device extracts, as the content group, any content having the usage status that does not satisfy the specific condition and having been acquired by the player during a period from a specific prior time up to a present time, (7:50 – 7:55 of NPL).
Regarding claim 12, as stated above, Clans is silent on a request to sell or discard game characters. Bentz discloses a second request is received upon a switch button of a tab associated with the unused character group is being pressed on the screen, (“The method may sell and/or rent the character and/or roster itself to import into a first video game, and may separately sell and/or rent the character and/or roster itself to import into a second video game”, par. 0025).
Response to Arguments
Applicant’s arguments with respect to claims 1 - 12 have been considered but are moot based on new grounds of rejection.
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.
Conclusion
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/E.M.T/Examiner, Art Unit 3715 /DAVID L LEWIS/Supervisory Patent Examiner, Art Unit 3715