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 .
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.
Claim(s) 8 and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) using a generic well-known machine learning algorithm in a new data environment without improving the machine learning process. This judicial exception is not integrated into a practical application because the claims do not include an element or combination of elements that transform(s) the claimed abstract idea into patent-eligible matter. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they are well-understood, routine, and conventional.
In the instant application, the claims are directed to using a generic machine learning algorithm, i.e., a game world generation model trained to generate a new game area. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not improve the machine learning process.
The courts have stated that claims directed to the use of machine learning in a new environment that do not improve the machine learning technology is not patent-eligible. The courts have further stated that “the claimed methods are not rendered patent eligible by the fact that (using existing machine learning technology) they perform a task previously undertaken by humans with greater speed and efficient than could previously be achieved.” See Recentive Analytics, Inc. v. Fox Corp.
Claim Rejections - 35 USC § 102
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 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) 1-6, 9-16, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Don’t Starve Together (with reliance on https://nodecraft.com/support/games/dont-starve-together/creating-custom-world-generation-settings-for-your-dont-starve-together), hereinafter DST.
Re claims 1 and 11, DST discloses a method comprising: receiving, during a video game session, an input associated with a video game scene (see below image:
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wherein the image includes a “Generate World” button, and the site stating “When you're finished changing the settings for your world, click the "Generate World" button in the lower right corner. It will now create a new world, which may take a few minutes,” and wherein the settings are changed during the gaming session due to DST being required to be launched before reaching the settings screen); determining at least one element to generate in the video game scene based on the input, wherein the determination is based on a parameter associated with the video game scene (see the above image, with various settings affecting the world generation settings, with several settings illustrating a “Default” setting indicating a game world standard); and
generating, during the video game session, the at least one element in accordance with the parameter, wherein the video game session is updated to display the at least one element (“It will now create a new world, which may take a few minutes”). DST being a game running on Windows, inherently is implemented on a device with an interface, memory, and controller (e.g. a PC).
Re claims 2 and 12, DST discloses a game engine, design, server, or player command to populate at least one element of a game session (see above, the player creates a server with world generation settings, therefore considered a game design, server, and player command).
Re claims 3 and 13, DST discloses the parameter associated with the video game scene defines at least one parameter for generating at least one of a game level, map, storyline, design style for objects, and game elements (see above image, the settings affecting the game level, map, and elements, since biomes, spawn area, size, branches, events, and seasons are considered such).
Re claims 4 and 14, DST discloses detection of a game element tag in the video game scene including a description of a game element for configuration (see the image that includes descriptions of settings, e.g. “The standard Don’t Starve experience,” and other descriptions, as illustrated:
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).
Re claims 5 and 15, DST discloses generating content for a new game area of the video game session (“When you're finished changing the settings for your world, click the "Generate World" button in the lower right corner. It will now create a new world, which may take a few minutes”).
Re claims 6 and 16, DST discloses generating at least one game element and a game area based on a design theme of the video game session (see image:
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wherein a server playstyle is considered a design theme as it designates the style of play for the server).
Re claims 9 and 19, DST discloses generating display elements for the at least one element in a newly generated game area, wherein a template generated for the video game session is used to determine display attributes and game function of the at least one element (see the above rejections, DST disclosing various display attributes and game functions for the game world that is generated).
Re claims 10 and 20, DST discloses displaying the at least one element during the video game session (“Once your character appears in the game world” is considered a disclosure that game elements are generated and displayed as the player character in the game world).
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.
Claim(s) 7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over DST in view of Don’t Starve Wiki (with reliance on https://web.archive.org/web/20240111053410/https://dontstarve.fandom.com/wiki/World_Customization/Don%27t_Starve_Together), hereinafter Wiki.
Re claims 7 and 17, while DST has disclosed several settings for generating a game world, there are no explicit disclosures of display characteristics and generating elements for a template of the game area. Wiki teaches the same world generation of DST in greater depth and detail, with teachings of settings related to display characteristics and elements in the game area (see Day Type: “Determines the length and/or presence/absence of Day, Dusk, and Night” and World options including game elements such as the existence and frequency of Hound Attacks, Lightning, Rain, and Wildfires). While both DST and Wiki are directed to teachings from the same game, Don’t Starve Together, for the purposes of clarity and examination, they are treated as individual references. It would have been obvious to implement the settings of Wiki with DST in order to allow players to fully customize their gaming server experience, increasing the enjoyment of players by tailoring the experience to their preferences.
Claim(s) 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over DST in view of Petrovas et al (https://www.mdpi.com/2076-3417/12/2/772).
Re claims 8 and 18, DST has been discussed, but while DST discloses generating a game world, DST does not disclose a game world generation model trained to generate the new game area based on the parameter associated with the video game scene. Petrovas teaches procedural video game scene generation wherein procedural generation is utilized in combination with machine learning to generate content for games (“We are approaching our problem with a combination of procedural generation and machine learning methods”). It would have been obvious to combine machine learning as taught by Petrovas with procedural generation as disclosed by DST in order to increase unique and not repetitive amounts of levels with several runs of the same algorithm.
Response to Arguments
Applicant's arguments filed 12/16/25 have been fully considered but they are not persuasive. Regarding the 101 rejection, as discussed above and in the prior Office Action, because claims 8 and 18 recite generic machine learning algorithms without disclosing any improvements to either the computer or the algorithm itself, the claims must be held ineligible under 35 U.S.C. 101 per the MPEP and precedential decision Recentive Analytics, Inc. v. Fox Corp. Even if claims 8 and 18 are dependent upon eligible claims, the claims as a whole are not practically applied as they only use the computer as a tool to perform the abstract idea, see MPEP § 2106.04(d). Additionally, as discussed previously, the claims do not transform the abstract idea into patent-eligible matter, and this deficiency has not been addressed by the claim amendments.
With respect to step 2B, as discussed above, the computer utilized by the invention is a generic computer and is not disclosed to be improved, nor is the algorithm being improved. As stated in the prior rejection, the claims use existing machine learning technology and do not improve the machine learning technology. Because the claims do not disclose such improvements, the computer and algorithm must be considered well-understood, routine, and conventional.
Regarding the 102 rejections, while Applicant states that the configuration of DST fails to teach the claimed invention due to the amended limitations of “during a video game session,” the Examiner notes that all of the configuration of the DST environment takes place during the gaming session of DST. The configuration screen clearly takes place during a launched instance of DST. Without further definition or detail in the claims, a game session must be interpreted in its broadest reasonable interpretation, which is during a launched game (of which DST is clearly an example).
Conclusion
THIS ACTION IS MADE FINAL. 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 Kevin Y Kim whose telephone number is (571)270-3215. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN Y KIM/Primary Examiner, Art Unit 3715