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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/09/26 has been entered.
Response to Arguments
The petition to accept an unintentionally delayed claim for foreign priority has been dismissed as of 08/04/26, as noted below.
The previous objections to claims 5 and 13 are moot in light of the amendments to the claims, filed 04/09/26.
Applicants’ arguments with respect to the rejection of the claims under 35 U.S.C. 101 have been fully considered but are not persuasive.
Applicants argue that the claims are not directed to an abstract idea because the amended claims recite specific game methods comprising defined conditional logic and automated actions executed by the game system for regulating system behavior as opposed to behaviors of human players (Remarks, filed 04/09/26, pp. 12-13). Examiner respectfully disagrees. The claim limitations, under their broadest reasonable interpretation, encompass certain methods of organizing human activity – managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules of instructions) but for the recitation of generic computing components (one or more processors, memory, and one or more programs). The claimed invention is directed to a competition between teams, wherein a player from a team battles a neutral character (e.g., a character controlled by an administrator/narrator/game master/etc.) to earn points which contribute to the player’s team’s score. Specifically, based on whether a cumulative total of prescribed points associated with the neutral character is below, or alternatively, equal to or exceeds, an upper limit of the cumulative total of points that can be earned by the target player that fights/defeats the neutral character, points are either directly awarded to the target player or may be acquired in the game by other players who are not the target player. This represents managing personal behavior or relationships or interactions between people, include social activities, teaching, and following rules or instruction, i.e., user(s) playing a game/ rules for playing a game (see MPEP 2106.04(a)(2)(II)(C) (citing In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018), wherein the Federal Circuit held that claims directed to rules for playing a dice game were directed to the abstract idea of certain methods of organizing human activity)). Particularly, the claim limitations define rules governing how a game is played and how points are awarded or made available to players. Additionally, game play as described encompasses a social activity. The additional recitations of computing components for executing the abstract idea merely encompass instructions to implement the abstract idea using a computer and/or generally link the abstract idea to a particular technological environment (i.e., computing environment).
Applicants further argue that the claim limitations integrate the abstract idea into a practical application because the amended game method is performed on a system that includes programs specifically configured to update game state, process player inputs, and determine outcomes, and further, the claimed game method improves on conventional information processing systems by “lower[ing] psychological barriers to interpersonal battles for novice players who are hesitant to engage in interpersonal battles or for players, who are unfamiliar with operations” and “allow[ing] a player to contribute to a team by an action other than an interpersonal battle in a game in which a plurality of players can participate and encourage joint fight with other players” (Remarks, filed 04/09/26, p. 13). Examiner respectfully disagrees. While the claim recites the additional limitations of one or more programs stored in memory and executable by one or more processors to execute the abstract idea (i.e., user(s) playing the game wherein an outcome of a battle between players is decided and points awarded according to game rules), the limitations are recited at a high level of generality and merely function as instructions to implement the abstract idea using a computer or generally link the abstract idea to a computing environment (see MPEP 2106.05(f) & (h)). The limitations fail to recite an improvement to the functioning of a computer or to any other technical field (see MPEP 2106.05(a)), require the use of a “particular machine” (see MPEP 2106.05(b)), effect a transformation (see MPEP 2106.05(c)), or recite any other meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP 2106.05(e)). Moreover, the above-argued improvement does not appear to be recited in the claims. That is, in order to affirmatively contribute to a team by earning points, a player must defeat a neutral character (e.g., a character controlled by an administrator, game master, etc.) wherein some skill on the part of the player is still required (see independent claims 1, 9, 17, wherein points are given to the player based on a result of a fight and state of the neutral character (e.g., the player successfully defeats the neutral character in the fight)).
Accordingly, the rejection of the claims under 35 U.S.C. 101 has been maintained, as presented in detail below.
Applicants’ arguments with respect to the rejection of claims 1-20 under 35 U.S.C. 102 have been fully considered but are not persuasive.
Applicants argue that the cited prior art (Bibi) fails to teach or suggest the point allocation mechanism required by the independent claims (Remarks, filed 04/09/26, p. 11). Examiner respectfully disagrees. Bibi discloses the limitations of the independent claims, as presented in detail below.
Applicants further argue that Bibi is not applicable prior art under 35 U.S.C. 102(a)(1) due to an exception under 35 U.S.C. 102(b)(1)(A) (Remarks, filed 04/09/26, p. 14). Examiner respectfully disagrees. As noted above, Applicants’ claim for foreign priority (JP 2021-096946), having an effective filing date of 06/09/21, has been dismissed, and thus foreign priority has not been established.
For these reasons, the claims remain rejected under 35 U.S.C. 102, as presented below.
Priority
Acknowledgment is made of Applicants’ claim for foreign priority based on an application filed in Japan (JP 2021-096946) on 06/09/21. It is noted, however, that Applicants’ petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for foreign priority has been dismissed (see Decision on Petition under 37 CFR 1.55(e), filed 08/04/26). Accordingly, foreign priority has not been established.
Claim Objections
Claims 1, 5, 9, 13, 17, and 21 are objected to because of the following informalities:
“a cumulative total of the prescribed points that are given to the target player is below an upper limit of the cumulative total of points that can be earned by the target player, giving the prescribed points associated with the neutral character to the target player” recited in claim 1, ln. 15-18, claim 9, ln. 15-18, and claim 17, ln. 16-19 should likely read “a cumulative total of the prescribed points a cumulative total of points that can be earned by the target player, giving the prescribed points associated with the neutral character to the target player”;
“and making the point object available” recited in claim 1, ln. 24-25, claim 9, ln. 24-25, and claim 17, ln. 25-26 should likely read “and wherein the point object is available”; and
“the upper limit of the cumulative total of points that can be earned by the player” recited in claim 5, ln. 6-7, claim 13, ln. 6-7, and claim 21, ln. 6-7 should likely read “[[the]]an upper limit of [[the]]a cumulative total of points that can be earned by the player”.
Appropriate correction is required.
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, 4-5, 7-9, 12-13, 15-17, and 20-23 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 claims contain 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.
Claim 1 recites in part “causing a display of a point object in the play field corresponding to the cumulative total of the prescribed points associated with the neutral character in the play field”. However, the Specification does not disclose wherein the point object corresponds to the cumulative total of the prescribed points associated with the neural character, as claimed. Rather, the Specification discloses wherein the point object corresponds to the surplus points obtained by subtracting the upper limit from the cumulative total of the prescribed points (see Specification, [0050]; [0139]; [0142]; [0251-0252]). Accordingly, the claim is rejected for a lack of written description.
Claim 5 is rejected for similar reasoning, where claim 5 indicates that the point object corresponds to the cumulative total of the prescribed points associated with the neural character.
Claims 9 and 17 are rejected for the same reasoning as claim 1 above (see claim 9, ln. 22-24 & claim 17, ln. 23-25).
All dependent claims are rejected by virtue of their dependencies on independent claims 1, 9, and 17.
Claim 4 recites in part “in accordance with a determination that a positional relationship between the player character and the point object satisfies a prescribed condition, making the point object available for acquisition by the player character”. This limitation lacks support in the Specification. That is, claim 1, from which claim 4 depends, recites causing a display of a point object in the play field in accordance with a determination that the cumulative total of the prescribed points associated with the neutral character is equal to or greater than the upper limit of the cumulative total of points that can be earned by the target player, wherein the player character is of the target player. The Specification explicitly discloses wherein, “even when the positional relationship between the player character and the point object satisfies a prescribed condition or when the player has given an instruction for acquiring the point object, the point giving control unit 62 can, if the cumulative total of the points possessed by the player of the player character satisfies the second condition, prohibit the acquisition of the point object by the player character” (Specification, [0257]). Therefore in this scenario, the point object is not available for acquisition, and accordingly, this limitation lacks written description support in the Specification.
Claims 12 and 20 are rejected for the same reasoning.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-5, 7-9, 12-13, 15-17, and 20-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites in part “wherein the neutral character acts without being operated by the player from the ally team or the another player from the enemy team and with which prescribed points are associated; deciding a character state of the neutral character based on a result of the fight with the player character of the target player, wherein the result indicates that the neutral character is defeated by the player character of the target player; in accordance with a determination that a cumulative total of the prescribed points that are given to the target player is below an upper limit of the cumulative total of points that can be earned by the target player, giving the prescribed points associated with the neutral character to the target player”. It is indefinite as to whether, and if so how, the prescribed points associated with the neutral character (ln. 10) and given to the target player (ln. 17-18) differ from the “cumulative total of the prescribed points that are given to the target player” (ln. 15-16) claimed.
Claims 9 and 17 are rejected for similar reasoning.
All dependent claims are rejected by virtue of their dependencies on independent claims 1, 9, and 17.
Claim 5 recites in part “the player character of the player” in ln. 3-4. There is insufficient antecedent basis for this limitation in the claim.
Claims 13 and 21 are rejected for the same reasoning.
Claim 5 further recites the limitation "the cumulative total of the prescribed points associated with the neural character that are given to the player" in ln. 4-5. There is insufficient antecedent basis for this limitation in the claim. That is, claim 1, from which claim 5 ultimately depends, recites wherein the cumulative total of the prescribed points associated with the neutral character are given to the target player.
Claims 13 and 21 are further rejected for the same reasoning.
Claim 7 recites in part “converting points given to the player character into a score of the ally team in response to a prescribed operation of the player when the player character is located within a prescribed area provided in the play field”. However, claim 1, from which claim 7 depends, recites wherein the player character is “of a target player”, without further reciting wherein the target player is the same as the player which belongs to the ally team. Accordingly, it is unclear as to whether the operation is of the target player, which may be a different player than the player, or if the operation is of the player and wherein the target player is the player.
Claims 15 and 22 are rejected for the same reasoning as claim 7 above.
Claims 8, 16 and 23 are rejected by virtue of their dependencies on claims 7, 15, and 22, respectively.
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, 4-5, 7-9, 12-13, 15-17, and 20-23 are rejected under 35 U.S.C. 101 because the claims are directed to an abstract idea (certain methods of organizing human activity) without significantly more.
Regarding claim 9, analyzed as representative claim:
[Step 1] Claim 9 recites “A game method” which falls within the “process” statutory category of invention.
[Step 2A – Prong 1] The claim recites a series of steps which encompass certain methods of organizing human activity (i.e., managing personal behavior or relationships or interactions between people – including social activities, teaching, and following rules or instructions) (see MPEP 2106.04(a)(2)(II)).
Claim 9 recites: A game method performed by a game system comprising one or more processors, memory and one or more programs that are stored in the memory and executed by the one or more processors, in which an ally team to which a player belongs and an enemy team to which another player belongs compete in a play field, and an outcome of a game is decided by comparing scores earned by the ally team and the enemy team, the game method comprising:
causing a display of a neutral character engaging a fight with a player character of a target player from either the ally team or the enemy team in the play field, wherein the neutral character acts without being operated by the player from the ally team or the another player from the enemy team and with which prescribed points are associated (human activity: following rules or instructions);
deciding a character state of the neutral character based on a result of the fight with the player character of the target player, wherein the result indicates that the neutral character is defeated by the player character of the target player (human activity: following rules or instructions);
in accordance with a determination that a cumulative total of the prescribed points that are given to the target player is below an upper limit of the cumulative total of points that can be earned by the target player, giving the prescribed points associated with the neutral character to the target player, based on the character state of the neutral character (human activity: following rules or instructions); and
in accordance with a determination that the cumulative total of the prescribed points associated with the neutral character is equal to or greater than the upper limit of the cumulative total of points that can be earned by the target player: causing a display of a point object in the play field corresponding to the cumulative total of the prescribed points associated with the neutral character in the play field; and making the point object available for acquisition by any other player from the same team as the target player (human activity: following rules or instructions).
As indicted above, the limitations of the claim, under a broadest reasonable interpretation, encompass certain methods of organizing human activity (managing personal behavior or relationships or interactions between people – including social activities, teaching, and following rules or instructions), but for the recitation of generic computing components. The claimed limitations define rules governing how a game is played and how points are awarded or made available to players, which falls under the abstract idea of a certain method of organizing human activity. That is, the claimed invention recites a player character fighting a neutral character (e.g., a character controlled by an administrator/narrator/game master/etc.), thereby changing a state of the neutral character, and awarding points accordingly, where a condition involving the neutral character’s prescribed points and the target player’s upper limit of cumulative points available is evaluated, and wherein if the prescribed points can be awarded based on the target player’s upper limit, the points are given to the target player, but if awarding the prescribed points equals to or exceeds the upper limit, a point object is displayed instead. Further, to the extent game play is a social activity, this also represents an abstract idea. Accordingly, the claim recites an abstract idea.
[Step 2A – Prong 2] The claim does not recite additional elements that integrate the abstract idea into a practical application. While the claim requires the additional elements of a game system comprising one or more processors, memory, and one or more programs stored in the memory and executed by the one or more processors, these additional elements are generic computing components that merely function to apply the abstract idea to a computer environment, or to use a computer as a tool to perform the abstract idea (see MPEP 2106.05(f) & (h)). There is no indication that the additional elements recite an improvement to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), require the use of a “particular machine” (see MPEP 2106.05(b)), recite a particular transformation of an article to a different thing or state (see MPEP 2106.05(c)), or recite any other meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP 2106.05(e)). Accordingly, the claim is directed to the abstract idea.
[Step 2B] As discussed above with respect to integration of the abstract idea into a practical application, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Rather, the additional elements merely require the implementation of the abstract idea using generic computing components. As evidence that these additional elements are generic, well-known, and conventional computing components, Applicant’s Specification discloses these in a manner that indicates that the additional elements are sufficiently well-known and the Specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a). Therefore, claim 9 is not patent eligible.
Independent claims 1 and 17 are rejected for similar reasoning.
Claims 4-5, 7-8, 12-13, 15-16, and 20-23 are dependent on claims 1, 9, and 17, and therefore recite the same abstract idea noted above. While the dependent claims may have a narrower scope than the independent claims, the claims fail to recite additional limitations that would integrate the abstract idea into a practical application or provide significantly more (i.e., an inventive concept). Rather, the claims further define the rules governing the game. Therefore, claims 4-5, 7-8, 12-13, 15-16, and 20-23 are also not patent eligible.
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.
Claims 1, 4-5, 7-9, 12-13, 15-17, and 20-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Screen captures from Youtube video clip entitled ““Blastoise pokemon review Pokemon UNITE BETA GAMEPLAY – POKEMON MOBA GAME”, 24 pages, uploaded on Mar. 10, 2021 by user “Bibi Pew” (hereinafter “Bibi”).
Regarding claim 1, Bibi discloses – as best understood in light of the rejections under 35 U.S.C. 112 above – a game system comprising one or more processors, memory, and one or more programs that are stored in the memory and executed by the one or more processors for performing a game method (0:00-0:05; 10:52, a digital game to be played on a computing device (e.g., smartphone) which includes one or more processors, memory, and one or more programs stored in the memory and executed by the one or more processors for performing the game), in which an ally team to which a player belongs and an enemy team to which another player belongs compete in a play field (7:30-7:39; 7:51, wherein an ally team of 5 members including a player (e.g., bibipew) competes in a play field against an enemy team comprising at least another player), and an outcome of a game is decided by comparing scores earned by the ally team and the enemy team (17:48-17:49), the one or more programs comprising instructions for:
causing a display of a neutral character engaging in a fight with a player character of a target player from either the ally team or the enemy team in the play field, wherein the neutral character acts without being operated by the player from the ally team or the another player from the enemy team and with which prescribed points are associated (7:30-7:52, where a fight between a neutral character (i.e., a wild Pokémon) and a player character occurs, and wherein points are associated with the neutral character);
deciding a character state of the neutral character based on a result of the fight with the player character and the target player, wherein the result indicates that the neutral character is defeated by the player character of the target player (7:30-7:52, wherein a state (e.g., health) of the wild Pokémon (neutral character) is determined based on the result of the fight between the neutral character and the player character, where the result indicates that the wild Pokémon has been defeated (e.g., zero health, indicated by a depleted health bar and/or removal from the play field));
in accordance with a determination that a cumulative total of the prescribed points that are given to the target player is below an upper limit of the cumulative total of points that can be earned by the target player, giving the prescribed points associated with the neutral character to the target player, based on the character state of the neutral character (7:30-7:52; 7:51; 15:21-15:34; 17:03-17:05, wherein the points associated with the wild Pokémon (neutral character) (“prescribed points”) are automatically awarded to the player character if the cumulative total of the prescribed points is less than an upper limit set for the player (e.g., 50 points) upon defeating (i.e., zero health state) the wild Pokémon (neutral character)); and
in accordance with a determination that the cumulative total of the prescribed points associated with the neutral character is equal to or greater than the upper limit of the cumulative total of points that can be earned by the target player: causing a display of a point object in the play field corresponding to the cumulative total of the prescribed points associated with the neutral character in the play field; and making the point object available for acquisition by any other player from the same team as the target player (1:06-1:07; 17:03-17:05, wherein if the cumulative total of the prescribed points would exceed the upper limit set for the player (e.g., 50), a point object (ball-shaped objects) appears in the play field and is available for acquisition by both the ally and the enemy team).
Regarding claim 4, Bibi further discloses – as best understood in light of the rejections under 35 U.S.C. 112 above – wherein the one or more programs comprise instructions for: in accordance with a determination that a positional relationship between the player character and the point object satisfies a prescribed condition, making the point object available for acquisition by the player character (1:51-1:56, wherein based on a positional relationship between the player character and the point object satisfying a prescribed condition (e.g., a close distance), the point object appears on the player’s display available for acquisition by the player, if possible (e.g., player’s point value has not reached the upper limit (50))).
Regarding claim 5, Bibi further discloses – as best understood in light of the rejections under 35 U.S.C. 112 above – wherein the one or more programs comprise instructions for: even if the positional relationship satisfies the prescribed condition, preventing the player character of the player from acquiring the point object when the cumulative total of the prescribed points associated with the neutral character that are given to the player is equal to or greater than the upper limit of the cumulative total of points that can be earned by the player (1:47-1:56, wherein the player character of the player is unable to collect the subject point objects as the upper limit (50) has been reached).
Regarding claim 7, Bibi further discloses – as best understood in light of the rejections under 35 U.S.C. 112 above – wherein the one or more programs comprise instructions for: converting points given to the player character into a score of the ally team in response to a prescribed operation of the player when the player character is located within a prescribed area provided in the play field (17:35-17:49, when the player character is moved into an enemy base/goal zone after acquiring points (e.g., 50 points depicted), scored points for the ally team can be acquired).
Regarding claim 8, Bibi further discloses – as best understood in light of the rejections under 35 U.S.C. 112 above – wherein the prescribed area is an enemy base of the enemy team provided in the play field and a predetermined durability value is set for the enemy base (0:30; 0:37; 12:10; 12:52; 17:35-17:49, wherein the prescribed area is an enemy base, and wherein each base has a set durability value (e.g., 80, 100)), and the one or more programs comprise instructions for:
supplying a supply value corresponding to the score of the ally team to the enemy base (17:35-17:49, when the player character is moved into an enemy base/goal zone after acquiring points (e.g., 50 points depicted), scored points for the ally team can be acquired);
adding the supply value to a total value of supply values in the enemy base (0:30; 0:37; 12:10; 12:52; 17:35-17:49, wherein a supply value (total supply values) corresponding to the score is supplied to the enemy base); and
stopping function of the enemy base when the total value of the supply values accumulated in the enemy base is equal to or greater than the durability value (0:30; 0:37; 12:10; 12:52; 17:35-17:49, wherein an enemy base may be destroyed if the supply value is equal to or greater than the durability value).
Regarding claim 9, claim 9 is a game method of claim 1 and is thereby rejected for like reasoning.
Regarding claim 12, claim 12 is a game method of claim 4 and is thereby rejected for like reasoning.
Regarding claim 13, claim 13 is a game method of claim 5 and is thereby rejected for like reasoning.
Regarding claim 15, claim 15 is a game method of claim 7 and is thereby rejected for like reasoning.
Regarding claim 16, claim 16 is a game method of claim 8 and is thereby rejected for like reasoning.
Regarding claim 17, claim 17 is a non-transitory computer-readable storage medium of claim 1 and is thereby rejected for like reasoning.
Regarding claim 20, claim 20 is a non-transitory computer-readable storage medium of claim 4 and is thereby rejected for like reasoning.
Regarding claim 21, claim 21 is a non-transitory computer-readable storage medium of claim 5 and is thereby rejected for like reasoning.
Regarding claim 22, claim 22 is a non-transitory computer-readable storage medium of claim 7 and is thereby rejected for like reasoning.
Regarding claim 23, claim 23 is a non-transitory computer-readable storage medium of claim 8 and is thereby rejected for like reasoning.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA N BIANCAMANO whose telephone number is (571)272-4280. The examiner can normally be reached M-F: 8:30am-5:00pm.
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/ALYSSA N BIANCAMANO/Examiner, Art Unit 3715
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