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 .
DETAILED ACTION
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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claims are directed to the abstract idea of mental processes and/ or certain methods of organizing human activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter
More specifically, regarding Step 1, of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a machine, process, and/or an article of manufacturer, which are statutory categories of invention.
Step 2a – Prong 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Claims 1-22 recite an abstract idea falling under the category of "certain methods of organizing human activity" (e.g., managing personal interactions or commercial activities) or, alternatively, basic data management concepts that could be analogized to mental processes performable by a human.
The core of Claim 1 is providing content in one mode, receiving a request to switch modes, and starting the session in the new mode on another device. This is akin to a human coordinator handing off a task (e.g., "switch to photo taking on your phone while I continue the game").
Claim 2 is even broader, generalizing to any "first mode" and "second mode," essentially describing session handoff or synchronization based on an initiation event. This resembles abstract ideas in cases like Electric Power Group v. Alstom (Fed. Cir. 2016) (collecting, analyzing, and displaying data) or Bot M8 v. Sony (Fed. Cir. 2021) (adjusting game difficulty based on aggregate data), where high-level data handling in gaming was deemed abstract. It's not a mathematical concept or mental process per se, but the lack of technical specificity makes it abstract, similar to ineligible gaming claims in In re Smith (Fed. Cir. 2016) (rules for wagering) or In re Marco Guldenaar Holding (Fed. Cir. 2018) (dice game rules).
Step 2a – Prong 2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition - see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP 2106.05(c)
-Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea- see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h)
Claims 1-22 do not integrate the abstract idea into a practical application, as they lack elements that improve computer functionality, solve a specific technological problem, or apply the idea in a meaningful way beyond generic implementation.
Additional elements (e.g., "client devices," "providing gaming content," "receiving an indication," "initiating the game session") are recited at a high level and merely use computers as tools to automate the abstract idea (e.g., "apply it on devices"). There is no description of how the mode switch is technically achieved, such as specific network protocols, data structures, or hardware improvements.
No transformation of data, use of a particular machine, or other indicia of integration (per USPTO MPEP 2106.05). The "photo mode" or "second mode" suggests a potential gaming improvement (e.g., seamless multi-device play), but it's not claimed with enough detail to tie it to a technical solution, per the 2024 USPTO AI/Software Guidance (e.g., claims must provide a "particular solution" rather than a general outcome).
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above.
Considering the elements individually and as an ordered combination, they do not amount to "significantly more" than the abstract idea.
The elements (e.g., client devices associated with a user, providing/receiving data, initiating sessions) are well-understood, routine, and conventional in computing and gaming (e.g., basic client-server interactions). They add only insignificant extra-solution activity, like data gathering and output. No inventive programming, unconventional arrangement, or non-generic features are claimed. The ordered steps are logical but not transformative.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
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 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) 1-4, 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Son (US 2016/0147498 A1)
1. Son discloses a computer-implemented method, comprising:
providing gaming content for a game session to a first client device associated with a user, the game session operating in a gaming mode (game console/device, e.g., TV, displays primary game scene), [0032];
receiving an indication that the first client device has requested the game session to enter a photo mode (event trigger or user selection on main device initiates sub-mode on secondary device, including capture/zoom for partial scenes, interpreted as photo mode per spec; e.g., selecting region for zoom/filter), [0106]-[0110]); and
based on the indication, initiating the game session on a second client device associated with the user, the game session on the second client device operating in the photo mode (secondary device, e.g., smartphone, joins and initiates synchronized sub-session in capture/zoom mode, wherein the sub-device displays captured/zoomed partial scene with adjustments), [0103], [0127], [0132]-[0133], [0164], Figs. 9-11.
2. Son discloses a computer-implemented method, comprising: providing gaming content for a game session to a first client device associated with a user, the game session operating in a first mode of operation; receiving an indication that the game session on the first client device has initiated a second mode of operation; and based at least in part on the indicated initiation of the second mode, initiating the game session in the second mode on a second client device associated with the user as similarly discussed above.
3-4. Son discloses the method of claim 2, further comprising providing, responsive to the game session initiating the second mode of operation, one or more interface elements in the game session on the first client device for connecting the second client device with the first client device and/or with a server streaming real-time content associated with the game session, wherein the one or more interface elements include a first interface element to be photographically captured by the second client device (i.e. camera on phone captures interface on the main display), (Fig. 9-10), [0132]-[0137].
12. Son discloses the method of claim 2, wherein initiating the game session on the second client device includes presenting content generated via the gaming application that is being displayed on a display of the first client device on a display of the second client device (Fig. 9-10), [0132]-[0137].
13-15. Son discloses a server, comprising: a network interface; one or more processors; and a memory storing a set of executable instructions, the set of executable instructions to manipulate the one or more processors to: provide gaming content for a game session to a first client device associated with a user, the game session operating in a first mode of operation; receive an indication that the game session on the first client device has initiated a second mode of operation; and based at least in part on the indicated initiation of the second mode, initiate the game session in the second mode on a second client device associated with the user as similarly discussed above (Fig. 1).
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 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) 5, 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Son (US 2016/0147498 A1) as applied above and further in view of Briggs (US 2012/0190455 A1).
5, 16. Son discloses the invention above, but does not expressly disclose wherein the first interface element is one or more of a group that includes a machine-readable optical label, a barcode, and a Quick Response (QR) code; however, machine-readable optical labels (e.g., QR/barcode) are obvious variants for device pairing as is common in multi-device systems for visual linking as evidenced by Briggs [0027]. It would have been obvious to a person of ordinary skilled in the art to modify Son with Brigg’s QR code as a simple substitution under KSR and would yield predictable results for connecting and/or communicating between two devices.
Claim(s) 6, 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Son (US 2016/0147498 A1) as applied above and further in view of Cotter (US 2016/0243450 A1).
6, 17. Son discloses the method of claim 2, wherein providing the game session on the first client device includes streaming real-time content associated with the game session from one or more servers to the first client device [0063], [0065], and wherein initiating the game session on the second client device includes real-time content associated with the game session through a network communication for synchronization of the two devices [0128]-[0129], but does not expressly disclose server based streaming to both devices simultaneously; however such technique of streaming to both devices are notoriously well known in the art as evidenced by Cotter (Fig. 8f). It would have been obvious to a person of ordinary skilled in the art to modify Son with Kohler and would have been motivated to do so to enable efficient, low latency distribution of real time game content across devices, improving session continuity and resource sharing in multi-device gaming environment.
Claim(s) 7-11, 18-22 are rejected under 35 U.S.C. § 103 as being unpatentable over Son (US 2016/0147498 A1).
7, 18. Son discloses the invention above, wherein the first mode comprises user gameplay via a gaming application (via game console to be displayed on TV), and wherein the second mode comprises a photographic mode for capturing one or more images from the user gameplay (it is known that a user can take a screenshot on their smartphone via simultaneously pressing power and a volume button). A person of ordinary skilled in the art would recognize that the smartphone of Son is capable of performing such screenshot for record keeping or sharing with others.
8, 19. Son discloses the invention above, wherein operations in the second mode include adjusting one or more aspects of a virtual camera in a game world, [0110], [0132]-[0137].
9, 20. Son discloses the invention above, wherein, the one or more aspects include at least one of a group that includes a position of a virtual camera in the game world, an orientation of the virtual camera in the game world, and a lighting parameter for the virtual camera in the game world, [0110], [0132]-[0137].
10, 21. Son discloses the invention above, wherein adjusting the one or more aspects of the virtual camera includes adjusting the position of the virtual camera based on a position of the second client device [0044], [0057].
11, 22. Son discloses the invention above, wherein adjusting the one or more aspects of the virtual camera includes adjusting the orientation of the virtual camera based on an orientation of the second client device [0044], [0057].
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached USPTO form PTO-892.
Filing of New or Amended Claims
The examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See Wertheim, 541 F.2d at 263, 191 USPQ at 97 (“[T]he PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.”). However, when filing an amendment an applicant should show support in the original disclosure for new or amended claims. See MPEP § 714.02 and § 2163.06 (“Applicant should specifically point out the support for any amendments made to the disclosure.”). Please see MPEP 2163 (II) 3. (b)
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SENG H LIM whose telephone number is (571)270-3301. 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 L. 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.
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/Seng H Lim/Primary Examiner, Art Unit 3715