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
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/28/24 was acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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.
In the instant application, claim(s) 1-2, 9-10 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Claim(s) 1-2, 9-10 is/are drawn to at least one of the four statutory categories of invention (i.e. process, machine, manufacture, or composition).
Step 2A:
However, claim(s) 1-2, 9-10 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
For instance, regarding independent claim(s) 1, 9, 10,
Prong 1 analysis:
The limitations of “generating a game medium group indicating a group of game media selected from among a plurality of game media; and generating and displaying identifying image information indicating image information that includes game medium identification information associated with each of the game media, the game medium identification information concerning an individual game media constituting the game medium group, and communication connection information for communicatively connecting to a particular communication destination in a communication network”, are considered to fall within the certain methods of organizing human activity grouping (managing personal behavior, rules). The mere nominal recitation of generic computer elements does not take the claim out of the methods of organizing human activity grouping. Thus, the claim(s) recites an abstract idea.
Furthermore, dependent claims 2 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they are merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Prong 2 analysis:
The above-identified abstract idea is not integrated into a practical application under the 2019 PEG because the additional elements “a non-transitory computer readable medium storing a program, a computer, an information processing system”, are generically recited computer elements that do not improve the functioning of a computer, or any other technology or technical field. Nor do these additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above is not integrated into a practical application under the 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under the 2019 PEG because the claimed method and system merely implements the above-identified abstract idea using rules (e.g., computer instructions) executed by a computer. The claimed elements are recited at a high level of generality, and amounts to mere data gathering and data transmission, which is a form of insignificant extra-solution activity. Each of the additional limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. As such, the claim is directed to the abstract idea.
Step 2B:
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, in view of Berkheimer, the recited additional elements are considered as conventional activity. For instance, Inagawa et al. (2014/0295973) teaches a card game that includes the recited additional elements (Fig 1, ¶¶0021, 0027, 0033, 0035-0039).
In addition, with regards to dependent claims, the courts have recognized the computer functions as well‐understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
For instance, regarding claims 1-2, 9-10, each claim describes physical or software elements that provide a generic environment in which to carry out the abstract idea, which is similar to the conventional activity or as insignificant extra-solution activity of selecting information, based on types of information, for collection, analysis and display in EPG, gathering, receiving and transmitting data in Symantec, TLI, OIP Techs., buySAFE, and performing repetitive calculation in Flook, Bancorp.
Therefore, claim(s) 1-2, 9-10 is/are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
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) 1-2, 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kurabayashi (2019/0050489).
Re Claim 1,
Kurabayashi discloses a non-transitory computer readable medium storing a program causing a computer to execute (Fig 1-3, 5, ¶¶0036, 0042, 0055-0057, 0232-0233):
generating a game medium group indicating a group of game media selected from among a plurality of game media (Fig 6-7, ¶¶0059-0060, 0081, 0083-0084, 0112, 0124, 0137; a user can create a deck of cards, i.e., a game medium group, to share between devices, further, a deck is data indicating a combination of a plurality of cards used in the game, i.e., a plurality of game media); and
generating and displaying identifying image information indicating image information that includes game medium identification information associated with each of the game media, the game medium identification information concerning an individual game media constituting the game medium group, and communication connection information for communicatively connecting to a particular communication destination in a communication network (Fig 4, 6-9, ¶¶0101, 0103, 0110, 0112-0114, 0124-0125, 0128-0133; a group of 40 cards selected from 10,000 kinds of cards is organized as a deck, each card is represented as a box to which a number has been assigned, i.e., game medium identification information, further, a code is generated and displayed, wherein deck information can be accessed via a URL, i.e., communication connection information).
Re Claim 2,
Kurabayashi discloses generating and displaying, when displaying the game medium group, the identifying image information corresponding to the game medium group to be displayed (Fig 4, 6-9, ¶¶0101, 0103, 0110, 0112-0114, 0124-0125, 0128-0133).
Re Claims 9, 10,
Claims are substantially similar to claim 1. See claim for rejection.
Re Claim 11,
Claim is similar to claim 1 and further adds communicatively connecting to, in response to reading of the identifying image information by means other than a game application (Fig 4, 6-9, ¶¶0033, 0065, 0101, 0103, 0110, 0112-0114, 0124-0125, 0128-0133, 0149-0153; the deck configuration information can be share by using the code via various communication media such as SNS on another device),
the second computer based on the communication connection information included in the identifying image information, the second computer being configured to execute: generating and displaying the game medium group composed of the game media corresponding to the respective items of the game medium identification information included in the identifying image information (Fig 4, 6-10, ¶¶0033, 0065, 0071, -0073, 0101, 0103, 0110, 0112-0114, 0124-0125, 0128-0133, 0149-0153, 0173-0174; a plurality of cards are included in the deck configuration, wherein the deck configuration can be generated and displayed on a second device via a designated URL).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kurabayashi (2019/0050489) in view of Reeves et al. (2021/0283510).
Re Claims 3, 4,
Kurabayashi discloses all limitations as set forth above but is silent on acquiring information at a predetermined timing. However, Reeves teaches updating the playing activity information at predetermined time intervals, i.e., acquiring information at a predetermined timing (¶0032). Reeves further teaches such a configuration maintains a player’s interest in the game (¶0003). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the teaching of Reeves into the game system of Kurabayashi in order to maintain a player’s interest in the game.
Allowable Subject Matter
Claims 12-13 are allowed.
Claims 5-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/JASON T YEN/Primary Examiner, Art Unit 3715