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.
Claims 1 - 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. As summarized in the 2014 Interim Guidance on Patent Subject Matter Eligibility, examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant invention encompasses an apparatus (i.e., a machine) in claims 8-14 and a method performed by a video gaming device (i.e., a process) in claims 1-7 and 15-20.
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. Claims 1, for example, encompass a method and recites the following (with emphasis added):
A method comprising:
displaying, on a first area of a game screen, a plurality of actions out of a total plurality of actions selectable by a user, and a field area of the game screen in which a game item is arranged;
extracting, based on a selected action previously selected by the user, a specific action among the plurality of actions;
displaying, on a second area of the game screen different from the first area, the specific action; and
changing a parameter of the game item based on an action selected by the user from the plurality of actions displayed on the first area or the specific action displayed on the second area.
The underlined portions of claim 1 encompass the abstract idea, which includes in pertinent part is substantially encompassed by each of the claims (i.e., claims 2-20). The claimed abstract idea may be viewed, for example, as:
Collecting, displaying, and manipulating data (Int. Ventures v. Cap One Financial)
Generating a second menu from a first menu and sending the second menu to another location (Ameranth)
The claimed abstract idea reproduced above is effectively a method of collecting displaying and manipulating player data or game data. As can be seen, the game system is directed towards the displaying of a plurality of items as per a particular category and extracting or organizing the plurality of items according to each category and manipulating or executing a command based upon the plurality of items that have been organized. Similar to the decision of Int. Ventures v. Cap One Financial , “The resulting dynamic document, in turn, is nothing more than an interface for displaying and organizing this underlying data. These features, therefore, do not alter our conclusion that the claimed invention is directed to the abstract concept of collecting, displaying, and manipulating data of particular documents.” Therefore, the claim is directed to the judicially recognized exception of an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. Claims 1-20 encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s): a terminal device and circuitry. While the additional features are numerous, they comprise only “conventional steps, specified at a high level of generality,” which is insufficient to supply an “inventive concept” (see Ultramercial, Inc. v. Hulu, LLC). The features amount to limiting the use of an abstract idea “to a particular technological environment,” in this case the environment of gaming machines, which is not enough for patent eligibility (see Bilski v. Kappos). The features recite “[p]urely ‘conventional or obvious’ ‘[pre]-solution activity’ [which] is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law” (see Mayo), These features merely recite generic and conventional features of virtually all modern gaming machines. Thus, the claimed additional features are insufficient to supply an inventive concept to the abstract idea. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014).
Claims 8-20 are directed to a gaming device that perform the same method steps recited in claim 1 (substantially presented above). The Supreme Court found that claim recitations of a “data processing system” with a “communications controller” and “data storage unit” are purely functional and generic (Alice at 16). The Court further stated, “Put another way, the system claims are no different from the method claims in substance...The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea” (Alice at 16). The Court concluded that “because petitioner's system and media claims add nothing of substance to the underlying abstract idea, we hold that they too are patent ineligible under §101” (Alice at 17). The same conclusion is reached here with respect to non-method claims 8-20 of the instant invention, in that there is no meaningful difference between the machine and process claims in determination of patent eligibility. Therefore, because the claimed invention is recited in the form of a gaming device, without any significant addition to the substance of the underlying method claims, claims 8-20 are similarly patent ineligible under §101.
Double Patenting
3. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper time wise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
4. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10,603,592. Although the claims at issue are not identical, they are not patentably distinct from each other because they both describe a method and system comprising: displaying, on a first area of a game screen, a plurality of actions out of a total plurality of actions selectable by a user, and a field area of the game screen in which a game item is arranged; extracting, based on a selected action previously selected by the user, a specific action among the plurality of actions; displaying, on a second area of the game screen different from the first area, the specific action; and changing a parameter of the game item based on an action selected by the user from the plurality of actions displayed on the first area or the specific action displayed on the second area (see claim 1 of US Patent 10,603,592, showing displaying an area comprises a view where a first portion is included in the view and a second portion excluded from the view, which the examiner construes and interprets to teach a display and non-displayed area).
5. Claims 1-25 of the US Patent 10,603,592 discloses event element and limitation of the claims 1-20 of the present application. The present application’s claims appear to be broader in scope and is therefore an obvious variant thereof of US Patent 10,603,592.
This is therefore an obviousness-type double patenting rejection.
Claim Rejections - 35 USC § 102
6. 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.
7. 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.
8. Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Konno et al (US 2012/0113228).
Regarding claims 1, 8, and 15: Konno et al discloses a method comprising: displaying, on a first area of a game screen, a plurality of actions out of a total plurality of actions selectable by a user, and a field area of the game screen in which a game item is arranged (see figures 52, 53, 62,63,70,83, showing images that are controllable with inputs to make selections and control the virtual object in the image on the displays, where the plurality of actions selectable include upward, rightward, forward directions, etc); extracting, based on a selected action previously selected by the user, a specific action among the plurality of actions; displaying, on a second area of the game screen different from the first area, the specific action (see paragraph [0411], showing a user selects the imaging section to be used through a touch operation using the touch panel B13. When the information processing section B31 (the CPU B311) detects that the imaging section is selected, the information processing section B31 instructs one of the outer imaging section B32 or the inner imaging section B24 to shoot an image); and changing a parameter of the game item based on an action selected by the user from the plurality of actions displayed on the first area or the specific action displayed on the second area (see paragraph [0609], showing or example, when the virtual character C is caused to walk around the origin of the marker coordinate system, a display as if the virtual character C is walking around the marker image MKi is shown. The control of the movement of the virtual character C is realized by changing the position coordinates of the virtual character C at the origin or the vicinity of the origin of the marker coordinate system, and in a direction which is defined with reference to the plane including the marker image Mki (for example, at a position in a predetermined range in the Y-axis direction which is defined with reference to a direction on the X-Z plane in the marker coordinate system).
Regarding claims 2, 9, and 16: Konno et al discloses wherein in the extracting, when a predetermined condition is not met, a predetermined action is extracted as the specific action, and when the predetermined condition is met, based on the selected action, the specific action is extracted among the plurality of actions (see paragraph [0619], showing the image processing is ended, for example, when a condition for automatically ending the image processing is satisfied, when a condition for the game currently performing image processing to be over has been satisfied, when the user has performed an operation for ending the image processing, or the like. If not ending the image processing, the CPU C311 causes the processing back to step C52, and repeats the processes).
Regarding claims 3, 10: Konno et al discloses wherein the predetermined condition is a condition related to the selected action (see paragraph [0619], showing the image processing is ended, for example, when a condition for automatically ending the image processing is satisfied, when a condition for the game currently performing image processing to be over has been satisfied, when the user has performed an operation for ending the image processing, or the like. If not ending the image processing, the CPU C311 causes the processing back to step C52, and repeats the processes).
Regarding claims 4, 11, and 17: Konno et al discloses wherein in the extracting, when none of the total plurality of actions is selected by the user, a predetermined action is extracted as the specific action, and when at least one of the total plurality of actions is selected by the user, based on the selected action, the specific action is extracted among the plurality of actions (see paragraph [0619], showing the image processing is ended, for example, when a condition for automatically ending the image processing is satisfied, when a condition for the game currently performing image processing to be over has been satisfied, when the user has performed an operation for ending the image processing, or the like. If not ending the image processing, the CPU C311 causes the processing back to step C52, and repeats the processes).
Regarding claims 5, 12, and 18: Konno et al discloses further comprising displaying, on the game screen, the parameter of the game item (see figures 52, 53, 62,63,70,83, showing images that are controllable with inputs to make selections and control the virtual object in the image on the displays, where the plurality of actions selectable include upward, rightward, forward directions, etc).
Regarding claims 6, 13, and 19: Konno et al discloses wherein the game item includes a first representative game item belonging to a first group, and a second representative game item belonging to a second group, when a parameter of the first representative game item becomes a predetermined value, the second group wins a game, and when a parameter of the second representative game item becomes the predetermined value, the first group wins the game (see paragraph [1007], showing the setting means may set, when the sound inputted into the sound input device is recognized as a first sound, at least one selected from the group consisting of the display position, the orientation, and the display form of the virtual object, based on a first action to be performed with reference to the direction corresponding to the imaging target in the virtual world, and may set, when the sound inputted into the sound input device is recognized as a second sound, at least one selected from the group consisting of the display position, the orientation, and the display form of the virtual object, based on a second action to be performed with reference to the direction to the virtual camera in the virtual world. The image generation means may generate as the combined image an image obtained by superimposing the virtual world image on the shot image).
Regarding claims 7, 14, and 20: Konno et al discloses wherein in the field area, an area in which the game item is movable and an area in which the game item is not movable are displayed in different modes (see figures 52, 53, 62,63,70,83, showing images that are controllable with inputs to make selections and control the virtual object in the image on the displays, where the plurality of actions selectable include upward, rightward, forward directions, etc).
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Tanabe et al discloses gaming device, non-transitory storage medium, gaming method, and gaming system; Matsumaru et al discloses game device, method of controlling a game device, and non-transitory information storage medium.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADETOKUNBO OLUSEGUN TORIMIRO whose telephone number is (571)270-1345. The examiner can normally be reached Mon-Fri (8am - 4pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at (571)270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADETOKUNBO O TORIMIRO/Primary Examiner, Art Unit 3715