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 .
The Applicant’s amendment and argument received on 04/09/2026 has been considered. It is noted that claims 1,2,4-9, and 11-20 have been amended.
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, by circuitry of a game control apparatus, on a first area of a game screen, a part, but not an entirety, of a plurality of actions selectable by a user, each action of the plurality of actions executable by a game medium to change a corresponding parameter of a game, 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, by the circuitry of the game control apparatus and based on a selected action previously selected by the user from the plurality of actions, a specific action among the plurality of actions; displaying, by the circuitry of the game control apparatus, 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, by the circuitry of the game control apparatus, a parameter of the game corresponding to an action selected by the user from among the part of 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).
Response to Arguments
9. Applicant’s arguments, see Applicant Arguments/Remarks, filed 04/09/2026, with respect to the 35 USC 101 rejection have been fully considered and are persuasive. The 35 USC 101 rejection of claims 1-20 has been withdrawn.
Applicant's arguments filed 04/09/2026 with regards to the 35 USC 102 rejection have been fully considered but they are not persuasive. The Applicant argues that Konno et al fails to teach or suggest “Extracting, by the circuitry of the game control apparatus…”, the examiner disagrees. The examiner points out that as shown in the office action above, Konno et al explicitly teaches in paragraph [0427]:
“Any marker may be used so long as the position (the positions of four points) of the marker and the orientation of the marker can be recognized. Specifically, the information processing section B31 initially extracts a region, which is encloses by four line segments, from the image captured by the outer imaging section. B23, and obtains a pattern image inside the extracted region. Then, the information processing section B31 calculates the degree of similarity of pattern image data indicating the obtained pattern image to pattern image data previously stored in the external memory B44.”
Further paragraph [0623], also teaches the process of extracting based on selection of action:
“However, in another method, artificial landmarks are widely arranged and the positions of the landmarks extracted through image recognition of the shot image are additionally used to estimate the position and the orientation of the imaging apparatus. Further, in still another method, the position and the orientation of a camera which has shot an image is estimated by associating a two-dimensional characteristic point (edge, contour, or the like) on the shot image with a 3-dimensional position of a natural characteristic point.”, which the examiner construes and shows to teach the applicant’s argued claimed limitation of extracting, by the circuitry of the game control apparatus and based on a selected action previously selected by the user from the plurality of actions, a specific action among the plurality of actions.
Conclusion
10. 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.
11. 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
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