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
2. 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.
3. Claims 1-14 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
4. Step 1
Claims 1-14 are directed to a computer medium/device meeting the requirements for Step 1.
5. Step 2A Prong 1
Independent Claim 1 (and similarly for Claim 12) recites consumption of a paid item and granting a player a game reward which is an abstract idea of the abstract rules for playing a game and a certain method of organizing human activity:
6. Step 2A Prong II
The abstract idea is not integrated into a practical application. According to 2019 PEG, a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
Here, a computer and medium are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. Applicant’s Specification does not disclose that the computer or memory with instructions are directed to a technological solution to a technological problem that “overcome some sort of technical difficulty.” citing ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 768 (Fed. Cir. 2019). In fact, Applicant discloses that the claims are executed on a terminal device which can be a tablet, personal computer, mobile phone, and other such devices (Spec. [0025]).
Consequently, these devices and programming are viewed as nothing more than an
attempt to generally link the use of the judicial exception to the technological environment of a computer or as a means to automate the steps. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
What remains is storing possessed item information in memory and removal of the information once the item is consumed by the player which is extra-solution activity. Even when these limitations are viewed in combination, the additional elements in this claim do no more than automate the steps needed to be performed, using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Latric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality). Accordingly, each claim, as a whole, does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. Thus, Claim 1, and similarly Claim 12, lack the eligibility requirements of Step 2 Prong II.
7. Step 2B
According to the 2019 PEG, in addition to the considerations discussed in Step 2A, an additional consideration indicative of an inventive concept (aka “significantly more”) is the addition of a specific limitation other than what is well-understood, routine, conventional activity in the field (MPEP 2106.05(d)). Conversely, an additional consideration not indicative of an inventive concept is simply appending well-understood, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
The storage and removal are well-known, routine, and conventional operations (See Court decisions cited in MPEP 2106.05(d)(II) indicate that it is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here) of storing and retrieving information in memory (MPEP 2106.05(d)(II)(iv) as well as recording a customer’s order (MPEP 2106.05(d)(II)(i). Accordingly, a conclusion that the step is well-understood, routine, conventional activity is supported under Berkheimer. Therefore, the limitations remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Claim 1, and similarly Claim 12, does not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. Thus, Claims 1 and 12 are ineligible.
8. Dependent Claims 2-11 and 13-14
Claims 2, 7-11, and 13-14 recite additional abstract rules or conditions of the game/reward or extra-solution information displaying. Claims 3-6 recite additional extra-solution storage of information particulars.
Claim Rejections - 35 USC § 112
9. 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.
10. Claims 3-6 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 3 recites “more” advantageous for the player yet this is a relative term and it is unknown to what standard is to be considered to assess what is advantageous and more advantageous. To advance prosecution more advantageous is construed as just advantageous. Appropriate attention is required.
Claim Rejections - 35 USC § 102
11. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
12. Claims 1-4, 6-8, 10, and 12 are rejected under 35 U.S.C. § 102 (a1)(a2) as being anticipated by JP 2020-171776 based on the translation of record filed 3/21/2024 (hereafter ‘776).
In Reference to Claim 1 and 12
‘776 discloses a non-transitory computer readable recording medium storing instructions for a computer that executes a game in which a player can acquire paid items by taking a purchase procedure, the instructions causing the computer to execute:
storing, in a storage, possessed item information including a paid item possessed by the
player and an expiration period of the paid item (Fig. 1 storage 22 [0011] for a lottery purchased for a fee with an expiration date [0102], see also memory 11 [0012] and program [0019] where the possessed lottery points are stored with the user information [0063]),
automatically consuming the paid item with a lapse of the expiration period and removing the paid item from the possessed item information in the storage (when the expiration date passes the lottery is consumed [0102]); and
upon automatically consuming the paid item, granting the player a reward related to the
game (when the fee is paid for a lottery with an expiration data has passed the player, the lottery is consumed and the player awarded a game medium where “When a lottery ticket with an expiration date is given at a lottery point that can be acquired free of charge. When the expiration date is passed, the lottery ticket is erased and a game medium such as a character is not given to the user, and even when the number of lottery points which can be acquired for a fee reaches a predetermined number, the expiration date is set. A lottery ticket (for example, may be set to be longer than an expiration date of a lottery ticket derived from a lottery point that can be acquired free of charge) may be given, and when the expiration date arrives, a lottery process may be automatically performed to give a game medium to a player.” [0102]).
In Reference to Claims 2 and 10
‘776 discloses that in a case of receiving a game medium of stamina the stamina does not have an expiration ([0095]). Examiner construes Claim 10 as rewards that are purchased when consumed in a game. According to ‘776, the reward is loyalty points that can be acquired when paid diamond items are consumed [0060].
In Reference to Claim 3
‘776 discloses storing player information (input of user identification information such as a login ID [0015] where the storage unit 131 stores user information 133 [0041]) and wherein in the case of receiving recovery stamina the stamina is a reward that is more advantageous for the player [0054, 0061, 0101, 0103]).
In Reference to Claim 4
‘776 discloses that the stamina upper limit may be increased [0067] by receiving a
reward of an increase in rank ([0081]).
In Reference to Claim 6
‘776 discloses a current stamina value for stamina consumed upon execution of a quest in the game ([0054] current value) and where using a stamina recovery unit 114 [0054] a reward of accumulating diamonds and consuming them increases the current stamina level ([0060-0061]).
In Reference to Claim 7
‘776 discloses there is a character lottery resulting in a reward of selecting a character from a plurality of characters and gives the character to the user ([0057]).
In Reference to Claim 8
‘776 discloses a free item of a ally character that can be consumed in the game in a same way as the paid item ([0057]).
In Reference to Claim 11
‘776 discloses increasing an amount of the reward in proportion to an amount of the automatically consumed paid item wherein the number of diamonds consumed is in a relationship or proportion when considering the difference between the current value and the upper limit value for stamina ([0075]).
Claim Rejections - 35 USC § 103
13. 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.
14. 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.
15. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
16. Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘776 in view of U.S. Pat. Pub. No. 20150269813 to Severance.
‘776 discloses the invention substantially as claimed. However, the reference does not explicitly disclose player information that includes indicating whether a player is a special player where the player has paid a fixed fee at specific intervals and the reward is the make the player a special member. Examiner construes the paid a fixed fee at specific intervals as a subscription. One of skill in the art would be aware of the teachings of Severance.
Severance discloses members pay a subscription (“In one embodiment, players can purchase subcriptions for game play. Subscriptions can allow a player to access the game according to established criteria, e.g., $20 allows six months of access to the game, $40 allows access for a year, etc. In another example, extra digital storage space can be offered for advanced players with payment of a monthly fee. In addition, Severance teaches of creating members with status as a special reward where “[I]n one embodiment, players can have the capability of purchasing items for their characters that can reflect their identity or status to other game players. For example, players can pay for a unique or expressive character outfit that they can show off to other game players. In another example, a player can purchase "abilities" or super powers which can be access-controlled virtual environments or layers that allow the player to experience the game in a new or unique way, or give them capabilities that other players may not have. [0050].
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way; and
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Here, it would require only routine skill in the art to modify the game of ‘776 with the subscription and status rewards of Severance in order to achieve the predictable result of increasing revenues for the game and robust asset options for the player. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
17. Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘776 in view of U.S. Pat. Pub. No. 2018/0211342 to Hoareau.
‘776 discloses the invention substantially as claimed. However, the reference does not explicitly disclose grants a larger amount of the free item than the automatically consumed paid item.
Examiner construes this limitation as a conventional business practice in commerce and in video gaming to encourage trial and loyalty but granting free items in greater quantities than paid items. One of skill in the art would be aware of this use in the teachings of Hoareau.
Hoareau teaches purchasing content that can be downloaded via user video game consoles ([0039, 0041, 0053]) and wherein content provides can employ different distribution models on a per item basis [0076] to include allowing unlimited free listening (in the case of music content) to encourage new listeners while limiting listening on other tracks to encourage new fans to purchase or share tracks. Also, unlimited free plays can be offered for the same item during a promotional period [0081] or that after purchase an item is unlocked for unlimited play of for a maximum number of plays ([0085]).
Here, it would require only routine skill in the art to modify the paid items of ‘776 with the unlimited free items of Hoareau in order to achieve the predictable result of encouraging new users and trial purchases. The Courts have held that the use of a known technique to improve similar devices (methods, or products) in the same way to be indicia of obviousness.
Conclusion
18. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
20. 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.
21. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached on (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/Primary Examiner, Art Unit 3715