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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 an abstract idea without significantly more.
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.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claims fall into one of the four statutory categories of invention. The claimed invention is directed to a system, method, and computer readable medium, which fall within the statutory categories. However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. The specification states that the “present disclosure relates to display control for information about a player character present outside a screen.” Spec. ¶ 1. More particularly, representative claim 1 recites the following (with emphasis):
1. One or more computer-readable non-transitory storage media having stored therein a game program that causes one or more processors of one or more information processing apparatuses to:
move a first player object in a virtual space in accordance with an operation input by a player;
control a virtual camera for generating a game image, in association with a position of the first player object;
when a second player object operated by another player is present at a position outside a range of the game image in the virtual space, generate a 2P icon indicating the second player object so that the 2P icon is displayed at a position that is in the game image and according to the position of the second player object; and
in generating the 2P icon, when the second player object is in a first state,
if a distance to the position of the second player object from a reference position for the first player object is less than a predetermined distance, generate, instead of the 2P icon or in addition to the 2P icon, a state icon indicating the first state so that the state icon is displayed at a position that is in the game image and according to the position of the second player object, and
if the distance to the position of the second player object is not less than the predetermined distance, generate the 2P icon so that the 2P icon is displayed in the game image without generating the state icon.
The underlined portions of representative claim 1 generally encompass the abstract idea, with substantially identical features found in claims 19 and 20. In essence, the claims provide a set of rules to a game with concomitant visual outcomes for the second player’s icon (i.e., the “2P icon”) that vary according to the second player’s inputs. The dependent claims further define the abstract idea by modifying rules of the game (e.g., an “in-game effect” is applied depending on player positions, a game over or restart of play occurs under certain player conditions such as distance between players, the 2P icon is changed according to certain player actions, etc.). The abstract idea may be viewed, for example, as:
a fundamental economic practice (e.g., rules for conducting a game) as discussed in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014), In re Smith, 815 F.3d 816 (Fed. Cir. 2016), and In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018),
a method of managing a game similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (non-precedential);
a set of game rules similar to increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results, as discussed in Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342 (Fed. Cir. 2021); and/or
a method of organizing human activities (e.g., allowing a human player to play a game according to rules of the game) as discussed in Bilski v. Kappos, 561 U.S. 593 (2010) and Alice Corp. v. CLS Bank.
The recited steps of conducting a game in the instant claims relate to the “fundamental economic practice” of rules for conducting a game (see Smith, Marco Guldenaar, and Alice). When the player of the game fulfils certain obligations (e.g., maintaining a certain distance between players), he may be rewarded with one or more in-game effects. Based on the reasoning in Smith and Marco Guldenaar, the recited steps of conducting a game in the instant claims relate to the “fundamental economic practice” of rules for conducting a game. The abstract idea is also similar to that of Planet Bingo, in which a method of managing a bingo game was found to be an abstract idea. Though the instant claims are not limited to bingo games, they encompass the management of games in a similar way. The abstract idea is also comparable to the game rules presented on gaming machines in Bot M8 LLC v. Sony Corp. of America, in which rewards could be increased or decreased based on aggregating previous game outcomes played on the gaming machines. The Bot M8 decision also found that such abstract idea is “more broadly the difficulty[] of a multiplayer game.” The game claimed here is comparable to that of Bot M8 because the instant claims relate to a multiplayer game that becomes more or less difficult based on movements within the virtual environment. Finally, the claims allow humans to play a game based on certain behaviors (e.g., following rules relating to operational inputs). Such transactions are akin to the sort of organizing of human activities discussed in Bilski (and shadow accounts in Alice).
Under prong 1, the above analysis demonstrates that the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity. Under prong 2, the instant claims do not integrate the abstract idea into a practical application because they merely provide instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea, add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. While certain physical elements (i.e., elements that are not an abstract idea) are present in the claims, such features do not effect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (only generic gaming components), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any 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(a)–(c), (e)–(h). Therefore, the claims are 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. The claims encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se: a memory, one or more processors, at least one display, and program instructions stored on a memory to carry out 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. These elements are generic computer components, which the courts have repeatedly found to be insufficient in saving a claim from abstraction. Such features also represent extra-solution activities and/or an attempt to apply the abstract idea in a field of use (e.g., on a computerized system) rather than any meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea. The specification admits that the gaming systems on which the invention is implemented include well-understood, routine and conventional devices, including that the “information processing terminal 3 is, for example, a smartphone, a stationary or hand-held game apparatus, a tablet terminal, a mobile phone, a personal computer, a wearable terminal, or the like.” Spec. ¶ 44.
Taking the claimed elements individually yields no difference from taking them in combination because each element simply performs its respective function as discussed above. The claims do not purport to improve the functioning of a computer itself, nor do they effect an improvement in any other technology or technical field. Instead, the additional features merely amount to an instruction to apply the abstract idea using generic, functional, and conventional components well-known in the art. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Therefore, the claims 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. 208 (2014).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David 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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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715
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