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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). A certified copy of the foreign application has been received.
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.
A substitute specification in proper idiomatic English and in compliance with 37 CFR 1.52(a) and (b) is required. The substitute specification filed must be accompanied by a statement that it contains no new matter. The specification as originally filed is replete with grammatical errors. The following is a non-exhaustive list of errors:
“That is, there is a case where a valid description cannot be obtained when knowledge of not a term included in a text read by the player itself but a term related to the term and a game screen being displayed is required.” (¶ 4)
“Further, the order of the various processes constituting the various flows described below is not the same as long as the contents of the processes do not contradictory.” (¶ 11)
“Note that the progress status of the video game in this example includes a status in which the player has selected moving image reproduction on a UI (moving image reproduction menu) or the like in which an event scene is switched back.” (¶ 21)
“That is, for example, a configuration may be adopted in which a screen is generated and transmitted to the terminal, or information for generating the screen may be transmitted to the terminal by the terminal.” (¶ 23)
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 1-5 are rejected under 35 U.S.C. 101 because they are 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.
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).
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 invention falls in one of the four statutory categories of invention. Claims 1-5 are directed to a system and non-transitory media, which are statutory categories of invention.
In step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the invention relates to a video game processing program and a video game processing system capable of providing more effective information to a player. Spec. ¶ 5. Exemplary claim 4 recites the following (with emphasis):
4. A video game processing system comprising:
a communication network;
a server;
a player terminal;
one or more processors configured to:
control progress of a video game according to an operation of a player;
display a game screen based on a progress status of the video game;
extract a description of a term corresponding to the progress status of the video game from a predetermined storage area based on information different from text displayed on the game screen; and
provide the extracted description of the term to a player.
The abstract idea is defined by the underlined portions of the exemplary claim, with substantially similar features found in independent claims 1 and 5. The claims are directed in pertinent part to playing a game and providing additional descriptive information about game elements to a player. Dependent claims 2-3 further define the abstract idea (e.g., by making the descriptive information available upon certain triggering events or automatically, etc.). The abstract idea may be viewed, for example as:
Collection, analysis, and display of available information in a particular field, as in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016);
An interface providing user display access of customized information, as in Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015); and
A method of organizing human activities, as discussed in Alice and Bilski v. Kappos, 561 U.S. 593 (2010).
The claimed abstract idea reproduced above is effectively an algorithm or set of instructions directed to playing a game and providing descriptive information about game elements. Such steps amount to observation, judgment, and collection of information that could be carried out mentally or with the use of pen and paper. The claims also include carrying out game actions relating to avatars used by human players, which suggests that the invention is directed to organizing human activities, as discussed in Alice and Bilski.
In Electric Power Group, the Federal Circuit found that merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas. The claims at issue were directed to gathering information to identify problems in an electric grid and to output that information to a user. The court found that such steps constitute an abstract idea based upon several previous court decisions, including Microsoft Corp. v. AT&T Corp., OIP Techs., Inc. v. Amazon.com, Inc., Content Extraction &Transmission LLC v. Wells Fargo Bank, Digitech Image Techs. LLC v. Elecs. For Imaging, Inc., CyberSource Corp. v. Retail Decisions, Inc. The Court also relied upon TLI Communications, Digitech, Bancorp Servs. LLC v. Sun Life, among others, to state that analyzing information by steps people go through in their minds are essentially mental processes within the abstract-idea category.
The abstract idea in the present case is similar in that it gathers information about game elements to present to game players. There is no asserted inventive concept in the improvement of computers as tools, but instead upon certain independently abstract ideas that use computers as tools. Such a finding suggests that the decisions in Enfish v. Microsoft, BASCOM Global Internet v. AT&T Mobility LLC, and McRO, Inc. v. Bandai Namco Games America do not apply here. Therefore, under Step 2A prong 2, 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 communication network, a server, a player terminal, one or more processors and a medium storing instructions 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 features do not meaningfully limit the abstract idea because they encompass generic computer implementation (e.g., a computing device or server) as well as other well-understood, routine and conventional devices (e.g., smart phone, computer network, etc.) that also amount to extra-solution activity.
The disclosure admits that the claimed player terminals may be a mobile phone terminal, PDA (Personal Digital Assistants), a mobile game apparatus, various communication terminals, a personal computer, etc. Spec. ¶ 30. The disclosure also admits that the communication network may simply be the Internet. Id. at ¶ 13. The disclosure only describes the server in generic and functional terms. Id. at ¶¶ 12-19. This indicates that generic and conventional components that are well known in the art may be used to carry out the abstract idea. The claims do not purport to improve the functioning of the computerized devices.
Each of the above elements are construed as extra-solution activity because each one merely implements the abstract idea without providing any substantive limitation on the abstract idea itself. A claim is not meaningfully limited if it contains only insignificant extra-solution activity, which includes any “well-understood, routine, conventional activity, previously engaged in by those in the field” as well as “steps that must be taken in order to apply” the abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014).
The Supreme Court in Alice found that claim recitations of a “data processing system” with a “communications controller” and “data storage unit” are purely functional and generic. 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.” The Court concluded that “[b]ecause 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.” The same conclusion is reached with respect to the claims of the instant invention. 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. 208 (2014).
Claim Rejections - 35 USC § 102
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0080334 to Ooya (hereinafter Ooya).
Regarding claims 1, 4, and 5, Ooya teaches a video game processing system comprising:
a communication network (e.g., communication network 3 in ¶ 38);
a server (e.g., a server in reference claim 19 and/or game apparatus 1 in ¶ 28);
a player terminal (e.g., a portable game apparatus 2 in ¶ 28 and/or game apparatus 1 in ¶ 28);
one or more processors (e.g., control section 11a and/or 11b in Figs. 2-3) configured to:
control progress of a video game according to an operation of a player (e.g., a player progresses a game while operating the game apparatus 1 in ¶ 29);
display a game screen based on a progress status of the video game (e.g., display the video game as it is progressed, as described in ¶ 29);
extract a description of a term corresponding to the progress status of the video game from a predetermined storage area based on information different from text displayed on the game screen (e.g., when a player character encounters an opponent character, an opponent character ID is transmitted to the portable game apparatus 2 as game information in ¶ 30; the information is in addition to what is shown on the game screen, and is provided as a guide or secret story for the game, as can be seen in at least Fig. 6 and ¶ 62); and
provide the extracted description of the term to a player (e.g., the portable game apparatus 2 displays information on a status of the opponent character corresponding to the received opponent character ID, information on obtainable items after the completion of a virtual battle, or the like in ¶ 30).
Regarding claim 2, Ooya teaches wherein the program, when executed, causes the server to further perform:
displaying a moving image that is reproduced regardless of an operation of the player (e.g., the content-related information display processing is automatically started together with the progress of the game in ¶ 46, which is in contrast to the case in which the player’s operation input serves as the trigger for starting the content-related information, also described in ¶ 46; see also ¶ 56 describing information that is automatically provided to help the player);
extracting a description of a term corresponding to a reproduction status of the moving image from the predetermined storage area (e.g., the portable game apparatus 2 displays information on a status of the opponent character corresponding to the received opponent character ID, information on obtainable items after the completion of a virtual battle, or the like in ¶ 30; see also Fig. 6); and
providing at least a part of the extracted description of the term to the player when receiving a description request from the player (e.g., according to player inputs for desired information types, as shown in at least Fig. 7).
Regarding claim 3, Ooya teaches wherein the program, when executed, causes the server to further perform extracting a description related to a position of the player or a character operated by the player in a virtual space from the predetermined storage area (e.g., the predetermined condition for transmitting information may be a case in which a player character and an opponent character encounter each other and start a virtual battle, as discussed in ¶ 45).
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.
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.
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