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 .
Response to Amendment
This is in response to the amendments/arguments filed on 4/2/26. Claims 1 – 20 are pending in the current application.
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.
Step 1: It must be determined whether the invention falls in one of the four statutory categories of invention. Claims 1 – 10 are directed towards a system, (machine), and claims 11 – 20 are directed towards a method, (process), which are a statutory categories of invention.
Step 2a:
Prong 1: It must be determined whether the invention is directed to judicially recognized exception. Claim 1 is analyzed below with limitations indicating recitations of an abstract idea.
A gaming system for rewarding users of an online game based on cooperative gameplay among multiple users, the gaming system comprising: a memory; and game server, the game server comprising: one or more processors configured by machine-readable instructions to: determine a first amount of cooperative gameplay engaged in by a first user, wherein the first amount of cooperative gameplay is based on a first amount of time spent by the first user during the cooperative gameplay in the online game with a first group of users; determine a first reward, wherein determination of the first reward is based on the first amount of cooperative gameplay without regard to whether the first user or the first group of users is successful in achieving any particular game objectives; and reward the first user by providing the first reward to the first user.
The abstract idea is defined by the underlined portions exemplary claim 1, with substantially similar features found in claim 11. Dependent claims 2 – 10 and 12 - 20 further define the abstract idea or relate to the implementation of the abstract idea. The abstract idea is defined in at least the following grouping below:
Certain methods of organizing human activity (managing personal behavior)
Mental processes (observation, evaluation, judgment)
The claims are directed towards an abstract idea of managing personal behavior which falls into the category of organizing human activity, (See MPEP 2106/04(a)(2)(II)(C)). More specifically, the claimed invention recites a gaming system that executes a video game where players cooperate to achieve game objectives. Controlling a video game to allow players to play cooperatively represents managing personal behavior. This also represents following rules/instructions that define how the game is conducted.
The claims are also directed towards a series of steps which can practically be performed by one or more human, which fall into the category of mental processes, (See MPEP 2106.04(a)(2)(III)). More specifically, the claimed invention recites a gaming system that executes a video game where players cooperate to achieve game objectives and determine the amount of cooperative gameplay and determine a reward based on the amount of cooperative gameplay. The claims recite instructions for providing a game with these features. Here, a human can observe the amount of cooperative gameplay and determine an award associated with the cooperative gameplay. Therefore, since the claimed invention can practically be performed in the human mind, it represents an ineligible abstract mental process.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
The claims recite a generic server and memory along with instructions that generates and presents a video game to players, wherein the players play cooperatively to achieve game objectives, which is viewed as no more than instructions to implement a judicial exception.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2b: It must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception.
The claim language does recite a server and memory, however, viewed as a whole, these additional elements are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Viewing the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Double Patenting
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 timewise 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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,998,848.
Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are drawn towards the system and method claim versions of the parent 11,998,848, except the current claims reward a single user, while the parent claims reward a group of user. Therefore the current claims are a broader version of the parent claims regarding this feature, as shown in table below. Independent claim 11 includes similar language to that of independent claim 1, wherein dependent claims 2 – 10 and 12 – 20 include identical language as the dependent claims in the parent 11,998,848. Therefore the claims are not patentably distinct.
Pending Claim 1:
Patented Claim 1:
1. A gaming system for rewarding users of an online game based on cooperative gameplay among multiple users, the gaming system comprising: a memory; and game server, the game server comprising: one or more processors configured by machine-readable instructions to: determine a first amount of cooperative gameplay engaged in by a first user, wherein the first amount of cooperative gameplay is based on a first amount of time spent by the first user during the cooperative gameplay in the online game with a first group of users; determine a first reward, wherein determination of the first reward is based on the first amount of cooperative gameplay without regard to whether the first user or the first group of users is successful in achieving any particular game objectives; and reward the first user by providing the first reward to the first user.
1. A gaming system for rewarding users of an online game based on cooperative gameplay among multiple users, the gaming system comprising: a memory; and game server, the game server comprising: one or more processors configured by machine-readable instructions to: determine a first amount of cooperative gameplay engaged in by a first group of users, wherein the first amount of cooperative gameplay is based on a first amount of time spent by the first group of users during the cooperative gameplay in the online game; determine a first reward, wherein determination of the first reward is based on the first amount of cooperative gameplay without regard to whether the first group of users is successful in achieving any particular game objectives; and reward the first group of users by making the first reward made available to the first group of users.
Claim Rejections - 35 USC § 102
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.
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 – 20 are rejected under 35 U.S.C. 102(a) as being anticipated by Guase et al. (U.S. 2014/0148230).
Regarding claims 1 and 11, Guase discloses a gaming system and method for rewarding user of an online game based on cooperative gameplay among multiple users, (“Milestones 214 in community progress bar 210 define special locations, that when reached by the group, cause the game to reward the players”, par. 0050), the gaming system comprising a memory, (“a non-transitory memory”, par. 0011), and a game server, the game server comprising one or more processors configured by the machine-readable instructions, (“a server includes a processor, and a non-transitory memory in communication with the processor. The non-transitory memory includes program instructions for a game manager”, par. 0011), to determine a first amount of cooperative gameplay engaged in by a first user, wherein the first amount of cooperative gameplay is based on a first amount of time spent by the first user during the cooperative gameplay in the online game with a first group of users, (“In one embodiment, the players have a predetermined amount of time (e.g., 30 seconds, although other periods are also possible) to fight the dragon”, par. 0054), wherein the Examiner views the predetermined amount the players have to defeat an enemy character, (dragon), as being equivalent to determining an amount of cooperative gameplay based on an amount of time. Guase further discloses determining a first reward, wherein determination of the first reward is based on the first amount of cooperative gameplay without regard to whether the first user or the first group of users is successful in achieving any particular game objectives, and reward the first user by providing the first reward to the first user, (“In one embodiment, the creator of the team challenge gets game rewards for starting the team challenge”, par. 0093), wherein the Examiner views the creator of the team challenge getting game rewards for starting a team challenge as being equivalent to determining a first reward for a first user based cooperative gameplay without achieving any game objectives and providing the reward to the first user.
Regarding claims 2 and 12, Guase discloses wherein the one or more processors are configured by machine-readable instructions such that determination of the first amount of cooperative gameplay is made independent from achievement and/or successful accomplishment of any particular game objectives in the online game by any users in the first group of users, (“in another embodiment the player gets an additional reward if the friend invited joins the team challenge”, par. 0102).
Regarding claims 3 and 13, Guase discloses wherein the first amount of cooperative gameplay is determined based on amounts of cooperative activity by the first user towards one or more particular game objectives, (“As players make progress in the team challenge, party points are awarded to the players”, par. 0099).
Regarding claims 4 and 14, Guase discloses wherein the first amount of cooperative gameplay is further determined based on amounts of cooperative activity by the first group of users in the online game as a whole, (“As players make progress in the team challenge, party points are awarded to the players”, par. 0099).
Regarding claims 5 and 15, Guase discloses wherein the first amount of cooperative gameplay is cumulative over a period of time, (“As players are active in the game, the team challenge bar 608 fills up. Therefore, as players play in the gambling game, the progress made by betting in the gambling game translates into progress made in the community progress bar”, par. 0100), wherein the Examiner views the players filling up the challenge as they progress through the game as being equivalent an amount of cooperative gameplay being cumulative over a period of time.
Regarding claims 6 and 16, Guase discloses wherein the period of time is the entire in-game life of the first user or a sliding window of time, (“the fight with the boss is a fight that encompasses one or more battles, where each battle is performed at different point in time, such as every time the community progress bar 210 (see FIG. 2A and the corresponding description below) is filled by the community”, par. 0045), wherein the Examiner views the filling of the progress bar as being equivalent to a game life of the user.
Regarding claims 7 and 17, Guase discloses wherein the first amount of cooperative gameplay is determined based on time spent by the first user in cooperative activities, (“As players are active in the game, the team challenge bar 608 fills up. Therefore, as players play in the gambling game, the progress made by betting in the gambling game translates into progress made in the community progress bar”, par. 0100), wherein the Examiner views the players filling up the challenge as they progress through the game as being equivalent an amount of cooperative gameplay based on time spent.
Regarding claims 8 and 18, Guase discloses wherein the first amount of cooperative gameplay is determined further based on at least one of number of sessions in which the first user participated in cooperative activities, number of cooperative attempts at achieving a particular game objective, and number of times participating in a given cooperative activity, (“other types of measurements for the team challenge are also possible, such as winning a certain amount of virtual currency, performing certain community tasks (e.g., defeating the dragon) a certain number of times”, par. 0094).
Regarding claims 9 and 19, Guase discloses wherein the first reward includes at least one of new quests, new map regions, new weapons, new technology, new skills, new troupes, new mounts, and new power-ups available for purchase, (“the outcome in the gambling game may result in a plurality of operations in the adventure game, such as advancing on the road, traveling in different directions in a game map, unlocking new game areas, obtaining rewards, obtaining new assets, obtaining additional game currency for the adventure game”, par. 0037).
Regarding claims 10 and 20, Guase discloses wherein the first reward is not available to individual ones of the first group users for solo gameplay, (“In one embodiment, the creator of the team challenge gets game rewards for starting the team challenge”, par. 0093), wherein the Examiner views only the creator of receiving an award for creating the team challenge as being equivalent to said reward not being available those of the first group.
Response to Arguments
Applicant’s arguments with respect to the double-patenting rejection of claims 1 - 20 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of double-patenting rejection is made in view of U.S. Patent 11,998,848.
Applicant's arguments filed 4/2/26 have been fully considered but they are not persuasive. Regarding claims 1 – 20, Applicants argue, with respect to the 101 rejection of claims 1 – 20, that “the claims are patent-eligible under 35 U.S.C. § 101, and the rejection should be withdrawn”. More specifically, it is argued that the claim language involving rules of a game is erroneous. The Examiner respectfully disagrees. The claims are directed towards a video game where players cooperate as a group to, wherein a reward is given based on the size of the group of players. This clearly represents game rules that define how the game is conducted, which falls into the category of organizing human activity. The claims allow a player or group of players to earn a reward based on certain behaviors during the game. Such transactions relate to the sort of organizing human activities discussed in Bilski and Marco Guldenaar, wherein when a player of the game fulfils certain obligations, (reward for an amount of cooperative gameplay), he may be rewarded, (Bilski v. Kappos, 561 U.S. 593 (2010) and Marco Guldenaar Holding B.V., 911 F. 3d 1157). Therefore, the Examiner maintains that claims 1 – 20 stand rejected under 35 U.S.C. 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC M THOMAS whose telephone number is (571)272-1699. The examiner can normally be reached 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at 571-272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.M.T/Examiner, Art Unit 3715
/JUSTIN L MYHR/Primary Examiner, Art Unit 3715
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