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 1-11 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 1-11 are directed to a system, apparatus, or method meeting the requirements for Step 1.
5. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 10 and 11), the following bolded steps recite an abstract idea of specifying and deciding which are mental processes:
Claims 1 and 11
1. A non-transitory computer-readable medium storing a video game processing program that, when executed, causes a server {player terminal} to perform:
specifying one or more terms that satisfy a search target condition in accordance with a progress of a video game from among a plurality of terms that appear in the video game;
deciding search information based on an operation of a player;
selecting a predetermined number of terms from among the specified one or more terms based on the search information; and
displaying the selected predetermined number of terms.
Claim 10
10. A video game processing system, comprising:
a communication network;
a server;
a player terminal; and
one or more processors configured to:
specify one or more terms that satisfy a search target condition in accordance with a progress of a video game from among a plurality of terms that appear in the video game;
decide search information based on an operation of a player;
select a predetermined number of terms from among the specified one or more terms based on the search information; and
display the selected predetermined number of terms.
Here, the limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the human mind which is a mental process.
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, the computer-readable medium, communication network; server; and player terminal 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 these elements 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).
According to Applicant’s specification:
“The storage device 103 has a function as a storage medium for storing various kinds of information. The configuration of the storage device 103 is not particularly limited, but from the viewpoint of reducing the processing load on each of the plurality of player terminals 20 and 201 to 20N, it is preferable to have a configuration capable of storing all the various kinds of information necessary for controlling the video game.” [0018]
“The server 10 and the plurality of player terminals 20 and 201 to 20N are connected to a communication network 30 such as the Internet.” [0013]
“The configuration of the server 10 is not particularly limited as long as it includes a general configuration for performing various processes as a computer, such as a control unit and a communication unit.” [0015]
“Each of the plurality of player terminals 20 and 201 to 20N is managed by a player, and is configured by a communication terminal capable of performing a network distribution type game, such as a mobile phone terminal, PDA (Personal Digital Assistants), a mobile game apparatus, or a so-called wearable device. Note that the configuration of the player terminal that can be included in the video game processing system 100 is not limited to the example described above, and may be any configuration as long as the player can recognize the contents of the video game. Other examples of the configuration of the player terminal include a combination of various communication terminals, a personal computer, and a stationary game apparatus.” [0030]
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).
In addition to the above steps and elements, what remains of the claims is “selecting a predetermined number of terms” (which arguably can be another mental step) and “display the selected predetermined number of terms” which is extra-solution displaying.
Even when the 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, Claims 1, and similarly Claims 10 and 11, 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 selecting step and display step are well-known extra-solution activities where the selecting is a combination of sorting and transmitting (See arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining a price (MPEP 2106.05(d)(II)(vi) and receiving or transmitting data over a network (MPEP 2106.05(d)(II)(i)), and displaying (presenting offers and gathering statistics (MPEP 2106.05(d)(II)(iii).
Accordingly, a conclusion that the step is well-understood, routine, conventional activity is supported under Berkheimer. Therefore, these limitations remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more.
Claim 1, and similarly Claims 10 and 11, do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. Thus, Claims 1, 10, and 11 are ineligible.
8. Dependent Claims
In Reference to Claims 2-9
Claim 2 reites additional abstract {mental} determining and extra-solution displaying; Claim 3 recites additional extra-solution selecting; Claim 4 recites well-known categorizing and storing; Claim 5 recites additional extra-solution selecting and displaying; Claim 6 is additional extra-solution displaying; Claim 7 recites known links to additional extra-solution displaying; Claim 8 recites updating which is a variant of well-known storing; and Claim 9 recites abstract extracting as a mental process of observing and extra-solution displaying.
Thus, none of the claims supply a practical application or inventive concept sufficient to transform the nature of the claim into a patent-eligible application. Additionally, the combination of additional elements adds nothing that is not already present when considered individually where the additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept. Thus, Claims 1, 10, and 11 are ineligible.
Claim Rejections - 35 USC § 103
9. 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.
10. 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.
11. 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.
12. Claims 1-6 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2007-058830 to Dowango in view of U.S. Pat. Pub. No. 2015/0065255 to Otomo.
In Reference to Claims 1, 10, and 11
Dowango discloses a video game processing system (adventure game processing 0028]), comprising:
a player terminal (game device [0010, 0024], Fig. 1 game apparatus 1 [0030]);
and
a non-transitory computer-readable medium storing a video game processing program that, when executed (stored program and operation unit [0010, 0026, 0031]), causes the server to:
specify one or more terms that satisfy a search target condition in accordance with a progress of a video game from among a plurality of terms that appear in the video game (game device provides description that includes a technical term for a player (Abstr.), the technical term is a specified word [0010] which is included in the displayed description [0010]);
decide search information based on an operation of a player (player activates a presented icon [0019, 0025] associated with an explanation of the specific word);
select a predetermined number of terms from among the specified one or more terms based on the search information (second determination unit [0010] selects a {single} predetermined explanation from a technical term table [0067]); and
displaying the selected predetermined number of terms (second display unit [0010] displays explanation).
Dowango discloses the invention substantially as claimed. However, the reference does not explicitly disclose a communication network and server. One of skill in the art would be aware of Otomo.
Otomo teaches of networked game play allowing players to play games and facilitates game play with guided play events (Abstr., Fig. 1 server 10 and network system 1, [0039, 0103]) where game system “can allow the player to browse detailed information related to a material character associated with a base character. When desiring obtainment of the material character, the player operates a guided operation button, so that the player is instantly guided to a play event in which the material character is obtainable. Therefore, the player can play a game aiming for obtainment of the material character in the guided play event. That is, the player does not need to play a battle game while searching for a stage in which the material character appears or to play a lottery game while searching for a deck in which the material character is housed.” ([0087]). Thus, Otomo provides this system to reduce the labor of a player to search for game content (Abstr., [0005])
Here, it would require only routine skill in the art to modify the game apparatus of Dowango with the server and network of Otomo to allow a player to compete with a broader array of game enthusiasts and further to simplify the search for information so that the player is less distracted during gameplay. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
In Reference to Claim 2
Dowango discloses determining which state among a predetermined number of states each of the selected terms is in; and displaying each of the selected terms in a manner corresponding to the determined state (Examiner construes state as the creation of an icon indicating the specific word is included in the determination means [0018]). Dowango creates an icon [0018-0019]).
In Reference to Claim 4
Dowando discloses registering the specified one or more terms in a predetermined storage area (Examiner construes registering as storing). Dowango discloses a storage means ([0024]).
In Reference to Claim 5
Dowango discloses selecting a term (specific word [0010]) corresponding to the progress of the video game from the specified one or more terms ([0010]); and
displaying the selected term as a term corresponding to the progress of the video game in a recommended term area (the upper screen is the recommended screen area (See Fig. 4B, [0010, 0068]).
In Reference to Claim 8
Dowango discloses updating information related to the player based on the specified one or more terms Dowango counts the number of previous uses of a technical term and updates each time the commentary function is used for a technical term [0067]).
In Reference to Claim 9
Dowango discloses a determination unit which extracting a term (specific word} from among the specified terms according to a predetermined selection rule (determination unit compares the description to stored specific words (Abstr., [0080]); and selectably displaying the extracted term ([0083]).
13. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Dowango, Otomo, further in view of U.S. Pat. Pub. No. 2013/0110804 to Davis.
Examiner construes kana as a linguistic graphica expression. Dowango discloses the invention substantially as claimed. However, the reference does not explicitly disclose selecting the predetermined number of terms by using kana as the search information. One of skill in the art would be aware of the teachings of Davis.
According to Davis, who teaches of structure and protocols for facilitating searches (Abstr,), the ability to search can also be conducted using a search expression or search term using one of more character recognition modules and other such filters that recognize characters and in some variants this includes linguistic graphical expressions ([0196]). Davis provides this system and method in order to facilitate the search for information with applications in video gaming [0143].
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 detection unit of Dowango with the ability to search for the linguistic graphical expressions of Davis in order to achieve the predictable result of facilitating the search for information. 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.
14. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Dowango, Otomo, further in view of Yogs Clips (demonstrating nested tooltips in Europa Universalis IV), herein after “Yogs Clips”, posted Sep 3, 2022.
Dowango discloses the invention substantially as claimed. However, the reference does not explicitly disclose displaying a first image including each of the selected terms and a first link associated with each of the selected terms; and if the first link is selected by the player, displaying a second image corresponding to the first link and including at least a second link different from the first link.
According to Yogs Clips, nested tooltips are demonstrated in a game of Europa Universalis IV where the player clicks on highlighted or colored, or italicized key words in pop-up explanation boxes where a first, second, and more new pop-up boxes linked to the key words in the preceding explanation boxes become displayed.
Here, it would require only routine skill in the art to modify the display of Dowango with the display of the nested tooltip explanation boxes of Yogs Clips to achieve the predictable result of providing immediately juxtaposed linked relevant information to respond to a player’s need to quickly access detailed information during game play. The Courts have held that applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to be indicia of obviousness.
Allowable Subject Matter
15. Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
16. The following is a statement of reasons for the indication of allowable subject matter: the prior art is silent as to referring to detailed information including a term, a category, a first details screen, and a link associated with each other, the link indicating a second details screen; displaying the category if the term is selected; displaying the first details screen if the category is selected; displaying the second details screen indicated by the link if the link is selected; and
changing the second details screen indicated by the link based on the progress of the video game.
Conclusion
17. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
18. 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.
19. 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.
20. 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