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 1/14/26. Claims 1 – 10 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 – 10 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 – 9 are directed towards a medium and a system, (machine), and claim is 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 non-transitory computer readable storage medium storing a computer program for a computer incorporated in a game system connected to a display device that displays a game screen including an offense character and a defense character which play roles of offense and defense respectively, and an input device that inputs a plurality of operations executed by a user as operations for operating the defense character in the game screen, and providing a game in which the defense character is automatically caused to execute a predetermined defense action according to a predetermined rule when a specific operation out of the plurality of operations is executed, wherein the computer program causes the computer to function as: a result acquisition unit that acquires, when an input of an operation out of the plurality of operations is executed through the input device after a special condition related to a position between the defense character and the offense character is satisfied during the defense action, a result of the input; and an action control unit that causes the defense character to execute an additional action so that the additional operation is reflected in an action of the defense character when the operation is determined to be an additional operation associated with the additional action that can be added to the defense action based on the result of the input.
The abstract idea is defined by the underlined portions exemplary claim 1, with substantially similar features found in claim 9 and 10. Dependent claims 2 - 8 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 (rules for conducting a game)
Mental processes (observation, evaluation, judgment)
The claims are directed towards an abstract idea of rules for conducting a game 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 wherein a player controls a game character to progress through the game. Controlling a video game that allows a player to progress through the video game 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 is drawn towards a gaming system that executes a video game wherein a player controls a game character, wherein the game character may perform an additional action based on player input. Here, a human can observe the actions of a game character and then determine what additional action should be executed next. For example, the claims recite a sports video game comprising offensive and defensive game characters, wherein a user can perform the mental step of observing an offensive or defensive game character, and then determine what additional action should be executed next based on the actions of the offensive or defensive game character. 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 storage medium along with instructions that generate and present a video game to a player, wherein said player is instructed to control a game character to progress through the game, 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 computer-readable storage medium, an input device, a display device, and a game character that is associated with a player, 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.
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 – 10 are rejected under 35 U.S.C. 102(a) as being anticipated by the video game NBA 2K19.
Regarding claim 1, NBA 2K19, hereafter 2K, discloses a non-transitory computer-readable storage medium storing a computer program for a computer incorporated in a game system connected to a display device that displays a game screen, (5:04 of 2K, wherein it is shown the is playing 2K using a Playstation controller, shown in fig. 1 below, wherein this is viewed by the Examiner as 2K being run on a Playstation gaming system, which is equivalent to computer-readable storage medium incorporated in a game system connected to a display device).
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2K further discloses including an offense and defense character which play roles of offense and defense, (7:37 – 9:39 of 2K in fig. 2 shown below).
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and an input device that inputs a plurality of operations for operating the defense character in the game screen, (5:04 of 2K shown in fig. 1 above, wherein the Examiner views the Playstation controller as being equivalent to an input device that inputs a plurality of operations for operating an offense or defense character). 2K further discloses providing a game in which the defense character is automatically caused to execute a predetermined defense action according to a predetermined rule when a specific operation out of the plurality of operations is executed, (8:19 – 8:23 of 2K, wherein the Examiner views the non-player characters playing defense as being defense against an offensive player (“Stauskas”), as being equivalent to automatically executing a predetermined defense action according to a predetermined rule when a specific operation is executed, shown in fig. 3 below),
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a result acquisition unit that acquires, when an input of an operation out of the plurality of operations is executed through the input device after a special condition related to a position between the defense character and the offense character is satisfied during the defense action, (8:19 – 8:23 of 2K), and an action control unit that causes the defense character to execute an additional action so that the additional operation is reflected in an action of the defense character when the operation is determined to be an additional operation associated with the additional action that can be added to the defense action based on the result of the input, (8:52 of 2K, defensive player contesting a shot made by offensive player), in the figure show below.
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Wherein the Examiner views the defensive player contesting the shot made by the offensive player as being equivalent to a defense character executing an additional action as a result of the input.
Regarding claim 2, 2K discloses wherein the action control unit causes the defense character to execute a moving action for moving the offense character in a predetermined direction as the additional action, (8:19 – 8:23 of 2K).
Regarding claim 3, 2K discloses wherein the action control unit causes the defense character to execute an action of changing a relative distance between the offense character and the defense character as the moving action, (8:19 – 8:23 of 2K, NPCs playing defense).
Regarding claim 4, 2K discloses wherein the additional operation includes two or more additional operations corresponding to different directions, the moving action includes two or more moving actions associated with the two or more additional operations, and the action control unit causes the defense character to execute a moving action corresponding to the additional operation so as to move the offense character in a direction corresponding to the additional operation according to executed additional operation out of the two or more additional operations, (8:19 – 8:23 of 2K, NPCs playing defense).
Regarding claim 5, 2K discloses wherein the plurality of operations includes a plurality of direction indication operations for indicating a plurality of directions, respectively, the plurality of direction indication operations are used as the two or more additional operations, and the action control unit causes the defense character to execute a moving operation corresponding to the direction indication operation so as to move the offense character in a direction corresponding to executed direction indication operation out of the plurality of direction indication operations, (7:37 – 9:39 of 2K).
Regarding claims 6 - 8, 2K discloses wherein a human-shaped character is used as each of the defense character and the offense character, the defense action includes an action in which the defense character extends a hand toward the offense character within a certain distance between the defense character and the offense character, the special condition is satisfied when the hand of the defense character reaches the offense character along with the action of extending the hand, and the action control unit causes the defense character to execute an action of moving the offense character using the hand of the defense character as the moving action, (7:37 – 9:39 of 2K).
Regarding claim 9, 2K discloses a game system comprising a computer connected to display device that displays a game screen, (0:00 – 11:26 of 2K), including an offense and defense character which play roles of offense and defense, (7:37 – 9:39 of 2K), and an input device that inputs a plurality of operations for operating the defense character in the game screen, (8:19 – 8:23 of 2K), and providing a game in which the defense character is automatically caused to execute a predetermined defense action according to a predetermined rule when a specific operation out of the plurality of operations is executed, (8:19 – 8:23 of 2K, NPCs playing defense), a result acquisition unit that acquires, when an input of an operation out of the plurality of operations is executed through the input device after a special condition related to a position between the defense character and the offense character is satisfied during the defense action, (8:19 – 8:23 of 2K), and an action control unit that causes the defense character to execute an additional action so that the additional operation is reflected in an action of the defense character when the operation is determined to be an additional operation associated with the additional action that can be added to the defense action based on the result of the input, (8:19 – 8:23 of 2K, NPCs playing defense).
Regarding claim 10, 2K discloses a control method executed by a computer incorporated in a game system connected to a display device that displays a game screen, (0:00 – 11:26 of 2K), including an offense and defense character which play roles of offense and defense, (7:37 – 9:39 of 2K), and an input device that inputs a plurality of operations for operating the defense character in the game screen, (8:19 – 8:23 of 2K), and providing a game in which the defense character is automatically caused to execute a predetermined defense action according to a predetermined rule when a specific operation out of the plurality of operations is executed, (8:19 – 8:23 of 2K, NPCs playing defense), a result acquisition unit that acquires, when an input of an operation out of the plurality of operations is executed through the input device after a special condition related to a position between the defense character and the offense character is satisfied during the defense action, (8:19 – 8:23 of 2K), and an action control unit that causes the defense character to execute an additional action so that the additional operation is reflected in an action of the defense character when the operation is determined to be an additional operation associated with the additional action that can be added to the defense action based on the result of the input, (8:19 – 8:23 of 2K, NPCs playing defense).
Response to Arguments
Applicant's arguments filed on 4/13/26 have been fully considered but they are not persuasive. Regarding the 101 rejection of claims 1 – 10, Applicants argue that “the independent claims reflect the technical improvement to video game technology”. More specifically it is argued that the current claims addresses the technical problem of video games using automatic defensive actions regardless of player skill. The Examiner respectfully disagrees. The claims are directed towards a gaming system that executes a video game along with instructions that generate and present a video game to a player, wherein said player is instructed to control a game character to progress through the game. The claims further disclose, as mention by the Applicants, a result acquisition unit and an action control unit that receives input and executes an action. The claim language merely reciting that input being received by an acquisition and a control executing an action is viewed as computer components performing routine and ordinary functions. The courts have determined that claims that are directed to data collection and recognition are abstract ideas and is a well-known practice, (See Content Extraction and Transmission LLC v. Wells Fargo Bank (776 F.3d 1343)). While the Examiner does acknowledge that Applicant’s specification may disclose a practical application, as discussed in the Applicant’s arguments, however, the current claim language does not recite steps that represent an improvement to the functioning of a computer, or to any other technology or technical field nor do the claims amount to significantly more than the abstract idea of processing data, because the additional elements, acquisition and control units, are recited generically. The claims do not recite how the additional components improve performance or reliability which reflects conventional data capture and execution without a technical improvement, wherein, viewed as a whole, these additional elements are indistinguishable from conventional computing elements known in the art. Their collective functions provide conventional computer implementation of an abstract process.
For these reasons, the Examiner maintains that the claims are not patent-eligible under 35 USC 101.
Regarding the 102 rejection, Applicants argue that “NBA 2K fails to disclose all of the limitations of the claim”. More specifically, it is argued that 2K does disclose the claim limitation of "acquires, when an input of an operation out of the plurality of operations is executed through the input device after a special condition related to a position between the defense character and the offense character is satisfied during the defense action, a result of the input." The Examiner respectfully disagrees. The claimed “special condition”, is described as “a simple positional relationship between the player PL on the offense side and the player PL on the defense side, random, or a game situation may be used, and as an example, a condition satisfied when the hand of the player PL on the defense side reaches the player PL on the offense side by the action of extending the hand is used”, wherein “the special condition is satisfied at the contact distance and as a result, the opponent moving action is allowed at the contact distance”, (par. 0041 of Specification). As cited above, 2K discloses defensive player contesting the shot made by the offensive player as being equivalent to a simple positional relationship between an offensive and defensive player, shown in fig. 4 below.
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2K further shows the defensive player by following and closing the distance with the offensive player shown in fig. 5 below, which is viewed by the Examiner as being equivalent to a defensive action prior to the special condition, based on user input.
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Wherein fig. 4 above further shows the defensive player making contact, extending a hand and contesting a shot made by the offensive player, wherein the offensive player stumbles backwards as a result of the contact, which is viewed by the Examiner as satisfying a special condition wherein the defensive opponent’s moving action is allowed at a contact distance, (8:50 – 8:53 of 2K). Therefore, the Examiner maintains that 2K anticipates the present invention as claimed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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/E.M.T/Examiner, Art Unit 3715
/JUSTIN L MYHR/Primary Examiner, Art Unit 3715
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