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
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 to 9 (independent Claims 1, 8, and 9, and their dependent claims) are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claims are drawn to a system, a computer-readable medium, and a method, and so are statutory classes under 101. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following reasons. Independent Claim 1 is representative and is reproduced below; the abstract idea is underlined and the structural limitations are not. The dependent claims have no more structure than the independent claim and fail 101 for similar reasons.
A game system comprising a computer connected to an output device including a display device that displays a game screen in which an action image showing each action of a series of actions that constitute a dance is presented in order of the series of actions and a detection device that detects a user's action, and providing a timing game that guides each action and execution time of each action through the action image and evaluates the user's action, wherein the computer serves as: (accepting input from a user, processing data according to the rules of a game, and providing the resulting output to a user)
an action specifying unit that specifies one action of the series of actions and a next action that follows the one action based on sequence data in which each action of the series of actions and the execution time to execute each action are described in association with each other; and (processing data according to the rules of a game, and providing the resulting output to a user)
an information providing unit that provides the user with related information indicating relevance between the one action and the next action through the output device when the next action is a related action to be executed based on the one action as an action related to the one action. (processing data according to the rules of a game, and providing the resulting output to a user)
The claims taken together or individually do not represent an improvement to the abstract idea in an ordered combination. The claims do not cite what types of input devices accept the dance input from the user (rate sensors, gyroscopic sensors, motion-sensing cameras, seismic sensors, etc.). The claims do not cite how the output of the evaluated dance motion input is presented to a user of the game system—this will presumably be a video display or augmented reality-type translucent glasses with built-in displays, but this is unclear from the claim language. The claims do not cite how the dance input is evaluated for accuracy or improvement. Citing such limitations in the claim language would help for 101 compliance, and possibly for allowance over the prior art. The claims do not cite specific processor or memory structures for processing data in memory according to the rules of a game. The claims do not cite specific input structures such as touchscreens, touchpads, directional pads, joysticks, trackballs, keyboards, mice, cameras, or microphones. The claims do not cite specific output structures such as screens, displays, or speakers. The claims do not represent an improvement in the functioning of a computing device or gaming device since they do not represent an improvement in processor speed, memory management, random number generation, thermal management, ergonomics, network speed and management (such as load balancing or rerouting of packets), bus speed and management, authentication, encryption, graphics rendering, or reduced instruction sets for carrying out complex operations (such as RISC processors). Applying an abstract idea to a computer is not patent-eligible (Alice, http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf, page 12). Electronic recordkeeping, obtaining data, adjusting balances, issuing automated instructions, creating and maintaining accounts are typical computer functions (Alice, page 15). Requiring the use of a computer to implement the claim does not make it patent-eligible (pages 14 & 15). Communications controllers, data storage units, and data processing systems are typical computer structures (Alice, page 16). Calculation, storage, and transmission are basic computer functions (Alice, page 16). Claims cannot simply be a draftsman’s art (Alice, pages 14 & 16).
Cloud Satchel quoting Bancorp: “To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.” In Bancorp, the independent claims did not require a computer (at 1431). In Bancorp, the system and method claims were equivalent for patentability under 101 (at 1432). Bancorp’s method claims did not require a computer and were not 101-compliant (at 1433). A computer must be integral to the claimed invention (Bancorp at 1433). A computer used in the claim only for its most basic functions does not make the claim 101-eligible (Bancorp at 1433). Bancorp’s use of computers to track, reconcile, and administer insurance policies only used a computer’s most basic functions, adding nothing to 101 compliance (1434). Limiting the claims to a particular field of use, such as the insurance market, does not fail to preempt the abstract idea (Bancorp at 1434 & 1435). In Amdocs (113 USPQ2d 1565) at 1571, the fact that the claims cannot be carried out by a human being alone does not mean that they are not an abstract idea under 101 (citing Alice, 134 S.Ct. at 2359-60 and Digitech, 758 F.3d at 1351).
The examiner points the applicants to Claim 33 of U.S. patent 5,970,479 A which was the representative claim in the Alice decision. These claim limitations are carried out on presumably a general purpose computer although such is not explicitly cited. The claims are certainly not carried out by specific hardware.
A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:
(a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;
(b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;
(c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party’s shadow credit record or shadow debit record, allowing only these transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order, and
(d) at the end-of-day, the supervisory institution instructing on[e] of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions.
The examiner points the applicants to representative Claim 19 of U.S. patent 7,818,399 B1 which was at issue in the DDR Holdings case. This claim in the DDR Holdings case was 101-compliant because it improved the functioning of the computer itself, namely rendering web pages in a web browser. The claims in DDR Holdings cited what was done, and specific steps for how it was done, thus not invoking a judicial exception by preempting all possible ways of what the claim is trying to do. The claims met the second step of the Alice analysis by improving on how web page rendering transactions were carried out over a network such as the Internet, versus how such transactions had been done before.
A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:
(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages;
(i) wherein each of the first web pages belongs to one of a plurality of web page owners;
(ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and
(iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;
(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:
(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages;
(ii) automatically identify as the source page the one of the first web pages on which the link has been activated;
(iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and
(iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page.
The examiner finds that wagering games are all rather similar: accepting a wager, playing the game according to the rules comprising generating random outcomes according to rules, determining winning outcomes, determining how much is to be paid for a winning outcome, and paying out the winnings. This breakdown of the wagering claim language is similar to that in precedential case in re Smith (in re Smith (Fed. Cir. 2016), appeal 2015-1664, U.S. patent application 12/912,410).
Claim 1 at hand in in re Smith is as follows:
1. A method of conducting a wagering game comprising:
[a]) a dealer providing at least one deck of physical playing cards and shuffling the physical playing cards to form a random set of physical playing cards;
[b]) the dealer accepting at least one first wager from each participating player on a player game hand against a banker’s/dealer’s hand;
[c]) the dealer dealing only two cards from the random set of physical playing cards to each designated player and two cards to the banker/dealer such that the designated player and the banker/ dealer receive the same number of exactly two random physical playing cards;
[d]) the dealer examining respective hands to determine in any hand has a Natural 0 count from totaling count from cards, defined as the first two random physical playing cards in a hand being a pair of 5’s, 10’s, jacks, queens or kings;
[e]) the dealer resolving any player versus dealer wagers between each individual player hand that has a Natural 0 count and between the dealer hand and all player hands where a Natural 0 is present in the dealer hand, while the dealer exposes only a single card to the players;
[f]) as between each player and the dealer where neither hand has a Natural 0, the dealer allowing each player to elect to take a maximum of one additional card or standing pat on the initial two card player hand, while still having seen only one dealer card;
[g]) the dealer/banker remaining pat within a first certain predetermined total counts and being required to take a single hit within a second predetermined total counts, where the first total counts range does not overlap the second total counts range;
[h]) after all possible additional random physical playing cards have been dealt, the dealer comparing a value of each designated player’s hand to a final value of the banker’s/dealer’s hand wherein said value of the designated player’s hand and the banker’s/dealer’s hand is in a range of zero to nine points based on a pre-established scoring system wherein aces count as one point, tens and face cards count as zero points and all other cards count as their face value and wherein a two-digit hand total is deemed to have a value corresponding to the one’s digit of the two-digit total;
[i]) the dealer resolving the wagers based on whether the designated player’s hand or the banker’s/dealer’s hand is nearest to a value of 0.
Similarly to the present claims, the claim at hand in in re Smith accepted wagers from players (steps a & b), played the game according to the rules of the game comprising generating random outcomes (steps c to g), determining what the winning conditions are and how much to pay out (step h), and making the winning payouts (step i). The card game of in re Smith would be identical played in a card and table format or in an electronic format.
The examiner points the applicants to the representative claim at hand in non-precedential Planet Bingo. The hardware limitations of the CPU, memory, I/O terminal, and printer are only cited in clause (a). The rest of the claim is functional claim language describing a bingo game that would occur identically in paper ticket format or computerized format with the play of the game and the game results being identical in either format. The court held that the claims in Planet Bingo were ineligible under 101.
A method for playing a game of Bingo which comprises the steps of:
(a) providing a system for managing a game of Bingo which comprises: a computer with a central processing unit (CPU) and with a memory and with a printer connected to the CPU; an input and output terminal connected to the CPU and memory of the computer; and a program in the computer enabling:
(i) input of at least two sets of Bingo numbers which are preselected by a player for repetitive play in games of Bingo over a period of time;
(ii) storage of the sets of Bingo numbers which are preselected by the player as a group in the memory of the computer;
(iii) assignment of a player identifier unique to the player for the group having the sets of Bingo numbers which are preselected by the player wherein the player identifier is assigned to the group for multiple sessions of Bingo;
(iv) retrieval of the group using the player identifier;
(v) selection from the group by the player of at least one of the sets of Bingo numbers preselected by the player and stored in the memory of the computer as the group for play in a selected game of Bingo in a specific session of Bingo wherein a number of sets of Bingo numbers selected for play in the selected game of Bingo is less than a total number of sets of Bingo numbers in the group;
(vi) addition by the computer of a control number for the set of Bingo numbers which is selected by the player for play in the selected game of Bingo;
(vii) output of a receipt with the control number, the set of Bingo numbers which is selected for play in the selected game of Bingo, a price for the set of Bingo numbers which is selected for play in the selected game of Bingo, a date of the selected game of Bingo and optionally a computer identification number; and
(viii) output for verification of a winning set of Bingo numbers by means of the control number which is input into the computer by a manager of the game of Bingo;
(b) playing the game of Bingo using the set of Bingo numbers wherein the player signals a Bingo to indicate the set of Bingo numbers which is selected for play in the selected game of Bingo is the winning set of Bingo numbers; and
(c) verifying the winning set of Bingo numbers with the control number with the program.
The Bascom decision is relevant to the present claims (U.S. CAFC, 2015-1763, decided June 27th, 2016). The Bascom decision required that the ordered limitations of the claims taken together add something "significantly more" to the abstract idea even though the individual limitations were known in the prior art. The claim at hand in Bascom was found to comply with 101 in light of Alice. Page 15 of Bascom:
“However, we disagree with the district court’s analysis of the ordered combination of limitations. In light of Mayo and Alice, it is of course now standard for a § 101 inquiry to consider whether various claim elements simply recite “well-understood, routine, conventional activit[ies].” Alice, 134 S. Ct. at 2359. The district court’s analysis in this case, however, looks similar to an obviousness analysis under 35 U.S.C. § 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Page 20 of Bascom: “While the claims of the ’606 patent are directed to the abstract idea of filtering content, BASCOM has adequately alleged that the claims pass step two of Alice’s two-part framework. BASCOM has alleged that an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea. We find nothing on this record that refutes those allegations as a matter of law or justifies dismissal under Rule 12(b)(6). We therefore vacate the district court’s order granting AT&T’s motion to dismiss under FRCP 12(b)(6) and remand so that the case may proceed.”
The McRO decision (U.S. CAFC, 2015-1080 to 2015-1101, decided Sept. 13th, 2016) is relevant to the present claims. The McRO decision stated that an ordered combination of claim limitations can meet the requirements of 101 in light of the Alice decision by improving over what has been already done in the prior art without preempting an abstract idea. Pages 25 and 26 of McRO: “The limitations in claim 1 prevent preemption of all processes for achieving automated lip-synchronization of 3-D characters. McRO has demonstrated that motion capture animation provides an alternative process for automatically animating lip synchronization and facial expressions. Even so, we have recognized that “the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The narrower concern here is whether the claimed genus of rules preempts all techniques for automating 3-D animation that rely on rules. Claim 1 requires that the rules be rendered in a specific way: as a relationship between subsequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing (as represented by the morph weight set). The specific structure of the claimed rules would prevent broad preemption of all rules-based means of automating lip synchronization, unless the limits of the rules themselves are broad enough to cover all possible approaches. There has been no showing that any rules-based lip synchronization process must use rules with the specifically claimed characteristics.” Page 27 of McRO: “Here, the structure of the limited rules reflects a specific implementation not demonstrated as that which “any [animator] engaged in the search for [an automation process] would likely have utilized.” Myriad, 133 S. Ct. at 2119–20 (quotation marks omitted). By incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques. See Morse, 56 U.S. at 113. When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Alice, 134 S. Ct. at 2358 (citing Diehr, 450 U.S. at 177). Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.” The claim limitations individually or taken together add nothing significantly more in an ordered combination to the abstract idea.
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.
Claim(s) 1 to 3 and 5 to 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choreographic Copyright Association (JPO publication JP 2014-217627 A, published Nov. 20th, 2014, hereafter referred to as “CCA”).
As to Claims 1, 8, and 9: CCA teaches a game system comprising a computer connected to an output device including a display device that displays a game screen in which an action image showing each action of a series of actions that constitute a dance (karaoke system 150 including a camera 302, a display device 310, and a physical action evaluation device 100, Para. 98, Fig. 3) is presented in order of the series of actions and a detection device that detects a user's action (a physical action acquisition unit for collecting information about the choreography or the like performed by a singer, Para. 19), and providing a timing game that guides each action and execution time of each action through the action image and evaluates the user's action, wherein the computer serves as (display device 310 displays a character 450a as a model video that performs smooth actions, Para. 115, together with displaying a display 410 as discrete model videos; a character 412a showing a past model pose is displayed darker, a character 416a showing a future model pose is displayed lighter, and a character 414a showing the current model pose is displayed with a darker portion and a lighter portion; the darkness of the character changes as time passes, Paras. 114, 115, 117, & 118, Figs. 4 & 5):
an action specifying unit that specifies one action of the series of actions and a next action that follows the one action based on sequence data in which each action of the series of actions and the execution time to execute each action are described in association with each other (the acquired physical action data and model data are compared and evaluated, and the specific extent to which the performance was able to match the timing is used as one evaluation criterion; the karaoke system of CCA can also be said to be a "timing game" for enjoying dancing; the "model data" in cited invention 1 corresponds to the "sequence data" in the invention as claimed; the display 410 shows the discrete model videos as claimed; the respective displays of the character 412a showing the past model pose, the character 416a showing the future model pose, and the character 414a showing the current model pose at Figs, 4 & 5 are related as a series of actions, and the display mode of the character 416a showing the future model pose, the entirety of which is lighter and of a different shape at least relative to the display mode of the character 414a showing the current model pose, can be said to be "related information" indicating relatedness between two actions; the future poses indicated to the player as described are indications to the player of the motions he or she is to take, Para. 114, 123, and 125); and
an information providing unit that provides the user with related information indicating relevance between the one action and the next action through the output device when the next action is a related action to be executed based on the one action as an action related to the one action (the "shape change of the limbs" can be said to be not only "time relatedness such as present, past, and future", but also "information about an action to be performed with reference to a previous action", and it can be said that "the next action is ascertained with reference to a previous action" as discussed above; the strictness of the evaluation standard can be selected at Para. 31; the evaluation can be made during or after the performance, Para. 32).
As to Claim 2: CCA teaches wherein by presenting a related image indicating the relevance on the game screen, the information providing unit provides the user with the related image as the related information through the game screen (Paras. 20 & 21, text, video, voice, and character data are displayed to the player for instructional purposes; choreography intended to be copied by player displayed at Paras. 26 to 28).
As to Claim 3: CCA teaches wherein the related action includes a repeat action that repeatedly executes an action identical to the one action based on the one action, and when the next action is the repeat action, the information providing unit presents a repeat image indicating the repeat action on the game screen as the related image (Para. 96 discusses repeating the motion for improved accuracy, the suggested motion to the player is displayed as discussed above regarding the independent claims).
As to Claim 5: CCA teaches wherein when the next action is the related action, by displaying a related action image including the related image as the action image corresponding to the next action, the information providing unit presents the related image on the game screen via the related action image such that the action image corresponding to the one action and the related action image differ at least in presence or absence of the related image (the examine is interpreting the frames of suggested dance motions stored at predetermined intervals as the action image and the interpolated image between intervals as the related action image; this smooth video model is discussed at Paras. 60 to 62; the model data 107 are generally stored in frames at predetermined intervals, Paras. 58 & 59; at Para. 60 CCA calculates and displays the interpreted model data or suggested choreography position in between the frames at the predetermined intervals, the examine is interpreting this as the related action image).
As to Claim 6: CCA teaches wherein the action image is configured to indicate an action in a predetermined duration in the series of actions, and includes a character video that reproduces the action in the predetermined duration through the action of the character and a plurality of still character images corresponding to still images at predetermined intervals in the character video, and the information providing unit displays the related action image on the game screen such that the related image is included instead of the plurality of still character images (the model data 107 are generally stored in frames at predetermined intervals, Paras. 58 & 59; at Para. 60 CCA calculates and displays the interpreted model data or suggested choreography position in between the frames at the predetermined intervals, the examine is interpreting this as the related action image).
As to Claim 7: CCA teaches wherein the plurality of still character images includes a characteristic still character image as the still character image corresponding to the characteristic posture of the character in the character video, and is displayed such that a display mode is different between the characteristic still character image and another still character image (the model data 107 are generally stored in frames at predetermined intervals, Paras. 58 & 59; at Para. 60 CCA calculates and displays the interpreted model data or suggested choreography position in between the frames at the predetermined intervals, the examine is interpreting this as the related action image).
Claim Rejections - 35 USC § 103
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claim 4 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over CCA in view of Trewartha, et al. (U.S. Pre-Grant Publication 2013/0095926 A1).
As to Claim 4: CCA teaches all of the limitations of this claim, but lacks specificity as to wherein the related action includes a reverse action defined as an action that is obtained by reversing the one action according to a predetermined rule based on the one action, and when the next action is the reverse action, the information providing unit presents a reverse image indicating the reverse action on the game screen as the related image. Trewartha, however, teaches these limitations at Para. 61. Para. 61 discusses a dance instruction video game in which the player is instructed to perform the same move in reverse (a reversal in the X, Y, and Z axes of a dance motion, Para. 61). Trewartha is a dance video game that acquires physical dance motions from a player and incorporates them into game play (Abst., Fig. 1 describing motion-sensitive controllers 50 and camera 756, Paras. 16 and 33 to 38, Claim 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied Trewartha’s reverse motion to the dance instruction game of CCA. The two references are thus similar in field of use and mode of operation. This modification would have the advantage of giving the player more accurate dance moves to emulate since the instructions would be given for both forward and reverse motion, allowing more intuitive and repetitive instruction for the player, which is more likely to result in accurate input from the player.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW D HOEL whose telephone number is (571)272-5961. The examiner can normally be reached M-F 8:00 A.M.-4:30 P.M..
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/M.D.H/Examiner, Art Unit 3715 /DAVID L LEWIS/Supervisory Patent Examiner, Art Unit 3715
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