DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in GB on 4/25/2023. It is noted, however, that applicant has not filed a certified copy of the 2306005.6 application as required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18-19 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 18 is drawn towards a non-transitory computer readable medium comprising instructions which, when executed by a processor, cause the processor to perform the method of Claim 1, wherein Claim 1 is drawn to a computer-implemented method e.g. Claim 18 fails to further limit the subject matter claim 1 upon which it depends (fails to further limit the method of claim 1). Additionally, claim 19 is drawn towards a system comprising: a processor; and memory comprising instructions which, when executed by the processor, cause the processor to perform the method of claim 1, wherein Claim 1 is drawn to a computer-implemented method e.g. Claim 19 fails to further limit the subject matter claim 1 upon which it depends (fails to further limit the method of claim 1). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
The claim(s) recite(s) “A computer-implemented method of producing a video game environment, the method comprising: receiving a representation of the video game environment; identifying a first object in the video game environment; identifying, based on a graphical representation of the first object, one or more properties of the first object suitable for selecting a sound effect to be applied to the first object; and applying a sound effect to the first object in the video game environment based on the one or more identified properties” (Claim 1); “A non-transitory computer readable medium comprising instructions which, when executed by a processor, cause the processor to perform the method of claim 1.” (Claim 18); and “A system comprising: a processor; and memory comprising instructions which, when executed by the processor, cause the processor to perform the method of claim 1.” (Claim 19). Each of the above underlined portions are related to an abstract idea of Certain Methods of mental processes particularly concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Receiving a representation of the video game environment; identifying a first object in the video game environment; identifying, based on a graphical representation of the first object, one or more properties of the first object suitable for selecting a sound effect to be applied to the first object pertain to concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (particularly the technological environment of a gaming device and/or gaming system) (MPEP 2106.05 (h)). Additionally, “applying a sound effect to the first object in the video game environment based on the one or more identified properties” is recited at a low level of generality and amounts to mere post solution activity, particularly, providing an output (sound) which is a form of insignificant extra-solution activity.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of a “computer implemented”, “non-transitory computer readable medium”, “processor”, and/or “memory”) are recited at a level of generality and are merely invoked as tool to perform the used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility (the use of a computing device and/or generic components is merely illustrating the environment in which the abstract idea is practiced). These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. Taking the physical elements individually and in combination, the computer-based components perform purely generic computer-based functions that are silent in regards to clearly indicating how a computer aids the method, medium, and/or system to which a computer performs/implements the method, medium, and/or system. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer, ’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
It is settled law that adding physical elements to an abstract idea will not amount to an “inventive concept" if the physical elements are well-known, routine and conventional elements and they perform their well-known, routine and conventional functions. TLI Communications LLC v. AV Automotive, L.L.C. (Fed Cir 2016):
Turning to the second step in our analysis, we find that the claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294). We agree with the district court that the claims’ recitation of a “telephone unit,” a “server”, an “image analysis unit,” and a “control unit” fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability. (Emphasis added by Examiner.)
On the question of preemption, the Federal Circuit has stated in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of DNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
Nor do the dependent claims 2-17 add “significantly more” since they merely add to the claimed concepts relating to an abstract idea of Certain Methods of mental processes particularly concepts performed in the human mind (including an observation, evaluation, judgment, opinion). The dependent claims failing to place the claimed invention into a practical applicant or additional generic components of the dependent claims failing to amount to “significantly more” for the same reasons noted above.
Consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claim are not patent-eligible under 35 USC §101.
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 and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spore (as disclosed by the combination of Behind the Scenes – Spore [Making of] (https://www.youtube.com/watch?v=ReP37VidwoI), Spore – PC/Mac (https://www.amazon.com/Spore-PC-Mac/dp/B000FKBCX4 ), and SporeWiki (https://web.archive.org/web/20191114210652/https://spore.fandom.com/wiki/Mouth).
(Examiner’s Note: Behind the Scenes – Spore [Making of], Spore – PC/Mac, and SporeWiki provide disclosure for a same single invention (e.g. Spore Video Game) and is used herein in combination to illustrate or provide disclosure for the Spore Video Game).
Claims 1 and 18-19: Spore discloses a system comprising: a processor (Game is for a PC/Mac which has at least a processor)(Spore - PC/Mac, pgs. 1-3); and memory (non-transitory computer readable medium)( Spore - PC/Mac, pgs. 1-3 is a non-transitory computer readable medium) comprising instructions which, when executed by the processor, cause the processor to perform a method comprising: receiving a representation of the video game environment (Behind the Scenes – Spore [Making of] – time 21:58 – 27:47); identifying a first object (the first object being the user controlled gaming character that has to be identified as a user controlled object in order to allow the creation or editing of the character by the user) in the video game environment (Behind the Scenes – Spore [Making of] – time 21:58 – 27:47); identifying, based on a graphical representation of the first object, one or more properties (different mouths that can be selected for the first object, wherein graphical representations are provided) of the first object suitable for selecting a sound effect to be applied to the first object Behind the Scenes – Spore [Making of] – time 21:58 – 27:47, SporeWiki – pgs. 1-6); and applying a sound effect to the first object in the video game environment based on the one or more identified properties (Behind the Scenes – Spore [Making of] – time 21:58 – 27:47, SporeWiki – pgs. 1-6).
Claim(s) 1-2, 8, 10-12, and 15-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WU (CN 112451968 A)(please reference to CN112451968 English Translation found at https://translationportal.epo.org/emtp/translate/?ACTION=description-retrieval&COUNTRY=CN&ENGINE=google&FORMAT=docdb&KIND=A&LOCALE=en_EP&NUMBER=112451968&OPS=ops.epo.org/3.2&SRCLANG=zh&TRGLANG=en and attached as a PDF).
Claims 1 and 18-19: WU discloses a system comprising: a processor; and memory (non-transitory computer readable medium) comprising instructions which, when executed by the processor (¶ 28-31, 54-55, 66), cause the processor to perform a method comprising: receiving a representation of the video game environment (¶ 67, 72-73, 78-82); identifying a first object in the video game environment; identifying, based on a graphical representation of the first object (¶ 77, 79-82), one or more properties (motion state) of the first object suitable for selecting a sound effect to be applied to the first object (¶ 77, 79-88); and applying a sound effect to the first object in the video game environment based on the one or more identified properties (¶ 79-88).
Claim 2: WU discloses wherein the sound effect applied to the first object is selected and applied automatically based on the one or more identified properties (¶ 66, 79-88).
Claim 8: WU disclose wherein applying the sound effect to the first object comprises implementing the sound effect in the video game environment, wherein the sound effect is played upon interaction with the first object by a player (¶ 32, 75, 79-88, 104, 129).
Claim 10: WU discloses wherein the identified properties comprise one or more of a material of the first object, one or more dimensions of the first object, or an action (motion state) to be performed by the first object during gameplay (¶ 75, 79-88).
Claim 11: WU discloses wherein the identification of the one or more properties of the first object is performed using a computer vision algorithm (¶ 82).
Claim 12: WU discloses wherein the computer vision algorithm is trained, prior to the identification, on graphical representations of objects other than the first object (¶ 82).
Claim 15: WU discloses wherein the representation of the video game environment is a graphical representation of the video game environment (¶ 48, 73, 79-88).
Claim 16: WU discloses wherein the graphical representation of the video game environment comprises the graphical representation of the first object (¶ 48, 74, 79-88).
Claim 17: WU discloses wherein the representation of the video game environment comprises an image of the video game environment or a computer graphics model of the video game environment (¶ 48, 73, 79-88).
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 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.
The factual inquiries 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.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over WU (CN 112451968 A)(please reference to CN112451968 English Translation found at https://translationportal.epo.org/emtp/translate/?ACTION=description-retrieval&COUNTRY=CN&ENGINE=google&FORMAT=docdb&KIND=A&LOCALE=en_EP&NUMBER=112451968&OPS=ops.epo.org/3.2&SRCLANG=zh&TRGLANG=en and attached as a PDF) in view of Cappello (US 2020/0167984).
Claim 3: WU teaches the above, but lacks explicitly suggesting, comprising, after identifying the one or more properties of the first object, applying a tag to the first object, the tag comprising information identifying the one or more identified properties. WU at least teaches that various modifications can be applied without departing from the overall scope of the claimed invention (¶ 160). Furthermore, the applicant admits that it is conventional in the art to after identifying one or more properties of an object, applying a tag to the first object, the tag comprising information identifying the one or more identified properties (US Pub. 20240359098 A1 - ¶ 4). Furthermore, an analogous art of Cappello teaches after identifying the one or more properties (motion states) of the first object, applying a tag to the first object (via applying tag to the frames of the first object), the tag comprising information identifying the one or more identified properties (Abstract, ¶ 23-34). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of WU with the tag means of Cappello because such a modification would have yielded predictable results, namely, a means of providing automated triggers for outputting corresponding sounds to identified one or more properties in which WU is intended (see above, ¶ 79-88). Such a modification would allow an animator to later add music, or may act as an input to a game engine, which automatically triggers the outputting of the corresponding sound (Cappello - ¶ 23).
Claim 4: WU teaches wherein the sound effect is applied to the first object in response to user input indicating a selection of the sound effect (¶ 33, 130, 155).
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spore (as disclosed by the combination of Behind the Scenes – Spore [Making of] (https://www.youtube.com/watch?v=ReP37VidwoI), Spore – PC/Mac (https://www.amazon.com/Spore-PC-Mac/dp/B000FKBCX4 ), and SporeWiki (https://web.archive.org/web/20191114210652/https://spore.fandom.com/wiki/Mouth) in view of D’angelo (US 2020/0047071) .
(Examiner’s Note: Behind the Scenes – Spore [Making of], Spore – PC/Mac, and SporeWiki provide disclosure for a same single invention (e.g. Spore Video Game) and is used herein in combination to illustrate or provide disclosure for the Spore Video Game).
Claims 5-7: Spore teaches the above, in addition to the sound effect being selected from a plurality of sound effects, wherein one or more properties (type of mouth) are associated with each of the plurality of sound effects and wherein the sound effect applied to the first object is selected from the plurality of sound effects based on a match between at least one of the one or more identified properties and the properties associated with the sound effect ((Behind the Scenes – Spore [Making of] – time 21:58 – 27:47, SporeWiki – pgs. 1-6), the cited portions indicate that based on the type of mouth applied to the gaming character a matching sound effect is applied to the gaming character based on the type of mouth being associated with a corresponding sound effect), but lacks explicitly suggesting the sound effect(s) applied to a sound effect library. However, an analogous art of D’angelo teaches sound effect libraries that include sound effects associated with corresponding trigger conditions (properties), wherein the library is used to apply a sound effect based on a trigger condition occurring in the game matching a sound effect associated with the corresponding trigger condition (¶ 37). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sound effects associated with properties of a virtual object of Spore with the sound effect library of D’angelo because such a modification would have yielded predictable results, namely, a means of retrieving corresponding sound effects based on properties of an object such that the sound effect can be applied to the virtual object in which at least Spore is intended (see above). Such a modification creates a more interactive gaming experience (D’angelo - ¶ 12).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over WU (CN 112451968 A)(please reference to CN112451968 English Translation found at https://translationportal.epo.org/emtp/translate/?ACTION=description-retrieval&COUNTRY=CN&ENGINE=google&FORMAT=docdb&KIND=A&LOCALE=en_EP&NUMBER=112451968&OPS=ops.epo.org/3.2&SRCLANG=zh&TRGLANG=en and attached as a PDF) in view of Suzuki (US 5,592,609).
Claim 9: WU teaches the above, in addition to applying the sound effect to the first object in the video game environment based on the one or more identified properties comprising causing the sound effect to be played in response to the player interacting with the object during gameplay (see above, ¶ 32, 75, 79-88, 104, 129), but lacks explicitly suggesting the causing occurring based on a generated file. WU at least teaches that various modifications can be applied without departing from the overall scope of the invention (see above). Furthermore, an analogous art of Suzuki teaches generating/providing a file (control file) configured to cause a sound effect to be played in response to a player interacting with an object during gameplay (Abstract, Col. 6:7-19, Col. 11:3-20, Col. 12:24-Col. 13:10, Col. 14:15-Col. 15:5, 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 modified the method of WU to include the file means of Suzuki because a modification would have yielded predictable results, namely, a means of causing the sound effect to be played in response to the player interacting with the object during gameplay in which WU is intended (see above). Such a modification would allow the processor of the gaming system to execute game operations determined by the user (Suzuki – Col. 14:24-46) and allows user to conveniently create unique video games (Suzuki – Col. 1:30-38).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAMAR HARPER whose telephone number is (571)272-6177. The examiner can normally be reached 7:30am to 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at (571) 270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRAMAR HARPER/Primary Examiner, Art Unit 3715