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 .
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 10 recite a “higher” rarity however this is a relative term yet it is unknown to what standard rare items are help to for an item to be of a quality or characteristic to be even higher or more rare. To advance prosecution, high rarity is construed to be rarity. Appropriate attention is required.
Claim Rejections - 35 USC § 101
5. 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.
6. Claims 1-14 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
7. Step 1
Claims 1-14 are directed to a computer medium/device meeting the requirements for Step 1.
8. Step 2A Prong 1
Independent Claim 1 (and similarly for Claim 13) recites consumption of a paid item and granting a player a lottery game which is an abstract idea of the abstract rules for playing a game and a certain method of organizing human activity:
9. 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, a computer and medium 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 the computer or memory with instructions 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). In fact, Applicant discloses that the claims are executed on a terminal device which can be a tablet, personal computer, mobile phone, and other such devices (Spec. [0027]).
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).
What remains is storing an acquisition time which is extra-solution activity. Even when these 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, Claim 1, and similarly Claim 13, lack the eligibility requirements of Step 2 Prong II.
10. 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 storage and removal are well-known, routine, and conventional operations (See Court decisions cited in MPEP 2106.05(d)(II) indicate that it is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here) of storing and retrieving information in memory (MPEP 2106.05(d)(II)(iv). Accordingly, a conclusion that the step is well-understood, routine, conventional activity is supported under Berkheimer. Therefore, the limitations remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Claim 1, and similarly Claim 13, does not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. Thus, Claims 1 and 13 are ineligible.
11. Dependent Claims 2-12 and 14
Claims 2-12 recite additional abstract rules or conditions of the acquisition time or particular characteristics of items stored. Claim 14 recites extra-solution displaying of the execution of the abstract game rules.
Claim Rejections - 35 USC § 102
12. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
13. Claims 1-5, 9-11, and 13 are rejected under 35 U.S.C. § 102 (a1)(a2) as being anticipated by JP 2018-057457 (hereinafter ‘457 and referring to the translation of record)
In Reference to Claims 1and 13
‘457 discloses a non-transitory computer readable recording medium (Fig. 2 medium 680) storing instructions (Page 10, line 21) for a computer (Fig. 2 processing unit 613) that executes a lottery game in which a player can acquire and consume currency items and obtain a content drawn from a lottery target content group (“[f]urther, the shop processing unit 613 causes the user to acquire an item by purchasing an item by consuming virtual currency or by performing an item lottery process (Page 14, Lines 54-55), the instructions causing the computer to execute:
storing an acquisition time at which the player acquired a currency item (“[t]his purchase information includes, for example, information such as the purchase price and purchase date and time of virtual currency.” Page 17, Lines 4-42);
consuming {paying} at least one currency item possessed by the player in response to a request to execute the lottery game (“shop processing unit allows the user to acquire an item by purchasing an item by consuming the virtual currency or by performing a lottery process of the item by consuming the virtual currency.” Page 5, Lines 24-26), and
giving benefit in execution of the lottery game based on the acquisition time of the at least one currency item (“acquire an item by purchasing the item by consuming the virtual currency or by performing a lottery process for the item” Page 3, Lines 1-2; “[f]or example, when a user purchases virtual currency immediately after logging in to the game, a special shop with a more advantageous setting is made to appear” {benefit}, Page 21, Lines 8-10).
In Reference to Claim 2
‘457 discloses that after logging in is giving the benefit in the execution of the lottery game when the acquisition time is a specific time or after the specific time (Page 21, Lines 8-10).
In Reference to Claim 3 and 4
‘457 discloses that a “special” shop {more benefit} is provided the more recent the acquisition time is (Page 21, Lines 8-10).
In Reference to Claim 5
Alternatively, after logging in ‘457 discloses that “[m]oreover, in one aspect of the present invention, the shop processing unit is more advantageous in acquiring an item as the purchase amount or accumulated purchase amount of the virtual currency of the user is larger or the purchase frequency of the virtual currency is higher.” Page 5, Lines 12-14).
In Reference to Claim 9
‘457 discloses giving the benefit by increasing a lottery draw probability of a specific content having a high rarity included in the lottery target content group where “That is, this gacha GAC is also lined up in a normal shop, but the gacha GAC in a special shop has a higher probability of hitting a rare item than the gacha GAC in a normal shop. As shown in FIG. 9A, in the normal shop, the chance of hitting a rare item in Gacha GAC is, for example, 2%, whereas in the special shop, it is increased to, for example, 10%. Therefore, when a user draws the same 300 points of virtual currency and performs a lottery with 3 gacha GAC in a special shop, the user can acquire 3 rare item with a higher probability than when a lottery is performed by a normal shop.” Page 18, Lines 36-43).
In Reference to Claim 10
‘457 discloses that giving the benefit by adding a specific content having a {high} rarity to the lottery target content group (Rare items are available from special shop Page 7, Lines 4-7, Page 12, Lines 44-46).
Claim Rejections - 35 USC § 103
14. 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.
15. 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.
16. 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.
17. Claims 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘457 in view of U.S. Pat. No. 2015/0141118 to Lefebvre.
In Reference to Claim 12
‘457 discloses the invention substantially as claimed to include wherein the currency item includes a paid item that can be acquired through a purchase procedure. However, the reference does not explicitly disclose a free item that can be acquired through game execution. One of skill in the art of acquiring game content would be aware of Lefebvre.
Lefebvre discloses that in a video game “a player decides to purchase a special weapon in the game shop for making his character more powerful. He purchases the weapon with $1 of real money. The purchase triggers a game of chance such as a scratch card. The scratch card is played and the player discovers that he wins $2 of real money. The gaming experience for the player is enhanced due to the excitement of winning the extra prize. In this game, the player spent $1 to purchase a special weapon for his character and in the process won $2. As a result, the player got the special weapon for free and made an extra $1!” [0052]).
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 shops offering paid items in combination with a lottery of ‘457 with shops that offer a game of chance for free items of Lefebvre to provide the predictable result of allowing players to also earn free assets as a result of 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 14
Lefebvre discloses a display of the scratch card (Fig. 6A-6E) as well as a Spin to Win! (Fig. 7A)which are displays of lottery game execution screens that includes an execute
button (scratch or pull level of Figs. 6A-6E, 7A) concurrently receiving the request to execute the lottery game and selection of a number of lottery draw, and upon operation of the execute button, consuming the at least one currency item (See Fig. 6F lottery following purchase of the item).
Conclusion
18. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
19. 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.
20. 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.
21. 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