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.
3. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
4. Step 1
Claims 1-20 are directed to a system, method, and recording medium meeting the requirements for Step 1.
5. Step 2A Prong 1
Independent Claim 1 (and similarly for Claims 9 and 17), recites a game and said game is linked to current real-world events which is following the rules of a game and abstract certain method of organizing human activity.
6. Step 2A Prong II
The abstract idea is not integrated into a practical application. According to 2019 PEG, a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
Here, what remains of Claim 1 is server, client terminals, and a client program which 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 processor, memory, set of 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). 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).
The server receives and manages registration information which is extra-solution data gathering using the above devices employed as tools. Even when the limitations are viewed in combination, the additional elements in this claim do no more than automate the steps needed to be performed, using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Latric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality). Accordingly, each claim, as a whole, does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. Thus, Claim 1, and similarly Claims 9 and 17, lack the eligibility requirements of Step 2 Prong II.
7. Step 2B
According to the 2019 PEG, in addition to the considerations discussed in Step 2A, an additional consideration indicative of an inventive concept (aka “significantly more”) is the addition of a specific limitation other than what is well-understood, routine, conventional activity in the field (MPEP 2106.05(d)). Conversely, an additional consideration not indicative of an inventive concept is simply appending well-understood, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The extra-solution data gathering is a well-known and routine functions previously held by the Courts (See (receiving or transmitting data over a network
(MPEP 2106.05(d)(II)(i) and storing and retrieving information in memory (MPEP 2106.05(d)(II)(iv)). Thus, Claim 1, and similarly Claims 9 and 17, do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. Thus, Claims 1, 9 and 17 are ineligible.
8. Dependent Claims 2-8, 10-16, and 18-20
Claims 2-4, 10-12, and 18-19 recites additional abstract rules of the game. Claims 5-8, 13-16, and 20 recite abstract matching and extra-solution matching table, environmental information, API server, and notifications. Thus, none of the claims supply a practical application or inventive concept sufficient to transform the nature of the claim into a patent-eligible application. Additionally, the combination of additional elements adds nothing that is not already present when considered individually where the additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept. Thus, Claims 2-8, 10-16, and 18-20 are ineligible.
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 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter wherein the claim recites a recording medium not claimed as embodied in a non-transitory storage medium. Because Applicant's disclosure is not limited solely to tangible embodiments, the claimed subject matter, given the broadest reasonable interpretation, may be a carrier wave comprising of instructions and is, therefore, non-statutory. The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a computer readable storage medium typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable storage media, particularly when the specification is silent. (See MPEP 2111.01). When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter (See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2). Appropriate attention is required.
Claim Rejections - 35 USC § 102
11. 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.
12. Claims 1-19 are rejected under 35 U.S.C. § 102 (a1)(a2) as being anticipated by U.S. Pat. Pub. No. 2012/0231887 to Lee.
In Reference to Claim 1, 7, 9, 15, and 17
Lee discloses a system, method, and memory for providing a game (Fig.1), the system
comprising:
a service server and memory (Fig. 1 114 and database 112, see also server [0017]) for receiving and registering membership information of game service users from client terminals (mobile device 102 [0025]) and executing membership management (“Upon proper registration, authentication, or authorization, a user's mobile device 102 can exchange the collected environmental data or a digital representation of the scene 120 with the AR mission generator 110” [0021]); and
a game server (server [0017], see also AR mission engine [0014]) for providing the client terminal with a client program for executing a game (information exchanged with mobile device through an application program interface (API) [0025]), wherein the game server causes an interaction available game environment configuration linked to current real-world environmental information ([0014, 0021, 0023, 0026]) to be executed through the client program (the above system, method and memory of Fig. 1 results in the performance of this intended use limitation).
In Reference to Claims 2-3, 10-11, and 18-19
Lee discloses an in-game object {game items} to be changed according to real-world
environmental information, as the interaction available game environment configuration (“[t]hus, for example, a user may capture a picture of a scene having a plurality of trees. The trees can be recognized by the AR mission engine, and AR objects can be generated based upon the trees’ attributes (e.g., size, leave color, distance from mobile device, etc.).” ([0030]).
In Reference to Claims 4 and 12
Lee discloses generating one of more AR missions which is the generation of a number of quests ([0013], instantiated mission [0014]).
In Reference to Claims 5 and 13
Lee discloses a matching table {mission template database 112 [0024]} including an interaction available game environment configuration that matches each of the real-world environmental information. (“The attributes can be simply observed or looked-up from a database based on object recognition algorithms (e.g., SIFT, vSLAM, Viper, etc.). [0029]).
In Reference to Claims 6 and 14
Lee discloses the game server provides the client terminal with the matching table to
cause the client terminal to autonomously configure the interaction available game environment based on current real-world environmental information where an AR mission can be presented to a user via a mobile device (e.g., portable computer, media player, cell phone, vehicle, game system, sensor, etc.) where the user can interact with the mission via the mobile device, or other interactive devices” [0013, 0022].
In Reference to Claims 8 and 16
Lee discloses environmental information for a specific region where “[s]cene characteristics can also include weather conditions, visual images, location information, orientation, captured audio, presence and type of real-world objects, or other types of characteristics.” ([0026]).
Claim Rejections - 35 USC § 103
13. 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.
14. 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.
15. 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.
16. Claim 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of U.S. Pat. Pub. No. 2018/0311573 to Pickover.
Lee discloses the invention substantially as claimed. However, the reference does not explicitly disclose a notification for environmental information of a specific region or preferred environmental information according to a user's setting. One of skill in the art would be aware of the alerts of Pickover.
According to Pickover, user-specific configuration settings [0028] are used in a contextual analysis to “[f]or example, contextual analysis of the phone/device usage (e.g., by detecting emergency situations from incoming text message sent, incoming tweets, incoming calls, incoming Facebook alerts, checking maps) may enable generating alerts or tips while at the same time making graphical changes to an AR object to deter game players from approaching an undesirable location.” [0044]. According to Pickover, “[t]he exemplary method further includes retrieving from the first locational database an augmented reality object; obtaining an indication that the location of the mobile device is an undesirable location; and modifying the augmented reality object responsive to the indication that the location of the mobile device is an undesirable location.” (Anstr.).
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 to the changed AR objects of Lee with the contextual analysis and alerts to achieve the predictable result of modifying the augmented reality object responsive when the mobile device is in an undesirable location. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
Conclusion
17. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
19. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
20. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached on (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/Primary Examiner, Art Unit 3715