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 .
Procedural Summary
This is responsive to the claims filed 5/30/2024.
Claims 1-13 are pending.
Signed copies of the IDS’ are attached.
The Drawings filed 5/21/2024 are noted.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
The claims are drawn to process categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claim 1 is analyzed below, with italicized limitations indicating recitations of an abstract idea:
Claim 1: “ A computer-implemented method of generating a sound effect for a video game, the method comprising: receiving a first sound effect file comprising one or more sound effect features; receiving a first animation representing an action in the video game; determining, based on the received animation, one or more constraints to be applied to the one or more sound effect features; adjusting the one or more sound effect features to produce corresponding adjusted sound effect features satisfying the determined constraints; and generating a second sound effect file comprising the adjusted sound effect features.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG1, “certain methods of organizing human activity”, managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
The claims are drawn to generating a sound effect for a video game. The claims require receiving a first audio file and animation, determining parameters to apply to the audio, adjusting the audio and generating a second audio file for the game. These steps represent managing interactions between people, i.e., what types of audio are output to game players.
Managing audio output to game players also represents a social activity, wherein the underlying activity is the video game. Additionally, managing game audio represents following rules, wherein the rules are defined by the initial audio file and what parameters are changed to convey audio for a game animation.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require a computer capable of receiving sound files, presenting animations, editing sound files and executing an algorithm, collectively functions performed by a GUI.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, see Comair et al. (U.S. Pub. No.: 2003/0045956 A1) showing the conventionality of computers to receive and modify audio files for video game events. These elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they only recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls2:
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 cffDNA 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.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-11 & 13 are rejected under 35 U.S.C. 103 as being unpatentable over Comair et al. (U.S. Pub. No.: 2003/0045956 A1) in view of U.S. Pub. No.: 2023/0390642 A1, hereafter ‘642 reference).
Regarding Claims 1, 3 & 4: Comair discloses a computer-implemented method, (¶ 2) of generating a sound effect for a video game, (Abstract), the method comprising: receiving a first sound effect comprising one or more sound effect features, (Fig. 8, 802); receiving a first animation representing an action in the video game, (Fig. 8, 804); determining, based on the received animation, one or more constraints to be applied to the one or more sound effect features, (Fig. 8, 806); adjusting the one or more sound effect features to produce corresponding adjusted sound effect features satisfying the determined constraints, (Fig. 8, 806, an related descriptions); and generating a second sound effect comprising the adjusted sound effect features, (Fig. 8, 808, 810 and related descriptions).
Comair does not make explicit that the sound effects are stored in a file. It is inherent that Comair’s sound effects are stored in a file format because they are stored in a memory device of the system, (e.g., Fig. 10B, audio memory 126). Since Comair does not make explicit the claimed file, a secondary reference is relied on:
In a related invention, the ‘642 reference teaches a sound effect system where media is stored in a library of sound effects for later retrieval and use during gameplay, (‘642, ¶ 62). It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s filing to have stored Comair’s sound waveforms in a file format, as suggested by the ‘642 reference’s library of media affects, for the purpose of effectively enabling retrieval and use.
Regarding Claim 2: Comair in view of the ‘642 reference shows layers of a sound effect file, (e.g., ‘642 reference ¶¶ 2, 37).
Regarding Claims 5-11 & 13: Comair does not make explicit, randomising the one or more sound parameters. However, the ‘642 reference teaches this in via an AI training and sampling model system, (‘642 reference, ¶¶ 51, 52). It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s filing to have provided the randomization techniques taught by the ‘642 reference in Comair for the purpose of enhancing the accuracy of a deep learning model, with the goal of reducing or ultimately removing human intervention.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Comair and the ‘642 reference, as applied to Claim 11, in view of Jahnke (U.S. Pub. No.: 2005/0182608 A1).
Comair and the ‘642 reference teach the invention substantially but does not make explicit, wherein at least some of the animation parameters are identified using a computer vision algorithm. However, in a related invention, Jahnke teaches an audio rendering system using a computerized audio algorithm, (Jahnke, e.g., ¶¶ 71, 72.) It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s filing to have provided Jahnke’s computer algorithm in the system of Comair and the ‘642 reference for the purpose of better controlling the amount of computing resources used, (e.g., Jahnke, ¶ 116).
Conclusion
Additional Relevant References: See 892
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached on M-F, generally 9am-5:30 pm.
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/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 See MPEP 2106
2: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)