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 .
Response to Amendment
Examiner acknowledges receipt of Applicant’s amendments and arguments filed 05/11/2026. The arguments set forth are addressed below.
Interpretation under 35 USC 112(f) is added.
Previous rejections under 35 USC 112(b) means-plus-function phrasing of Claims 1, 3, 5, 7, and 9-14 are withdrawn. The rejection is maintained as the Claim 6. New rejections are made under 35 USC 112(b) in view of amendments, see detailed analysis below.
Claims 2 and 4 were cancelled.
The objection of the title of the invention withdrawn in light of Applicant’s amendments.
Claims 1, 3, and 5-16 are now pending.
Claim Objections
Claims 15 and 16 are objected to because of the following informalities:
Claim 15 recites “near filed communication (NFC) module) in line 3.
Claim 16 recites “providing a information processing apparatus.”
Appropriate correction is required.
Claim 5 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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.
Claims 1, 3, and 5-16 are 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 pre-AIA , the applicant regards as the invention.
First, claim 6 recites various elements which are claimed not in terms of their structures, but in terms of their functions. Such an approach is explicitly permitted by 35 USC 112(f), which states:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
However, the quid pro quo for the convenience of employing this claiming technique is that the corresponding structure for each such element must be clearly linked or associated to the function recited, so that the element may be construed in the manner specified by the statute. When a clear link or association is not present, it is impossible to determine the metes and bounds of the claim containing the element, and the claim therefore fails to satisfy the requirement of 35 USC 112(b) that an invention must be particularly pointed out and distinctly claimed. See MPEP 2181.
The following claim elements are limitations that invoke 35 U.S.C. 112(f) paragraph because a skilled artisan would conclude that they are so devoid of structure that the drafter constructively engaged in means-plus-function claiming (for example, by using “means” or a nonce term that is not an art-recognized name of a structure of class of structures in conjunction with functional language):
“IC card information acquisition means” as recited in claim 6; and
any other claimed “means for” in conjunction with functional language that may have been inadvertently omitted from the list above.
However, for each element listed above, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or act performs the claimed function. Consequently, each claim containing an element listed above fails to particularly point out and distinctly claim the subject matter which the applicant regards as his invention.
For each claim and each limitation listed above, Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f); or
(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function.
For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Note: Applicant is respectfully reminded that a trivial amendment (such as replacing the word “means” with an equally non-structural term such as “unit” or “section” or “module” or “device” would not be sufficient to prevent the claims from being interpreted under 35 USC 112(f). Furthermore, for a computer-implemented invention, examples of “corresponding structure” include a specific arrangement of circuitry or a specific algorithm running on a general-purpose processor. Merely referencing a specialized computer (e.g., a “bank computer”), some undefined component of a computer system (e.g., an “access control manager”), “logic,” “code,” or elements that are essentially a black box designed to perform the recited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function. See MPEP 2181.
Any claim not specifically addressed above is rejected for inheriting the deficiencies of a parent claim.
Claim 1 recites two distinct and conflicting conditions for creation of the same object. The first limitation requires the processor to “create a designated object in a case where record data of an IC card, which is read from an IC tag or an IC chip ead at least a part of the record data in a forward direction or a reverse direction according to a time point at which the record data is read from the IC card, and creates the designated object in a case where a condition that at least the part of the record data read in the forward direction or the reverse direction coincides with the setting value associated with the designated object is satisfied.” It is unclear whether the designated object is created upon satisfaction of the first condition, the second condition, or both or what the relationship is of the two conditions in relation to each other.
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 therefore, subject to the conditions and requirements of this title.
Claims 1, 3, and 5 to 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The examiner follows the two step-analysis, as described in MPEP 2106 (available at https://www.uspto.gov/web/offices/pac/mpep/s2106.html). The following diagram is an overview of the steps involved.
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Step 1 of the two step-analysis considers whether the claims fall into one of the four statutory categories of invention such as a process, machine, manufacture, or composition of matter. The instant invention claims an information processing apparatus, and an object creation method. As such, the claimed invention falls into the broad statutory categories of invention. However, claims that fall within one of the four statutory categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas.
Step 2A has been further divided into two prongs as shown in the following diagram.
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Under prong 1 of step 2A, the examiner considers whether the claim recites an abstract idea, law of nature or natural phenomenon. The term “abstract idea” is not interpreted as a layperson might. Instead, the term “abstract idea” is interpreted as described in legal opinions by courts.
According to MPEP 2106.04(a):
the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Here, representative claim 16 recites the following (with emphasis)(and similarly recited Claims 1 and 15): “16. (Currently amended) An object creation method performed by an information processing apparatus, the object creation method comprising:
providing a information processing apparatus comprising a memory, a near field communication (NFC) module, and a processor connected to the memory and the NFC module, the processor being configured to execute:
record data to reading of next record data and presence or absence of a change in the next record data read;
determining a type of near field communication technology of the IC card, and by using the NFC module, read the record data varying by use of the IC card, from the IC card, the condition coinciding between at least a part of the record data and a setting value associated with the designated object;
in a case where it is determined that the record data does not satisfy the condition, creating a first related object in a case where there is no change in the next record data read after a time corresponding to a difference between at least the part of the record data and the setting value has elapsed, and a second related object in a case where there is a change in the next record data read; and
reading at least a part of the record data in a forward direction or a reverse direction according to a time point at which the record data is read from the IC card, and creating the designated object in a case where a condition that at least the part of the record data read in the forward direction or the reverse direction coincides with the setting value associated with the designated object is satisfied.”
The italicized portions of representative claim 16 generally encompass the abstract idea, with substantially similar features in claims 1 and 15. Overall the claim recites creating a designated object where record data satisfies a condition, the condition being that at least a part of the record data coincides with a setting value associated with the designated object; where the record data does not satisfy the condition, creating a first related object where there is no change in the next record dat read after a time corresponding to a difference between at least the part of the record data and the setting value has elapsed, and a second related object where there is a change; and reading at least a part of the record data in forward or a reverse direction according to a time point at which the record data is read. These limitations of the claim may be viewed, for example, as: (i) an observation, judgement or evaluation, which is a mental process under the 2019 PEG. (see MPEP § 2106.04(a)(2), subsection III). Additionally, the limitations also recite a certain method of organizing human activity in the form of following rules or instructions, the recited operations constituting the rules by which objects are awarded to a user in game.
The dependent claims include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed. Accordingly, each of Claims 1, 3, and 5 to 16 recites an abstract idea.
Step 2A, Prong 2
Under prong 2 of step 2A, the examiner considers whether the additional elements in the claims integrate the abstract idea 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, the abstract idea is not integrated into a practical application. The additional elements here are a memory, a near field communication module, a processor connected to memory, and the NFC module; an IC card, IC tag, or IC chip; and a non-transitory recording medium and an information processing apparatus. The additional elements, however, 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. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. 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).
Determining the type of NFC technology of the card and reading record data from the card using the NFC module, creating, comparing, and reading elements in the claims are deemed to be data gathering and data presentation for the use of the judicial exception and similarly are recited at a high level of generality. Thus, these limitations are a form of insignificant extra-solution activity (See MPEP 2106.05(g), See also selecting a particular source and type of data to be manipulated where “Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)).
Furthermore, the additional elements do not serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Accordingly, Claims 1, 15, 16, and their dependent claims as a whole does not integrate the recited judicial exception into a practical application and these claims are directed to the judicial exception. Thus, Claims 1-16 lack the eligibility requirements of Step 2 Prong II.
STEP 2B
Finally, under step 2B, the examiner evaluates whether the additional elements:
add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The present claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements here are a memory, a near field communication module, a processor connected to memory, and the NFC module; an IC card, IC tag, or IC chip; and a non-transitory recording medium and an information processing apparatus. These additional elements are generically claimed computer components which enable a game to be conducted by performing the basic functions of: (i) receiving, processing, and storing data, (ii) automating mental tasks and (iii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application.
Additionally, a claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims.
Furthermore, taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1, 15 and 16 (and their dependent Claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to conduct a game with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The above-identified additional elements, when viewed as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.
For at least the above reasons, the apparatuses of Claims 1, 3, and 5 to 16 are directed to applying an abstract idea (e.g., mental process) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 1 to 16 provides meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
AIA Notice
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.
Regarding the prior art, an updated search found that the closes prior art to the claims/limitations are:
U.S. Patent Application Publication 2016/0310840 A1 to Kyogoku
Kyogoku generally discloses An information processing apparatus capable of near field wireless communication with an information storage medium includes a reading/writing module which reads and/or writes data from and/or into first and second information storage media by establishing near field wireless communication with the first and second information storage media and a data processing module which processes data read as a result of reading of data from the first and second information storage media by a first application program executed by the information processing apparatus. The data processing module performs first processing affecting progress of a game based on the data read from the first information storage medium and performs second processing not affecting progress of the game based on the data read from the second information storage medium.
U.S. Patent Application Publication 2012/0077584 A1 to Sarmenta.
Sarmenta generally discloses An apparatus for using Near Field Communication to facilitate implementation of an electronic game or application may include a processor and memory storing executable computer program code that cause the apparatus to at least perform operations including receiving data from a device via a Near Field Communication. The computer program code may further cause the apparatus to determine whether the received data was previously detected and translate the received data to correspond to at least one item of virtual data relating to the electronic game or the application in response to determining that the received data is being detected for the first time. The computer program code may further cause the apparatus to enable display of the item of virtual data in a virtual world of the electronic game or the application.
U.S. Patent 9,582,147 B2 to Matsumura.
Matsumura generally discloses a contactless communication unit for performing contactless communication with a data storage medium having a contactless communication function; a data acquiring unit for acquiring data stored in the data storage medium by the contactless communication unit; a display processing unit for displaying at least one content stored in a content storage unit and a content according to data acquired by the data acquiring unit on a display unit as selection objects; a selection accepting unit for accepting selection by a user for a content displayed by the display processing unit; and an information processing unit for performing information processing pertaining to a content, which is an object of selection accepted by the selection accepting unit.
U.S. Patent 8,562,404 B2 to Yamada et al.
Yamada generally discloses a card game program is executed in a computer device for playing a game using a plurality of cards. The identification information of each card is used to generate a combination of the cards for a game player. The combination of the cards is changed in response to an instruction of the game player.
However, Kyogoku, Sarmenta, Yamada, and/or Matsumura in combination or taken alone, fails to disclose, teach, or reasonably suggest ….. “determining a type of near field communication technology of the IC card, and by using the NFC module, read the record data varying by use of the IC card, from the IC card, the condition coinciding between at least a part of the record data and a setting value associated with the designated object; in a case where it is determined that the record data does not satisfy the condition, creating a first related object in a case where there is no change in the next record data read after a time corresponding to a difference between at least the part of the record data and the setting value has elapsed, and a second related object in a case where there is a change in the next record data read; and reading at least a part of the record data in a forward direction or a reverse direction according to a time point at which the record data is read from the IC card, and creating the designated object in a case where a condition that at least the part of the record data read in the forward direction or the reverse direction coincides with the setting value associated with the designated object is satisfied. ”. As such, for at least these reasons, Examiner have found these limitations in combination with the other limitations of the claim are neither anticipated by nor obvious over the closest prior art. The claims remain rejected under 35 U.S.C. 101 and 35 USC 112(b) above.
Response to Arguments/Remarks
Applicant’s arguments filed 05/11/2026 have been fully considered but they are not persuasive.
On page 13, Applicant addresses the rejection of the claims under 35 U.S.C. 101. Applicant argues “the claimed operation of reading information from an IC tag or IC chip cannot be performed in the human mind or with a pen and paper.” The Examiner respectfully disagrees. That a claim recites one step which cannot be performed mentally does not establish eligibility. The inquiry under Step 2A Prong One asks whether the claim recites a judicial exception; the inquiry under Prong Two asks whether the additional elements integrate that exception into a practical application. Here, the NFC read is the acquisition of an identifier from a card so that the recited comparisons, timing determinations and selections may be performed on it. That is data gathering which constitutes insignificant extra-solution activity under MPEP 2106.05(g).
Applicant further argues that “furthermore, the addition of specific technical steps-such as determining the NFC type and reading the data forward or backward depending on the time of reading-integrates the abstract idea into a "practical application". These features are not "token additions.”” This is not persuasive. Neither limitation is recited with any implementation detail: no technique of type determination, no reading protocol, and not mechanism for directional reading is claimed. Neither is asserted to improve the speed, reliability, security or any other characteristic of near field communication or of the apparatus. Both operate solely to supply and to vary the input to the abstract selection.
Applicant further argues “These features are not "token additions.” They specifically improve the operability of the apparatus and impart game properties to object creation, yielding a concrete technical improvement and constitute a practical application.” The Examiner respectfully disagrees. Imparting game properties to object creation is an improvement to the game implemented by the apparatus, not to the apparatus itself. An improvement to the abstract rules a computer carries out is not an improvement to computer functionality. SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167-68 (Fed. Cir. 2018). Neither the claims nor the specification identifies any respect in which the operability of the memory, processor, or NFC module is improved.
Therefore, the rejection is maintained.
On page 13, in view of the incorporation of former claims 2 and 4 into Claims 1, 15, and 16, the anticipation rejection under 35 USC 12 over Hedrick is hereby withdrawn. (Examiner Note regarding Claim 4: Claim 4 was not rejected over prior art; Claim 4 was separately rejected under 35 U.S.C. §§ 101 and 112(b). The § 101 rejection is maintained by the amendment and incorporated limitations are addressed by the newly applied rejection.
Conclusion
Claims 1-16 are examined above.
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/S.N.H/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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