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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,059,626. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the parent patented claims.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/732,783. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite very similar claim language with minor rewording.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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)(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.
Claims 1-2 and 13-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nomura et al. (US PG pub 2018/0361248).
Nomura et al. shows,
In regards to claim 1, 19 and 20,
A computer-implemented method, comprising:
hosting, by a game server, a gaming module; (figure 1)
receiving, by the game server, data from one or more devices of a user generated during gameplay, at least one device of the one or more devices (clients 120) comprising one or more sensors (paragraph [0020], GPS and positioning devices 128) configured for sensing the data (location data);
generating, by one or more processors, one or more virtual elements capable of battling during gameplay based at least in part upon the data; (paragraph [0088], “If the group successfully completes the collaborative minigame (e.g., beats the raid boss in battle), then the individual minigame begins. For example, the player's may be given an opportunity to capture the raid boss for use in other aspects of the location-based game (e.g., to assign to defend virtual elements, to battle and capture virtual elements, etc.).” The whole game is location-based, so the battling and capturing virtual elements are generated based on sensed location data.) and
transmitting, by the game server, the one or more virtual elements to the user. (sending the individual minigame)
In regards claim 2,
wherein the one or more virtual elements are configured to be selected by the user at will for subsequent battling thereof during gameplay. (paragraph [0076], “The individual virtual experience module 530 provides virtual experiences to players that may be (or must be) completed by a single player. In one embodiment, a player triggers an individual virtual experience at a virtual element by selecting a corresponding control provided by the virtual element interaction module 520.”)
In regards claim 13,
wherein generating the one or more virtual elements occurs within a background process based at least in part upon the data and without user selection such that the user is not actively aware of the generated one or more virtual elements. (from above, paragraph [0076], the “must be” completed is considered to be without user selection)
In regards claim 14,
further comprising displaying, on the one or more devices, an option to select the one or more virtual elements. (Gaming module 125)
In regards claim 15,
wherein the option to select is independent from a fitness activity of the user. (Other than location, fitness activity is not mentioned and therefor independent of the selection.)
In regards claim 16,
further comprising retrieving the data within a foreground process of the at least one device of the one or more devices of the user. (Positioning device 128)
In regards claim 17,
further comprising retrieving the data within a background process of the at least one device of the one or more devices of the user. (Location Module 114)
In regards claim 18,
wherein the data comprises location data of the user, a distance traveled by the user, a number of steps by the user, a heart rate of the user, an optimal heart rate of the user, and/or an exercise time of the user. (as discussed, location data is shown.)
Allowable Subject Matter
Claims 3-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 1-20 have been rejected under nonstatutory double patenting, but would overcome this rejection if an approved TD was filed.
The following is a statement of reasons for the indication of allowable subject matter:
In regards to art, claims 3 and 4 include fitness activity or heart rate data as the specific gameplay data collected and use to generate virtual elements capable of battling during gameplay. The cited prior art does not show or teach this. Claims 5-12 are dependent upon claim 4.
In regards to 35 USC 101, the current amendment provides that the fitness data
be generated during gameplay. This cannot be done mentally. Per the current guidelines, Step 2A, Prong One is now NO. Per Pathway B, the claims qualify as
eligible subject matter under 35 USC 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A CUFF whose telephone number is (571)272-6778. The examiner can normally be reached Monday - Friday 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at 571 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A CUFF/Primary Examiner, Art Unit 3715