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.
Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. The claims recite “Certain methods for organizing human activity” in the form of players following game rules or instructions, which are activities held to be abstract by the courts. The claims list intended uses of generic computer functions for applying character collection game rules (“process for deciding…”, “process for allowing…”, “process for executing…”), without any technical description of how any particular computers are programmed to carry out these functions. No nonobvious hardware, system architecture programming operations or combination thereof are claimed — only ideas of functions. And these functions are squarely about rule-based player operations in a character collection game. No practical application(s) or inventive concept(s) are found that could transform the claims into eligible subject matter.
A detailed discussion follows that is based on the guidance provided in the 2019 PEG and Oct. 2019 Update. Steps 1 and 2 of the Alice analysis have been conducted for pending claims 1-9.
Claim 1 is treated as representative; independent claims 6, 7 and 8 are commensurate in scope and rise or fall with claim 1.
Claim 1 (non-transitory computer-readable medium):
L1: A non-transitory computer-readable medium stores a program for execution by a processor;
L2: a process for deciding places for a plurality of ranking objects tied to player information of a plurality of players who have played a predetermined game, based on at least one result of the predetermined game;
L3: a process for allowing a second player different from a first player to organize, in a deck, a game medium tied to player information of the first player, the ranking object of the first player being in a predetermined place;
L4: a process for executing a game on the basis of an operation made by the second player by using the deck in which the game medium is organized.
Dependent claim overview:
Claim 2: A second player is allowed to organize in the deck a game medium tied to a second player apart from a game medium extracted on the basis of ranking place of an object
Claim 3: Game media extracted on the basis of a) rank and b) player information of a second player differs in terms of set organization condition.
Claim 4: a game in which the deck of claim 1 is used proceeds based on player operation, game media is generated based on claim 1, and the ranking object is generated based on claim 1.
Claim 5: game media is orderly arranged in a predetermined time period.
Claim 6: method claim with the same operations of claim 1.
Claim 7: device claim with the same operations of claim 1.
Claim 8: system claim with the same operations of claim 1.
Step 1: In this step of the Alice analysis, it is determined that all of the pending claims fall into statutory categories. The claims meet step 1 as follows:
Claims 1-5 are directed to an article of manufacture (computer-readable media)
Claim 6 is directed to a process (method).
Claim 7 is directed to a machine (device)
Claim 8 is directed to a machine (system).
Step 2A, Prong 1: In this step of the Alice analysis, judicial exception(s) that fall into abstract idea groupings enumerated in the 2019 PEG are identified and quoted.
The pending claims recite rules and outcomes for multi-user gameplay conducted among persons and between persons and a computer (“allowing a second player … to organize, in a deck, a game medium…” (claim 1), “allowing the second player to organize, in the deck, the game medium extracted … apart from the game medium extracted on the basis … of the ranking object” (claim 2), “an organization condition for organizing a game medium in the deck is set” (claim 3), “proceeding with the predetermined game on the basis of player operation (claim 4)). Under the 2019 PEG, “certain methods of organizing human activity” include “managing personal behavior or relationships or interactions between people” and “following rules or instructions.” See MPEP 2106.04(a)(2)(III)(A). In the pending claims, gameplay rules and player coordination and competition steps are seen as managing personal behavior and relationships among players and describing ideas of rules and instructions to be followed by players.
And to the extent generic computer(s) are used to facilitate organized human activity among users and between users and the computer(s), MPEP 2106.04(a)(2)(II), “the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping.” In the pending claims, one or more players following game rules or instructions using a computer is covered activity within this grouping.
Limitations directed to abstract ideas (excerpts):
in claim 1, “deciding places for a plurality of ranking objects…”, “allowing a second player … to organize, in a deck, a game medium…”, “executing a game on the basis of an operation made by the second player using the deck…”
in claim 2, “allowing the second player to organize, in the deck, the game medium…”
in claim 3, “an organization condition for organizing a game medium in the deck is set … on the basis of the place of the ranking object and the game medium…”
These quoted limitations collectively amount to recited rules for playing a cooperative or competitive game—i.e., organizing multi-user interactions, setting conditions, and determining outcomes—falling squarely within the abstract-idea grouping of certain methods of organizing human activity. See In re Smith, 815 F.3d 816 (Fed. Cir. 2016) (rules for a card game conducted between persons are abstract); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014) (managing a bingo game via a computer is abstract). And as instructed in MPEP 2106.04(a)(II), conducting abstract activities between one or more persons and a computer(s) is covered activity within an enumerated grouping of abstract ideas.
Dependent claims:
Claimss 2-3 amount to further game-rule details of the game of claim 1 (particulars of how a deck is organized by a second player and rules that govern deck organization thereby). These elaborate the abstract idea and do not introduce a technological improvement. Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)), if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."); Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)), “the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.”
Independent claims 6 (method), 7 (device) and 8 (system) are directed to the same abstract idea implemented via generic computers; they likewise fail Step 2A Prong 2 and Step 2B.
Step 2A, Prong 2: In this step, any additional elements beyond the identified abstract ideas are identified and evaluated for any integration into a practical application. In particular, any claimed technological improvement is considered.
Additional elements recited in the claims include:
a non-transitory computer-readable medium storing computer-executable instructions; (claim 1) “a computer” (claims 6, 8), “a game device” (claim 7);
Claims 4-5 are an “apply it” scenario wherein the abstract ideas of claim 1 for instructing players to exhibit organized behavior and follow rules and instructions in a game are attributed to generic computers – player operation proceeds the game, some process generates game media, a ranking object is generated in some unclaimed fashion, and game media is arranged in a time period. The claims do not include any description of what program steps or of what hardware or system architecture are required to achieve these end results. The claims seek to cover any program steps and any hardware used for the purpose of the claimed player operations and game rules. “The receiving of input and storing steps represent the use of a computer or other machinery in its ordinary capacity for economic or other tasks … or simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016 attributing particular generic computer functions for computer hardware to perform from well-known, routine, conventional functions performed by such hardware has been held to be insufficient to show an improvement to technology, Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264, 120 USPQ2d 1201, 1208 (Fed. Cir. 2016).
The preceding additional elements, considered alone and in the context of the claims, do not integrate the abstract game-rule logic into a practical application that improves computer functionality or another technology. They:
Invoke generic computers, memories, and conventional networked game environments. See where the instant specification discloses a standard CPU, communication unit, input, display, storage, server, etc. (see specification [0022], “player terminal 1” to include “a central processing unit (CPU) 10, memory 12, a bus 13, an input/output interface 16, a storage unit 18, a communication unit 20, an input unit 22, and an output unit 24” and [0023], “server 1000,” to include similar components). “[T]he invocation of ‘already-available computers that are not themselves plausibly asserted to be an advance … amounts to a recitation of what is well-understood, routine, and conventional.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020). And “simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)
Do not recite a specific improvement to the functioning of a computer (e.g., no improved rendering pipeline, no reduced latency synchronization protocol, no novel memory management, no graphics or physics engine enhancement).
Do not effect a transformation of an article.
Are drafted as applying the abstract idea in the field of computer games (field-of-use) with functional language specifying intended uses without any particularity of how the functions are to be accomplished (“for allowing,” “for executing,” “for proceeding”, “for generating”) and results-oriented language (e.g., in claim 3, “an organization condition … is set”, in claim 4, “the ranking object is the game medium generated… ”) and typical game operations (“the predetermined game is a game in which the deck is used” and “executing the game by using the deck,” in claim 4).
With regard to interpreting results-oriented claim language when performing a 35 USC §101 analysis, see Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024) when "the claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves these results. Claims of this nature are almost always found to be ineligible for patenting under Section 101." See also Interval Licensing LLC v. AOL Inc. (896 F.3d 1335) wherein the court found that claims to a computer software "attention manager" that displays content on unused portions of a screen were result-oriented and invalid under 35 U.S.C. § 101 because they did not recite a specific technological method for achieving the claimed result; Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024): The court held that claims must not only describe desired outcomes but also include a specific process or machinery for achieving that result; In re Killian, 45 F.4th 1373 (Fed. Cir. 2022): The court reaffirmed that claims simply reciting a desired result without specifying how to achieve it are directed to an abstract idea and are ineligible under 35 U.S.C. § 101. The claims at issue were directed to analyzing data from two databases. In the Step Two of the Alice test, the court determined that there was no inventive concept because the additional elements merely involved generic and routine data gathering and analysis steps that could have been performed with or without a computer.
MPEP § 2106.05(f) explains that, “The recitation of claim limitations that attempt to cover any solution to an identified problem with no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it"”.
The pending claims do not include any technical description of mechanisms for accomplishing the claimed results. Instead, the claims use some unspecified computer and unspecified programming to conduct generic, result-oriented steps such as “organizing”, “executing”, “generating”, for performing abstract certain methods of organizing human activity. The claims seek to cover any system and any method (such as any programming instructions) for applying the abstract game rules and instructions for game players. As such the claims are found to be directed to ineligible subject matter.
Step 2A Prong 2 concludes in a determination that the additional elements do not amount to a practical application of the claimed abstract ideas.
Step 2B: In this step of the Alice analysis, it is assessed whether additional elements amount to significantly more than abstract ideas. Any well-understood, routine, conventional (“WURC”) activity is also discussed along with evidentiary considerations.
Absent integration into a practical application, the claims lack “significantly more” than the abstract idea.
Additional elements that are generic computer implementation and conventional components are:
“non-transitory computer-readable medium,” “one or more computers,” “memories that store computer-executable instructions,” generic “game device” and “game server.”
The specification characterizes these computing components as conventional computing hardware and software performing ordinary functions (spec. [0022]-[0023]), supporting a finding that the implementation is well-understood, routine, and conventional (WURC). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (WURC must be supported); here, the instant specification itself indicates conventionality.
Conclusion:
Claims 1-8 are found to be ineligible under 35 U.S.C. § 101. Although step 1 is satisfied (the claims recite manufacture/process/machine), in Step 2A Prong 1, the claims are found to recite an abstract idea—rules for playing a competitive game and managing multi-user interactions and outcomes (certain methods of organizing human activity). And as found in Step 2A Prong 2, the abstract ideas are not integrated into a practical application; only generic computer implementation and field-of-use limitations are claimed. There are no technical details in the claims that reveal how any of the claimed result-oriented language is to be accomplished. And performing Step 2B, there is nothing “significantly more” found beyond WURC elements as evidenced by the specification.
Possible remedies:
To improve subject matter eligibility under 35 USC § 101, it is recommended to anchor the claims to concrete, non-generic technical mechanisms (such as particular software processes or nonobvious system architectures) in a way that there is evidence in the claims of certain improvements to computer or network operations or to another technology. In the field of the instant invention (new rules to be followed by persons playing a game), an improvement would have to be found to an inherently technical problem existing in computers and would have to reveal how the computer(s) themselves are improved as a direct result of the claimed invention. The details of the improvement to computers cannot be found in the wording of the abstract ideas (details of game play rules) themselves. Genetic Techs v Merial, an inventive concept "cannot be furnished by the unpatentable law of nature" itself. A subjective improvement in a game player’s user experience (by providing a game that might provide arguably unique rules) is not an improvement to computers themselves or to computer technology and does not solve any stated problem that is inherently technical in nature.The court ruled in International Business Machines Corporation v. Zillow Group, Inc., (CAFC, 17 October, 2022), that "improving a user's experience while using a computer application is not, without more, sufficient to render the claims" patent-eligible. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
Examples might include to:
Tie abstract steps to a specific, non-generic technological implementation that improves computer functionality or another technology (e.g., reduces network latency by X, improves memory utilization via Y, improves image fidelity through Z), with technical mechanisms claimed.
Provide evidence of improvements to computers or network operations in the claims by claiming certain network nonobvious server-side architecture that is also claimed as solving problems existing in the art, or claiming a certain improvement in rendering such as a GPU-accelerated improvement that provides measurable improvements to game functionality.
Add claim elements showing a particular machine or a transformation of an article, beyond mere data manipulation or display functions.
Replace results-oriented terms (“determining winning condition,” “ending play”) with concrete steps and parameters tied to the technical mechanism (e.g., explicit algorithmic operations, message formats, timing constraints, thresholds).
Limit scope to a specific technological field and architecture (e.g., “a distributed game server cluster employing [named protocol] with defined message cadence and buffer management”) and claim the architecture itself, avoiding broad “apply it on a computer” formulations.
Provide specification support demonstrating the asserted improvements are not well-understood, routine and conventional:
Implementation details: algorithms with stepwise operations, data structures with constraints, hardware configurations, protocol diagrams.
Performance evidence: benchmarks, latency/throughput graphs, memory usage comparisons versus baselines.
Engineering rationale: why existing approaches fail and how your mechanism achieves measurable gains.
Recite in the claims a technical solution to a technological problem (e.g., secure hardware-backed attestations, novel protocol flows, improved cryptographic operations, sensor fusion pipelines).
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 3 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. The second clause of the claim appears to be missing context that would enable a reader of the claim to understand a distinction between game media that is extracted based on a ranking object vs. game media that is extracted based on player information – how they “…differ from each other in terms of whether the organization condition is set or the set organization condition” according to the claim. This limitation lacks a definition of how an organization can be judged to be set – set in what manner or as judged by what metric or set by what programming steps or set by whom, for example. Appropriate correction is required.
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)(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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2020120929 A to Hayashi T et al. (hereinafter referred to as Hayashi).
Re claim 1, Hayashi discloses:
L1. A non-transitory computer readable medium storing a program
[0006] describes that the invention of Hayashi comprises an information processing device that executes game processing related to game character advancement and support character selection.
[0010]-[0012], the system comprises a plurality of client devices 10 and a server 20 each of which serves as an information processing device. Control unit 11 of each client device 10 “includes at least one processor and executes various information processing according to programs stored in the storage unit 12.” Further details of the hardware and functions of storage unit 12 are provided beginning in [0012].
L2: causing a computer to execute: a process for deciding places for a plurality of ranking objects tied to player information of a plurality of players who have played a predetermined game, based on at least one result of the predetermined game;
[0036], support character selection operation reception unit 32 displays candidate support characters that have been used previously by other users.
[0038], [0040], the displayed list of candidate support characters may include information regarding the number of times each character has been used by other players in previous plays of game stages. This information may be numerical or may comprise relative ranks. The displayed list of candidate support characters can be arranged in the order of their frequency of use.
L3: a process for allowing a second player different from a first player to organize, in a deck, a game medium tied to player information of the first player, the ranking object of the first player being in a predetermined place;
As described in [0039], each time a user plays a game, information is recorded that associates a character with a character type. Based on the recorded information, characters frequently used in play of given game stages are tallied and recorded. A list of candidate support characters provided to a player considering which support character to choose can indicate characters frequently used to clear stages, which as noted in [0038], [0040] can comprise ranking them or otherwise displaying characters who meet certain criteria with high priority. An example is “Everyone’s cleared characters” column in the user interface that displays prioritized characters frequently used by other players to clear stages.
A player perusing a candidate support character list presented by unit 32 is interpreted as a first player, and other players who have previously used characters in game stages that contributes to a database maintained by server 20 are interpreted as second players. The “predetermined place” in the claim where the ranking object of the player must be is met by the displayed candidate character list by unit 32. The “Everyone’s cleared characters” column mentioned in [0040] is a particular example of a designated GUI location where ranked or prioritized support characters are displayed.
And regarding candidate plurality of characters being considered a “deck”, [0030] describes a character set of multiple owned characters that can be used together as being a “deck”.
L4: and a process for executing a game on the basis of an operation made by the second player by using the deck in which the game medium is organized.
[0034] describes that client devices execute games on the client or on a server device side, wherein the game is advanced according to user game operations. And as discussed with regard to [0036]-[0040], game operation can include a user choosing a support character that was placed in a character list (deck) based on operations by other users (such as clearing game stages).
Re claim 2, as discussed with respect to [0038]-[0040], support character positions in a list (deck) of candidate support characters are extracted by unit 32 making inquiries to server device 20 of data describing character types and associations with cleared target stages. This recorded information is not described as being itself ranking information, but rather is used to establish a ranked or prioritized list as further described in [0040], [0041].
Re claim 3, [0038-[0041] describes that candidate support character ranking or prioritization can be based on particular target game stages (places) being cleared. [0040] and [0041] describe alternate embodiments, one in which Fig. 3 presents an “Everyone’s Cleared Characters” list and another in which Fig. 4 presents a list sorted based on relationships between relevant stage information and characters, such as character’s skills that are advantageous for each stage. This meets the additional limitation of different information being extracted (from server 20) including a place (particular target stage locations, see [0039]) and player information (skills, see [0041]).
Re claim 4, [0034] describes that client devices execute games on the client or on a server device side, wherein the game is advanced according to user game operations. And as discussed with regard to [0036]-[0040], game operation can include a user choosing a support character that was placed in a character list (deck) based on operations by other users (such as clearing game stages).
Re claim 5, this claim does not provide any definition of what “a predetermined time period” is or what programming steps are involved in determining said time period. As such, the time period during which a player is perusing an ordered list of candidate characters, see [0038-[0041], meets the claimed time period.
Re claims 6-8, refer to the rejection of claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN J HYLINSKI whose telephone number is (571)270-1995. The examiner can normally be reached Mon-Fri 10-530.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN J HYLINSKI/Primary Examiner, Art Unit 3715