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 .
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 and 2 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Independent claims 1 and 2 recite the following abstract ideas:
stores acquirable content that has been reserved by the user without having been acquired, as reserved content (mental process such as a first person making a mental note of desired content, or using pen and paper to write a message, note, or the like);
selects reserved content that is the same as the content that becomes the designated trade-for content from among the user's reserved content, as a result of a designated operation performed by the user that wants to acquire the trade-for content in a trade (mental process such as an observer, reviewer, or second person making an evaluation that the first person’s indication of desired content is also the same as content the first person wishes to trade for); and
notifies the user that the selected reserved content can be acquired without a trade (mental process such as a verbal communication from one person to another, or using pen and paper to write a message, note, or the like).
Claims 1 and 2 fall under “mental processes” related to a first person making separate wish and trade list of items he/she would like to acquire then another person provides the first person a message (e.g., suggestions, advice, or the like) of how the first person can win, gather, obtain, or the like an item that appears in both wish and trade list.
Claims 1 and 2 does not recite additional elements that integrated into a practical application because the claimed “storage unit”, “selection unit”, and “notification unit” are related to using computer components as tools to perform the abstract ideas.
Claims 1 and 2 does not recite additional elements that amount to significantly more that the judicial exceptions because the claimed “storage unit”, “selection unit”, and “notification unit” are related to using computer components as tools to perform the abstract ideas is related to linking a particular technological environment to the abstract ideas. The additional elements taken individually and in combination do not result in the claims as a whole amounting to significantly more than the judicial exceptions.
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.
Claims 1 and 2 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the user" in line 2. There is insufficient antecedent basis for this limitation in the claim. Note, claim 2 has the same issue as stated above.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claims 1 and 2 limitations are:
(see claim 1) “a storage unit that stores acquirable content that has been reserved by the user without having been acquired, as reserved content;
a selection unit that selects reserved content that is the same as the content that becomes the designated trade-for content from among the user's reserved content, as a result of a designated operation performed by the user that wants to acquire the trade-for content in a trade; and
a notification unit that notifies the user that the selected reserved content can be acquired without a trade.”
(see claim 2) “a storage means for storing acquirable content that has been reserved by the user without having been acquired, as reserved content;
a selection means for selecting reserved content that is the same as the content that becomes the designated trade-for content from among the user's reserved content, as a result of a designated operation performed by the user that wants to acquire the trade-for content in a trade; and
a notification means for notifying the user that the selected reserved content can be acquired without a trade”. (emphasis added).
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. 20170182417 to Kogure in view of US Pub. 20140128164 to Ukai et al (Ukai).
Claims 1 and 2. Kogure discloses an information processing device, comprising:
a storage unit that stores acquirable content that has been reserved by the user without having been acquired, as reserved content (Fig. 3, and ¶¶62 and 66 “Wish list” of a user is information indicating one or more game cards that the user wishes to obtain);
a selection unit that selects reserved content that is the same as the content that becomes the designated trade-for content from among the user's reserved content (¶62 “a user is also information indicating one or more game cards that the user wishes to obtain from another user in exchange for one or more game cards”), as a result of a designated operation performed by the user that wants to acquire the trade-for content in a trade (Figs. 4-5, 8-9, and 12, and ¶¶69, 74, 79, and 87 “exchange menu” and “desired card selecting screen image”); and
However, Kogure fails to explicitly disclose a notification unit that notifies the user that the selected reserved content can be acquired without a trade.
Ukai teaches a notification unit that notifies the user that content can be acquired without a trade (¶96 “player can acquire and possess various virtual medals by satisfying an acquisition condition such as winning a battle game”; and ¶¶104-115 “lottery game”). The gaming system of Kogure would have motivation to use the teachings of Ukai in order to provide additional ways for game players to obtain desired gaming items in doing so would make the game more fun.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the gaming system of Kogure with the teachings of Ukai in order to provide additional ways for game players to obtain desired gaming items in doing so would make the game more fun.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAMON J PIERCE whose telephone number is (571)270-1997. The examiner can normally be reached M-F 8am-5pm.
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/DAMON J PIERCE/Primary Examiner, Art Unit 3715