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 6/18/2024.
Claims 1-9 are pending.
Signed copies of the IDS’ are attached.
The Drawings filed 6/18/2024 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 1-9 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, apparatus and CRM 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, noting that independent Claims 8 & 9 recite substantially similar limitations but being drawn to different statutory classes.
Claim 1: “A game system comprising a game apparatus connected to a network, a plurality of other game apparatuses connected to the network, and a server, a computer of the game apparatus, in a first mode, transmitting a request for a first matching process to the server, connecting the game apparatus to a first other game apparatus group on the basis of a result of the first matching process received from the server, placing an own player character to be controlled to move on the basis of an operation by a player of the game apparatus and at least a part of another player character group to be controlled to move on the basis of data acquired from each other game apparatus included in the first other game apparatus group, in a first virtual game space, and rendering the first virtual game space, executing a stage selection process of selecting a predetermined game stage from among a plurality of game stages in accordance with an operation by the player of the game apparatus while the first virtual game space is displayed, and shifting to a second mode in accordance with the stage selection process being executed, and in the second mode, transmitting a request for a second matching process to the server, connecting the game apparatus to a second other game apparatus group on the basis of a result of the second matching process received from the server, and placing the own player character and at least a part of another player character group to be controlled by a player of each other game apparatus included in the second other game apparatus group, in a second virtual game space corresponding to the stage selected by the stage selection process, and rendering the second virtual game space, and a computer of the server, in response to receiving the request for the first matching process from the game apparatus, matching the game apparatus and the first other game apparatus group selected from among the plurality of other game apparatuses as the first matching process, and transmitting a result of the first matching process to the game apparatus, and in response to receiving the request for the second matching process from the game apparatus, matching the second other game apparatus group and the game apparatus with one or more other game apparatuses selected from among the plurality of other game apparatuses as the second other game apparatus group, without being limited to the first other game apparatus group matched by the first matching process, as the second matching process, and transmitting a result of the second matching process to the game apparatus.”
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 interactions between people.
The claims are drawn to matching players in an electronic game, which is managing interactions between people. The claims are drawn to how a game is played, this represents interactions between players and a social activity. It also represents following rules/instructions (i.e., rules defining how the game is conducted.)
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 additional limitations drawn to a computing system with a processor and memory, (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, Yamada et al. (U.S. Pub. No.: 2004/0224739 A1) shows the conventionality of a computerized game system. 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). Additionally, Applicant’s Specifications acknowledge that generic devices including a smart phone are used to implement the claimed invention.2
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 controls3:
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached on 571-272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 See MPEP 2106
2 [0049] “Next, the information processing terminal 3 will be described. The information processing terminal 3 is, for example, a smartphone, a stationary or hand-held game apparatus, a tablet terminal, a mobile phone, a personal computer, a wearable terminal, or the like. In the exemplary embodiment, a stationary game apparatus (hereinafter, referred to simply as game apparatus) will be described as an example of the information processing terminal 3.” (Emphasis Added.)
3: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)