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, 3-20 are rejected under 35 U.S.C. 101 because the claimed invention 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.
As summarized in MPEP § 2106, subject matter eligibility is determined based on a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant application includes claims concerning a non-transitory computer readable medium (i.e. a manufacture) in claim 1-6, 17, 20 a game system (i.e., a machine) in claims 7, 9-12, 18 and a game processing method (i.e., a process) in claims 8, 13-16, 19.
In Prong 1 of Step 2A, it must be determined whether the claimed invention recites an Abstract Idea, Law of Nature or a Natural Phenomenon.
In particular, exemplary presented claim 1 includes the following underlined claim elements:
1. A non-transitory computer-readable storage medium having stored therein a game program executed by a processor of a game apparatus for executing a process of generating a game stage in which a start point and a goal point are set, the game stage including a player object controllable to move on the basis of an operation by a player the game program when executed causing the processor to provide execution comprising:
placing another player object, controlled to move based on information received from another game apparatus connected via a network, in the game stage;
determining whether play in the game stage has reached a certain degree of progress in the game stage;
in association with the certain degree of progress having been reached and the number of the other player objects in the game stage is less than a first number, acquiring a replay object controlled to move on the basis of an operation history, of a player different from a player of the other game apparatus, from a predetermined server, placing the replay object in the game stage, and control movement of the replay object. and generating a display including at least the game stage, the player object, and the replay object.
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes including observation, evaluation, and judgement because the claims are directed to series of steps for observing, evaluating and judging the state of a game and modifying game play based thereon as well as Certain Methods of Organizing Human Activity including managing personal behavior including interactions between people including social activities and following rules or instructions because the claims set forth the interactions involving one or more parties in the context of a game interface.
As the exemplary claim recites an Abstract Idea, Law of Nature or a Natural Phenomenon it is further considered under Prong 2 of Step 2A to determine if the claim recites additional elements that would integrate the judicial exception into a practical application. Wherein the practical applications are set forth by MPEP §2106.05(a-c,e) are broadly directed to: the improvement in technology, use of a particular machine and applying or using the judicial exception in a meaningful way beyond generally linking the use thereof to a technology environment. Limitations that explicitly do not support the integration of the judicial exception into a practical application are defined by MPEP 2106.05(f-h) and include merely using a computer to implement the abstract idea, insignificant extra solution activity, and generally linking the use of the judicial exception to a particular technology environment or field of use.
With respect to the above the claimed invention is not integrated into a practical application because it does not meet the criteria of MPEP §2106.05(a-c,e) and although it is performed on a storage medium, processor, game apparatuses, network, and a server it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonably include other network connected computer devices such as generic computers, smart phones, game consoles, and the like. Accordingly, the claims limitations are not indicative of the integration of the identified judicial exception into a practical application, and the consideration of patent eligibility continues to step 2B.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional element(s) or combination of elements in the claim(s) other than the abstract idea(s) per se including storage medium, processor, game apparatuses, network, and a server amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structures that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry per the applicant’s description (Applicant’s specification Paragraphs [0019]-[0022]). Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Accordingly, as presented the claimed invention when considered as a whole amounts to the mere instructions to implement an abstract idea [i.e. software or equivalent process steps] on a generic computer [i.e. controller or processor] without causing the improvement of the generic computer or another technology field.
The Applicant’s specification is further noted as supporting the above rejection wherein neither the abstract idea nor the associated generic computer structure as claimed are disclosed as improving another technological field, improvements to the function of the computer itself, or meaningfully linking the use of an abstract idea to a particular technological environment (Applicant’s specification Paragraphs [0019]-[0022]). In particular the Applicant’s specification only contains computing elements which are conventional and generally widely known in the field of the invention described, and accordingly their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art per the requirements of 37 CFR 1.71. Were these elements of the applicant’s invention to be presented in the future as non-conventional and non-generic involvement of a computing structure, such would stand at odds with the disclosure of the applicant's invention as found in their specification as originally filed.
“[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301). In this case, the claims recite a generic computer implementation of the covered abstract idea.
The remaining presented claims 3-20 incorporate substantially similar abstract concepts as noted with respect to the exemplary claim 1, while the additional elements recited by the additional claims including one or more of storage medium, processor, game apparatuses, network, and a server as respectively presented in certain claims that when considered both individually and as a whole in the respective combinations of each of the additional claims are not sufficient to support patent eligibility under prong 2 of step 2A or step 2B because they each present substantially similar abstract concepts as noted with reflection to exemplary claim 1 above and accordingly for the same reasons set forth above with respect to the exemplary claim 1 are similarly directed to or otherwise include abstract ideas.
Therefore, the listed claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed July 6th, 2026 have been fully considered but they are not persuasive.
Commencing on pages 7 and 8 in the Applicant’s above dated remarks, the Applicant presents that the claimed invention meets the subject matter eligibility requirements of 35 USC 101 because the claimed invention reflects specific improvements in game technology by place game replay objects into a game when a certain progress has ben made and the number of other player objects is below a threshold. The Applicant’s remarks propose that this allows the player to experience more meaningful game play even when it takes a longer time for another player to be matched with them.
Responsive to the preceding, improvements to game rules themselves including those that define when objects are added to a game reflect improvements to the abstract idea itself and not an improvement in technology as proposed because the underlying technology is utilized merely as a tool to implement the recited abstract game rules in manner that does not alter the functional capabilities of the underlying technology (MPEP 2106.05(f)). Alternatively stated, the features Applicant identifies as the inventive concept are part of the abstract idea itself; as such, these features cannot constitute the “inventive concept.” See Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.”); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). Further, in an analogous invention incorporating rules for game play, the Federal Circuit has affirmed that game rules themselves are not patent eligible in In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016).
Continuing on pages 8-10 in the Applicant’s above dated remarks, the Applicant presents that the claimed invention as amended includes features including the reliance on the use of replay objects controlled to move based on the operation history of a player different from the player of the other game apparatus as a well as other recited features that are proposed as not being taught by the previously applied prior art of Yabuki (US 2009/0093313).
The rejection of claims under Yabuki is withdrawn in view the Applicant’s presented amendments, and reasonably persuasive remarks reflecting the same.
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
Conclusion
The following prior art is made of record and not relied upon is considered pertinent to applicant's disclosure.
Enomoto et al (US 2018/0256981) teaches emulating player behavior after player departure;
Garbow et al (US 2008/0045335) teaches replacing a departing player in a game with a waiting player; and
Chatani et al (US 2003/0217135) teaches dynamic player management.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E MOSSER whose telephone number is (571)272-4451. The examiner can normally be reached M-F 6:45-3:45.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715
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