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 .
Priority
Applicant’s claim for the benefit of prior-filed applications (foreign priority application JP2023-099933 filed June 19, 2023) under 35 U.S.C. 110(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. All priority documents have been received.
Status of Claims
This office action is in response to arguments and amendments entered on May 4, 2026 for the patent application 18/747,023 originally filed on June 18, 2024. Claims 1-13 are amended. Claims 14-17 are new. Claims 1-17 are pending. The first office action of February 5, 2026 is fully incorporated by reference into this Final Office Action.
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 1-17 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.
Step 1 – “Statutory Category Identification”
Claim 1 is directed to “a game system” (i.e. “a machine”); claim 11 is directed to “a game processing method” (i.e. “a process”); claim 12 is directed to “a non-transitory computer-readable storage medium” (i.e. “a machine”), and claim 13 is directed to “a matching method” (i.e. “a process”), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to an abstract idea of “game system matching,” in the form of “mental processes” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion), which require the following limitations:
Per claim 1:
“in response to a first matching request transmitted from a first game apparatus, the server associates the first game apparatus with a first communication group, and
in a state where the first game apparatus is associated with the first communication group, the first game apparatus starts first game processing of moving a first character on the basis of an operation by a player of the first game apparatus in a first game stage, wherein the server is configured to:
accept a second matching request transmitted from a second game apparatus different from the first game apparatus, and
preferentially associate the second game apparatus with the first communication group if a difference between date and time when the second matching request is made and date and time when the first matching request is made is within a first predetermined time, and
if the second game apparatus is associated with the first communication group:
in a state where the second game apparatus is associated with the first communication group, the second game apparatus places a third character to be operated on the basis of information received from the first game apparatus, at a position, corresponding to a position of the first character in the first game stage, in a second game stage having the same configuration as the first game stage, and starts second game processing of moving a second character in the second game stage on the basis of an operation by a player of the second game apparatus, and
the first game apparatus places a fourth character to be operated on the basis of information received from the second game apparatus, at a position, corresponding to a position of the second character in the second game stage, in the first game stage, without changing a progress status of the first game processing.”
Per claim 11:
“in response to a first matching request transmitted from a first game apparatus, associating the first game apparatus with a first communication group;
in the first game apparatus, in a state where the first game apparatus is associated with the first communication group, starting first game processing of moving a first character on the basis of an operation by a player of the first game apparatus in a first game stage;
accepting a second matching request transmitted from a second game apparatus different from the first game apparatus;
preferentially associating the second game apparatus with the first communication group in associating with a difference between date and time when the second matching request is made, and a date and time when the first matching request is made, being within a first predetermined time; and
in association with the second game apparatus being associated with the first communication group:
in the second game apparatus, in a state where the second game apparatus is associated with the first communication group, placing a third character to be operated on the basis of information received from the first game apparatus, at a position, corresponding to a position of the first character in the first game stage, in a second game stage having the same configuration as the first game stage, and starting second game processing of moving a second character in the second game stage on the basis of an operation by a player of the second game apparatus; and
in the first game apparatus, placing a fourth character to be operated on the basis of information received from the second game apparatus, at a position, corresponding to a position of the second character in the second game stage, in the first game stage, without changing a progress status of the first game processing.”
Per claim 12:
“in response to a first matching request transmitted from a first game apparatus, associating the first game apparatus with a first communication group;
in the first game apparatus, in a state where the first game apparatus is associated with the first communication group, starting first game processing of moving a first character on the basis of an operation by a player of the first game apparatus in a first game stage;
accepting a second matching request transmitted from a second game apparatus different from the first game apparatus;
preferentially associating the second game apparatus with the first communication group if a difference between a date and time when the second matching request is made and a date and time when the first matching request is made is within a first predetermined time; and
if the second game apparatus is associated with the first communication group:
in the second game apparatus, in a state where the second game apparatus is associated with the first communication group, placing a third character to be operated on the basis of information received from the first game apparatus, at a position, corresponding to a position of the first character in the first game stage, in a second game stage having the same configuration as the first game stage, and starting second game processing of moving a second character in the second game stage on the basis of an operation by a player of the second game apparatus, and
in the first game apparatus, placing a fourth character to be operated on the basis of information received from the second game apparatus, at a position, corresponding to a position of the second character in the second game stage, in the first game stage, without changing a progress status of the first game processing.”
Per claim 13:
“on the basis of a first matching request from a first game apparatus belonging to a first communication group, associating the first game apparatus with a second communication group; and
in association with a second matching request being made from a second game apparatus, executing a matching process of preferentially associating the second game apparatus with the second communication group, if a difference between date and time when the second matching request is made and date and time when the first matching request is made is within a predetermined time and the second game apparatus belonging to the first communication group.”
These limitations simply describe a process of data gathering and manipulation, which is analogous to “rules are abstract ideas” (i.e. In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016)) and “a process of gathering and analyzing information of a specified content, then displaying the results, [without] any particular assertedly inventive technology for performing those functions.” (i.e. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the applicants claimed elements of “a plurality of game apparatuses,” “a server,” “a computer,” and “a network,” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words, the claimed “game system matching,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a plurality of game apparatuses,” “a server,” “a computer,” and “a network,” are claimed, these are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “game apparatus,” is described the written description of the specification as originally filed in paras. [0031] and [0057] as follows:
“[0031] FIG. 3 is a block diagram showing a non-limiting example of the hardware configuration of a game apparatus 3.”
“[0057] 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.”
As such, this element is reasonably interpreted as a generic computer which provides no details of anything beyond ubiquitous standard off-the-shelf equipment.
Likewise, the Applicant’s claimed “a server,” is described the written description of the specification as originally filed in para. [0056] as follows:
“[0056] Each server includes at least a processor 11 (21), a storage section 12 (22), and a communication section 13 (23). The processor section executes various programs for controlling each server. In the storage section, various programs to be executed by the processor section and various kinds of data to be used by the processor section are stored.”
As such, this element is also reasonably interpreted as a generic computer which provides no details of anything beyond ubiquitous standard off-the-shelf equipment.
Further, the Applicant’s claimed “a network,” is described the written description of the specification as originally filed in para. [0056] as follows:
“[0056] The communication section connects to a network by means of wired or wireless communication and transmits/receives predetermined data to/from each information processing terminal 3 or another server.”
As such, this element is reasonably interpreted as a generic, well-known, and conventional data communications element.
Finally, the Applicant’s claimed “a computer,” is not described with any detail in the written description of the specification as originally filed. Regardless, “a computer,” is reasonably interpreted as any commercially available device with a processor which is reasonably interpreted to be a generic, well-known, and conventional data computing element.
Therefore, the Applicant’s own specification is disclosing ubiquitous standard equipment that is (1) generic, routine, conventional, and/or commercially available; and (2) does not provide anything significantly more. Thus, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-10 and 14-17 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-10 and 14-17 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1. Therefore, claims 1-17 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject-matter.
Response to Arguments
The Applicant’s arguments filed on May 4, 2026 related to claims 1-17 are fully considered, but are not persuasive.
The Applicant respectfully argues “At a minimum, such features satisfy at least step 2(A)(2) and/or 2(B) of the Alice test (laid out by the 2019 Patent Eligibility Guidance). In particular, these features are directed to specific improvements in video game and/or software technology. In more detail, Applicant's specification explains, by way of a non-limiting example, that certain conventional game programs performing matching (e.g., during multiplayer gaming) where the game progress does not necessarily require multiple players. In such situations, even if the game can proceed with only one player, the game is not started unless matching is established.”
Applicant's claimed approach allows for creating a situation in which players can easily cooperate when matching is established, without interfering with game play by only a single player. As discussed during the interview, when matching requests for multiplayer gaming in a predetermined game stage are made from different game apparatuses, if the timings when the matching requests are made are close to each other, the game apparatuses can be made into the same communication group and multiplayer gaming can be performed. Under this approach, even if matching is established and, for example, another player participates in the middle of gameplay, a character related to the other player is placed in the game stage without changing the progress status of the game processing. As such, when matching is established, a situation in which cooperation is easily made can be created without interfering with single play. Put another way, the claimed features solve specific technical problems in distributed game systems related to how to add a new participant mid-session without corrupting the game state of the existing participant (i.e., without changing a progress status of the first game processing). As such, the features provide improvements to video game and/or game program/software technology and thus provide improvements to an existing technology (or technical field).
The claims also recites other various technical improvements. For example, dependent claim 5 requires that "if the difference between the date and time when the second matching request is made and the date and time when the first matching request is made is not within the first predetermined time, whether or not a difference between a date and time when a third matching request is made by a third player and the date and time when the second matching request is made is within a second predetermined time longer than the first predetermined time is determined, and if the difference between the dates and times is within the second predetermined time, the second game apparatus is preferentially associated with a predetermined communication group to which a game apparatus of the third player belongs."
The Examiner respectfully disagrees. It is unclear as to how the rules of a game in the form of “a game is not started unless matching is established,” or “creating a situation in which players can easily cooperate when matching is established, without interfering with game play,” provides “specific improvements in video game and/or software technology.” As such, the argument is not persuasive.
The Applicant respectfully argues “Applicant's specification explains that under such an approach, it is possible to suppress the occurrence of a situation in which a partner to perform multiplayer gaming cannot be found. Thus, the claimed approach improves situations where multiplayer matching occurs thereby improving communication instances between disparate devices (e.g., in network gaming). As such, these features also provide improvements to video game and/or game program/software technology and thus provide improvements to an existing technology (or technical field). And as the features improve an existing technology, the claimed features are directed to a "practical application" and/or "significantly more" under at least steps 2(A)(2) and 2(B) of the Alice test.
Accordingly, for at least these reasons, Applicant respectfully requests withdrawal of this rejection.”
The Examiner respectfully disagrees. The Applicant’s claimed features are not “directed to a "practical application." These “features” are applying the judicial exception, or mere instructions to implement an abstract idea on a computer. Likewise, the Applicant’s claimed features are not "significantly more," since “a plurality of game apparatuses,” “a server,” “a computer,” and “a network,” as claimed, are generic, well-known, and conventional data gather computing elements. As such, the argument is not persuasive. Therefore, the rejections under 35 U.S.C. §101 are not withdrawn.
Conclusion
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 extension fee 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 date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P BULLINGTON whose telephone number is (313)446-4841. The examiner can normally be reached on Mon.-Fri. 8:00-4:00. 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, Peter Vasat, can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert P Bullington, Esq./
Primary Examiner, Art Unit 3715
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