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 .
Procedural Summary
This is responsive to the claims filed 06/20/2024.
Claims 1-18 are pending.
Applicant’s IDS submission is acknowledged and provided herewith.
The Drawings filed on 06/20/2024 are noted.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 to 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) 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.
The examiner follows the two step-analysis, as described in MPEP 2106 (available at https://www.uspto.gov/web/offices/pac/mpep/s2106.html). The following diagram is an overview of the steps involved.
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Step 1 of the two step-analysis considers whether the claims fall into one of the four statutory categories of invention such as a process, machine, manufacture, or composition of matter. The instant invention claims a game system in claims 1-6, a computer-readable non-transitory storage medium in claims 7-12, and a game processing method in claims 13-18. As such, the claimed invention falls into the broad statutory categories of invention. However, claims that fall within one of the four statutory categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas.
Step 2A has been further divided into two prongs as shown in the following diagram.
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Under prong 1 of step 2A, the examiner considers whether the claim recites an abstract idea, law of nature or natural phenomenon. The term “abstract idea” is not interpreted as a layperson might. Instead, the term “abstract idea” is interpreted as described in legal opinions by courts.
According to MPEP 2106.04(a):
the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Representative Claim 1, and similarly recited Claims 7 and 13 recites the following: “1. A game system including a processor and a memory coupled thereto, and configured to perform a multiplay game among players of a plurality of game apparatuses matched via a network, the game system comprising:
a first game apparatus; and
a second game apparatus connected to the first game apparatus via the network,
the game system being configured such that
a processor of the first game apparatus selects a first player character to be subjected to movement control based on an operation by the player of the first game apparatus, from a character group including a plurality of characters different from each other,
a processor of the second game apparatus selects a second player character to be subjected to movement control based on an operation by the player of the second game apparatus, from the character group,
in a case where the selected first player character and the selected second player character are different characters,
the processor of the first game apparatus draws a game space including the first player character and the second player character, and
the processor of the second game apparatus draws a game space including the first player character and the second player character, and
in a case where the selected first player character and the selected second player character are the same character,
the processor of the first game apparatus draws a game space including the first player character without drawing the second player character, while keeping the matching between the first game apparatus and the second game apparatus, and
the processor of the second game apparatus draws a game space including the second player character without drawing the first player character, while keeping the matching between the first game apparatus and the second game apparatus.”
The underlined portions of representative claim 1 generally encompass the abstract idea, with substantially similar features in claims 7 and 13. The dependent claims further define the abstract idea such as deciding which of two duplicate characters to show based on proximity, suppressing a character based on predetermined-period intervals, etc. The abstract idea may be viewed, for example, as:
a method of managing a game) similar to that of managing a game of bingo in Planet Bingo v. VKGS, LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (non-precedential);
collecting, analyzing, and displaying information, as in Electric Power Group, LLC v. Alstom (Fed. Cir. 2016);
a set of game rules, as discussed in Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342 (Fed. Cir. 2021); and/or
a method of organizing human activities as discussed in Bilski v. Kappos, 561 U.S. 593 (2010) and Alice Corp. v. CLS Bank.
The claimed abstract idea reproduced above is effectively a set of game rules for managing player interactions and screen display information. The claims also include carrying out game actions played by human players, which suggests that the invention is directed to organizing human activities as discussed in Alice and Bilski. The abstract idea in the present case is also similar to that of Electric Power Group, in which the Federal Circuit found that merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes.
Step 2A, Prong 2
Under prong 2 of step 2A, the examiner considers whether the additional elements in the claims integrate the abstract idea into a practical application. According to 2019 PEG, the following considerations indicative of integration into a practical application includes looking at the elements individually and in combination:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
Claims 1, 7, 13 and their dependent claims further recite additional elements such as a processor, a memory, a first game apparatus, a second game apparatus, a processor of the first game apparatus, a processor of the second game apparatus, and a network., yet these are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
The causation steps of the claims are deemed to be data gathering and data presentation for the use of the judicial exception and similarly are recited at a high level of generality. Thus, these limitations are a form of insignificant extra-solution activity (See MPEP 2106.05(g), See also selecting a particular source and type of data to be manipulated where “Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)). Furthermore, the additional elements do not serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1, 7, and 13 (and their respective dependent claims) is not integrated into a practical application under 2019 PEG.
Accordingly, Claims 1, 7, 13, and their dependent claims as a whole does not integrate the recited judicial exception into a practical application and these claims are directed to the judicial exception. Thus, Claims 1-18 lack the eligibility requirements of Step 2 Prong II.
Step 2B
Finally, under step 2B, the examiner evaluates whether the additional elements:
add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present (MPEP 2106.05(d)); or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018).
Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
The present claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements recites a processor, a memory, a first game apparatus, a second game apparatus, a processor of the first game apparatus, a processor of the second game apparatus, and a network. These additional elements are generically claimed computer components which enable a game to be conducted by performing the basic functions of: (i) receiving, processing, and storing data, (ii) automating mental tasks and (iii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. Here, the steps of the claims are deemed to be data gathering and data presentation extra-solution activity. Court decisions cited in MPEP 2106.05(d)(II) indicate that these limitations are well-understood, routine, and conventional function when it is claimed in a merely generic manner (as they are here). See storing and retrieving information in memory (MPEP 2106.05(d)(II)(iv) and then to present or display said information is well known as in presenting offers and gathering statistics (MPEP 2106.05(d)(II)(iii). Accordingly, a conclusion that the step is well-understood, routine, conventional activity is supported under Berkheimer. Therefore, these limitations remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, Claims 1 to 18 are directed to applying an abstract idea (e.g., rules for conducting a game and/or mental process) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 1 to 18 provides meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Furthermore, taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1, 7, and 13 (and their dependent Claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to conduct a game with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The above-identified additional elements, when viewed as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.
Therefore, none of the Claims 1 to 18 amounts to significantly more than the abstract idea itself (Step 2B: NO).
Accordingly, Claims 1 to 18 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas implemented on a generic computer in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and the 2019 PEG.
Dependent Claims are ineligible and lack a practical application. They further recite extra-solution activities and further define the abstract idea of the independent claims.
Claims 2-6 inherit the same abstract idea as Claim 1.
Claims 8-12 inherit the same abstract idea as Claim 7.
Claims 14-18 inherit the same abstract idea as Claim 13.
AIA Notice
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 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.
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 7, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Non-Patent Literature Title Street Fighter Game – Street Fighter Wiki Fandom in view of U.S. Patent Application Publication 2020/0368618 A1 to Zhang.
Regarding Claim 1, and similarly recited Claims 7 and 13, Street Fighter Wiki discloses a game system including a processor and a memory coupled thereto, and configured to perform a multiplay game among players of a plurality of game apparatuses matched via a network, the game system comprising:
a first game apparatus (pages 2-3 discloses the player competes in a series of one-on-one matches against a series of computer-controlled opponents or in a single match against another player. The player takes control of a Japanese martial artist named Ryu, who goes on a journey to prove his strength. The second player takes control of Ryu's former training partner and rival Ken Masters, who challenges Ryu in the game's 2-player matches); and
a second game apparatus connected to the first game apparatus via the network (pages 2-3 discloses the player competes in a series of one-on-one matches against a series of computer-controlled opponents or in a single match against another player. The player takes control of a Japanese martial artist named Ryu, who goes on a journey to prove his strength. The second player takes control of Ryu's former training partner and rival Ken Masters, who challenges Ryu in the game's 2-player matches);,
the game system being configured such that
a processor of the first game apparatus selects a first player character to be subjected to movement control based on an operation by the player of the first game apparatus, from a character group including a plurality of characters different from each other (pages 2-3 discloses the player competes in a series of one-on-one matches against a series of computer-controlled opponents or in a single match against another player. The player takes control of a Japanese martial artist named Ryu, who goes on a journey to prove his strength. The second player takes control of Ryu's former training partner and rival Ken Masters, who challenges Ryu in the game's 2-player matches);,
a processor of the second game apparatus selects a second player character to be subjected to movement control based on an operation by the player of the second game apparatus, from the character group (pages 2-3 discloses the player competes in a series of one-on-one matches against a series of computer-controlled opponents or in a single match against another player. The player takes control of a Japanese martial artist named Ryu, who goes on a journey to prove his strength. The second player takes control of Ryu's former training partner and rival Ken Masters, who challenges Ryu in the game's 2-player matches),
in a case where the selected first player character and the selected second player character are different characters,
the processor of the first game apparatus draws a game space including the first player character and the second player character (pages 2-3 discloses the player competes in a series of one-on-one matches against a series of computer-controlled opponents or in a single match against another player. The player takes control of a Japanese martial artist named Ryu, who goes on a journey to prove his strength. The second player takes control of Ryu's former training partner and rival Ken Masters, who challenges Ryu in the game's 2-player matches);, and
the processor of the second game apparatus draws a game space including the first player character and the second player character, … and in a case where the selected first player character and the selected second player character are the same character (pages 2-3 discloses the player competes in a series of one-on-one matches against a series of computer-controlled opponents or in a single match against another player. The player takes control of a Japanese martial artist named Ryu, who goes on a journey to prove his strength. The second player takes control of Ryu's former training partner and rival Ken Masters, who challenges Ryu in the game's 2-player matches; (pages 10-12, discloses the concept of mirror matches, making it possible for players to challenge each other with the same character. In the event that a mirror match is set up and two players pick the same color character, the second player's color palette changes automatically to prevent confusion. Later games of the Street Fighter series added more potential variables to mirror matches, such as the ISMs of Street Fighter Alpha 3, the different Super Arts of the Street Fighter III series, and the Ultra Combos of Super Street Fighter IV.”, The Examiner notes that later Street Fighter games such as the aforementioned Super Street Fighter IV supports online play. Therefore, the second player is the remote opponent that the local first player is playing online.).
However, it does not explicitly disclose:
the processor of the first game apparatus draws a game space including the first player character without drawing the second player character, while keeping the matching between the first game apparatus and the second game apparatus, and
the processor of the second game apparatus draws a game space including the second player character without drawing the first player character, while keeping the matching between the first game apparatus and the second game apparatus.
In a related online gaming system, Zhang discloses a game scene display control system in which a first game character controlled by a first client and a second game character controlled by a second client is disclosed. Zhang discloses
the processor of the first game apparatus draws a game space including the first player character without drawing the second player character, while keeping the matching between the first game apparatus and the second game apparatus (¶18-26, 55 discloses that first and second game clients may independently render different game scenes while connected to the same network); and
the processor of the second game apparatus draws a game space including the second player character without drawing the first player character, while keeping the matching between the first game apparatus and the second game apparatus (¶18-26, 55 discloses that first and second game clients may independently render different game scenes while connected to the same network).
One of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that applying the known technique of while keeping the matching between the first game apparatus and the second game apparatus of Zhang to the known invention of Street Fighter Wiki would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such multiplayer features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to include keeping the matching between the first game apparatus and the second game apparatus, results in an improved invention because applying said technique allows players to stay connected even though their own devices may display a different scene, thus improving the overall usability of the invention.
Claims 2-3, 8-9, 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Non-Patent Literature Title Street Fighter Game – Street Fighter Wiki Fandom in view of U.S. Patent Application Publication 2020/0368618 A1 to Zhang and further in view of Non-Patent Literature Title ‘Mario Kart 8 Electronic Manual’ to Nintendo.
Regarding Claim 2, and similarly recited Claims 8 and 14, Street Fighter in view of Zhang discloses the game system according to claim 1, and
in a case where the selected third player character is a character different from the first player character and is the same character as the second player character, the processor of the first game apparatus draws the game space including only one of the second player character and the third player character (Street Fighter, page 2-3 discloses making it possible for players to challenge each other with the same character. In the event that a mirror match is set up and two players pick the same color character, the second player's color palette changes automatically to prevent confusion. Later games of the Street Fighter series added more potential variables to mirror matches, such as the ISMs of Street Fighter Alpha 3, the different Super Arts of the Street Fighter III series, and the Ultra Combos of Super Street Fighter IV.”).
However, the combination does not explicitly disclose: further comprising a third game apparatus, wherein a processor of the third game apparatus selects a third player character to be subjected to movement control based on an operation by the player of the third game apparatus, from the character group.
In a related invention, Nintendo discloses further comprising a third game apparatus, wherein a processor of the third game apparatus selects a third player character to be subjected to movement control based on an operation by the player of the third game apparatus, from the character group ((Section 14 ‘Getting Started with Online Play’, The Examiner notes that Mario Kart 8 supports up to 12 players online).
One of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that applying the known technique of Nintendo to the known invention of Street Fighter Wiki would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such multiplayer features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to include a third game apparatus, wherein a processor of the third game apparatus selects a third player character to be subjected to movement control based on an operation by the player of the third game apparatus, from the character group, results in an improved invention because applying said technique allows more players to compete against each other at once, thus improving the overall usability of the invention.
Regarding Claim 3, and similarly recited Claims 9 and 15, Street Fighter in view of Zhang and Nintendo discloses the game system according to claim 2, wherein
the processor of the first game apparatus draws the game space in which, of the second player character and the third player character, a character whose position in the game space is closer to the first player character is included and the other character is not included (Zhang, paras. 16, 18 discloses different positions of the game characters in the game scene).
Potentially Allowable Subject Matter/Examiner Remarks
Claims 4-6, 10-12 and 16-18 are objected to as being dependent upon a rejected base claim, but could be allowable, if Applicant can successfully overcome the 101 rejections.
Conclusion
Claims 1-18 are examined above.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and is provided in the Notice of References cited.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.N.H/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
Prosecution Insights