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 6/25/2024.
Claims 1-6 are pending.
Signed copies of the IDS’ are attached.
The Drawings filed 6/25/2024 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 1-6 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 4-6 recite substantially similar limitations but being drawn to different statutory classes.
Claim 1: “A non-transitory computer readable medium storing a program causing a computer to execute: a process in a specific game including a plurality of category games, the process allowing a player to select a character to be used in each of the plurality of category games; a process for setting the character selected by the player for each category game; a process for deriving an individual game result for each category game, the individual game result serving as a game result of the category game; a process for determining, for each category game, a predetermined parameter associated with the character used in the category game; a process for ranking a plurality of characters based on the predetermined parameters of the plurality of category games, the plurality of characters being used in the specific game in accordance with the selection by the player; and a process for deriving an overall game result based on the individual game result of each of the plurality of category games or the predetermined parameters of the plurality of category games, the overall game result serving as a game result of the specific game.”
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 personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
The claims are drawn to managing a game and deriving a result. This is managing personal behavior and relationships/interactions between people, (i.e., players). Further, playing a game is a social activity. Additionally, to the extent the claims are drawn to how a game is played, this 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 into 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, U.S. Pub. No.: 2021/0162307 A1 to Araya et al. shows the conventionality of gaming systems including GUIs implementing character-based games like those claimed. 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 smartphones 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.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) being anticipated by Araya et al. (U.S. Pub. No.: 2021/0162307 A1).
Regarding Claims 1 & 4-6: Araya discloses a gaming device (Fig. 1, device 2), comprising: at least one computer, (Fig. 1, device 2), wherein the at least one computer executes: a process in a specific game (Abstract), including a plurality of category games, (¶ 60), the process allowing a player to select a character to be used in each of the plurality of category games,(¶¶ 102, 103, 113); a process for setting the character selected by the player for each category game, (¶¶ 115-117); a process for deriving an individual game result for each category game, the individual game result serving as a game result of the category game, (¶¶ 114, 115).
Araya discloses a process for determining, for each category game, a predetermined parameter associated with the character used in the category game, (¶ 147); a process for ranking a plurality of characters based on the predetermined parameters of the plurality of category games, (¶¶ 151-154), the plurality of characters being used in the specific game in accordance with the selection by the player, (¶¶ 102, 103, 113); and a process for deriving an overall game result based on the individual game result of each of the plurality of category games or the predetermined parameters of the plurality of category games, the overall game result serving as a game result of the specific game, (Figs. 13-17 and related descriptions).
Regarding Claim 2: Araya discloses wherein the process for deriving the overall game result includes a process for deriving total points as the overall game result by calculating the total points in the specific game based on the predetermined parameters of the plurality of category games, and wherein the program causes the computer to further execute a process for ranking multiple players in accordance with the total points of the specific game, (Figs. 13-17 and related descriptions, ¶¶ 151-154).
Regarding Claim 3: Araya discloses wherein the process for deriving the individual game result for each category game includes deriving the individual game results of the plurality of category games in a predetermined order, (Figs. 15, 16 and related descriptions).
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.
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/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 See MPEP 2106
2 [0118] The player terminal 1 can establish communication with the server 1000 via the communication network N. The player terminal 1 includes a wide range of electronic units communicatively connectable to the server 1000 in a wireless or wired manner. Examples of the player terminal 1 include a smartphone, a mobile phone, a tablet device, a personal computer, and a gaming unit. In this embodiment, the player terminal 1 is described as being a smartphone. (Emphasis Added.)
3: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)