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
2. 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.
3. Claims 1-13 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
4. Step 1
Claims 1-13 are directed to a system, apparatus, or method meeting the requirements for Step 1.
5. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 12 and 13), the following bolded steps recite an abstract idea of “a product or service in electronic commerce” which is a fundamental economic practice and a certain method of organizing human activity. Additionally, the playing of a game and satisfying a “predetermined condition” are themselves additional abstract following rules for playing a game and also a certain method of organizing human activity.
6. Step 2A Prong II
The abstract idea is not integrated into a practical application. According to MPEP 2106 (incorporating 2019 PEG), a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). 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)).
Here, Examiner turns what Applicant has to say. Applicant discloses that “Hitherto, there has been known electronic commerce which enables commerce relating to a product or a service through use of electronic means.” (Spec. 1). Yet, “a user simply repeats shopping experience in usual electronic commerce in the virtual department store in the virtual reality space….the user principally enjoys only shopping, and hence the related-art technology cannot sufficiently increase the entertainment value for the user.” (Spec. 2). “One object of the present invention is to increase entertainment for a user having a user account in electronic commerce.” (Spec. 2). “According to at least one embodiment….one processor configured to: execute a game based on a user’s action in the game of a user.” (Spec. 2). For example, “a browser game executed on a browser of the user terminal 30 corresponds to the game, but the game may be of any type and is not limited to the example of the at least one embodiment. For example, the game may be a game (for example, so-called smartphone game) executed on a game program installed on the user terminal 30, a game executed on a game machine (for example, game machine in an amusement facility) other than the user terminal 30, or a game of another type.” (Spec. 4 and 5). From this, Examiner finds that the abstract electronic commerce is merely claimed in the technological field of playing the abstract game which does not serve to provide a practical application but merely a field of use.
As to the system and processor for either the game or the electronic commerce appear to be in a highly generic computing environment. Applicant discloses that “Moreover, it is only required for the game system 1 to include at least one computer, and is not limited to the example of FIG. 1. For example, the game system 1 may include the game server 10 and another computer (for example, a server computer or a personal computer). Similarly, it is only required for the electronic commerce system 2 to include at least one computer, and is not limited to the example of FIG. 1. For example, the electronic commerce system 2 may include the electronic commerce server 20 and another computer (for example, a server computer or a personal computer). (Spec. 7). Where “user terminal 30 is a computer of the user” such as a smartphone, tablet computer, personal computer, or a wearable terminal.” (Spec. 6)
Applicant’s specification does not disclose that the system or processor are directed to a technological solution to a technological problem that “overcome some sort of technical difficulty.” citing ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 768 (Fed. Cir. 2019). Consequently, these devices are viewed as nothing more than an attempt to generally link the use of the judicial exceptions (abstract financial process/abstract rules of a game) to the technological environment of a computer or as a means to automate the steps. 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).
There does not appear to be any extra-solution activity but for the above devices employed as tools.
Even when the limitations are viewed in combination, the additional elements in this claim do no more than automate the steps needed to be performed, using the system and processor as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Latric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality).
Accordingly, Claims 1, 12, and 13, as a whole, do not integrate the recited judicial exceptions into a practical application and the Claims remain directed to the judicial exception. Thus, Claims 1, and similarly Claims 12 and 13, lack the eligibility requirements of Step 2 Prong II.
7. Step 2B
According to MPEP 2106, in addition to the considerations discussed in Step 2A, an additional consideration indicative of an inventive concept (aka “significantly more”) is the addition of a specific limitation other than what is well-understood, routine, conventional activity in the field (MPEP 2106.05(d)). Conversely, an additional consideration not indicative of an inventive concept is simply appending well-understood, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea (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.
As Examiner has noted above as part of Step 2A, there are no elements evaluated under Step 2A but for the devices used as tools i.e., no extra-solution activity elements to be re-evaluated.
Thus, Claim 1, and similarly Claims 12 and 13, do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. Thus, Claims 1, 12 and 13 are ineligible.
8. Dependent Claims
In Reference to Claims 2-11
Claim 2 recites additional abstract user actions in the game. Claim 3 recites extra-solution granting a benefit. According to Applicant this can be a coupon or discount (Spec. 36) which are well-known. Claim 4 recites extra-solution activity of adding to a shopping cart which is well-known in ecommerce as in Applicant’s Fig. 3. Claims 5 and 6 recite additional abstract mental processes of a “necessity of association” during (Claim5) or after a game (Claim 6), which appear to be merely allowing the user to make subjective choices as to what products or services she will retain in the shopping cart (See Spec. 40). Claim 7 recites more abstract rules to guide the user to a screen as part of the ecommerce process. Claim 8 recites additional abstract game rules to increase a level in the game. Claim 9 recites additional mental determining steps and highly genericized computing steps. Claim 10 recites well-known extra-solution information displaying (See Trading Technologies International v. IBG LLC, 921 F.3d 1084 (Fed. Cir. 2019) where the invention in this case helped a trader make an order when buying and selling items on a computer. The court found that the claims were directed to the abstract idea of graphing or displaying bids as part of the ordering process. The court was not persuaded that the claims were directed to an improved graphical user interface, finding that a "purportedly new arrangement of generic information" was not enough to improve the functioning of the computer in the manner of Core Wireless). Claim 11 recites additional abstract games or game parts.
Thus, none of the claims supply a practical application or inventive concept sufficient to transform the nature of the claim into a patent-eligible application. Additionally, the combination of additional elements adds nothing that is not already present when considered individually where the additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept. Thus, Claims 1, 12, and 13 are ineligible.
Claim Rejections - 35 USC § 102
9. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
10. Claims 1-7 and 9-13 are rejected under 35 U.S.C. § 102 (a1)(a2) as being anticipated by U.S. Pat. No. 2016/0048908 to Sibai.
In Reference to Claims 1, 12, and 13
Sibai discloses a system, method, and computer readable medium (Figs. 1 system 100,
processor 104, memory 106 and Fig. 2 method 202-228), comprising at least one processor 104
in electronic commerce ([0002-0003]) configured to:
execute a game based on user's actions (Sibai discloses a digital undertaking using avatars which may be a video game or slot machine played by a buyer [0073] or a fetch quest [0075]);
determine whether a predetermined condition associated with one of a product or a service in electronic commerce is satisfied based on the user's actions in the game (in the fetch quest the buyer “collects items and/or interacts with NPCs in order to receive rewards.” ([0075]); and
execute processing for listing one of the product or the service with a candidate list of a user account of the user in the electronic commerce when the predetermined condition is determined to be satisfied (the buyer has an established account [0101] and upon playing in the fetch quest, items collected are tracked to assess whether the buyer has successfully completed the quest conditions ([0076]).
In Reference to Claim 2
According to Sibai, the in fetch quest the buyer acquires a wallet in the game ([0076]).
In Reference to Claim 3
Sibai discloses that a benefit is a discount on a next purchase where “Hello, would you like to try a quest and get 10% off your next purchase?” ([0076]).
In Reference to Claim 4
Sibai adds the products and services to a shopping cart ([0138]) when the condition is satisfied where “[a]dditionally, the buyer may review (step 1636) discounts and/or promotions related to the product of interest, or other products, and then make the decision to add (step 1606) a product to the cart.
In Reference to Claims 5 and 6
Examiner construes necessity of association as an evaluation based on a subjective choice of the buyer to keep or discard shopping cart selections while on a fetch quest and after a fetch quest. According to Sibai, a buyer is able to review and modify to remove items from his shopping cart ([0142]) at any time. Examiner interprets the process of Sibai of Fig. 16 step 1636 to be a process that is occurring both while the player is engaged in the quest as well as after one or more quests as quests are “repeatable” ([0076]).
In Reference to Claim 7
According to Sibai, a buyer can be guided to a screen or “transported” to a place for more information regarding a particular item ([0106, 0107, 0110, 1022]).
In Reference to Claim 9 and 10
Sibai discloses condition (e.g., quests [0073-0076]) for a plurality of digital undertakings of a set of sellers ([0109]) and displays the digital undertakings of a seller with information on the buyer’s interface such as “Joe’s Card Shack” and Joe’s Furniture Store” ([0109]).
In Reference to Claim 11
Sibai discloses executing the game from among one of the games ([0073-0076]) of a plurality of electronic commerce systems (networks [0005], [0028] where each virtual environment may be accessible over the network of multiple buyers using the system [0032]);
determine whether the predetermined condition of the game is satisfied based on the user's actions in the game ([0075]); and
execute the processing for one of the plurality of electronic commerce systems that corresponds to the game selected by the user ([0076]).
Claim Rejections - 35 USC § 103
11. 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.
12. 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, 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.
13. 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.
14. Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sibai in view of U.S. Pat. Pub. No. 2015/0024852 to Pacey.
Sibai discloses the invention substantially as claimed. However, the reference does not explicitly disclose increasing a level of the game when the user has made a transaction relating to one of the product or service associated with the user account.
One of skill in the art would be aware of the characteristics of digital assets of Pacey. According to Pacey, in a virtual store items are managed between games and retail channels (Fig. 6) wherein purchases (Fig. 10) resulting from game play can result in characters evolving by increasing levels and by added capabilities as a result of purchases made via the retail channel ([0103]). Pacey invents this aspect of character and game development so “[t]he consumer preferably can control the character in an interactive environment. This allows the character to be part of an interactive adventure, while characteristics of the character are improved as the adventure progresses.” ([0003]).
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way; and
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Here, it would require only routine skill in the art to modify the avatar and quests of Sibai with the virtual character increases in levels resulting from purchases of Pacey in order to achieve the predictable result of making the seller’s quests more engaging thereby increasing game play and exposure of the buyer to more digital undertakings to increase profits for the participating sellers. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
Conclusion
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
17. 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.
18. 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 571-270-2992.
/PAUL A D'AGOSTINO/Primary Examiner, Art Unit 3715
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