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 .
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.
Election/Restrictions
Claims 2-6,10-13,15,17,20-24 and 28-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/22/2026.
Applicant's election with traverse of Species II in the reply filed on 6/22/2026 is acknowledged. The traversal is on the ground(s) that the species are useable together. Additionally, the traversal asserts there would not be a search burden simply because the species are usable together. These arguments are not persuasive. Per MPEP § 806.04(b), the requirement for an election of species may be made between independent inventions or related inventions. While Applicant’s traversal addresses independent inventions, the species here are related (not independent) inventions. According to MPEP § 802.01, independent inventions are defined as unrelated inventions where there is no disclosed relationship between them. By contrast, two or more inventions are defined as related if they are connected in some way. Related inventions are distinct from one another if the inventions as claimed are not connected in at least one of design, operation, or effect and at least one invention is patentable over the other (even though they may not be patentable over the prior art). Stated differently, one invention would not anticipate the other or make the other obvious. Here, the identified species are generally related but distinct because while they may be useable together, they have materially different designs, operations, or effects.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
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, 7, 8, 14, 16, 18, 19, 25, and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by The Elder Scrolls V: Skyrim (hereinafter Skyrim), originally released November 11, 2011, Anniversary Edition on November 11, 2021.
While the Skyrim game is the subject of this rejection, the following individual references are provided as evidence for features included in the Skyrim game:
D1: Controls (Skyrim)
D2: Wolf (Skyrim)
D3: Familiar (Skyrim)
D4: Conjure Flaming Familiar
D5: Skyrim Souls RE - Unpaused Menus
Regarding claims 1, 14, 18, and 19, Skyrim teaches one or more computer-readable non-transitory storage media, and system and method therefor, having stored therein a game program configured to cause at least one processor of an information processing apparatus (e.g., PC, Xbox One, PS3, etc. in D1) to:
control a player character (e.g., a player character known as the Dragonborn in D1, D2) in a virtual space (e.g., an outdoor environment, cave, mine, fort, etc. in D2) on the basis of an operation input (e.g., using a controller or keyboard in D1);
automatically control a plurality of kinds of dynamic objects which are placed on a field in the virtual space, on the basis of behaviors set for the respective kinds (e.g., animals such as wolves, bars, deer, dogs, etc. in D2);
for imitation objects (e.g., a conjured entity such as a “familiar” or “flaming familiar” in D3) each of which an outer appearance (similar to a wolf, see below) and a set behavior (e.g., howling or charging at enemies in D3) are at least partially the same as those of at least one of the plurality of kinds of the dynamic objects and each of which a display manner is different from that of the at least one dynamic object (e.g., a familiar resembles a wolf but with a spectral appearance and a flaming familiar resembles a wolf but with a fiery appearance in D3), cause the player character to perform a predetermined action (e.g., conjuring in D3) and cause a designated imitation object designated among a plurality of kinds of the imitation objects to appear on the field (e.g., by conjuring the familiar or flaming familiar in D3), in accordance with a first instruction based on an operation input (e.g., selecting the conjure familiar spell or conjure flaming familiar spell in D3); and
automatically control the imitation object with a set behavior, on the field (e.g., the familiar will fight for the Dragonborn and the flaming familiar runs towards enemies and explodes in D3, D4).
Regarding claims 7, 16, and 25, Skyrim causes the processor to:
present a first list (e.g., a list of conjuration spells in D3, D1) that allows selection from the plurality of kinds of imitation objects in accordance with a third instruction based on an operation input (e.g., accessing the conjuration spell menu in D1);
while the first list is being presented, stop behaviors of objects in the virtual space including at least the player character, the dynamic objects, and the imitation objects (e.g., the game pauses when the spell menu is activated, as evidenced by the mod to remove this feature in D5); and
in accordance with a fourth instruction based on an operation input performed while the first list is being presented, select and designate any of the plurality of kinds of imitation objects as the designated imitation object (e.g., selecting a conjuration spell, such as conjure familiar or conjure flaming familiar in D3, D4), end presentation of the first list, and restart the behaviors of the objects in the virtual space (e.g., close the spell menu via tab key in D1).
Regarding claims 8 and 26, Skyrim teaches wherein the third instruction is an operation of turning on an input to a first operation key (e.g., the tab key in D1), the fourth instruction is an operation of turning off the input to the first operation key (e.g., pressing the tab key again to close the menu in D1), and the game program causes the processor to:
while the input to the first operation key is on (e.g., after the tab key is pressed), present the first list (e.g., the spell menu is shown), and change the imitation object to be selected on the first list, in accordance with a fifth instruction based on an operation input (e.g., the player selects the desired spell, which may be a plurality of spells in D1); and
designate the imitation object selected when the fourth instruction has been performed, as the designated imitation object (e.g., close the menu by pressing the tab key again in D1).
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, 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.
Claims 9 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Skyrim in view of US 2024/0139633 to Kuroda et al. (hereinafter Kuroda).
Regarding claims 9 and 27, Skyrim teaches the invention substantially as described above, but lacks in explicitly teaching the features of the menu structure such that while the first list is being presented, in a case where a sixth instruction based on an operation input has been performed, present a second list instead of the first list; and while the second list is being presented, in accordance with a seventh instruction based on an operation input, change the imitation object to be selected on the second list, and in accordance with an eighth instruction based on an operation input, designate the selected imitation object as the designated imitation object and end presentation of the second list, wherein the first list is a list in which icons of the plurality of kinds of imitation objects are arranged in one row, and the second list is a list in which icons of the plurality of kinds of imitation objects are arranged two-dimensionally and with which a text regarding the selected imitation object is displayed.
These features are interpreted to mean that an expanded list (or menu) is presented upon an input from the player, and the expanded menu provides an icon view of possible kinds of imitation objects. The basic list (or menu) provides a row of the kinds of imitation objects, whereas the expanded menu provides a matrix of imitation objects along with text regarding the selected imitation object. These two lists are interpreted in accordance with Figures 27 and 28 of the instant specification.
The claimed menu structure is an obvious matter of choice well within the ordinary level of skill in the art. The specification does not describe any particular criticality to the selection menus, and the focus of the disclosed invention relates to the imitation objects rather than their menu design. Furthermore, Kuroda teaches that it was known in the art to provide selectable icons relating to various characters that may be added to the game, and that the icons may be arranged in a two-dimensional matrix for selection in a menu (see at least Figs. 8-10). Kuroda further teaches that the menu may provide textual information in addition to the matrix of icons (e.g., Figs. 8-10), and additionally that menus may be separately provided for further detailed information about a specific selectable character (e.g., Fig. 11). As such, it would have been obvious to one of ordinary skill in the art before the effective date to modify Skyrim to include a first list in which icons of the plurality of kinds of imitation objects are arranged in one row, and the second in which icons of the plurality of kinds of imitation objects are arranged two-dimensionally and with which a text regarding the selected imitation object is displayed, such that the player may select between the lists, as taught or suggested by Kuroda, in order to provide basic information that is easily accessible to the player and optionally provide more thorough information if desired by the player.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For instance, Conjure Familiar provides additional information on the spell corresponding the Familiar (Skyrim) reference discussed above. Furthermore, US 2022/0062760 to Motokura et al. teaches the ability to select a second character object that supports the first character object (i.e., the first player) during a game. US 2024/0207732 to Quan et al. teaches a game in which a virtual character may summon clones to assist the virtual character in fighting and the clones can imitate the skills and actions of the virtual character.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at 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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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715
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