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
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statement filed 09/18/2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Limitations in claims 5 and 6 use “step of” but are not being interpreted under 35 U.S.C. 112(f).
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a management unit that…records, in a block chain or a distributed ledger information, as transaction information, information,” “a management unit that…manages, in a block chain or a distributed ledger information, as transaction information, information,” and “a transaction control unit that…controls the second transaction by using the transaction information” in claim 1; “a management unit…records…a record,” “a management unit…manages…a record” in claims 3 and 4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 5, and 6 recite “having a second value in the real space or the virtual space.” Prior to this limitation, the claims also recite “between a first user who is present in a real space or a virtual space, the first user having a first value in the real space or the virtual space, and a second user who is present in the real space or a virtual space.” The claims appear to suggest there are two virtual spaces – one in which a first user is present and one in which the second user is present. Therefore, it is unclear to which virtual space “the virtual space” in “having a second value in the real space or the virtual space” is referring.
Claims 1, 5, and 6 recite “the first value and the second value has been conducted.” It is unclear what is meant by a first and second value “has been conducted.” For purposes of compact prosecution, this limitation will be interpreted to mean that the first value and the second value were in a completed transaction to remain consistent with the context of the claim language.
In Claim 1, claim limitations “a management unit that…manages, in a block chain or a distributed ledger information, as transaction information, information” and “a transaction control unit that…controls the second transaction by using the transaction information,” and in Claims 3-4, claim limitation “a management unit…manages…a record” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure(s), material(s), or acts for performing the entire claimed function(s) and to clearly link the structure(s), material(s), or acts to the function(s). Specifically, the disclosure is devoid of any algorithm for “manages” or “controls.” For a computer-implemented claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function MPEP 2181(II)(B). Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-4 depend from claim 1. They do not cure the deficiencies presented above. Therefore, they are also rejected under 35 U.S.C. 112(b) for at least based on their dependency from a rejected base claim.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As described above, the disclosure does not provide adequate structure (computer and algorithm) to perform the claimed function of “manages…information,” “controls the second transaction,” and “manages…a record.” The specification does not demonstrate that applicant has made an invention that achieves the claimed function(s) because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
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 an abstract idea without significantly more.
Step 1:
Claims 1-6 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 5 have been denoted with letters by the Examiner for easy reference. Independent claims 1 and 6 recite similar distinguishing features as claim 5, therefore the following eligibility analysis shall apply to all of the independent claims. The judicial exceptions recited in claim 5 are identified in bold below:
An information processing method executed by an information processing device, the information processing method comprising:
a management step of, when a first transaction for exchanging, between a first user who is present in a real space or a virtual space, the first user having a first value in the real space or the virtual space, and a second user who is present in the real space or a virtual space, the second user having a second value in the real space or the virtual space, the first value and the second value has been conducted, recording and managing, in a block chain or a distributed ledger, as transaction information, information relating to the first value, information relating to the first user, information relating to the second value, and information relating to the second user; and
a transaction control step of, when a second transaction relating to at least one of the first value, the first user, the second value, or the second user is to be conducted, controlling the second transaction by using the transaction information recorded and managed in the block chain or the distributed ledger through processing of the management step.
Under the broadest reasonable interpretation, A-C recite limitations that are reasonably categorized under certain methods of organizing human activity. Specifically, the claimed limitations can be grouped as commercial or legal interactions in the form of sales activities or behaviors. Managing transaction information and controlling a transaction are analogous to regulating transactions, which is considered a sales activity/behavior.
Claims 1, 5, and 6 recite at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 5 recites the additional element(s) not in bold above.
In limitations B and C, “in a block chain or a distributed ledger” is the additional element recited. Merely reciting performing the method steps in a blockchain or distributed ledger is a general usage of a data structure. When the additional element is considered individually and as an ordered combination with the abstract idea, the claim(s) as a whole amounts to no more than mere steps to implement an abstract idea on a data structure. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In limitation B, “recording…in a block chain or a distributed ledger” is considered insignificant extra-solution activity because it amounts to no than mere data gathering and outputting. Recording information in a blockchain or distributed ledger does not add a meaningful limitation to the process. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Claims 1, 5, and 6 further recite “executed by an information processing device,” “an information processing device,” “a management unit,” “a transaction control unit,” and “a non-transitory computer readable medium storing a program for causing a computer to execute control processing” as additional elements. The additional elements are all recited at a high-level of generality. The abstract idea in limitations A-C are merely software instructions that as an ordered combination with the additional elements amount to a computer that is programmed to carry out the abstract idea. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claims 1, 5, and 6 do not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. Furthermore, “recording…in a block chain or a distributed ledger” is analogous to electronic recordkeeping, which the courts have recognized as a well-understood, routine, and conventional computer function when claimed in a merely generic manner MPEP 2106.05(d)(II). As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Dependent Claims
Dependent claims 2-4 elaborate on the abstract idea identified above and do not recite any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claim from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea amounts to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1-6 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Koch U.S. 2022/0215361.
Re Claim 1, Koch teaches an information processing device comprising:
a management unit that [0037] – “Record component 134 may be configured to record rights pertaining to digital assets on blockchain 111a,” when a first transaction for exchanging, between a first user who is present in a real space or a virtual space, the first user having a first value in the real space or the virtual space, and a second user who is present in the real space or a virtual space, the second user having a second value in the real space or the virtual space [0069] – “a transfer request (i.e. first transaction) is received on behalf of the first user, to transfer the ownership of the first digital asset (i.e. first value) from the first user to the second user,” [0013] – “digital assets may be virtual items that are usable within one or more online gaming platforms (i.e. first and second value in virtual space),” [0027] – “users 123 may control characters, objects, simulated physical phenomena, and/or other elements within the virtual space to interact with the virtual space and/or each other (i.e. first and second user present in a virtual space),” [0052] – “any user of blockchain 111b may determine the current assets of blockchain 111b, and the balances of any user,” thereby suggesting every user has asset information, i.e. second user having a second value in the virtual space, the first value and the second value has been conducted [0044] – “accomplish and/or perform the exchange of ownership from user 11 to user 12,” records and manages, in a block chain or a distributed ledger Fig. 1 – Decentralized Ledger Server(s) 111,” as transaction information Fig. 5A 111b, information relating to the first value, information relating to the first user, information relating to the second value, and information relating to the second user Fig. 5A, [0051] – “As shown in block 0, three assets (indicated by a capital “A” or “C”) are created and/or generated, and subsequently assigned to three users or players, a first asset (i.e. first value) is assigned to user i (Ui) (i.e. first user), a second asset (i.e. second value) is assigned to user j (Uj) (i.e. second user)”; and
a transaction control unit that [0036] – “Instruction component 136 may be configured to receive (sets of) instructions to add, modify, and/or remove recorded rights in blockchain 111a,” when a second transaction relating to at least one of the first value, the first user, the second value, or the second user is to be conducted, controls the second transaction by using the transaction information recorded and managed in the block chain or the distributed ledger by the management unit [0038] – “For example, in accordance with received instructions from instruction component 136 (i.e. controls the transaction), record component 134 may transfer ownership of a particular digital asset from a first owner to a second owner),” [0052] – “a first transaction from user i to user j, and a second transaction from user j to user k (i.e. second transaction relating to at least a first user or second user).” It would have been obvious to one of ordinary skill in the art that since the instruction component 136 is configured to instruct the record component 134 what recorded rights to add, modify, and/or remove, it suggests that information related to the first and/or second users must be present, or used, i.e. controls by using the transaction information. Furthermore, [0052] – “the balance of a particular user may be verified prior to adding a transaction that reduces that particular user’s balance. For example, an individual user may not be allowed to transfer assets the individual user does not own,” thereby suggesting that transaction information already recorded is used prior to adding a transaction.
Re Claim 2, Koch teaches the information processing device according to claim 1, and Koch further teaches wherein the first transaction is a transaction when at least one of the first value, the first user, the second value, or the second user is present in a virtual space [0027] – “users 123 may control characters, objects, simulated physical phenomena, and/or other elements within the virtual space to interact with the virtual space and/or each other (i.e. first and second user present in a virtual space).”
Re Claim 3, Koch teaches the information processing device according to claim 1, and Koch further teaches wherein the management unit further includes, in the transaction information, and records and manages, in the block chain or the distributed ledger, a record of distribution of at least either the first value or the second value [0037] – “particular recorded rights may reflect ownership of a particular digital asset (i.e. first value or second value) by a particular user,” [0052] – “Block 2 includes a first transaction from user j to user m (i.e. a record of distribution).”
Re Claim 4, Koch teaches the information processing device according to claim 1, and Koch further teaches wherein the management unit further includes, in the transaction information, and records and manages, in the block chain or the distributed ledger, a record of an owner of at least either the first value or the second value [0037] – “Record component 134 may be configured to record rights pertaining to digital assets on blockchain 111a…The rights may include ownership rights…particular recorded rights may reflect ownership of a particular digital asset by a particular user.”
Re Claim 5, it is the method claim of device claim 1. It recites similar distinguishing features as claim 1. Therefore, it is rejected for the same reasons above.
Re Claim 6, it is the computer-readable medium claim of device claim 1. It recites similar distinguishing features as claim 1. Furthermore, Koch teaches implementing the described method by executing instructions stored on an electronic storage medium [0063]. Therefore, it is rejected for the same reasons above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
So et al. U.S. 11,909,860 directed to systems, methods, and program products for loaning digital assets.
Parlotto et al. U.S. 2022/0414621 directed to blockchain and non-fungible token application in a gaming environment to store and track digital assets.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE DANG whose telephone number is (571)270-5880. The examiner can normally be reached M-F 9-5pm MT.
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/CHRISTINE DANG/Examiner, Art Unit 3698