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 § 112(b)
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 1-20 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.
The phrase “not preferred to be heard” in claims 1, 8 and 15 is a relative phrase which renders the claim indefinite. The phrase “not preferred to be heard” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The phrase “not preferred to be heard” peers into the subjective experience of humans and does not have clear metes and bounds. For instance, a sound may make someone feel uncomfortable or emotional, but may subjectively prefer to hear such sounds. One having ordinary skill in the art would not be apprised of the scope of the claims due to this subjective and personal standard.
The term “scary” in claims 6, 13 and 20 is a relative term which renders the claim indefinite. The term “scary” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Scary is a subjective description of something that causes fear, anxiety or unease and does not have clear metes and bounds.
Claim Rejections - 35 USC § 112(a)
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 1-20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claimed invention provides for functional recitations that are to be implemented by AI without any clear disclosure as to how the functional results are to be achieved. This type of claim leaves one having ordinary skill in the art with an undue experimentation burden and accordingly the claims lack enablement.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception. The claims will be analyzed with respect to the Subject Matter Eligibility Test at MPEP§2106.
Subject Matter Eligibility – Step 1 (see MPEP§2106.03)
The claims recite one of the four statutory categories of subject matter.
Subject Matter Eligibility – Step 2A Prong 1 (see MPEP§2106.04(a-c))
The claims recite abstract ideas in the following categories;
Methods of organizing human activity such as fundamental economic principles or practices (including hedging, insurance, mitigating risk) (MPEP§2106.04(a)(2)II) (hereinafter “MOHA”).
Mental processes (MPEP§2106.04(a)(2)III) (hereinafter “MP”).
The abstract ideas have been noted in the claims below.
Regarding Claim 1, a method for modifying a sound based on user preferences (MP – a mental design process, MOHA – designing human interactive experiences and artistic expression), comprising: receiving first audio data of a first sound to be output from a first virtual object during a play of a game by a user (MP, MOHA – see regarding the original sound effect); determining that the first sound is not preferred to be heard by the user (MP, MOHA – see recognizing human reactions to an experience); providing an indication to a game engine that the first sound is not preferred to be heard from the user (MP, MOHA – see modifying an experience based on prior information); and modifying the first audio data with second audio data to be output as a second sound preferred to be heard by the user (MP, MOHA – see modifying an experience based on prior information).
Claims 2-20 recite similar abstract ideas as noted above regarding claim 1.
Subject Matter Eligibility – Step 2A Prong 2 (see MPEP§2106.04(d))
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements are generic computer hardware; insignificant extra solution activity such as collecting information, analyzing it, and displaying certain results of the collection and analysis to data; and the use of software to tailor information and provide it to the user on a generic computer. These additional elements individually and in combination provide for limitations that do not integrate the judicial exception into a practical application. These additional elements (1) add “insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g)” (MPEP§2106.04(d)I) and (2) generally link “the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).” (MPEP§2106.04(d)I).
These additional elements individually and in combination are not limitations that provide for “improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);” (MPEP§2106.04(d)I) apply or use the “judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);” (MPEP§2106.04(d)I) implement the “judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);” (MPEP§2106.04(d)I) effect “a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c);” (MPEP§2106.04(d)I) or apply or use “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, as discussed in MPEP § 2106.05(e).” (MPEP§2106.04(d)I). As such the claims as a whole do not integrate the judicial exception into a practical application.
Subject Matter Eligibility – Step 2B (see MPEP§2106.05)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are well-understood, routine and conventional generic computer hardware and insignificant extra solution activity (see MPEP§2106.05).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER J IANNUZZI whose telephone number is (571)272-5793. The examiner can normally be reached M-F 9:30AM-5:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at 571-270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER J IANNUZZI/ Primary Examiner, Art Unit 3715
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