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
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 1-20 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 1-22 are directed to an apparatus or method meeting the requirements for Step 1.
5. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 21 and 22), recite an abstract idea of a media stating a set of user input rules for playing a game to control a player object which is 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, 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)).
7. Here, the processor, media {memory}, plurality of instructions for a race game are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. Applicant’s Specification does not disclose that these elements 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).
8. Applicant’s specification never suggests that the processor is improved from a technical perspective, or that it would operate differently than it otherwise could but instead “the disclosed processor is merely a means for setting up and playing the game where the game processor generates an electronic game display on a game terminal” (see ChargePoint, 920 F.3d at 768).
According to Applicant, “[0065] The main body apparatus 2 includes a processor 81. The processor 81 is an information processing section for executing various types of information processing to be executed by the main body apparatus 2. For example, the processor 81 may be composed only of a CPU (Central Processing Unit), or may be composed of a SoC (System-on-a-chip) having a plurality of functions such as a CPU function and a GPU (Graphics Processing Unit) function. The processor 81 executes an information processing program (e.g., a game program) stored in a storage section (specifically, an internal storage medium such as a flash memory 84, an external storage medium attached to the slot 23, or the like), thereby performing the various types of information processing. [0066] The main body apparatus 2 includes a flash memory 84 and a DRAM (Dynamic Random Access Memory) 85 as examples of internal storage media built into the main body apparatus 2. The flash memory 84 and the DRAM 85 are connected to the processor 81. The flash memory 84 is a memory mainly used to store various data (or programs) to be saved in the main body apparatus 2. The DRAM 85 is a memory used to temporarily store various data used for information processing.”
9. Consequently, these devices and programming are viewed as nothing more than an
attempt to generally link the use of the judicial exception 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 to carry out the operations to control the player object movements. 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 one of more computer components 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, each claim, as a whole, does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. Thus, Claim 1, and similarly Claims 21 and 22, lack the eligibility requirements of Step 2 Prong II.
12. Step 2B
According to the 2019 PEG, 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.
There are no elements evaluated under Step 2A but for the devices used as tools. 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 and similarly Claims 21 and 22 are ineligible.
Dependent Claims 2-20
Claims 2-20 recite more abstract rules that correspond to user input actions to follow moving the player object for playing the game. 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.
Claim Rejections - 35 USC § 103
17. 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.
18. 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.
19. 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.
20. Claims 1-22 are rejected under 35 U.S.C. 103 as being unpatentable over “How to DRIFT: Super Mario Mart Starter Guide – Episode 1” by TemplarPlayGames (“Templar”), YouTube June 30, 2018 found at https://www.bing.com/videos/riverview/relatedvideo?adlt=STRICT&q=how%20to%20hop%20drift%20in%20mario%20kart%202020&mid=6743B34ADFE00C6A18506743B34ADFE00C6A1850&ajaxhist=0 accessed on July 31, 2026 in view of “Mario Kart how to drift” by Gary DeVries (“DeVries”), YouTube April 10, 2022 found at https://www.bing.com/videos/riverview/relatedvideo?q=how+to+hop
+drift+in+mario+kart+ and+drift+boost&adlt=STRICT&mid=55E0EF143ABBEF04C85555E0EF
143ABBEF04C855&churl=https%3a%2f%2fwww.youtube.com%2fchannel%2fUCSfaR2QDEWh3u3lFywhAw4g&mmscn=mtsc&aps=26&FORM=VMSOVR accessed on July 31, 2026.
In Reference to Claim 1, 20 and 22
Templar discloses, using a Super Nintendo Entertainment System (SNES), a Nintendo race game, comprising:
controlling a player object {Mario Kart character/vehicle} in a virtual space in accordance with a user operation (time stamp 0:00 to 5:25 player character on vehicle on a racetrack);
causing the player object to move in a first moving state if there is a first operation input at a time of landing of the player object on a track path and if there is a predetermined turn operation input at a predetermined timing at or before the time of landing (According to Templar, when approaching a turn (01:29), the player presses and holds the L or R buttons on the controller which generates a hop (01:34) and at the same time (mid-air) player presses the direction on the analog button (01:38) so that upon landing from the hop, the player object initiates a drift {first moving state}(01:41));
causing the player object to move in a second moving state different from the first moving state if there is the first operation input at the time of landing of the player object on the track path and if there is not the turn operation input at the predetermined timing (similar to above but this would result in no drift {second moving state}); and
causing the player object to temporarily move in a third moving state that is advantageous in a race game based on a parameter in accordance with continuation of the second moving state (Templar discloses counter steering using the L and R button which is opposite the L or R button for the drift results in straightening out the player object coming out of the drift without a loss of speed but in a different direction than the drift {third moving state} (01:54).
Templar discloses the invention substantially as claimed. However, the reference does not explicitly disclose a third move which is an advantageous state that increases a parameter. One of skill in the art would be aware of the teachings of DeVries.
DeVries teaches of drifting in Mario Kart racing and as part of a drift maneuver one is able to release the buttons to drift into a drift or power boost for a temporary burst of speed following a drift coming out of a turn (00:20).
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 motions options to advantageously have a burst of speed of DeVries into the racing and drift of Templar to achieve the predictable result of added realism and increased excitement for the player of the game. The Courts have held that applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to be indicia of obviousness.
In Reference to Claim 2
DeVries teaches wherein a speed of the player object in the third moving state is faster than a speed of the player object in a normal moving state because the boost or burst of speed is greater than normal speed.
In Reference to Claims 3, 4 and 6
Termplar discloses wherein the second moving state is not engaging the drift which is disadvantageous in the race game because time and distance are lost in every turn, and the player object in the second moving state is slower than a speed of the player object in a normal moving state due to the extra distance and loss of speed in each turn.
In Reference to Claim 5
According to Templar, if the drift is not engaged cornering performance of the player object in the second moving state is lower than the cornering performance of the player object in the first running moving state.
In Reference to Claim 7
According to DeVries causing the player object to temporarily move in the third moving state is executed based on the parameter reaching a predetermined value where the player object is not at zero speed and can transition to the boost speed.
In Reference to Claim 8
Templar discloses that upon activation of the L or R buttons the player object will hop {first jump} while the player object is moving on the track path.
In Reference to Claim 9
Templar discloses the player object to move in the second moving state {non-drift} is executed if the speed of the player object moving on the track path in a normal moving state exceeds a first speed while the first operation input is continuing (the player object has to be moving and not stopped).
In Reference to Claim 10
Templar discloses wherein causing the player object to move in the second moving {non-drift} state is executed because the first operation input at the time of landing of the player object on the track path, if there is not the turn operation input at the predetermined timing, and if the speed at the time of landing has exceeded a second {non-zero} speed.
In Reference to Claim 11
Templar discloses the player object to move in the second moving {non-drift} state is executed while the first operation input is continuing since the first operation input was made; and causing the player object to move in the third moving (boost} state is executed in response to ending of the continuing first operation input after the parameter reaches the predetermined value (this occurs when the buttons are released).
In Reference to Claim 12
Templar discloses causing the player object to perform a first jump {hop} action in response to the first operation input being made while the player object is moving (pressing the L or R buttons); and causing the player object moving in the second moving {non-drift} state to perform a second jump action in response to ending of the continuing first operation input after the parameter reaches the predetermined value (a player is able to hop again in the non-drift state to reduce speed or control the player object).
In Reference to Claim 13
Templar discloses causing the player object to move in the third moving (boost} state is executed after the player object lands from the second jump action (player is able to initiate the drift from the landing of the second hop and enter the boost speed state).
In Reference to Claim 14
Templar discloses second jump actions are executed based on the turn operation input made upon ending of the continuing first operation input where the first operation input begins and ends a first jump, the player object is able to hop again).
In Reference to Claim 15
Examiner construes this claim limitation as an intended use wherein a player is able to have a second jump {hop} action based on the turn operation input made upon ending of the continuing first operation {hop} input, and wherein an amount of movement (speed or distance} by the second jump action is greater than an amount of movement by the first jump action because the boost can be enabled following the second hop.
In Reference to Claim 16
Examiner construes this claim limitation as an intended use where Templar allows causing the player object to move in a fourth moving state (following all previous states), in which the player object is caused to move on the wall surface, in response to the player object coming into proximity with a wall surface while performing the second jump action (a player is able to engage a wall anywhere along the race track).
In Reference to Claim 17
Examiner construes this claim limitation as an intended use wherein causing the player object to temporarily move in a fifth moving state, for example, another drift and boost state resulting in a move that is advantageous in the race game based on a parameter {speed} that increases in accordance with continuation of the first running moving state.
In Reference to Claim 18
Examiner construes this claim limitation as an intended use wherein so long as a drift is properly executed in a fourth state the speed in a fifth state will be faster than the speed of the player object in a normal moving {non-drift} state.
In Reference to Claim 19
Templar discloses drift, non-drift, boost and non-boost movement in the race game which is a display on a display device of different manners of moving in first and second moving states.
In Reference to Claim 20
Templar discloses a plurality of circuit courses and connecting courses that connect between the circuit courses are arranged in the virtual space; and in the race game, the player object is movable in two or more of the circuit courses and a connecting course that connects together the two or more circuit courses where in the commentary the narrator discloses different courses that can be raced and in each competition the races qualify the player to compete in high level prize races to complete the level or domain.
Conclusion
21. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
22. 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.
23. 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.
24. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached on (571) 270-1344. 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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