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 .
DETAILED ACTION
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application discloses and claims only subject matter disclosed in prior application no 13/863257, filed 4/15/13, prior application no 15/403483, filed 1/11/17, prior application no 15/606826, filed 5/26/17, prior application no 15/877904, filed 1/23/18, prior application no 16/160538, filed 10/15/18, prior application no 16/735363, filed 1/6/20, prior application no 17/102188, filed 11/23/20, prior application no 17/747847, filed 5/18/22, prior application no 18/448784, filed 8/11/23, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application constitutes a continuation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 9573051, 11389727, 11724197, and 12168178, claims 1-15 of U.S. Patent No. 9662586, 9901830, 10124259, 10549201, and 10874946. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of the present application are merely broader in scope than that of U.S. Patent No. 9573051, 9662586, 9901830, 10124259, 10549201, 10874946, 11389727, 11724197, and 12168178. Therefore, U.S. Patent No. 9573051, 9662586, 9901830, 10124259, 10549201, 10874946, 11389727, 11724197, and 12168178 “invention” meets the limitations of the instant application.
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.
In the instant application, claim(s) 1-18 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Claim(s) 1-18 is/are drawn to at least one of the four statutory categories of invention (i.e. process, machine, manufacture, or composition).
Step 2A:
However, claim(s) 1-18 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
For instance, regarding independent claim(s) 1, 10,
Prong 1 analysis:
The limitations of “automatically determine a first metric related to the activities of the first user in the online game, wherein determination of the first metric is based on monitored activities of the first user; determine and/or modify a first probability of the first user being provided with one or more potential reward items subsequent to performance of one or more game tasks within the online game, wherein determination and/or modification of the first probability is based on the first metric; select a reward to be provided to the first user subsequent to the performance of the one or more game tasks, wherein the reward is selected from the one or more potential reward items in accordance with the first probability; and subsequent to the performance of the one or more game tasks, provide the reward to the first user”, are considered to fall within the certain methods of organizing human activity grouping (managing personal behavior, rules). The mere nominal recitation of generic computer elements does not take the claim out of the methods of organizing human activity grouping. Thus, the claim(s) recites an abstract idea.
Furthermore, dependent claims 2-9, 11-18 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they are merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Prong 2 analysis:
The above-identified abstract idea is not integrated into a practical application under the 2019 PEG because the additional elements “a computer, one or more physical processors configured by machine-readable instructions”, are generically recited computer elements that do not improve the functioning of a computer, or any other technology or technical field. Nor do these additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above is not integrated into a practical application under the 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under the 2019 PEG because the claimed method and system merely implements the above-identified abstract idea using rules (e.g., computer instructions) executed by a computer. The claimed elements are recited at a high level of generality, and amounts to mere data gathering and data transmission, which is a form of insignificant extra-solution activity. Each of the additional limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, 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.
Step 2B:
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, in view of Berkheimer, the recited additional elements are considered as conventional activity. For instance, Terashima et al. (2013/0288766) teaches the additional elements (Fig 1, ¶¶0041-0050).
In addition, with regards to the present claims, the courts have recognized the computer functions as well‐understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
For instance, regarding claims 1-18, each claim describes physical or software elements that provide a generic environment in which to carry out the abstract idea, which is similar to the conventional activity or as insignificant extra-solution activity of selecting information, based on types of information, for collection, analysis and display in EPG, gathering, receiving and transmitting data in Symantec, TLI, OIP Techs., buySAFE, and rules in In re Smith.
Therefore, claim(s) 1-18 is/are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 102
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.
(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.
Claim(s) 1, 7, 9-10, 16, 18 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Caputo et al. (2014/0087855).
Re Claim 1,
Caputo discloses a system for rewarding performance of game tasks in an online game by users, wherein rewards are selected from multiple potential rewards, wherein the users include a first user, and wherein activities of the users in the online game have been monitored, the system comprising: one or more physical processors configured by machine-readable instructions (¶¶0010, 0022, 0032, 0085-0086; a player can participate in an online wagering game, wherein the player activity is monitored by the gaming system) to:
automatically determine, by the one or more physical processors, a first metric related to the activities of the first user in the online game, wherein determination of the first metric is based on monitored activities of the first user (Fig 1, ¶¶0074-0076; the gaming system determines whether a point accumulation event occurred in association with the play of the game, i.e., a player’s accumulated points are considered as a first metric);
determine and/or modify, by the one or more physical processors, a first probability of the first user being provided with one or more potential reward items subsequent to performance of one or more game tasks within the online game, wherein determination and/or modification of the first probability is based on the first metric (Fig 1-5, ¶¶0037, 0068, 0070, 0073, 0076-0083; If the gaming system determines that the player's point balance for the game reached one of the designated point thresholds, the gaming system modifies a feature of the game and/or adds a new feature to the game such that the average expected payback percentage of the game permanently increases);
select, by the one or more physical processors, a reward to be provided to the first user subsequent to the performance of the one or more game tasks, wherein the reward is selected from the one or more potential reward items in accordance with the first probability; and subsequent to the performance of the one or more game tasks, provide, by the one or more physical processors, the reward to the first user (Fig 1-5, ¶¶0068, 0070, 0073, 0076-0083; the gaming system selects a new feature to the game such that the average expected payback percentage increases).
Re Claims 7, 16,
Caputo discloses the one or more potential reward items include one or more of an in-game item, a game level, unlocking game information, and/or acquisition of a skill (¶¶0037, 0068, 0070, 0073, 0076-0083).
Re Claims 9, 18,
Caputo discloses execute the instance of the online game, and implement the instance to facilitate presentations of views of the online game to users through displays of client computing devices associated with the users; and facilitate interaction of the users with the online game, wherein the users are associated with user accounts, wherein the user accounts include a first user account, wherein the first user is associated with the first user account (¶¶0010, 0022, 0032, 0037, 0094, 0122).
Re Claim 10,
Claim 10 is substantially similar to claim 1. See claim 1 for rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON TAHAI YEN whose telephone number is (571)270-1777. The examiner can normally be reached on Mon - Fri 7am- 3pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached on 571-272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON T YEN/Primary Examiner, Art Unit 3715
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