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 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.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 (What is the statutory category?):
Claims 1-9 are drawn to at least one of the four statutory categories of invention (ie: process, machine, manufacture, or composition).
Step 2A; Prong I (Does the claim recite an abstract idea?):
Claim 1 (and similarly Claims 4 and 7) recites:
A non-transitory computer readable medium/computer-implemented method/information processing system having recorded thereon a program which causes a computer to function as:
a first progress means which progresses a game in a first progress mode in which the game is progressed based on an operation of a user;
a second progress means which progresses the game in a second progress mode in which the game is able to be progressed without requiring at least part of the operation of the user that affects progress of the game in the first progress mode; and
a success/failure decision means which decides success or failure of a predetermined event when progressing the game in the second progress mode, based on an environment in a game space and an attribute of a character operated by the user.
[the Examiner submits that the foregoing underlined elements recite certain method of organizing human activity because they describe “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”]
According to the 2019 Revised Patent Subject Matter Guidelines, Certain Methods of Organizing Human Activity, Managing Personal Behavior or Relationships or Interactions Between People (e.g. social activities, teaching, and following rules or instructions) "encompasses both activity of a single person (for example a person following a set of instructions) and activity that involves multiple people (such as a commercial or legal interaction). Thus, some interactions between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within this grouping." (Emphasis added)
To further elaborate on the Examiner’s interpretation regarding the claimed invention being directed towards certain methods of organizing human activity, the Examiner believes the invention describe managing interactions between people and machine (ie: a gaming system) in which rules or instructions for the gaming machine is being implemented (ie: a game in which a player can play in two different modes, a first mode in which the player controls the game directly with touch or other input, and a second mode, in which the game can continue with less user input, or even automatically, when certain conditions are met.)
Step 2A; Prong II (Does the claim recite a practical application?):
The Examiner submits that the additional elements do not amount to significantly more than the abstract idea for the same reasons discussed above with respect to the conclusion that the additional elements do not integrate the abstract idea into a practical application.
The dependent claims 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 instructions to implement the abstract idea on a computer or use a computer as tool to perform the abstract idea.
Taken alone, the additional elements do not integrate the abstract idea into a practical application. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For example, there is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
The abstract idea is not integrated into a practical application for the following reasons. The claim elements of claims 1, 4, and 7 above that are not underlined constitute additional limitations.
The Examiner submits that the following additional limitation merely uses a computer as a tool to perform the abstract idea: first progress means, second progress means, success/failure decision means.
The Examiner finds that there are concepts regarding the application that simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality. For example:
Maa, US 20170197144 discloses that gaming display devices in which a user can make an input for controlling game objects are well-known to one of ordinary skill in the art (paragraph 4).
The above helps to suggest that the claimed components are no more than generic well-known components.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
For example, there is no indication that the combination of elements improves the functioning of a computer or improves any other technology; there is no additional element that applies or uses 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; the additional elements merely recite the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Step 2B (Are there additional elements that are “something more” than an abstract idea?):
Dependent Claims 2-3, 5-6, 8-9 do not include additional elements that are sufficient to amount to significantly more than the abstract idea for the same reasons discussed above with respect to the conclusion that the additional elements do not integrate the abstract idea into a practical application. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
In addition, with regards to dependent claims, the courts have recognized the computer functions as well-understood, routine, and conventional activities when they are claimed in a merely generic manner (ie: at a high level of generality) or as insignificant extra-solution activity because 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 performing repetitive calculation in Flook, Bancorp.
Therefore, the dependent claims are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
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 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maeda et al., US 20150038226 (Maeda)
Regarding Claims 1, 4, 7. Maeda discloses A non-transitory computer readable medium/method/information processing system comprising:
a first progress means which progresses a game in a first progress mode in which the game is progressed based on an operation of a user (Fig 6B, elem 32; Abstract, para 14, 56, 67, 71, 74, 91. Users can engage in a battle in manual mode in which the game is progressed based upon user inputs.);
a second progress means which progresses the game in a second progress mode in which the game is able to be progressed without requiring at least part of the operation of the user that affects progress of the game in the first progress mode (Fig 6B, elem 33; Abstract, para 14, 56-59, 69, 70-71, 75); and
a success/failure decision means which decides success or failure of a predetermined event when progressing the game in the second progress mode, based on an environment in a game space and an attribute of a character operated by the user (Abstract, para 9-10, 53, 56, 58, 70, 73, 76, 93-94, 99, 139-140. A determination is made on the probability of success/failure based upon if the player had engaged in battle with the enemy previously before. The battle is interpreted as an environment in which the attribute of the character operated on by the user is whether the character had engaged in battle against the enemy character previously.)
Regarding Claims 2, 5, 8.
Maeda further discloses wherein the success/failure decision means corrects a probability reference value decided based on the environment in the game space, based on the attribute of the character to obtain a probability regarding the success or failure of the predetermined event (Abstract, para 9-10, 41, 53, 56, 58, 70, 73, 76, 93-94, 97, 99, 117, 139-140. The predetermined event is interpreted as a predetermined battle taking place.).
Regarding Claims 3, 6, 9.
Maeda further discloses a means which presents, to the user, whether to progress the game in the first progress mode or progress the game in the second progress mode in a selectable manner when a predetermined condition is satisfied for a predetermined object in the game space (Fig 6B, elem 32-33; Abstract, para 14, 56-59, 67, 70-71, 74-75, 91. Players are presented with means in which to progress the game in a first mode or a second mode when the user enters a battle. In this case, the player is prompted on whether to engage in manual mode or auto mode when a predetermined condition, such as the player entering battle, occurs.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY WONG whose telephone number is (571)270-3003. The examiner can normally be reached M-F: 9-5pm.
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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY K WONG/Primary Examiner, Art Unit 3715
