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 .
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.
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 1-3 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.
Claim 1 recites “…awards a predetermined benefit if each of the players attaches the mark to the character”. The phrase “each of the players” renders the claim indefinite, as it is unclear if “all” of the players of the plurality of plyers have to attach the same mark to each of their characters, or if the predetermined benefit is awards if “one” of the players attaches the mark to their character. For the purpose of examination, the claim will be interpreted as awarding a predetermined benefit if one of the players attaches the mark to the character.
Claim 3 recites “in a manner that violates public order and morals”. This limitation renders the claim indefinite. The determination of whether or not something violates public order and morals is highly subjective. What one may determine as immoral or against public order may be different than what another would determine. As such, one cannot determine when one would be infringing upon the claim limitation.
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 1-3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea, i.e. organizing human activity, without significantly more.
Step 1: Is the Claim to a Process, Machine, Manufacture or Composition of Matter?
Claims 1-3 recite a gaming system that includes software units. Thus, the claims are to a machine, which is one of the statutory categories of invention.
Step 2A: Prong One: Does the Claim Recite an Abstract Idea?
Claim 1 recites:
A game advertising system for advertising, in a game that a plurality of players connected via a network play together, by attaching a mark to characters operated by each of the players, the game advertising system comprising:
an enterprise-side input unit that allows input by a plurality of enterprises that wish a mark thereof to be attached to a character;
a player-side input unit that allows selecting a mark to be attached to the character that players each operate from among the marks of the plurality of enterprises;
an advertising-cost charging unit that charges, if the mark selected by each of the players is attached to the character, an advertising fee to the enterprise corresponding to the selected mark;
and a benefit awarding unit that awards a predetermined benefit if each of the players attaches the mark to the character.
Claim 2 recites:
The game advertising system according to claim 1, further comprising: a control processing unit that controls attaching the mark to a predetermined site of the character.
The examiner finds that the foregoing italicized elements recite: a certain method of organizing human activity because they describe managing personal behavior or relationships or interactions between people (including social activities, and following rules or instructions) as well as commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations). Specifically, the claims recites a legal contract for advertising by following rules in a game to place advertisements on a character, charge a fee for the advertisement and award a benefit to a player who does advertise a mark on a character, i.e. using advertising as an exchange for game benefits. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014).
Step 2A: Prong Two: Does the Claim Recite Additional Elements That Integrate The Abstract Idea Into a Practical Application?
The elements that are bolded are the additional elements, i.e. a system and control unit.
The examiner finds that each of the following additional elements merely includes instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea:
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.
Step 2B: Does the Claim Recite Additional Elements That Amount to Significantly More Than the Abstract Idea?
The examiner finds 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.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okuyama Motoki (JP 2022-75759 A).
Regarding claim 1, Motoki discloses a game advertising system for advertising, in a game that a plurality of players connected via a network play together (Motoki ¶0017, ¶0034), by attaching a mark to characters operated by each of the players (Motoki ¶0046), the game advertising system comprising: an enterprise-side input unit that allows input by a plurality of enterprises that wish a mark thereof to be attached to a character (Motoki ¶0034, ¶0040, ¶0051); a player-side input unit that allows selecting a mark to be attached to the character that players each operate from among the marks of the plurality of enterprises (Motoki ¶0050); an advertising-cost charging unit that charges, if the mark selected by each of the players is attached to the character, an advertising fee to the enterprise corresponding to the selected mark (Motoki ¶0065, ¶0079); and a benefit awarding unit that awards a predetermined benefit if each of the players attaches the mark to the character (Motoki ¶0075).
**Note all paragraph numbers are from the EPO translation of the JP document.
Regarding claim 2, Motoki discloses a control processing unit that controls attaching the mark to a predetermined site of the character (Motoki ¶ 0033).
Claim Rejections - 35 USC § 103
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okuyama Motoki (JP 2022-75759 A) in view of Brillhart (US 2011/0131509 A1) in further view of Oh (US 2014/0149231).
Regarding claim 3, Motoki discloses the sponsor being able to set restrictions or rules for display of their logo (Motoki ¶0034). However, Motoki lacks in disclosing a revocation processing unit that revokes the mark if the player operating the character bearing the mark plays in a manner that violates public order and morals. Brillhart teaches of a gaming system in which appropriate action is taken when a character (avatar) in a game violates a rule based on the avatar’s behavior (Brillhart Fig. 1, ¶0018). For example, if an avatar’s behavior becomes inappropriate during the game, appropriate action to stop the behavior may be taken. Oh teaches of a system in which penalties are imposed for breach of advertising contracts (Oh ¶0058). It is well known to put clauses in advertising contracts regarding decency and decorum and how logos/marks may be used, and if one breaches the contract by using the mark in an inappropriate manner, the contract may be terminated. Since Motoki allows sponsors to establish restrictions regarding display of their logo, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to revoke the display of the mark/logo on a character in Motoki if the player and his game character violate public order or morals. This allows for the sponsor to not allow their mark to be tarnished or degraded in a game due to the behavior of a player’s character and also allows the sponsor to enforce the advertising contact, i.e. restrictions/rules for display of their logo.
Citation of Relevant Prior Art
The prior art made of record on form PTO-892 and not relied upon is considered pertinent to applicant's disclosure. It is suggested that applicant review all prior art cited.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIE K BROCKETTI whose telephone number is (571)272-0206. The examiner can normally be reached M-Th 8:00 a.m. - 5:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Barrett can be reached at 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIE K BROCKETTI/Primary Examiner, Art Unit 3700
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