DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
1. A rejection based on double patenting of the "same invention" type finds its support in the language of 35 U.S.C. 101 which states that "whoever invents or discovers any new and useful process ... may obtain a patent therefor ..." (Emphasis added). Thus, the term "same invention," in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
2. 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).
3. Claims 1-4, 7, 8-11, and 14-18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,251,630. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-4, 7, 8-11, and 14-18 of the application is merely broader in scope than patented claims 1-15 and therefore an obvious variant.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,944,901. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-20 of the application is merely broader in scope than patented claims 1-17 and therefore an obvious variant.
Claims 1, 4-8, 11-15, and 18-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,298,615. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1, 4-8, 11-15, and 18-20 of the application is merely broader in scope than patented claims 1-15 and therefore an obvious variant.
Claims 1, 4, 8, 11, 15, and 18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 9,352,215. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1, 4, 8, 11, 15, and 18 of the application is merely broader in scope than patented claims 1-10 and therefore an obvious variant.
Claim Rejections - 35 USC § 102
4. 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in-
(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent; or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English.
5. Claims 1, 4-5, 7-8, 11-12, 14-15, and 18-19 are rejected under 35 U.S.C. 102(b) as being anticipated by Miyamoto, US 2009/0011838.
Regarding claim 1, Miyamoto teaches a method comprising:
causing display of a video of game play of a video game application, the video displaying a plurality of play points of the video game application (See Figs.8-16 and [0103]-[0130] and [0137] which discloses of display of a video of game play wherein, the displayed video of game play construed to be that element 151 since the scenes depicted are of a scrollable video of a plurality of play points which are displayed);
transmitting a request for execution of the video game application at a play point of the plurality of play points of the video game application (See Figs. 8-16 and [0113]-[0115] selecting the scene of the plurality of playpoints);
receiving the video game application based on transmitting the request for execution (See Figs. 8-16 and [0113]-[0115] receiving the video game portion/application after selection of the play point); and
causing execution of the video game application, the video game application launching based on the play point (See Figs. 8-16 and [0113]-[0115] causing execution of the game play portion/application from the selected play point).
Regarding claim 4, the method of claim 1, Miyamoto teaches of wherein each play point of the plurality of play points corresponds to a game state of the game play of the video game application (See [0103]-[0130] and [0137]-[0140] which discloses of the play points corresponding to game states of saved data and also of at least locations and levels).
Regarding claim 5, the method of claim 1, wherein the video game application is a first instance of the video game application, and wherein the video correspond to execution of a second instance of the video game application, and wherein execution of the second instance of the video game application is during execution of the first instance of the video game application (See Figs.15-16 and [0103]-[0130] and [0137]-[0140] which discloses of the first instance of the game application being a particular scene/level/location and the second instance being selectable and loadable during the game play of the current/instant of the game application to be able to play at another point).
Regarding claim 7, Miyamoto teaches of the method of claim 1, wherein the video game application is received from a game server operating in a cloud computing environment (See [0017], [0072], and [0167]-[0171] access via the internet to saved and/or digested portions of the game play from a game server through the internet).
Regarding claim 8, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 1.
Regarding claim 11, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 4.
Regarding claim 12, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 5.
Regarding claim 14, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 7.
Regarding claim 15, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 1.
Regarding claim 18, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 4.
Regarding claim 19, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 5.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
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(a) are summarized as follows: (See MPEP Ch. 2141)
Determining the scope and contents of the prior art;
Ascertaining the differences between the prior art and the claims in issue;
Resolving the level of ordinary skill in the pertinent art; and
Evaluating evidence of secondary considerations for indicating obviousness or nonobviousness.
Claims 2-3, 9-10, and 16-17 are rejected under 35 U.S.C. 103(a) as being unpatentable over Miyamoto, US 2009/0011838 in view of Croak et al., US 8,625,754.
Regarding claim 2, Miyamoto teaches the method of claim 1, wherein the method further comprises: causing a plurality of links to be displayed, wherein each link corresponds to a respective play point of the plurality of play points of the video game application (See Figs.8-15; [0103]-[0140]), and wherein each link of the plurality of links operates to launch the video game application from the respective play point of the plurality of play points (See Figs.8-15 and [0103]-[0140]).
Miyamoto is silent with respect to wherein the links consist of a plurality of images and where each link consists of a hyperlink.
However, in the same field of endeavor, Croak teaches of wherein the links consist of a plurality of image and where each link consisted of a hyperlink (See col.1 lines 35-55; col.7 lines 43 to col.8 lines 42).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the teachings of Miyamoto to have incorporated the teachings of Croak for the mere benefit of visually linking content to a link/hyperlink for access to the content.
Regarding claim 3, the combination teaches the method of claim 2, wherein the method further comprises: determining an activation of a respective hyperlink, wherein the request comprises an indication of a respective play point corresponding to an image associated with a hyperlink (See Miyamoto, Figs.8-15; [0103]-[0140]; Croak, See col.1 lines 35-55; col.7 lines 43 to col.8 lines 42).
Regarding claim 9, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 2.
Regarding claim 10, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 3.
Regarding claim 16, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 2.
Regarding claim 17, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 3.
Claims 6, 13, and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Miyamoto, US 2009/0011838 in view of Sargaison et al., US 2009/0094600.
Regarding claim 6, Miyamoto teaches the method of claim 1.
Miyamoto is silent with respect to wherein the video game application is executed by a local emulator.
However, in the same field of endeavor, Sargaison teaches of wherein the video game application is executed by a local emulator (See [0023]-[0024] and [0038]-[0039]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the teachings of Miyamoto to have incorporated the teachings of Sargaison for the mere benefit of having a faster loading time.
Regarding claim 13, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 6.
Regarding claim 20, the claim has been analyzed and rejected for the same reasons set forth in the rejection of claim 6.
Contact
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ricky Chin whose telephone number is 571-270-3753. The examiner can normally be reached on M-F 8:30-6:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Bruckart can be reached on 571-272-3982. The fax phone number for the organization where this application or proceeding is assigned is 703-872-9306.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/Ricky Chin/
Primary Examiner
AU 2424
(571) 270-3753
Ricky.Chin@uspto.gov