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 .
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 4-13 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 4 recites the limitation "the one deck non-conforming criterion" in lines 2-3; however, there is insufficient antecedent basis for this limitation in the claim. It appears that Claim 4 is intended to be depended upon Claim 3 rather than Claim 1.
Claims 5-13 inherit the deficiencies of Claim 4 from which they depend are herein rejected for the same reasons.
Appropriate correction is required.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
The claim(s) recite(s) “A non-transitory computer readable medium storing a program causing a computer to function as a deck forming unit configured to form a deck from possessed game elements, wherein the deck forming unit is configured to, under a condition that the formed deck is a non-conforming deck which is non-conforming for a fighting game, perform control so that the formed deck is not used in a fighting game” (Claim 1) and “A gaming device comprising a deck forming unit configured to form a deck from possessed game elements, wherein the deck forming unit is configured to, under a condition that the formed deck is a non-conforming deck, perform control so that the formed deck is not used in a fighting game” (Claim 14). Each of the above underlined portions are related to an abstract idea of managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions), particularly, rules or instructions to form a deck from possessed game elements and under a condition that the formed deck is a non-conforming deck, perform control so that the formed deck is not used in a fighting game under Certain Methods of Organizing Human Activity.
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (particularly the technological environment of a gaming device and/or gaming system) (MPEP 2106.05 (h)). Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. The recitations of utilization of a “non-transitory computer readable medium”, “computer”, “unit”, and/or “device” are recited at a level of generality and are merely invoked as tool to perform the used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility (the use of a computing device and/or generic components is merely illustrating the environment in which the abstract idea is practiced). These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. Taking the physical elements individually and in combination, the computer-based components perform purely generic computer-based functions that are silent in regards to clearly indicating how a computer aids the medium and/or device or to which a computer performs/implements the medium and/or device. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer, ’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
It is settled law that adding physical elements to an abstract idea will not amount to an “inventive concept" if the physical elements are well-known, routine and conventional elements and they perform their well-known, routine and conventional functions. TLI Communications LLC v. AV Automotive, L.L.C. (Fed Cir 2016):
Turning to the second step in our analysis, we find that the claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294). We agree with the district court that the claims’ recitation of a “telephone unit,” a “server”, an “image analysis unit,” and a “control unit” fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability. (Emphasis added by Examiner.)
On the question of preemption, the Federal Circuit has stated in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of DNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
Nor do the dependent claims 2-13 add “significantly more” since they merely add to the claimed concepts relating to concepts of managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) under Certain Methods of Organizing Human Activity. The dependent claims failing to place the claimed invention into a practical applicant or additional generic components of the dependent claims failing to amount to “significantly more” for the same reasons noted above.
Consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claim are not patent-eligible under 35 USC §101.
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.
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) 1-3, 8-12, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kokami (US 2019/0060749).
Claims 1 and 14: Kokami discloses a gaming device (10) having a non-transitory computer readable medium (¶ 104, 351) storing a program causing a computer (CPU) of the gaming device (10)(¶ 46, 62-64, 93-104) to function as a deck forming unit configured to form a deck from possessed game elements, wherein the deck forming unit is configured to, under a condition that the formed deck is a non-conforming deck which is non-conforming for a fighting game, perform control so that the formed deck is not used in a fighting game (¶ 41, 60, 102-103, 126, 185-190, 200 emphasis on ¶ 41, 102-103, 189, 200, examiner notes that play of the game refers to the battle game (¶ 258-277)).
Claim 2: Kokami discloses wherein a plurality of deck non-conforming criteria are set to determine that the formed deck is non-conforming, and the deck forming unit is configured to, under a condition that at least one of the plurality of deck non-conforming criteria is satisfied, determine that the deck is non-conforming (¶ 41, 102-103, 189, 200).
Claim 3: Kokami discloses wherein the one deck non-conforming criterion is at least one of following: a number of game elements included in the formed deck is not in a predetermined range; same game elements included in the formed deck are greater in number than a predetermined number; the formed deck includes a game element that is not associated with a player; the formed deck does not include a specific type of game element; and the formed deck includes a game element with an attribute different from an attribute of the specific type of game element (¶ 41, 102-103, 189, 200).
Claim 8: Kokami discloses wherein the deck forming unit is configured to, when the formed deck satisfies the one deck non-conforming criterion, notify that the formed deck is unusable for a fighting game (¶ 41, 102-103, 189, 200).
Claim 9: Kokami discloses wherein the deck forming unit is configured to, when the formed deck does not satisfy any or one of the deck non-conforming criteria, register the formed deck as a deck usable for a fighting game (¶ 41, 102-103, 189, 196, 200, as best understood created decks that don’t satisfy the criteria can be posted e.g. registered for as deck usable in the fighting game (¶ 258-277)).
Claim 10: Kokami discloses wherein the deck forming unit is configured to, when the formed deck satisfies the one deck non-conforming criterion, register the formed deck as a deck unusable for a fighting game (¶ 41, 102-103, 189, 196, 200, as best understood created decks that satisfy the criteria can be save, but can’t be posted e.g. registered as a deck unusable in the fighting game (¶ 258-277)).
Claim 11: Kokami discloses wherein the deck forming unit is configured to perform control so that the deck registered as a deck unusable for a fighting game is reformable (¶ 41, 102-103, 182-200, as best understood created decks that satisfy the criteria can be save, but can’t be posted e.g. registered as a deck unusable in the fighting game. However, the saved deck can be “fixed” e.g. reformable to not satisfy the criteria).
Claim 12: Kokami discloses wherein the deck forming unit is configured to register a formed deck in association with a deck name (¶ 83-84, 124, 140, 180-181, 218-220, 224, 350).
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries 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.
Claim(s) 4 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kokami (US 2019/0060749) in view of Alchemy Deck Error Update | How to Correct Your Deck Format to Work in Magic The Gathering Arena (https://www.youtube.com/watch?v=hjWDONbhIWI ), herein Alchemy.
Claim 4: Kokami teaches the above, but lacks explicitly suggesting wherein the deck forming unit is configured to, when the formed deck satisfies the one deck non-conforming criterion, notify of content of the satisfied deck non-conforming criterion. Kokami at least teaches that notifying of the deck satisfying the non-conforming criterion (¶ 189, 200). Furthermore, an analogous art of Alchemy teaches wherein the deck forming unit is configured to, when the formed deck satisfies the one deck non-conforming criterion, notify of content of the satisfied deck non-conforming criterion (time 0:00-1:27 with attention to the yellow triangles that provide content of the satisfied deck non-conforming criterion such as 1 card within the deck having a invalid or non-format). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the medium, particularly as it pertains to the notifying of the deck satifying the non-conforming criterion, of Kokami such that the content of the criterion is provided as taught by Alchemy because such a modification would have yielded predictable results, namely, a means of notifying a user of the deck satisfying the non-conforming criterion in which Kokami is intended (see above). Such a modification makes the overall forming of the deck more user-friendly in terms of following the criterion or regulations in forming a deck.
Claim 13: Kokami teaches the above, but lacks explicitly suggesting wherein the deck forming unit is configured to identifiably present a deck usable for a fighting game and a deck unusable for a fighting game. Kokami at least teaches determining if a deck is useable in a fighting or not usable in a fight game (see above) and the use and presentation of multiple decks included unusable saved decks, posted decks, owned decks (see above, ¶ 49, Figs. 1, 2, 13). Furthermore, an analogous art of Alchemy teaches wherein the deck forming unit is configured to identifiably present a deck usable for a fighting game and a deck unusable for a fighting game (time 0:00-1:27 with attention to the yellow triangles are used to identifiably present decks unusable for a fighting game and decks without yellow triangles being identifiable as decks usable in a fighting game). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the medium, deck forming unit, of Kokami such that decks can be identifiably presented as usable in play of a fighting game and identifiably presented as unusable in play of a fighting game as taught by Alchemy because such a modification would have yielded predictable results, namely, a means of presenting multiple decks including unusable saved decks and usable posted/owned decks Kokami is intended (see above). Such a modification makes the overall forming of decks more user-friendly in terms of following the criterion or regulations in forming decks.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kokami (US 2019/0060749) in view of Alchemy Deck Error Update | How to Correct Your Deck Format to Work in Magic The Gathering Arena (https://www.youtube.com/watch?v=hjWDONbhIWI ), herein Alchemy, and in further view of So (WO 2024/232301 A1)(please refer to WO2024/232301A1 English translation found at https://translationportal.epo.org/emtp/translate/?ACTION=description-retrieval&COUNTRY=WO&ENGINE=google&FORMAT=docdb&KIND=A1&LOCALE=en_EP&NUMBER=2024232301&OPS=ops.epo.org/3.2&SRCLANG=ja&TRGLANG=en and attached herein as a PDF).
Claim 5 Kokami in view of Alchemy teaches the above, but lacks explicitly suggesting wherein the deck forming unit is configured to, when the formed deck satisfies some of the deck non-conforming criteria, notify of content of all of the satisfied deck non-conforming criteria. Kokami at least teaches that the deck forming unit is configured to deck when the formed deck satisfies some of the deck non-conforming criteria, provide a notification of all of the satisfied deck non-conforming criteria (¶ 41, 102-103, 189, 200). Furthermore, an analogous art of So, generally teaches when some non-conforming criteria is satisfied, notify of content of all of the satisfied non-conforming criteria (¶ 68-72). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the medium, particularly, when it is determined that the formed deck satisfies some of the deck non-conforming criteria, of Kokami in view of Alchemy such that a notification of content of all of the satisfied non-conforming criteria as taught by So because such a modification would have yielded predictable results namely a means of notifying of all the satisfied deck non-conforming criteria in which at least Kokami is intended (see above). Such a modification makes the overall forming of the deck more user-friendly in terms of following the criterion or regulations in forming a deck.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAMAR HARPER whose telephone number is (571)272-6177. The examiner can normally be reached 7:30am to 5:30pm.
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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.
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/TRAMAR HARPER/Primary Examiner, Art Unit 3715
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