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 .
Procedural Summary
This is responsive to the claims filed 2/24/2025.
Claims 1-7 are pending.
Signed copies of the IDS’ are attached.
The Drawings filed 2/24/2025 are noted.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
The claims are drawn to process, apparatus and CRM categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claim 1 is analyzed below, with italicized limitations indicating recitations of an abstract idea, noting that independent Claims 6 &11 recite substantially similar limitations but being drawn to different statutory classes.
Claim 1: “A non-transitory computer readable medium storing a program causing a computer to execute: displaying, in an arrangement region in a recognizable manner, a game medium of a player and a game medium of an opponent out of a plurality of game media each of which is associated with a display mode and a performance; progressing a game based on at least an operation input with respect to the game medium displayed in the arrangement region; and when a specific game medium associated with a specific display mode and a specific performance out of the plurality of game media is displayed in the arrangement region and a predetermined operation is input with respect to the specific game medium, changing one or both of the specific display mode and the specific performance to a preset display mode or a preset performance when a specific condition set in advance is not satisfied, and changing one or both of the specific display mode and the specific performance to any of a plurality of display modes or performances when the specific condition is satisfied.”
Claim 6: “An information processing method executed by one or more computers, the information processing method comprising: displaying, in an arrangement region in a recognizable manner, a game medium of a player and a game medium of an opponent out of a plurality of game media each of which is associated with a display mode and a performance; progressing a game based on at least an operation input with respect to the game medium displayed in the arrangement region; and when a specific game medium associated with a specific display mode and a specific performance out of the plurality of game media is displayed in the arrangement region and a predetermined operation is input with respect to the specific game medium, changing one or both of the specific display mode and the specific performance to a preset display mode or a preset performance when a specific condition set in advance is not satisfied, and changing one or both of the specific display mode and the specific performance to any of a plurality of the display modes or the performances when the specific condition is satisfied.”
Claim 7: “A game apparatus comprising one or more computers, the one or more computers being configured to execute: displaying, in an arrangement region in a recognizable manner, a game medium of a player and a game medium of an opponent out of a plurality of game media each of which is associated with a display mode and a performance; progressing a game based on at least an operation input with respect to the game medium displayed in the arrangement region; and when a specific game medium associated with a specific display mode and a specific performance out of the plurality of game media is displayed in the arrangement region and a predetermined operation is input with respect to the specific game medium, changing one or both of the specific display mode and the specific performance to a preset display mode or a preset performance when a specific condition set in advance is not satisfied, and changing one or both of the specific display mode and the specific performance to any of a plurality of the display modes or the performances when the specific condition is satisfied.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG1:
“Certain Methods Of Organizing Human Activity”: managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
The claims are drawn to processes for displaying player game data on a GUI. For example, the claims require displaying game media and progressing a game. When specific game media are displayed, the display mode is changed. Based on conditions occurring during steps of displaying the game media, modes of display are changed.
These processes for displaying game data and changing game display modes represent managing personal behavior and interactions between game players. Interactions include how one player’s game data is updated as game play progresses. Interactions include how display modes are changed.
Further, to the extent the claims are drawn to game play, this represents interactions between players and a social activity. It also represents following rules/instructions (i.e., rules defining how the game is conducted.)
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations drawn to a computing system with a processor and memory, (a GUI).
These additional limitations:
Do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a));
Fail to recite an improved way of training a machine learning model that protected the model’s knowledge about previous tasks while allowing it to effectively learn new tasks, and do not recite improvements to computer component or system performance based upon adjustments to parameters of a machine learning model associated with tasks or workstreams2;
Do not apply the exception using a particular machine, (MPEP 2106.05(b)) and
Fail to effect a transformation. (MPEP 2106.05(c)).
Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, the prior art relied on in the obviousness rejection, infra, shows the conventionality of GUIs used to render game media games with updated player and opponent cards, (See e.g., U.S. Pub. No.: 2015/0273327 A1). These elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Additionally, Applicant’s Specifications acknowledge that generic devices including desktop computers are used to implement the claimed invention.3
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. Their collective functions provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they only recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls4:
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 cffDNA 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.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
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 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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Oono (U.S. Pub. No.: 2015/0273327 A1) in view of Gilson et al. (U.S. Pub. No.: 2009/0023487 A1).
Regarding Claims 1, 3 & 5-7: Oono discloses a game apparatus (Abstract), comprising one or more computers, (Fig. 1, 10), the one or more computers being configured to execute: displaying, in an arrangement region in a recognizable manner, a game medium of a player and a game medium of an opponent out of a plurality of game media each of which is associated with a display mode and a performance, (Figs. 2, 4, and related descriptions) ; progressing a game based on at least an operation input with respect to the game medium displayed in the arrangement region, (Fig. 7); and when a specific game medium associated with a specific display mode and a specific performance out of the plurality of game media is displayed in the arrangement region and a predetermined operation is input with respect to the specific game medium, (Fig. 7, s24).
The following claimed sequence recites:
“Changing one or both of the specific display mode and the specific performance to a preset display mode or a preset performance when a specific condition set in advance is not satisfied, and changing one or both of the specific display mode and the specific performance to any of a plurality of the display modes or the performances when the specific condition is satisfied”,
Regarding this limitation, Oono shows the updating of display modes when conditions are satisfied, (Oono, e.g., Fig. 6, s6 and Fig. 7, s24) but does not explicit the claimed alternate path of options when the condition is, for example, “not satisfied”.
However, in a related invention, Gilson teaches combining player cards into different objects with varying characteristics and the evolution of these game components, (e.g., Gilson, Fig. 7, ¶¶ 41-55, 87, 88, Table 2). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have provided Gilson’s game mutation and evolution structure in Oono’s battle game for several reasons including generating customer interest in collectability-themed games, thereby increasing manufacturer revenue. (Gilson, ¶ 2.)
Regarding Claim 2: Oono in view of Gilson teaches wherein the plurality of game media include a plurality of special game media each of which is different from the specific game medium in one or both of a display mode and a performance, and in the changing the display mode or the performance, the specific game medium is changed to any of the plurality of special game media when the specific condition is satisfied, (See Gilson, e.g., Fig. 7, ¶¶ 41-55, 87, 88, Table 2.)
Regarding Claim 4: Oono in view of Gilson teaches wherein one or both of the display mode and the performance of the special game medium is or are different from the preset display mode or the preset performance resulting from the changing when the specific condition is not satisfied. (See Gilson, e.g., Fig. 7, ¶¶ 41-55, 87, 88, Table 2.)
Conclusion
Additional Relevant References: See 892
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached M-F, generally 9am-5:30 pm.
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/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 See MPEP 2106
2 Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential)
3 Specifications: [0050] “The player terminal 1 establish can communication with the server 100 via the communication network 200. The player terminal 1 widely includes an electronic device capable of establishing wireless or wired communication connection with the server 100. Examples of the player terminal 1 include a smartphone, a mobile phone, a tablet device, a personal computer, and a game machine. In the present embodiment, a case in which a smartphone is used as the player terminal 1 will be described.” (Emphasis Added.)
4: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)
