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 § 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 therefore, subject to the conditions and requirements of this title.
Claims 1 - 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1: It must be determined whether the invention falls into one of the four statutory categories of invention. Claims 1 – 10 are directed towards a method, (process), and claims 12 - 20 are directed towards a system, (machine), which are statutory categories of invention.
Step 2a:
Prong 1: It must be determined whether the invention is directed to judicially recognized exception. Claim 1 is analyzed below with limitations indicating recitations of an abstract idea.
1. A method for use with a non-fungible token (NFT) platform that includes a processor and a memory, the method comprising: receiving, at the processor, character attribute selection data to be associated with a game character, wherein the character attribute selection data indicates a subset of a set of character attributes of a character attribute database; generating, via the processor and based on the character attribute selection data, display data associated with the game character; generating game character data associated with the game character that includes the display data and that further includes performance data to be associated with actions of the game character in a game and a persona associated with the game character in the game; facilitating, based on the game character data, generation of a player token NFT associated with the game character, wherein the player token NFT is stored on a blockchain via a decentralized computer system; facilitating, based on the game character data, play of the game utilizing the game character; receiving update data associated with the game character responsive to the play of the game utilizing the game character; and updating the player token NFT based on the update data associated with the game character.
The abstract idea is defined by the underlined portions exemplary claim 1, with substantially similar features found in claim 11. Dependent claims 2 – 10 and 12 – 20 further define the abstract idea or relate to the implementation of the abstract idea. The abstract idea is defined in at least the following grouping below:
Mental processes (observation, evaluation, judgment)
The claims are directed towards an abstract idea of rules for conducting a game which falls into the category of mental processes, (See MPEP 2106.04(a)(2)(III)). More specifically, the claimed invention recites a gaming system that generates and displays game character data for a game character, wherein the gaming system further recites generating an NFT based on the game character data and facilitating play of a game utilizing the game character based on game character data. The claimed invention can be practically performed as mental process by a human managing a game character and game character data in a video game. A human can take control of the game object and make game determinations in their mind. (Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018).
The claims are also directed towards a series of steps which can practically be performed by one or more humans, which fall into the category of mental processes, (See MPEP 2106.04(a)(2)(III)). More specifically, the claimed invention recites a gaming system that generates and displays game character data for a game character wherein the game character is utilized in a video game, wherein an NFT is generated based on the game character data, wherein play of the game is facilitated based on the game character data, wherein the game character data and the NFT associated with the game character is updated in response to plays of the game. The claims recite instructions for controlling a game with these features. Here, a human can observe game character data for a game character and the generation of an NFT, wherein a human can then determine the state of the game character based on plays of the game. For example, in the event that a user is playing a sports video game, (e.g. NBA 2K), wherein prior to creating a game character in order to play the game, a user can observe game character attribute and appearance options, (game character data), and observe the generation of an NFT which is associated with the created game character, wherein a human can then make the determination of how progress, (update), the character based on plays of the game. Therefore, since the claimed invention can practically be performed in the human mind, it represents an ineligible abstract mental process. (Intellectual Ventures I LLC v. Symantec Corp., 838 F. 3d 1307).
Prong 2: Does the Claim recite additional elements that integrate the exception into a practical application of the exception?
The claims recite a generic processor and memory along with instructions that generate and present a contest to a plurality of players, wherein said players are instructed to create to compete against each other, which is viewed as no more than instructions to implement a judicial exception.
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)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not affect 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: It must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception.
The claim language does recite a processor, memory, and game character data that is associated with a player. The claim language also recites non-fungible tokens that are maintained on a blockchain via a decentralized computer system, wherein merely invoking a blockchain maintaining non-fungible tokens, does not, as claimed, improve the computers, networks, or blockchain technology. The claim simply maintains non-fungible tokens. The claims do not recite how the client leverages or performs any consensus/cryptographic verification to improve performance, security, or reliability, which reflects conventional data capture and storage without a technical improvement, wherein, viewed as a whole, these additional elements are indistinguishable from conventional computing elements known in the art. See Alice (generic computer). Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Viewing 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.
Double Patenting
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 12 of U.S. Patent No. 12,290,755.
Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are drawn towards the system and method claim versions of the parent 12,290,775, except the current claims are silent on disclosing preventing use of a subset of character attributes. Therefore, the current claims are a broader version of the parent claims regarding this feature, as shown in table below. Independent claim 11 includes similar language to that of independent claim 1, wherein dependent claims 2 – 10 and 12 – 20 include identical language as the dependent claims in the parent 12,290,775. Therefore, the claims are not patentably distinct.
Pending Claim 1:
Patented Claim 1:
1. A method for use with a non-fungible token (NFT) platform that includes a processor and a memory, the method comprising: receiving, at the processor, character attribute selection data to be associated with a game character, wherein the character attribute selection data indicates a subset of a set of character attributes of a character attribute database; generating, via the processor and based on the character attribute selection data, display data associated with the game character; generating game character data associated with the game character that includes the display data and that further includes performance data to be associated with actions of the game character in a game and a persona associated with the game character in the game; facilitating, based on the game character data, generation of a player token NFT associated with the game character, wherein the player token NFT is stored on a blockchain via a decentralized computer system; facilitating, based on the game character data, play of the game utilizing the game character; receiving update data associated with the game character responsive to the play of the game utilizing the game character; and updating the player token NFT based on the update data associated with the game character.
1. A method for use with a non-fungible token (NFT) platform that includes a processor and a memory, the method comprising: receiving, at the processor, character attribute selection data to be associated with a game character, wherein the character attribute selection data indicates a subset of a set of character attributes of a character attribute database; generating, via the processor and based on the character attribute selection data, display data associated with the game character; facilitating, based on the display data associated with the game character, generation of a player token NFT associated with the game character; preventing, via processor, use of the subset of character attributes of the character attribute database in generating other game characters; generating game character data associated with the game character that includes the display data and that further includes performance data to be associated with actions of the game character in a game and a persona associated with the game character in the game; and facilitating, based on the game character data, play of the game via the game character
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC M THOMAS whose telephone number is (571)272-1699. The examiner can normally be reached 9:00am - 5:00pm.
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, Dmitry Suhol can be reached at 571-272-4430. 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.
/E.M.T/Examiner, Art Unit 3715
/JUSTIN L MYHR/Primary Examiner, Art Unit 3715
Prosecution Insights