DETAILED ACTION
Status of the Application
A preliminary amendment was filed on the filing date of April 21, 2025, in which claims 15 and 38 were amended. Claims 1-42 are pending and currently under consideration for patentability under 37 CFR 1.104.
Priority
The instant application has a filing date of April 21, 2025 and claims for the benefit of a prior-filed foreign application number 2024-214605 (JP – filed on December 9, 2024) and 2024-214604 (JP – filed on December 9, 2024) and 2024-214606 (JP – filed on December 9, 2024) and 2024-113974 (JP – filed on July 17, 2024). Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 4/21/25 and 7/9/25 have been considered by the examiner.
Claim Interpretation
Claims 27-42 contain several limitations or information dependent on conditionals “when” and “if” being true (e.g., “if the first field character has been defeated, make…and make…” recited in claim 27). These claims are directed to methods, yet the claim language does not require the recited conditions to be true/met (e.g., it is not explicit or required that the first field character has been determined to have been defeated). As such, the contingent limitations in these claims are not given patentable weight. Per MPEP 2111.04 II “the broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B”. See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016). For the sake of expediting prosecution, the Examiner will treat these limitations as if they were drafted to require the conditionals to be true/met. However, Applicant must appropriately amend the claims in order for these limitations to be given patentable weight.
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.
v Claim(s) 1-42 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1:
Claim(s) 27-42 is/are drawn to methods (i.e., a process), claim(s) 1-16 is/are drawn to non-transitory storage media (i.e., a machine/manufacture), and claim(s) 17-26 is/are drawn to systems (i.e., a machine/manufacture). As such, claims 1-42 is/are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
In prong one of step 2A, the claim(s) is/are analyzed to evaluate whether it/they recite(s) a judicial exception.
Claim 1 (representative of independent claim(s) 17 and 27) recites/describes the following steps;
control a player character in a…space,
cause the player character to perform a capturing motion of releasing a capture item for capturing one or more field characters placed on a field, in a specified direction in response to a first instruction
in a scene where it is possible to capture a first field character among the field characters, when the capture item is released toward the first field character in accordance with the capturing motion, perform a capture success determination as to whether or not a capture by the capturing motion is successful, and if the capture is successful, bring the first field character into a state of being owned by a player;
cause a first battle character among battle characters owned by the player and capable of battling on the field to perform an attack motion against the first field character in response to a second instruction
and perform a defeat determination as to whether or not the first field character has been defeated, based on the attack motion of the first battle character, and if the first field character has been defeated, make the first field character capturable in a first period after the defeat, and make the first field character un-capturable after the first period has elapsed
These steps, under its broadest reasonable interpretation, describe or set-forth a process for playing a game in which field characters can be captured with capture items and wherein field characters are capturable only for first periods after it is determined whether or not they were defeated in battle. Each of the above-recited steps/functions of this process, under their broadest reasonable interpretation, encompass a human manually (e.g., in their mind, or using paper and pen) performing one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions, but for the recitation of generic computer components. For example, these steps could be implemented while playing a tabletop, card-based, or live-action-role-playing game. If one or more claim limitations, under their broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components, then it falls within the “mental processes” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A – Prong One: YES).
Independent claim(s) 17 and 27 recite/describe nearly identical steps (and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and this/these claim(s) is/are therefore determined to recite an abstract idea under the same analysis.
Each of the depending claims likewise recite/describe these steps (by incorporation - and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and this/these claim(s) is/are therefore determined to recite an abstract idea under the same analysis. Any element(s) recited in a dependent claim that are not specifically identified/addressed by the Examiner under step 2A (prong two) or step 2B of this analysis shall be understood to be an additional part of the abstract idea recited by that particular claim. The same reasoning is similarly applicable to the limitations in the remaining dependent claims, and their respective limitations are not reproduced here for the sake of brevity.
Step 2A - Prong Two:
In prong two of step 2A, an evaluation is made whether a claim recites any additional element, or combination of additional elements, that integrate the exception into a practical application of that exception. An “addition element” is an element that is recited in the claim in addition to (beyond) the judicial exception (i.e., an element/limitation that sets forth an abstract idea is not an additional element). The phrase “integration into a practical application” is defined as requiring an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception.
The claim(s) recite the additional elements/limitations of
“a non-transitory computer-readable storage medium having stored therein a game program causing a computer of an information processing apparatus to…in a virtual space, based on an operation input…based on an operation input…based on an operation input…” (claim 1)
“a game system comprising a computer, the computer being configured to…in a virtual space, based on an operation input…based on an operation input…based on an operation input…” (claim 17)
“...executed by a computer of an information processing apparatus, the game processing method causing the computer to…in a virtual space, based on an operation input…based on an operation input…based on an operation input…” (claim 27)
“...wherein the game program further causes the computer to...” (claims 2-16)
“...wherein the computer is further configured to...” (claims 18-26)
“...further causing the computer to...” (claims 28-42)
The requirement to execute the claimed steps/functions using “a non-transitory computer-readable storage medium having stored therein a game program causing a computer of an information processing apparatus to…in a virtual space, based on an operation input…based on an operation input…based on an operation input…” (claim 1) or “a game system comprising a computer, the computer being configured to…in a virtual space, based on an operation input…based on an operation input…based on an operation input…” (claim 17) or wherein the method is “...executed by a computer of an information processing apparatus, the game processing method causing the computer to…in a virtual space, based on an operation input…based on an operation input…based on an operation input…” (claim 27) and/or the recitation of “...wherein the game program further causes the computer to...” (claims 2-16) and/or the recitation of “...wherein the computer is further configured to...” (claims 18-26) and/or the recitation of “...further causing the computer to...” (claims 28-42) is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Applicant’s own disclosure explains that these “additional” elements may be embodied as a general-purpose computer (e.g., the published specification at paragraphs [0102]-[0118]). This/these limitation(s) do/does not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
The recited additional element(s) of “…in a virtual space…” (claims 1, 17, and 27) serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. Specifically, it/they serve(s) to limit the application of the abstract idea to computing gaming environments, where information is represented digitally, exchanged between computers over a network, and presented using graphical user interfaces. This reasoning was demonstrated in Intellectual Ventures I LLC v. Capital One Bank (Fed. Cir. 2015), where the court determined "an abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). This/these limitation(s) do/does not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(g)).
Furthermore, although the claims recite a specific sequence of computer-implemented functions, and although the specification suggests certain functions may be advantageous for various reasons (e.g., business reasons), the Examiner has determined that the ordered combination of claim elements (i.e., the claims as a whole) are not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem.
With respect to the dependent claims - each of the limitations/elements recited in the dependent claims other than those identified as being “additional” elements above (at the beginning of the Prong One analysis), are further part of the abstract idea encompassed by each respective dependent claim (i.e. it should be understood that these limitations are part of the abstract idea recited in each respective claim).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A – Prong two: NO).
Step 2B:
In step 2B, the claims are analyzed to determine whether any additional element, or combination of additional elements, is/are sufficient to ensure that the claims amount to significantly more than the judicial exception. This analysis is also termed a search for an "inventive concept." An "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 134 S. Ct. at 2355, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966)
As discussed above in “Step 2A – Prong 2”, the requirement to execute the claimed steps/functions using “a non-transitory computer-readable storage medium having stored therein a game program causing a computer of an information processing apparatus to…in a virtual space, based on an operation input…based on an operation input…based on an operation input…” (claim 1) or “a game system comprising a computer, the computer being configured to…in a virtual space, based on an operation input…based on an operation input…based on an operation input…” (claim 17) or wherein the method is “...executed by a computer of an information processing apparatus, the game processing method causing the computer to…in a virtual space, based on an operation input…based on an operation input…based on an operation input…” (claim 27) and/or the recitation of “...wherein the game program further causes the computer to...” (claims 2-16) and/or the recitation of “...wherein the computer is further configured to...” (claims 18-26) and/or the recitation of “...further causing the computer to...” (claims 28-42) is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more” (see MPEP 2106.05(f)).
As discussed above in “Step 2A – Prong 2”, the recited additional element(s) of “…in a virtual space…” (claims 1, 17, and 27) serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not qualify as “significantly more” (see MPEP 2106.05(g)).
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer, and generally link the abstract idea to a particular technological environment or field of use.
With respect to the dependent claims - each of the limitations/elements recited in the dependent claims other than those identified as being “additional” elements above (at the beginning of the Prong One analysis), are further part of the abstract idea encompassed by each respective dependent claim (i.e. it should be understood that these limitations are part of the abstract idea recited in each respective claim).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
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 of this title, 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.
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.
v Claims 1-5, 8-20, 23-30, and 33-42 are rejected under 35 U.S.C. 103 as being unpatentable over “Pokémon Legends: Arceus – Gameplay Preview” (YouTube video published by The Official Pokémon YouTube Channel on January 13, 2022 at https://www.youtube.com/watch?v=ERAhGia6azE – hereinafter “Pokémon Legends”) in view of Nomura et al. (U.S. PG Pub No. 2018/0361248, December 20, 2018 - hereinafter "Nomura”)
With respect to claims 1, 17, and 27, Pokémon Legends teaches a non-transitory computer-readable storage medium having stored therein a game program causing a computer of an information processing apparatus to; game system comprising a computer, the computer being configured to perform a method; and game processing method executed by a computer of an information processing apparatus, the game processing method causing the computer to;
control a player character in a virtual space, based on an operation input; (see video at timestamps 2:01-2:06 where the player is controlled in the virtual space by the player using the Nintendo switch controller)
cause the player character to perform a capturing motion of releasing a capture item for capturing one or more field characters placed on a field, in a specified direction in response to a first instruction based on an operation input; (see video at timestamps 2:05-2:08 and 3:03-3:10 where the player attempts to capture the Pokemon by aiming and throwing a Poke ball at the creature)
in a scene where it is possible to capture a first field character among the field characters, when the capture item is released toward the first field character in accordance with the capturing motion, perform a capture success determination as to whether or not a capture by the capturing motion is successful, and if the capture is successful, bring the first field character into a state of being owned by a player; (see video at timestamps 2:05-2:08 and 2:40-2:51 3:03-3:10 where the game determines whether the attempted capture of the Pokemon was successful and if so (2:40-2:51 3:03-3:10 ) the Pokemon is captured)
cause a first battle character among battle characters owned by the player and capable of battling on the field to perform an attack motion against the first field character in response to a second instruction based on an operation input; and (see video at timestamps 2:15-2:33 and 8:00-8:25 where battle with pokemon capable of battling and the players already possessed/captured pokemon takes place in response to players attack motion (e.g., throwing poke ball with a pokemon))
perform a defeat determination as to whether or not the first field character has been defeated, based on the attack motion of the first battle character, and (see video at timestamps 2:33-2:51 and 8:20-8:30 if the attacked Pokemons HP goes to zero then the system determines they are defeated)
Pokémon Legends does not appear to disclose,
if the first field character has been defeated, make the first field character capturable in a first period after the defeat, and make the first field character un-capturable after the first period has elapsed
However, Nomura discloses
if the first field character has been defeated, make the first field character capturable in a first period after the defeat, and make the first field character un-capturable after the first period has elapsed ([0088]-[0089] & [0039] & [0101] in boss raid/battles the boss character is only capturable in a minigame after being defeated and only during a first period after defeat)
Nomura suggests it is advantageous to include wherein if the first field character has been defeated, make the first field character capturable in a first period after the defeat, and make the first field character un-capturable after the first period has elapsed, because doing so can provide an engaging creature capture mechanic that requires fully defeating a creature prior to capture while also providing a sense of urgency with the first period ([0088]-[0089] & [0039] & [0101]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the medium, system, and method of Pokémon Legends to include wherein if the first field character has been defeated, make the first field character capturable in a first period after the defeat, and make the first field character un-capturable after the first period has elapsed, as taught by Nomura, because doing so would provide an additional and/or alternative engaging creature capture mechanic that requires fully defeating a creature prior to capture while also providing a sense of urgency with the first period.
Furthermore, since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of the creature capture mechanic of Nomura for that of Pokémon Legends. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
With respect to claims 2, 18, and 28, Pokémon Legends teaches the medium of claim 1, the system of claim 17, and the method of claim 27:
wherein the game program further causes the computer to: when the first field character is in a battle state out of the battle state and a non-battle state, cause the first field character to perform an attack motion against the player character or the first battle character; and (see video at timestamps 8:30-8:40 & 3:20-3:30 & 2:07-2:15 & 2:37-2:40)
when the first field character is in the non-battle state, if the first battle character has performed an attack motion against the first field character, bring the first field character into the battle state (see video at timestamps 8:00-8:25 & 2:20-2:30 and 12:00-12:40)
With respect to claims 3, 19, and 29, Pokémon Legends teaches the medium of claim 2, the system of claim 19, and the method of claim 28;
wherein the game program further causes the computer to make the first field character capturable when the first field character is in the non-battle state (see video at timestamps 3:01-3:30)
With respect to claims 4, 20, and 30, Pokémon Legends teaches the medium of claim 3, the system of claim 19, and the method of claim 29
wherein the game program further causes the computer to, when the first field character is in the non-battle state, bring the first field character into the battle state if a result of the capture success determination in accordance with the capturing motion against the first field character is a failure (see video at timestamps 2:15-2:30 where the capture is a failure so the creature becomes agitated and enters a battle state)
With respect to claims 5, 21, and 31, Pokémon Legends teaches the medium of claim 2, the system of claim 18, and the method of claim 28:
wherein the game program further causes the computer to make the first field character capturable when the first field character is in the battle state (see video at timestamps 2:15-2:30 where the creature is still capturable while in the battle state)
With respect to claims 8, 24, and 34, Pokémon Legends teaches the medium of claim 2, the system of claim 18, and the method of claim 28:
wherein the game program further causes the computer to when the first battle character has not appeared on the field, in response to a third instruction based on an operation input, cause the player character to perform a battle character appearance motion of releasing the first battle character in a specified direction to cause the first battle character to appear on the field (see video at timestamps 2:12-2:34 player throws the desired battle Pokémon in a direction near the character they want to battle with)
With respect to claims 9, 25, and 35, Pokémon Legends teaches the medium of claim 8, the system of claim 24, and the method of claim 34:
wherein the game program further causes the computer to bring the first field character into the battle state when the first battle character is released toward the first field character based on the battle character appearance motion (see video at timestamps 2:12-2:34 battle with the field pokemon based on the throw direction/proximity)
With respect to claims 10, 26, and 36, Pokémon Legends teaches the medium of claim 8, the system of claim 24, and the method of claim 34:
wherein the game program further causes the computer to: control the first battle character that has appeared on the field based on the battle character appearance motion, on the field; and bring the first field character into the battle state if a positional relationship between the first field character and the first battle character satisfies a predetermined condition (see video at timestamps 2:12-2:34 battle with the field pokemon based on the throw direction/proximity)
With respect to claims 11 and 37, Pokémon Legends and Nomura teach the medium of claim 1 and the method of claim 27. Pokémon Legends does not appear to disclose,
wherein the game program further causes the computer to make it easier for a result of the capture success determination to be a success in the first period than in a period other than the first period in which the first field character is capturable
However, Nomura discloses
wherein the game program further causes the computer to make it easier for a result of the capture success determination to be a success in the first period than in a period other than the first period in which the first field character is capturable ([0088]-[0089] & [0039] & [0101] the character is uncapturable in a period other than the first period and therefore it is easier for a result of the capture success determination to be a success in the first period)
Nomura suggests it is advantageous to include wherein the game program further causes the computer to make it easier for a result of the capture success determination to be a success in the first period than in a period other than the first period in which the first field character is capturable, because doing so can provide an engaging creature capture mechanic that requires fully defeating a creature prior to capture while also providing a sense of urgency with the first period ([0088]-[0089] & [0039] & [0101]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the medium and method of Pokémon Legends to include wherein the game program further causes the computer to make it easier for a result of the capture success determination to be a success in the first period than in a period other than the first period in which the first field character is capturable, as taught by Nomura, because doing so would provide an additional and/or alternative engaging creature capture mechanic that requires fully defeating a creature prior to capture while also providing a sense of urgency with the first period.
Furthermore, since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of the creature capture mechanic of Nomura for that of Pokémon Legends. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
With respect to claims 12 and 38, Pokémon Legends and Nomura teach the medium of claim 1 and the method of claim 27. Pokémon Legends does not appear to disclose,
wherein the game program further causes the computer to, after the first period has elapsed, make the first field character un-capturable and delete the first field character from the field
However, Nomura discloses
wherein the game program further causes the computer to, after the first period has elapsed, make the first field character un-capturable and delete the first field character from the field ([0088]-[0089] & [0039] & [0101] the character is uncapturable after the first period and the minigame is over)
Nomura suggests it is advantageous to include wherein the game program further causes the computer to, after the first period has elapsed, make the first field character un-capturable and delete the first field character from the field, because doing so can provide an engaging creature capture mechanic that requires fully defeating a creature prior to capture while also providing a sense of urgency with the first period ([0088]-[0089] & [0039] & [0101]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the medium and method of Pokémon Legends to include wherein the game program further causes the computer to, after the first period has elapsed, make the first field character un-capturable and delete the first field character from the field is capturable, as taught by Nomura, because doing so would provide an additional and/or alternative engaging creature capture mechanic that requires fully defeating a creature prior to capture while also providing a sense of urgency with the first period.
Furthermore, since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of the creature capture mechanic of Nomura for that of Pokémon Legends. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
With respect to claims 13 and 39, Pokémon Legends teaches the medium of claim 1 and the method of claim 27:
wherein the game program further causes the computer to, if a result of the capture success determination is a success, bring the field character into a state of being owned as the battle character by the player (see video at timestamps 3:00-3:10 and 2:35-3:52)
With respect to claims 14 and 40, Pokémon Legends teaches the medium of claim 1 and the method of claim 27:
when the first battle character is caused to perform the attack motion, bring the first battle character into an attack standby state where the attack motion cannot be further performed; cancel the attack standby state to bring the first battle character into an attack-possible state, in accordance with passage of time; and cause the first battle character to perform the attack motion in response to a predetermined operation input being performed in the attack-possible state as the second instruction (see video at timestamps 2:10-3:40 where these turn-based fighting mechanics are shown)
With respect to claims 15 and 41, Pokémon Legends and Nomura teach the medium of claim 1 and the method of claim 27. Pokémon Legends does not appear to disclose,
wherein the game program further causes the computer to end the first period as a result of passage of time
However, Nomura discloses
wherein the game program further causes the computer to end the first period as a result of passage of time ([0088]-[0089] & [0039] & [0101] the first period may be time period)
Nomura suggests it is advantageous to include wherein the game program further causes the computer to end the first period as a result of passage of time, because doing so can provide an engaging creature capture mechanic that requires fully defeating a creature prior to capture while also providing a sense of urgency with the first period ([0088]-[0089] & [0039] & [0101]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the medium and method of Pokémon Legends to include wherein the game program further causes the computer to end the first period as a result of passage of time, as taught by Nomura, because doing so would provide an additional and/or alternative engaging creature capture mechanic that requires fully defeating a creature prior to capture while also providing a sense of urgency with the first period.
Furthermore, since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of the creature capture mechanic of Nomura for that of Pokémon Legends. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
With respect to claims 16 and 42, Pokémon Legends and Nomura teach the medium of claim 15 and the method of claim 41. Pokémon Legends does not appear to disclose,
wherein the game program further causes the computer to end the first period if the capturing motion is performed a predetermined number of times during the first period
However, Nomura discloses
wherein the game program further causes the computer to end the first period if the capturing motion is performed a predetermined number of times during the first period ([0088]-[0089] & [0039] & [0101] the first period may be based on tries/turns)
Nomura suggests it is advantageous to include wherein the game program further causes the computer to end the first period if the capturing motion is performed a predetermined number of times during the first period, because doing so can provide an engaging creature capture mechanic that requires fully defeating a creature prior to capture while also providing a sense of urgency with the first period ([0088]-[0089] & [0039] & [0101]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the medium and method of Pokémon Legends to include wherein the game program further causes the computer to end the first period if the capturing motion is performed a predetermined number of times during the first period, as taught by Nomura, because doing so would provide an additional and/or alternative engaging creature capture mechanic that requires fully defeating a creature prior to capture while also providing a sense of urgency with the first period.
Furthermore, since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of the creature capture mechanic of Nomura for that of Pokémon Legends. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
v Claims 6, 22, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over “Pokémon Legends: Arceus – Gameplay Preview” in view of Nomura, as applied to claims 5, 21, and 31 above, and further in view of “Palworld How To 100% CAPTURE PALS All The Time - How Spheres Work (Tips and Tricks)” (Published on YoutTube by LaserBolt on January 24, 2024 at https://www.youtube.com/watch?v=2AdJJu__Wxw - hereinafter "Palworld”)
With respect to claims 6, 22, and 32, Pokémon Legends teaches the medium of claim 5, the system of claim 21, and the method of claim 31:
wherein the game program further causes the computer to: decrease hit points set for the first field character, based on an attack motion of the first battle character against the first field character; (see video at timestamps 2:28-2:33 and 8:10-8:30 where the Hp decreases during an attack)
if the hit points become equal to or lower than a predetermined value, perform the defeat determination that the first field character has been defeated (see video at timestamps 8:20-8:30 where creature is defeated when HP are lower than 1 (i.e., zero))
Although Examiner notes this capture mechanic is old and well known in for Pokemon games, prior art will be cited rather than taking Official Notice. Pokémon Legends does not disclose
make it easier for a result of the capture success determination in accordance with the capturing motion to be a success as the hit points decrease; and
However, Palworld discloses
make it easier for a result of the capture success determination in accordance with the capturing motion to be a success as the hit points decrease; (see video at timestamp 1:20-1:42)
Palworld suggests it is advantageous to make it easier for a result of the capture success determination in accordance with the capturing motion to be a success as the hit points decrease, because doing so can provide an engaging creature capture mechanic (see video at timestamp 1:20-1:42)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the medium and method of Pokémon Legends in view of Nomura to include wherein the game program further causes the computer to end the first period if the capturing motion is performed a predetermined number of times during the first period, as taught by Palworld, because doing so can provide an engaging creature capture mechanic.
Furthermore, since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of the creature capture mechanic of Palworld for that of Pokémon Legends. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
v Claims 7, 23, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over “Pokémon Legends: Arceus – Gameplay Preview” in view of Nomura in view of Palworld, as applied to claims 6, 22, and 32 above, and further in view of Yang (U.S. PG Pub No. 2020/0330866 , October 22, 2020- hereinafter "Yang”)
With respect to claims 7, 23, and 33, Pokémon Legends, Nomura, and Palworld teach the medium of claim 6, the system of claim 21, and the method of claim 32. Pokémon Legends does not appear to disclose,
wherein the game program further causes the computer to bring the first field character into a state of not performing the attack motion against the first battle character and not moving, during the first period
However, Yang discloses
wherein the game program further causes the computer to bring the first field character into a state of not performing the attack motion against the first battle character and not moving, during the first period ([0052] defeated enemies are knocked out and do not move)
Yang suggests it is advantageous to include wherein the game program further causes the computer to bring the first field character into a state of not performing the attack motion against the first battle character and not moving, during the first period, because doing so provide an accurate representation of a character that has no life energy (i.e., is knocked out and cant move) ([0052]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the medium and method of Pokémon Legends in view of Nomura in view of Palworld to include wherein the game program further causes the computer to bring the first field character into a state of not performing the attack motion against the first battle character and not moving, during the first period, as taught by Yang, because doing so provide an accurate representation of a character that has no life energy (i.e., is knocked out and cant move)
Prior Art of Record
The prior art made of record and not relied upon is considered pertinent to the applicant’s disclosure.
Nakaguchi et al. (U.S. PG Pub No. 2021/0387084, December 16, 2021) teaches a variety of Pokemon battling and capturing mechanics.
Taura et al. (U.S. PG Pub No. 2020/0254335, August 13, 2020) teaches a variety of Pokemon battling and capturing mechanics.
Conclusion
No claim is allowed
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M DETWEILER whose telephone number is (571)272-4704. The examiner can normally be reached on Monday-Friday from 8 AM to 5 PM ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached at telephone number (571)-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/JAMES M DETWEILER/Primary Examiner, Art Unit 3621
