THIS IS NOT AN APRIL FOOLS JOKE - THIS IS LEGITIMATE NEWS
On September 2 2025, the United States Patent and Trademark Office (USPTO) issued a patent to Nintendo for "summoning a character to battle another character" in an attempt to fight against against Pocketpair's success with Palworld. On November 3 2025, a 104-page order rejecting the patent with issued towards Nintendo as reported by Games Fray.
Despite the rather unfortunate timing. On March 25 2026, and aforementioned 104-page patent was mailed. On the patent, it was noted that the decision had not been made final and that Nintendo had two months of which to respond.
The following is from the legal document, leading up to explanations for all 26 claims of the infamous patent 12,403,397 being rejected.
Quote From United States Patent and Trademark Office 1. ACKNOWLEDGEMENTS
This non-final Office action addresses control no. 90/020,162 ("Instant Proceeding"). which is a Director Ordered Reexamination of U.S. Patent No. 12,403,397 ("397 Patent") titled "STORAGE MEDIUM, INFORMATION PROCESSING SYSTEM, INFORMATION PROCESSING APPARATUS, AND GAME PROCESSING METHOD."
The '397 Patent issued on 02 September 2025 with claims 1-26 ("Originally Patented Claims"), from U.S. Application No. 18/116,023 (023 Аpplication"), filed on 01 March 2023.
The Office mailed a Director Initiated Order for Ex Parte Reexamination on 03 November 2025 (“Order"), noting that Substantial New Questions of Patentability ("SNQs") had arisen as to claims 1, 13, 25, and 26. See Order at p. 1. Moreover, the Order set aa response time for Patent Owner's Statement as two months from the mailing date of the Order.
Since two months have elapsed since the mailing date of the Order, and because Patent Owner has not filed a Patent Owner Statement, claims 1-26 are now subject to reexamination under 35 USC § 305.
STATUS OF CLAIMS
Claims 1-26 are currently reexamined ("Reexamined Claims").
Regarding the Reexamined Claims and as a result of this Office action:
a) Claims 1-26 are rejected under 35 USC § 103(a).
PRIORITY AND AIA STATUS
Domestic Priority. Based upon a review of the '397 Patent and the '023 Application, the Examiner finds that the '397 Patent does not include a claim for benefit of domestic priority under 35 USC §§ 120 or 119(e). Accordingly, the Examiner finds that the domestic effective filing date of the '397 Patent is 01 March 2023, which is the filing date of the '023 Application.
Foreign Priority. Based upon a review of the '397 Patent and the '023 Application, the Examiner finds that the '397 Patent contains a claim for benefit of foreign priority under 35 USC §§ 119(a) (d) to Japanese Application No. 2022-129632 ("Foreign Application"). To the extent the disclosure of the Foreign Application supports the Reexamined Claims under 35 USC § 112(a), the supported claims receive benefit of a priority date of 16 August 2022, which is the filing date of the Foreign Application. Based upon a review of the '023 Application and its prosecution history, the Examiner finds that Patent Owner has not perfected their claim for foreign priority. See MPEP § 214.
AIA Status. Because the '397 Patent does not contain a claim having an effective date before March 16, 2013, the AIA provisions apply. In the event the determination of the status of the application as subject to AIA 35 USC §§ 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.
CLAIM INTERPRETATION
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MРЕР § 2111, MРEР § 2111.01 and In re Yamamoto et al., 740 F.2d 1569 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01 I. Moreover, it is improper to import claim limitations from the specification, e.g., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01 II. Therefore, unless otherwise noted below, the Examiner will interpret the limitations of the Reexamined Claims using the broadest reasonable interpretation.
After careful review of the original specification, the Examiner finds he cannot locate any lexicographic definitions (either express lexicographic definitions or implied lexicographic definitions) with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that the inventor(s) is not his own lexicographer. See MPEP § 2111.01 IV.
PRIOR ART RELIED UPON
This non-final Office action is based on the following prior art:
a) U.S. Publication No. 2020/0254335 A1 ("Taura");
b) U.S.Publication No. 2002/0119811 A1 ("Yabe");
c) U.S. Publication No. 2022/0062760 A1 ("Motokura"); and
d) U.S. Publication No. 2020/0086216 A1 ("Shimomoto").
The prior art made of record and considered pertinent to the '397 Patent, but not relied upon to reject the claims in this Office action, is listed on the attached document titled "Notice of References Cited" (PTO-892). Unless expressly noted otherwise by the Examiner, all documents listed on the PTO-892 are cited in their entirety.
INFORMATION CONSIDERED
The information disclosure statement filed 29 December 2025 ("Dec 2025 IDS") has been considered. An initialed copy of the Dec 2025 IDS is enclosed. Numerous items listed on the Dec 2025 IDS do not comply with 37 C.F.R. § 1.98 and, accordingly, have not been considered (as indicated by strike-through on the enclosed initialed copy). Patent Owner is respectfully reminded that items of information are evaluated in accordance with Office policy which states:
Where patents, publications, and other such documents are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the document. The initials of the examiner placed adjacent to the citations on the form PTO/SB/08 or its equivalent, without an indication to the contrary in the record, do not signify that the document has been considered by the examiner any further than to the extent noted above.
- MPEP § 2256
Therefore, if Patent Owner did not explain the content and relevance of a document(s) cited on the information disclosure statement in the Instant Proceeding, then the Examiner (regardless of whether his initials are or are not present on any information disclosure statement) has not considered the document(s).
All other documents properly made of record in this reexamination proceeding have been fully considered.
CLAIM REJECTIONS - 35 USC & 103
The following is a quotation of 35 USC § 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.
Proceeding this are 95 pages worth of claims for each of the 26 claims made by Nintendo over the patent and the stance of each patent.
What do you think of the USPTO and their stance on the patent? Let us know in the comments below.
Leave a Comment