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 therefor, subject to the conditions and requirements of this title.
Claims 1-3, 5-6, 9, 11, 14-16, 18-19, 25 and 28-34 are rejected under 35 U.S.C. 101 because the claimed invention as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As summarized in MPEP § 2106, subject matter eligibility is determined based on a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant application includes claims concerning an apparatus (i.e., a machine) in claims 14-16, 18-19, 25, 30 and a method (i.e., a process) in claims 1-3, 5-6, 9, 11, 28-29, 31-34.
In Prong 1 of Step 2A, it must be determined whether the claimed invention recites an Abstract Idea, Law of Nature or a Natural Phenomenon.
In particular exemplary presented claim 1 includes the following underlined claim elements:
1. A method for evaluating performance of a video game by a computing device, the method comprising:
loading by a processor of the computing device, a video game and an agent application to a memory of the computing device;
retrieving, by the processor, an execution context for the computing device from a database, wherein the execution context corresponds to on execution environment of the computing device, for simulating one or more actions and one or more states experienced by a user within the video game ;
loading, by the processor, a harness application to the memory of the computing device, wherein the harness application corresponds to the execution context;
executing by the processor the harness application, wherein the executing includes extracting one or more predefined objectives of a video game play from the memory of the computing device;
determining by the processor, a state of the video game;
and the, one or more actions for the state of the video game;
receiving, by the processor, a set of use parameters for a subset of users of the video game from a database, wherein the set of use parameters include a use frequency and a use context;
generating, by the processor, a use context parameter for the subset of users within the video game based on the set of use parameters;
updating, by the processor, the one or more actions for the state of the video game based on the generated use context parameter;
executing by the harness application, the video game on the computing device;
automatically executing by the processor and using the agent application, the one or more updated actions for the state of the video game in the video game executing on the computing device to produce one or more outcomes wherein the execution continues until achieving the one or more predefined objectives;
utilizing by the processor, a lookup table to determine whether the one or more actions achieve the one or more predefined objective for the execution context; and
after determining whether the one or more achieve the one or more predefined objectives, terminating by the processor, execution of the harness application
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes performable by the human mind including observation, evaluation, and judgement because it involves the evaluation data using a computer(See MPEP 2106.04(a)(2) Subsection III.C) as well as Certain Methods of Organizing Human Activity including commercial interactions in the form of business relations, and managing personal behavior or relationships including following of a set of rules or instructions because the claims perform a series of defined interactions to measure there results thereof utilizing a computer merely as a tool (See MPEP 2106.05(f)).
As the exemplary claim recites an Abstract Idea, Law of Nature or a Natural Phenomenon it is further considered under Prong 2 of Step 2A to determine if the claim recites additional elements that would integrate the judicial exception into a practical application. Wherein the practical applications are set forth by MPEP §2106.05(a-c,e) are broadly directed to: the improvement in technology, use of a particular machine and applying or using the judicial exception in a meaningful way beyond generally linking the use thereof to a technology environment. Limitations that explicitly do not support the integration of the judicial exception in to a practical application are defined by MPEP 2106.05(f-h) and include merely using a computer to implement the abstract idea, insignificant extra solution activity, and generally linking the use of the judicial exception to a particular technology environment or field of use.
With respect to the above the claimed invention is not integrated into a practical application because it does not meet the criteria of MPEP §2106.05(a-c,e) and although it is performed on a mobile device including a display, computing device including processor(s) and a memory it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonable include other network connected devices such as generic computers, smart phones, personal digital assistants (PDAs), and the like. Accordingly, the claims limitations are not indicative of the integration of the identified judicial exception into a practical application, and the consideration of patent eligibility continues to step 2B.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional element(s) or combination of elements in the claim(s) other than the abstract idea(s) per se including a mobile device including a display, computing device including processor(s) and a memory amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structures that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry per the applicant’s description (Applicant’s specification Paragraphs [0008], [0019], [0053]-[0070], [0073]). Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Accordingly, as presented the claimed invention when considered, as a whole, amounts to the mere instructions to implement an abstract idea [i.e. software or equivalent process steps] on a generic computer [i.e. controller or processor] without causing the improvement of the generic computer or another technology field.
The applicant’s specification is further noted as supporting the above rejection wherein neither the abstract idea nor the associated generic computer structure as claimed are disclosed as improving another technological field, improvements to the function of the computer itself, or meaningfully linking the use of an abstract idea to a particular technological environment (Applicant’s specification Paragraphs [0008], [0019], [0053]-[0070], [0073]). In particular the applicant’s specification only contains computing elements which are conventional and generally widely known in the field of the invention described, and accordingly their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art per the requirements of 37 CFR 1.71. Were these elements of the applicant’s invention to be presented in the future as non-conventional and non-generic involvement of a computing structure, such would stand at odds with the disclosure of the applicant's invention as found in their specification as originally filed.
“[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301). In this case, the claims recite a generic computer implementation of the covered abstract idea.
The remaining presented claims 2-3, 5-6, 9, 11, 14-16, 18-19, 25 and 28-34 incorporate substantially similar abstract concepts as noted with respect to the exemplary claim 1, while the additional elements recited by the additional claims including one or more of a mobile device including a display, computing device(s) including processor(s) and a memory, a serial port, a network interface as respectively presented that when considered both individually and as a whole in the respective combinations of the additional claims are not sufficient to support patent eligibility under prong 2 of step 2A or step 2B for the reasons set forth above with respect to the exemplary claim 1 and further present substantially similar abstract concepts as noted with reflection to exemplary claim 1 above and therefore are similarly directed to or otherwise include abstract ideas.
Therefore, the listed claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed May 11th, 2026 have been fully considered but they are not persuasive.
Commencing on pages 11-15 of the Applicant’s above dated response, the Applicant presents various arguments against the rejection of claims under 35 USC §101 for being directed to a judicial exception without significantly more including the following:
i) That the claimed invention as amended does not recite judicial exception under step 2A Prong One of the Subject Matter Eligibility test, because the claimed invention recites the particularly claimed elements directed to the performance of operations on a computing device (Applicant’s Remarks Pages 13-14);
ii) That the claims recite additional elements including a computing device, an agent application and a harness application loaded into the memory of the computing device that reflect significantly more than the recited judicial exception and would further support the presence of a practical application (Applicant’s Remarks Page 14);
iii) That the claimed invention improves the functioning of a computing device by automatically executing one or more actions for updating the state of a video game until achieving one or more predefined outcomes and as such further reflects a practical application (Applicant’s Remarks Pages 14-15); and
iv) That the remaining pending claims incorporate the argued features either directly or based on claim dependency and should similarly be determined to be patent eligible (Applicant’s Remarks Page 15)
Responsive to the preceding the following is respectfully noted under the respectively corresponding headings:
i.a) The involvement of a computing device to perform the recited abstract steps is not sufficient to remove these steps from the court enumerated groupings of abstract ideas, because the mere use of a computer as a tool to practice these abstract steps is not sufficient to support patent eligibility as noted by MPEP 2106.05(f) and explicitly noted by the courts “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301).
ii.a) The recite elements including a computing device, an agent application and a harness application loaded into the memory of the computing device does not support he presence of significantly more or a practical application as proposed because the same reflects the mere application of a judicial exception on a computer wherein the same is merely utilized as a tool to perform the abstract idea as described by MPEP §2106.05(f) and as such is not considered indicative of the integration of an abstract idea into a practical application as proposed.
iii.a) As noted in the previous two sections the implementation of an abstract idea on a computer wherein the computer is utilized merely as a tool is not sufficient to support a practical application because it does not enhance or improve the underlying technology in a manner consistent with MPEP §2106.05(a). Proposed improvements based on the mere operation of game or even improvements to the algorithms themselves that do not result in an improvement of the hardware which they are practiced on are not sufficient to improve the functionality of the computer but instead result in the mere operation or practice of these rules and algorithms on a computer in a manner specifically caution against in Alice, “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301). Similarly, limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, was found not to support eligibility because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); and
Iv.a) As the presented arguments do not support the patent eligibility for the reasons noted in the preceding sections above, they would not additionally support the patent eligibility of the remaining claims as proposed.
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E MOSSER whose telephone number is (571)272-4451. The examiner can normally be reached M-F 6:45-3:45.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715
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