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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 11th, 2025 has been entered.
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:
retrieving, by a processor of the computing device, 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 a video game ;
based on the execution context, loading, by the processor, a harness application to the computing device;
executing by the processor the harness application, wherein the executing includes extracting one or more predefined objectives of a video game play from a 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 processor via an agent application, the one or more updated actions for the state of the video game 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 December 11th, 2025 have been fully considered but they are not persuasive.
Commencing on pages 12-18 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:
That the claimed steps/operations performed by the processor of a computing device are performed by non-generic computing devices such as the specific harness application and thus do not fall under the identified groupings of enumerated abstract ideas (Applicant’s Remarks Pages 13-16);
The Applicant proposes that the claimed invention provides an improvement over existing technology through the incorporation of additional elements including allowing developers to focus on certain groups of players and to better simulate human player behavior as described in paragraphs [0005] and [0103] of the Applicant’s Pre-Grant Publication (Applicant’s Remarks Page 14);
That the basis the claimed invention is based in computer technology should not be a basis for a 101 rejection because these claims are necessarily based in a computer technology to overcome a problem arising in the realm of computer technology citing DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245, 113 U.S.P.Q.2d 1097 (Fed. Cir. 2014) (Applicant’s Remarks Pages 14-15);
That the use of conventional elements may still integrate an exception into a patent eligible practical application (Page 16); and
That the rejection of claims does not sufficiently support the determination regarding the well-understood, routine, and conventional elements because it does not meet the requirements of the Berkheimer memo (Pages 16-18.
Responsive to the preceding the following is respectfully noted under the respectively corresponding headings:
i.a) It is respectfully noted that the referenced “harness application” as described throughout the applicant’s specification is a software element that is executed by the underlying generic computer & processor but does not support the presence of a particular machine as defined by MPEP 2106.05. Accordingly, the inclusion of a harness application is not sufficient to separate the claimed invention from the identified enumerated groupings of a Organizing Human Activity or a Mental Process as proposed.
Insomuch as the Applicant’s arguments may be understood to contend that the involvement of processor to perform the recited abstract steps should be considered sufficient to remove these steps from the court enumerated groupings of abstract ideas, 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 Applicant’s arguments of this section are understood to propose that the claimed invention is patent eligible based on the integration of the presented abstract idea into the practical application through providing a solution to a technical problem wherein the problem as described in paragraphs [0003]- [0006] of the Applicant’s Pre-Grant Publication. Specifically, this portion presents that there is a technical problem of automating the Quality Assurance testing of video games and 3D software applications because the built-from-scratch User Interface and varying hardware configurations of mobile devices makes it difficult to automate the function of Quality Assurance Analyst including exercising different software code paths in search of potential errors and distinguishing errors from acceptable outcomes.
The Applicant presents that the solution to the preceding technical problems is reflected in paragraph [0103] of the Applicant’s Pre-Grant Publication. Paragraph [0103] of the applicant’s Pre-Grant Publication describes the ability of the automatic process to focus on player data segregated by player cohorts so as to allow a developer to focus on a specific group of players (e.g., top 10%) that may enable a developer to find issues effecting the most active players that would allow a developer to prioritize fixes to these areas of a video game.
It is unclear how the proposed focus on player data segregated by player cohorts so as to allow a developer to focus on a specific group of players (e.g., top 10%) is tied to or resolves the described technical problem/issue of automating the Quality Assurance testing of video games and 3D software applications because the built-from-scratch User Interface and varying hardware configurations of mobile devices makes it difficult to automate the function of Quality Assurance Analyst including exercising different software code paths in search of potential errors and distinguishing errors from acceptable outcomes. Alternatively stated, the proposed solution as argued and now reflected in the claimed invention would not implicitly or explicitly provide the solution to the proposed problem and the applicant specification does not provide a basis to support this correlation as argued.
iii.a) The rejection as previously presented and maintained herein above notes that the utilization of computer merely as a tool is not sufficient to support the presence of patent eligible subject matter (See MPEP 2106.05(f)). The applicant’s proposal that the claimed invention is necessarily based in a computer technology to overcome a problem arising in the realm of computer technology is non-persuasive for at least the reason that the proposed solution is not related to the identified problem as noted in the immediately previous section of this response, (ii.a)
The court’s decision in Intellectual Ventures I LLC v. Capital One Financial (Federal Circuit, 2015) clarifies the criteria as applied in DDR Holdings, LLC v. Hotels.com, L.P. to require that the claimed invention would not foreclose other ways of solving the problem, depart from the routine and conventional sequence of events, and the problem being addressed must be unique to the Internet or at least computers as fairly understood. While the claimed invention does not address the stated problem and as such would not foreclose other ways of solving the problem. It is not immediately clear that the claimed invention departs from the routine and conventional sequence of events, since the described solution of manually limiting data is additionally described by the applicant’s specification paragraph [0004] as the conventional approach of the Quality Assurance analyst. The identified problem is reasonably limited to the at least computers as fairly understood. Accordingly, the claimed invention does not meet the requirements of DDR Holdings, LLC v. Hotels.com, L.P. as clarified by Intellectual Ventures I LLC v. Capital One Financial (Federal Circuit, 2015)
iv.a) Responsive to the Applicant’s proposition that the use of conventional elements may still integrate an exception into a patent eligible practical application, it is noted that such accurately reflects the standard as originally set forth by BASCOM Global Internet Services v. AT&TMobility LLC, 827 F .3d 1341 (Fed. Cir. 2016).
v.a) The rejection properly supports the identification of conventional elements and the evidentiary requirements of the same rejection under 35 USC 101 according to the standards set forth in 2106.07(a) Subsections (III) & (III)(A) and the court’s decision in Berkheimer as cited therein, by citing to portions of the Applicant’s disclosure of the elements in their specification and the drafting standards of the same as defined by 37 CFR 1.71. A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a). The Applicant’s remarks of this section, respectfully do not acknowledge the evidence provided in the rejection as previously presented and maintained above and does not explain why such would not meet the evidence standards set forth in 2106.07(a) Subsections (III) & (III)(A).
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
Conclusion
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