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 .
Applicant’s Submission of a Response
Applicant’s submission of a response on 4/13/2026 has been received and considered. In the response, Applicant amended claims 1, 3, 5, 6, 9 and 14. Therefore, claims 1 – 20 are pending.
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 – 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1 – 20 are all within at least one of the four categories of invention, and have been analyzed to determine whether they are directed to any judicial exceptions.
Step 2A, Prong 1
Each of claims 1 – 20 recites at least one step or instruction for rules of a puzzle game, which is grouped as a mental process and certain methods of organizing human activity under the 2019 PEG. The claimed limitations involve concepts performed in the human mind, namely observation, evaluation and judgement, which are mental processes and managing personal behavior and following rules or instructions, which are methods of organizing human activity under the 2019 PEG. Accordingly, each of Claims 1- 20 recites an abstract idea.
Independent Claim 1 recites:
A system, comprising:
one or more processors; and
one or more computer-readable media storing computer-executable instructions that, when executed by the one or more processors, cause the one or more processors to:
identify a search space associated with a puzzle to be validated, the search space including one or more objects (judgement or evaluation, which is grouped as a mental process, a method of exchanging financial obligations and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG);
identify puzzle constraints associated with the puzzle (judgement or evaluation, which is grouped as a mental process, a method of exchanging financial obligations and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG);
determine a traversal path for identifying a first solution to the puzzle, the traversal path including a sequence of candidate actions, wherein the traversal path is randomly selected (judgement or evaluation, which is grouped as a mental process, a method of exchanging financial obligations and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG);
determine, for each of the sequence of candidate actions and based at least in part on the search space and the puzzle constraints, respective modified search spaces, each of the respective modified search spaces including a subset of the one or more objects (judgement or evaluation, which is grouped as a mental process, a method of exchanging financial obligations and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG);
determine the first solution to the puzzle based at least in part on the respective modified search spaces (judgement or evaluation, which is grouped as a mental process, a method of exchanging financial obligations and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG);
generate, based at least in part on the first solution, a near-optimal solution to the puzzle (judgement or evaluation, which is grouped as a mental process, a method of exchanging financial obligations and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG);
generate one or more statistical data associated with the near-optimal solution (judgement or evaluation, which is grouped as a mental process, a method of exchanging financial obligations and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG); and
indicate, based at least in part on the one or more statistical data, that the puzzle is valid (judgement or evaluation, which is grouped as a mental process, a method of exchanging financial obligations and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG).
Accordingly, as indicated above in bold, each of the above-identified claims recites an abstract idea, with substantially similar features found in claims 9 (method) and 17 (system). Further, dependent Claims 2 – 8, 10 – 16 and 18 – 20 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2
The above-identified abstract idea in each of independent Claims 1, 9 and 17 (and their respective dependent Claims 2 – 8, 10 – 16 and 18 – 20) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in independent Claims 1, 9 and 17), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of a system, one or more processors, one or more computer-readable media storing and “randomly selected” the traversal path as recited in independent Claims 1, 9 and 17 and its dependent claims are generically recited computer elements which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Furthermore, processors and the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer/computing device. For at least these reasons, the abstract idea identified above in independent Claims 1, 9 and 17 (and their respective dependent Claims 2 – 8, 10 – 16 and 18 – 20) are not integrated into a practical application under 2019 PEG.
The recitation that the traversal path is “randomly selected” likewise does not integrate the abstract idea into a practical application. Selecting a traversal path at random is a generic, well-understood computer function recited at a high level of generality. It does not effect any particular treatment or transformation of an article, is not tied to any particular machine, and does not reflect an improvement to computer functionality or to any other technology. It merely selects which step of the abstract process (which traversal path) to perform and constitutes, at most, insignificant pre-solution activity that links the abstract idea to a generic computer environment.
Moreover, the above-identified abstract idea is not integrated into a practical application
under 2019 PEG because the claimed system merely implements the above-identified abstract
idea (e.g., mental process) using rules (e.g., computer instructions) executed by a computer (e.g.
a system, one or more processors, one or more computer-readable media storing as recited in independent claims 1, 9 and 17). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer/computing device.
Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1, 9 and 17 (and their respective dependent Claims 2 – 8, 10 – 16 and 18 – 20) are not integrated into a practical application under the 2019 PEG.
Step 2B
None of the Claims 1 – 20 include additional elements that are sufficient to amount to
significantly more than the abstract idea for at least the following reasons. These claims require the additional elements of: a system, one or more processors, one or more computer-readable media storing and the generic random selection of a traversal path as recited in the independent claims.
The above-identified additional elements are generically claimed computer components
which enable the above-identified abstract idea(s) to be conducted by performing the basic
functions of automating mental tasks. The courts have recognized such computer functions as
well-understood, routine, and conventional functions when claimed in a merely generic manner
(e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev.
Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015);
and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Like SAP America vs InvestPic, LLC (Fed. Cir. 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
The recitation of the above-identified additional limitations in Claims 1 – 20 amounts to
mere instructions to implement the abstract idea on a computer. Simply using a computer or
other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or
transmit data) or simply adding a general purpose computer or computer components after the
fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does
not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing
technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a
technical explanation as to how to implement the invention should be present in the specification
for any assertion that the invention improves upon conventional functioning of a computer, or
upon conventional technology or technological processes. That is, the disclosure must provide
sufficient details such that one of ordinary skill in the art would recognize the claimed invention
as providing an improvement. Here, Applicant’s specification does not include any discussion of
how the claimed invention provides a technical improvement realized by these claims over the
prior art or any explanation of a technical problem having an unconventional technical solution
that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d
1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide
sufficient details regarding the manner in which the claimed invention accomplishes any
technical improvement or solution.
For at least the above reasons, Claims 1 – 20 are directed to applying an abstract idea (e.g., mental process or certain method of organizing human activity) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 1 – 20 provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements
do not provide significantly more. Specifically, when viewed individually, the above-identified
additional elements in independent Claims 1, 9 and 17 (and their dependent claims) do not add
significantly more because they are simply an attempt to limit the abstract idea to a particular
technological environment. That is, neither the general computer elements nor any other
additional element adds meaningful limitations to the abstract idea because these additional
elements represent insignificant extra-solution activity. When viewed as a combination, these
above-identified additional elements simply instruct the practitioner to implement the claimed
functions with well-understood, routine and conventional activity specified at a high level of
generality in a particular technological environment. As such, there is no inventive concept
sufficient to transform the claimed subject matter into a patent-eligible application. As such, the
above-identified additional elements, when viewed as whole, do not provide meaningful
limitations to transform the abstract idea into a patent eligible application of the abstract idea
such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 1 – 20 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a
technical field (as in DDR).
Therefore, none of the claims 1 – 20 amounts to significantly more than the abstract idea
itself.
Accordingly, claims 1 – 20 are not patent eligible and rejected under 35 U.S.C. 101 as
being directed to abstract ideas implemented on a generic computer in view of the Supreme
Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
Response to Arguments
Applicant's arguments filed on 4/13/2026 have been fully considered but they are not persuasive.
Applicant argues on pp. 11 - 13 that independent claims 1, 9, and 17 do not recite an abstract idea because, among other things, a human cannot randomly select anything and a human cannot validate puzzles having extremely large numbers of solutions (e.g., greater than 1020 solutions) or perform evolutionary functions, The Examiner respectfully disagrees.
First, the claims are not limited to puzzles of the scale on which Applicant relies. The recitation of puzzles having on the order of 1020 solutions, and of problems that are NP-hard, appears in the specification (e.g., paragraph [0011]), however not in the claims. Claim 1 recites “a puzzle” and “a search space including one or more objects,” which encompasses puzzles of modest size that a person can address mentally or with pen and paper. Limitations appearing only in the specification are not read into the claims. See MPEP 2111.01. Under the broadest reasonable interpretation, the identifying, determining, evaluating, and indicating steps encompass performance in the human mind.
Second, the “randomly selected” limitation of claim 1 has been addressed as an additional element. Even accepting that random selection is not performed in the human mind, that single, generically-recited limitation does not remove the abstract idea recited by the remaining limitations; it is evaluated under Step 2A Prong Two and Step 2B, where it is found to be a generic computer function that neither integrates the abstract idea into a practical application nor amounts to significantly more.
Third, the recitation of an “evolutionary function” in claim 2 and related operations of crossover, mutation, and healing in the dependent claims further describes the abstract process of arriving at a solution. These operations are recited at a high level of generality, without any specific technological implementation, and to the extent they are not literally performed in the mind they nonetheless further describe the judicial exception. Performing additional steps of the abstract process on a generic computer does not render the claims non-abstract.
Fourth, the alternative grouping, certain methods of organizing human activity (following the rules or instructions of a puzzle), provides an independent basis for the Prong One determination that is not addressed by Applicant’s mental-performance argument.
Applicant argues on pp. 12 – 14 that the claims integrate any abstract idea into a practical application, namely validating highly complex (e.g., NP-hard) puzzles that cannot be validated using conventional analytical techniques, and analogizes to Example 40 (Adaptive Monitoring of Network Traffic Data) of the Subject Matter Eligibility Examples. This argument is not persuasive.
Example 40 is distinguishable. In the eligible claim of Example 40, the additional elements collected additional Netflow protocol data only when an initially-collected metric (network delay, packet loss, or jitter) exceeded a predefined threshold. That conditional collection was found to be a specific improvement to the technology of network monitoring because it limited the volume of data collected and thereby avoided excess traffic and hindrance of network performance, a concrete improvement to the functioning of the network itself. Here, the additional elements (generic processors, computer-readable media, and generic random selection) do not improve the functioning of the computer or any other technology. The asserted improvement is to the abstract process of generating and validating puzzle solutions, not to any technology. As discussed above and in Step 2A Prong Two, an improved abstract process implemented on generic computers is not a practical application. The claims here are unlike the eligible claim of Example 40 and are not integrated into a practical application.
Applicant’s assertion that heuristics and evolutionary algorithms had not previously been applied to puzzle validation does not establish eligibility. The novelty or non-obviousness of an abstract idea does not render it patent-eligible; a claim directed to a new abstract idea is still directed to an abstract idea. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016); SAP America v. InvestPic. Therefore, the absence of an art rejection does not bear on the Section 101 analysis.
Applicant argues on pp.14 – 15 that the Office Action fails to meet its burden under Berkheimer because it does not provide a citation to a publication demonstrating that the claimed features are well-understood, routine, and conventional. This argument misapprehends the inquiry.
The evidentiary requirement of the April 19, 2018 Memorandum (“Berkheimer Memo”) applies to a factual finding that an additional element (or combination of additional elements) is well-understood, routine, and conventional at Step 2B. It does not require evidence that the abstract idea itself is well-understood, routine, and conventional. The claim features on which Applicant relies, identifying a search space, identifying constraints, determining a traversal path, determining modified search spaces, generating a near-optimal solution, and the like recite the abstract idea; they are not additional elements subject to the well-understood, routine, conventional inquiry. There is no requirement to demonstrate that the abstract idea is well-understood, routine, and conventional, and the fact that the abstract idea may be novel over the cited references does not confer eligibility.
The actual additional elements are the generic one or more processors, the computer-readable media, and the generic random selection. Their well-understood, routine, and conventional character is supported consistent with the Berkheimer Memo by citation to court decisions recognizing these functions as well-understood, routine, and conventional, and by MPEP 2106.05(d)(II), which sets forth functions the courts have recognized as well-understood, routine, and conventional (e.g., performing repetitive calculations, receiving, storing, and processing data, and electronic recordkeeping). See the decisions cited in the Step 2B analysis above. The Office Action therefore satisfies the applicable burden.
Applicant argues on pp. 16 – 17 citing BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), that the ordered combination of claim elements is non-conventional. This argument is not persuasive. In Bascom, the inventive concept resided in a specific, non-conventional technological arrangement, installing a filtering tool at a particular location (a remote ISP server) that gave the filtering tool a particular, beneficial technical capability. Here, by contrast, the claimed ordering of steps reflects the logical sequence of the abstract idea itself, performed on generic computer components. It does not reflect a particular, non-conventional arrangement of technological components or an improvement to computer architecture. The ordered combination therefore does not supply an inventive concept.
Applicant argues on pp.17 that the claims are eligible because they do not preempt all applications of optimization. Preemption is not a stand-alone test for eligibility. While preemption may signal ineligibility, the absence of complete preemption does not establish eligibility. The claims are found to recite a judicial exception without significantly more under the Alice/Mayo framework, the preemption concern is resolved. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016). Therefore, the 101 rejection is maintained.
Further, the 35 USC 112(b) rejected has been withdrawn. Applicant traverses the rejection of the term “near-optimal” as a relative term of degree, asserting that the term is a recognized term of art in the field of heuristic optimization and is described in the specification at least at paragraphs [0011], [0034], and [0068]. Upon further consideration, the rejection of claims 1, 2, 7–9, 19, and 20 under 35 U.S.C. 112(b) on the basis of the term “near-optimal” is withdrawn.
Applicant has amended claim 3 to recite “the second solution” and amended claim 5 to recite “the second of the plurality of genes.” These amendments resolve the antecedent-basis and same-element/distinct-element ambiguities previously identified. The rejection of claims 3 and 5 under 35 U.S.C. 112(b) is withdrawn.
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.
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/ANKIT B DOSHI/Examiner, Art Unit 3715
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