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 Status
After the amendments filed 03/02/2026, claims 4, 6, 11, 13, 18 and 20 were cancelled. Therefore, claims 1-3, 5, 7-10, 12, 14-17 and 19 remain pending, of which, 1, 5, 8, 12, 15 and 19 were amended.
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, 7-10, 12, 14-17 and 19 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. The claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Guidelines (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a system and/or process, which is are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Independent claim 1 recites the following, with the abstract ideas highlighted in bold, including an indication as to the abstract idea grouping(s) to which the indicated limitations belong to, according to the 2019 Revised Patent Subject Matter Guidelines. Independent claims 8 and 15, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
1. An electronic device, comprising:
circuitry configured to:
track a gaming asset associated with a player in a first gaming application, wherein the gaming asset corresponds to a digital asset in the first gaming application (Mental Processes);
receive, based on the tracked gaming asset, first information associated with a first game save state of the first gaming application based on the tracked gaming asset, wherein the first game save state corresponds to at least one of a mode of the first gaming application, an environment of the first gaming application, or a type of the player in the first gaming application (Mental Processes);
receive meta-data associated with the tracked gaming asset based on the received first information, wherein the meta-data includes a plurality of attributes of the tracked gaming asset, and the plurality of attributes includes at least one of a color of the tracked gaming asset or a shape of the tracked gaming asset (Mental Processes);
create a non-fungible token (NFT) associated with the tracked gaming asset based on the received meta-data, wherein the created NFT is associated with a storage of the received meta-data to a distributed ledger associated with the first gaming application, and the distributed ledger is shared across a set of gaming applications including the first gaming application;
receive second information associated with a second game save state of a second gaming application, wherein the set of gaming applications includes the second gaming application and each of the first gaming application and the second gaming application corresponds to a virtual gaming application (Mental Processes);
retrieve the created NFT associated with the gaming asset from the distributed ledger; and
restore, based on the received second information and the retrieved NFT, a restoration of the tracked gaming asset in the second gaming application, wherein the restoration of the tracked gaming asset is for the player;
dis-associate the tracked gaming asset from the first game save state of the first gaming application (Mental Processes);
associate the tracked gaming asset with the second game save state of the second gaming application such that the gaming asset is available for use by the player at the second game save state (Mental Processes); and
control a display device to display the restored gaming asset in the second gaming application, wherein the display device is associated with the gaming device.
The limitations in claim 1 (as well as claim(s) 8 and 15) recite an abstract idea included in the groupings of Mental Processes, connected to technology only through application thereof using generic computing elements (e.g., circuitry, a non-transitory computer-readable medium, etc.) and/or insignificant extra-solution activity. According to the 2019 Revised Patent Subject Matter Guidelines:
Mental Processes include concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Concepts performed in the human mind (e.g., “track a gaming asset associated with a player in a first gaming application, wherein the gaming asset corresponds to a digital asset in the first gaming application”), which is an abstract idea included in the grouping of Mental Processes. These limitations are interpreted as at least Mental Processes insomuch as the claim limitations are directed to performing the concepts in the human mind, while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims.
Regarding dependent claims 2-7, 9-14 and 16-20:
Each claim is dependent either directly or indirectly from the independent claim identified above and includes all the limitations of said independent claim. Therefore, each dependent claim recites the same abstract idea as identified above. Each of the dependent claim further describes additional aspects of the abstract idea, i.e., additional aspects to the Mental Processes. For example, some dependent claims merely provide additional Mental Processes to be performed and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101.
Step 2A-2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
-Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Claims 1-20 clearly do not improve the functioning of a computer, as they only incorporate generic computing elements, do not effect a particular treatment, and do not transform or reduce a particular article to a different state or thing. Similarly, there is no improvement to a technical field. In addition the claims do not apply the judicial exception with, or by use of a particular machine. The claims do not apply or use the judicial exception in a meaningful way. The claimed invention does not suggest improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05 (a)).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (MPEP 2106.05 (h)). The claimed computer components are recited at a level of generality and are merely invoked as tool to perform the abstract idea. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
For the reasons as discussed above, the claim limitations are not integrated to a practical application.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of “circuitry, a non-transitory computer-readable medium”, etc. used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility. These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
In addition to the abstract ideas indicated above, the claims include additional elements, such as:
“create a non-fungible token (NFT) associated with the tracked gaming asset based on the received meta-data, wherein the NFT is created based on a storage of the received meta-data to a distributed ledger associated with the first gaming application, and the distributed ledger is shared across a set of gaming applications including the first gaming application”;
“retrieve the created NFT associated with the gaming asset from the distributed ledger”;
“restore, based on the received second information and the retrieved NFT, a restoration of the tracked gaming asset in the second gaming application, wherein the restoration of the tracked gaming asset is for the player”; and
“control a display device to display the restored gaming asset in the second gaming application, wherein the display device is associated with the gaming device”.
As claimed these limitation represents using computer technology to provide an output and storing the output and transmitting the output which amounts to “[u]se of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, display, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a mental processes) does not integrate a judicial exception into a practical application or provide significantly more’, see MPEP 2106.05(f)(2).
Further, the claims would require structure that is beyond generic, such as structure that can be interpreted analogous to a general-purpose structure and general-purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims. See Alice Corp. v. CLS Bank International, 134 S. Ct. at 2358-59. The elements of circuitry and a non-transitory computer-readable medium are well known conventional devices used to electronically implement a game system as evidence by 2021/0118085, which discloses that a conventional gaming machine comprises circuitry and a non-transitory computer-readable to control the overall operation of the gaming machine (¶60). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The dependent claims do not add “significantly more” for at least the same reasons as directed to their respective independent claims, at least based on the position, as discussed above, that each of the dependent claims merely provide additional limitations to further expand the abstract idea of the independent claims, without adding anything which would establish eligibility under 35 U.S.C. 101.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 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.
Claim(s) 1-3, 5, 7-10, 12, 14-17 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedetto et al (U.S. 2023/0079127) in view of Herrity et al (U.S. 2023/0252733).
Regarding claims 1, 8 and 15 Benedetto discloses:
an electronic device (¶40, server 52), comprising:
circuitry (¶40, server 52 includes at least one server processor 54 and at least one tangible computer readable storage medium 56) configured to:
track a gaming asset associated with a player in a first gaming application, wherein the gaming asset corresponds to a digital asset in the first gaming application (¶51-53, ¶61-62, game-play is monitored on cloud or console execution of a game for completion of a task associated with an acquirable game item (i.e., skin));
receive, based on the tracked gaming asset, first information associated with a first game save state of the first gaming application based on the tracked gaming asset, wherein the first game save state corresponds to at least one of a mode of the first gaming application, an environment of the first gaming application, or a type of the player in the first gaming application (¶61-62, information is received of a first game save state indicating whether a task has been completed (i.e., the environment of the first gaming application wherein the acquirable item has partially or fully been acquired));
receive meta-data associated with the tracked gaming asset based on the received first information, wherein the meta-data includes a plurality of attributes of the tracked gaming asset, (¶47, ¶67, information received by the system includes metadata related to ownership of the item which is then used to create an NFT associated with the item);
create a non-fungible token (NFT) associated with the tracked gaming asset based on the received meta-data, wherein the created NFT is associated with a storage of the received meta-data to a distributed ledger associated with the first gaming application, and the distributed ledger is shared across a set of gaming applications including the first gaming application (¶47, ¶67, ¶70, ¶75-76, the NFT may be created and maintained in a standardized format for cross-compatibility across multiple different games, wherein the NFT includes a blockchain distributed ledger);
receive second information associated with a second game save state of a second gaming application, wherein the set of gaming applications includes the second gaming application, wherein each of the first gaming application and the second gaming application corresponds to a virtual gaming application (¶74, a request is received use the game item in a different video game of a different genre);
retrieve the created NFT associated with the gaming asset from the distributed ledger (¶75-76, the NFT is retrieved and verification is performed to determine if the requesting player is the current owner of the NFT); and
restore, based on the received second information and the retrieved NFT, a restoration of the tracked gaming asset in the second gaming application, wherein the restoration of the tracked gaming asset is for the player (¶76-76, if verified an instance of the simulation is executed including the NFT); and
dis-associate the tracked gaming asset from the first game save state of the first gaming application (¶58, the NFT is transferred from a user account for the player for a first video game to a second different linked user account for the player for a second video game);
associate the tracked gaming asset with the second game save state of the second gaming application such that the gaming asset is available for use by the player at the second game save state (¶58, ¶74-77, ¶80, the NFT is transferred from a user account for the player for a first video game to a second different linked user account for the player for a second video game wherein the player uses the item in the second game); and
control a display device to display the restored gaming asset in the second gaming application, wherein the display device is associated with the gaming device (¶76-76, an instance of the respective game is executed including the NFT).
However, Benedetto does not specifically disclose that:
the plurality of attributes includes at least one of a color of the tracked gaming asset or a shape of the tracked gaming asset.
Herrity teaches:
A method of tracking NFTs associated with three-dimensional digital objects (abstract, ¶2), wherein the NFTs each have associated meta data (¶2), wherein the metadata includes information related to the ownership of the digital object (¶19, NFTs include metadata such as the current owner of the digital object), and wherein the metadata further includes attribute information related to the digital object, including at least the color of the digital object (¶22-23, metadata stored on or linked to the three-dimensional object include the color of the three-dimensional digital object or the size of the three-dimensional digital object, etc.).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to integrate the metadata, as taught by Herrity, into the system, as taught by Benedetto, in order to allow for a visualization of the current state of metadata for a digital object within the presentation medium displaying the digital object, thereby improving user experience (See Herrity, ¶27).
Regarding claims 2, 9 and 16 Benedetto discloses that which is discussed above. Benedetto further discloses that:
the first gaming application is different from the second gaming application (¶74, the request is received use the game item in a different video game of a different genre).
Regarding claims 3, 10 and 17 Benedetto discloses that which is discussed above. Benedetto further discloses that:
the first gaming application is same as the second gaming application (¶49, the NFT may be used in the same of different game).
Regarding claims 5, 12 and 19 Benedetto discloses that which is discussed above. Benedetto further discloses that:
the circuitry is configured to:
unequip, based on the dis-association of the tracked gaming asset from the first game save state, the tracked gaming asset for the player in the first gaming application, and equip, based on the association of the tracked gaming asset with the second game save state, the tracked gaming asset for the player in the second gaming application (¶58, ¶74-77, ¶80, the NFT is transferred from a user account for the player for a first video game to a second different linked user account for the player for a second video game wherein the player uses the item in the second game, each NFT is unique therefore when transferred from a first game to a second would inherently require unequipping the item from a first game).
Regarding claims 7 and 14 Benedetto discloses that which is discussed above. Benedetto further discloses that:
the tracked gaming asset corresponds to at least one of a weapon, a gun, an avatar, a costume, an accessory, a vehicle, a character, a prop, a player status, or a gaming tool (¶3, ¶7, ¶53, the NFT represents a weapon, a video game skin, video game artwork, or a video game skill).
Response to Arguments
Applicant's arguments, see Remarks, filed 03/02/2026, with respect to the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the claims are not drawn to an abstract idea, specifically a mental process (See Remarks, pg. 12). Applicant' s argument is not found persuasive, as can be shown by an analysis of the limitations of representative claim 1, which the examiner has indicated as reciting a mental process:
A. using a pen and paper, a human could view and track a gaming asset associated with a player in a first gaming application, wherein the gaming asset corresponds to a digital asset in the first gaming application;
B. using a pen and paper, a human could visually receive, based on the tracked gaming asset, first information associated with a first game save state of the first gaming application based on the tracked gaming asset;
C. using a pen and paper, a human could visually receive meta-data associated with the tracked gaming asset based on the received first information, wherein the meta-data includes a plurality of attributes of the tracked gaming asset, and the plurality of attributes includes at least one of a color of the tracked gaming asset or a shape of the tracked gaming asset;
D. using a pen and paper, a human could visually receive second information associated with a second game save state of a second gaming application, wherein the set of gaming applications includes the second gaming application and each of the first gaming application and the second gaming application corresponds to a virtual gaming application;
E. using a pen and paper, a human could dis-associate the tracked gaming asset from the first game save state of the first gaming application; and
F. using a pen and paper, a human could associate the tracked gaming asset with the second game save state of the second gaming application such that the gaming asset is available for use by the player at the second game save state.
As can be clearly seen, the claims include limitations which can be reasonably performed in the human mind, without any additional elements which are sufficient to amount to “significantly more” than the judicial exception.
Applicant argues that the claimed invention solves a technical problem in the art (See Remarks, pg. 12-14). The examiner must respectfully disagree. An electronic device not being allowed to access or display the same gaming assets in another virtual gaming application, is not a technical problem. The claimed invention does not solve a problem that arises due to technology. Applicant may have an improved abstract idea that allows such an electronic device access to the same gaming assets in another virtual gaming application, but the abstract idea does not solve a technical problem. And a new abstract idea, regardless of how great it is, is still an abstract idea. Abstract ideas are not patent-eligible without “significantly more.” In this case, Applicant has merely implemented an abstract idea using a generic computer. This is not considered to be “significantly more” than the abstract idea since the Supreme Court’s Alice decision was handed down.
Applicant’s arguments, see Remarks, filed 03/02/2026, with respect to the rejection(s) of the claim(s) under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Applicant argues that Benedetto and Herrity do not teach that “the first game save state corresponds to at least one of a mode of the first gaming application, an environment of the first gaming application, or a type of the player in the first gaming application” (See Remarks, pgs. 14-15). The examiner must respectfully disagree. Benedetto discloses that the first game save state corresponds to the current gaming environment of the gaming application, specifically, wherein the current environment includes the full or partial acquisition of the acquirable item (¶61-62, information is received of a first game save state indicating whether a task has been completed (i.e., the environment of the first gaming application wherein the acquirable item has partially or fully been acquired)).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JASON PINHEIRO whose telephone number is (571)270-1350. The examiner can normally be reached M-F 8:00A-4:30P ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason Pinheiro/ Examiner, Art Unit 3715
/DMITRY SUHOL/ Supervisory Patent Examiner, Art Unit 3715
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