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 .
Response to Amendment
This is in response to the amendments/arguments filed on 5/9/25. Claims 1, 8, and 10 have been amended. Claims 1 – 8 and 10 - 15 are pending in the current application.
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 – 8 and 10 – 15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
I. The claims are drawn to apparatus, process and CRM categories.
II. Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter.
Step 2a:
III. Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Representative claim 1 is analyzed below, with italicized limitations indicating recitations of an abstract idea.
A non-transitory computer readable medium storing a program, which causes a computer to function as a game element acquisition unit configured to acquire a game element operated by a user in a game play, a first gift item acquisition unit configured to acquire a first gift item every time the game element is acquired, and a second gift item acquisition unit configured to acquire a second gift item when a number of times of acquisition of the game element times reaches a predetermined value, wherein the first gift item and the second gift item are not operated by the user in the game play.
The underlined limitations fall within at least three of the groupings of abstract ideas enumerated in the 2019 PEG:
Fundamental economic principles or practices
Commercial or legal interactions
Managing personal behavior or relationships or interactions between people
The claims are directed towards incentivizing the behavior of users playing a game via group agreements or contract. This is viewed by the Examiner as a fundamental economic practice, an agreement in the form of contracts, and managing personal behavior or relationships between people, which are all considered to be abstract ideas according to the 2019 guidelines.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
iii. Although the claims recite additional limitations, such as one or more processors and at least one server, the said additional limitations do not integrate the exception into a practical application of the exception. For example, the claims require
additional limitations such as an interface, processor, and display components.
iv. These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2b:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional and routine computer implementation and mere instructions for implementing the abstract idea on generic computing devices.
For example, the claim language does recite additional elements such as a medium storing a program, however, these viewed as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Viewing the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Response to Arguments
Applicant's arguments filed on 9/22/25 have been fully considered but they are not persuasive. Regarding claims 1 -8 and 10- 15, Applicants argue that “the 101 rejection has been overcome by the foregoing amendment”. The Examiner respectfully disagrees. In response to this, while the Examiner acknowledges the recent claim amendments, the current claim language still does not add significantly more to the abstract idea. The claims are directed towards gaming system that determines if a player receives a gift based upon the player acquiring game elements that reach a predetermined value. The claims are clearly directed towards fundamental economic practices, commercial interactions, and managing personal relationships. The claimed additional components such as a server and memory are components that are well-known, routine, and conventional that does not add anything significantly more to the abstract idea, wherein, furthermore, the claim language is absent of any interface and display components. All the elements claimed, does not mean the claimed invention is rooted in a gaming environment. The Applicants are fully encouraged to contact the Examiner regarding claim language in order to help further prosecution. Viewed as a whole, the present claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claim amounts to significantly more than the abstract idea itself. Therefore, the Examiner maintains that the present invention is not patent-eligible under 35 USC §101.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC M THOMAS whose telephone number is (571)272-1699. The examiner can normally be reached 9:00am - 5:00pm.
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/E.M.T/Examiner, Art Unit 3715 /DAVID L LEWIS/Supervisory Patent Examiner, Art Unit 3715