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 Objections
This action is in response to applicant’s remarks and amendments dated 02/04/2026. Claims 1-95 have been amended. Claims 1-95 are currently 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.
4. Claims 1-95 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. Claims 1-95 are directed to an idea in the form of rules for playing a math game. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no physical elements recited in the independent claims that would add a meaningful limitation to the abstract idea. These claims are simply an abstract idea in the form of rules for playing a math game.
5. Claims 1-95 recite selecting arithmetical functions, a target value, integers, and performing functions / operations with the various values. These steps describe the concept of steps and rules for playing a game. This is similar to the concepts held to be abstract by the courts in In re Brown, 645 Fed. Appx. 1014 (Fed Cir. 2016). Non-precedential with opinion. In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016), and In re Webb, 609 Fed. Appx. 643 (Fed. Cir. 2015), where steps for performing a task and steps for playing a game were held to be patent ineligible.
6. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no physical elements recited in the independent claims. No elements exist that when considered individually and as an ordered combination would amount to significantly more than the abstract idea.
7. The dependent claims add generic game elements and further abstract steps in the form of players performing further math steps. The additional elements of dice, spin wheel, computer, board, game chips, cards, etc. are recited at a high level of generality and perform generic functions. Thus, taken alone, the additional elements do not amount to significantly more than the above identified judicial exception (the abstract idea). Looking at the additional elements in an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is nothing particular to the dice, spin wheel, computer, board, game chips, cards, etc., how they interact, or that makes them specific to this method. They are simply conventional game elements. The claims, as a whole, are directed to the abstract concept of rules for playing a math game. These abstract concepts are not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-95 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims are generally unclear and confusing. For instance, claim 1 line 4, claim 27 line 4, claim 53, line 4, and claim 76 line 4 recite, “selecting a target value.” However, the last several paragraphs of these claims then recites a variety of steps related to “generating a target value.” It is exceedingly unclear what is being claimed, since a target value was already claimed. Is this intended to be the same target value? Is this a different target value? Proper antecedent basis should be used if this is the same term. If this is a different element, a different term should be used. Further, the steps in these later paragraphs also appear to be somewhat redundant to the rest of the claims. For instance, the claims recite “selecting which of said integers of said target field are to be combined into combined integers and selecting which of said integers of said target field are to be operated integers,” however, these claims previously recited “selecting and combining into at least one combined integer” and, “selecting operated integers,” therefore, it appears that these steps are redundant / overlap, and lack proper antecedent basis for understanding of the claim language. It is unclear if the steps within the “generating a target value” paragraphs are subsets of the steps previously recited, or if these are intended to be subsequent steps. The general operation of this method is exceedingly unclear due to the claim language, lack of antecedent basis between terms, and what appears to be overlapping recitations. Appropriate correction is required.
Response to Arguments
Applicant’s arguments, see Arguments / Remarks, filed 02/04/2026, with respect to the previous claim objections have been fully considered and are persuasive. The claim objections have been withdrawn.
Applicant's remaining arguments filed 02/04/2026 have been fully considered but they are not persuasive.
Applicant’s argument that the claims are not abstract because they can be “accomplished with and/or otherwise integrated into the example structural examples disclosed in the current Application,” and, that “the Examiner-cited authority does not extend to the structural examples disclosed in the current Application” are not persuasive.
First, the examiner notes here that USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations appearing in the specification but not recited in the claim should not be read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily). In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-551 (CCPA 1969). See also In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Stating that there are structural examples disclosed in the specification does not obviate the rejection. The examiner cannot import structural elements from the specification into the claims. If there is some specific structure that applicant believes would overcome the current 101 rejection, then it must be recited in the claims to have any weight.
Second, no specific structure is pointed to in the arguments. There is only a general assertion that there are some “structural examples” disclosed in the Application. Yet none are discussed in detail, and no specific arguments regarding what structure exists that might overcome the rejection.
Applicant makes no specific or detailed arguments for why the claims are not an abstract idea in the form of rules for playing a game. Rules for playing a game are not patent eligible, and, this is what is currently claimed. It is unclear what applicant is intending to argue by making a general statement that there are “examples” of structural applications in the Application. This will not obviate the rejection. The method, as claimed, is currently an abstract set of rules. The only claim limitations providing any structure are in the dependent claims, and these are various well known physical ways to play a game, such as generic computer implementations or as a board game with generic board game elements. These well known and generic implementations of a game are not significantly more than the identified judicial exception, the abstract idea in the form of rules for playing a game, sufficient to overcome the rejection.
Applicant’s argument that the claims track the specification and are, therefore, clear, is not persuasive.
Applicant again fails to provide any sufficient details to overcome these rejections. The fact that the claims track the specification does not help to overcome this rejection. The same term cannot be used twice without proper antecedent basis. Redundant steps need to either be deleted or clarity provided on how the steps are different, or amended to clarify how they are different. Appropriate correction is still required.
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 JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711