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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/19/2025 has been entered.
Response to Amendment
Examiner acknowledges receipt of amendment/arguments filed 08/19/2025. The arguments set forth are addressed herein below. Claims 1-7 and 9-13 remain pending, Claim 13 has been newly added, and no Claims have been currently canceled. Currently, Claims 1-7 and 9-11 have been amended. No new matter appears to have 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 1-7 and 9-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-7 and 9-13 is/are directed towards a statutory category they are directed to either a process, machine, manufacture, or composition of matter (Step 1, Yes).
Claim 10 recites, in part, the limitations of […] stores information indicating whether a user playing a game […] is a paid member who had paid a membership for a fixed period; and […]: […] give, to the paid member for the fixed period, one or more advantages to be used during game play; counts usage frequency of the one or more advantages used by the paid member during game play; calculates statistical information of the usage frequency that has been counted, the statistical information including at least one of a mean value, median value, and mode value of the one or more advantages used by paid members; and in response to the usage frequency within a partial or entire period of the fixed period being less than a predetermined value, […]: execute automatic use of the one or more advantages for the paid member, and […]: update a notification of usage frequency, in real time, depending on the usage frequency that has been counted; update a notification of automatic use of advantages, in real time, depending on the automatic use that has been executed: and update a notification of the statistical information, in real time, depending on the statistical information that has been calculated such that the paid member can recognize a difference between the usage frequency and the statistical information. These limitations, individually and in combination, describe or set forth the abstract idea in claim 10 (and similarly in claims 1 and 11). The Examiner notes that the specific limitations that describe or set forth the abstract idea in Step 2A Prong 1 can be identified either individually or in combination (see p. 54 of 2019 Revised Patent Subject Matter Eligibility Guidance).
Under the broadest reasonable interpretation, the claims recite limitations that can be practically performed in the human mind or by a human using pen and paper. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Thus, the claims recite a mental process.
The claims also recite limitations that are considered a fundamental economic principle or practice (e.g., relating to commerce and economy), commercial interactions, business relations, managing personal behavior or relationships or interactions between people. The Examiner notes that certain activity between a person and a computer may fall within the certain methods of organizing human activity grouping (see p. 5 of the October 2019 Update: Subject Matter Eligibility).
Therefore, the claims fall under the following enumerated groupings of abstract ideas: mental processes (e.g., concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)), and/or certain methods of organizing human activity (e.g., fundamental economic principles or practices (including hedging, insurance, mitigating risk), commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)) (Step 2A, Prong 1, Yes).
Claim 10 recites the additional element(s) of “An information processing device that causes a terminal device to execute a game, the information processing device comprising: a storage that stores […] the terminal device […]; and a controller that: instructs the terminal device […]; […]; sends, to the terminal device […]; and […], instructs the terminal device to: […], and modifies an activity notification screen of the terminal device to: […]; […]; and […]. These additional element(s) are recited at a high level of generality, and under the broadest reasonable interpretation are generic processor(s) and/or generic computer component(s) that perform generic computer functions. The generic processor and/or generic computer component limitation(s) are no more than mere instructions to apply the exception using a generic computer component. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional elements amount to adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computers and/or generic computer components does not integrate the judicial exception or amount to 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. Using a computer to generate data, compute a result, and return the result to a user amounts to electronic data query and retrieval—some of the most basic functions of a computer. “[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application or add significantly more. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (Step 2A Prong 2, No).
Additionally, the specification makes it clear that the apparatus for indicating paid membership, providing an advantage in a game, managing usage frequency of the advantage, and displaying information related to the usage frequency can be implemented on a generic computer.
[0029] Each terminal device 12 is an information processing device belonging to a user, and is an information processing device that provides a game to a user by executing the game program 14 received from the server device 10 after the program has been installed. Examples of these terminal devices 12 include video game machines, arcade game machines, mobile phones, smartphones, tablets, personal computers, and various other such devices.
As such, the information processing device, for implementing the abstract idea, may require no more than generic, conventional, and well-known computer devices such as a general purpose computer (as evidenced in Para. 29).
In Step 2B, the additional element(s) also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong 2. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. However, unless an Examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B (see 2019 Revised Patent Subject Matter Eligibility Guidance). Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application or amount to significantly more because they do not impose any meaningful limits on practicing the abstract idea (Step 2B, No).
Thus, Claim 10 is rejected as shown above. Additionally, Claims 1-7, 9, and 11-13 also recite limitations that are similar to the abstract ideas identified with respect to Claim 10 above (i.e., certain methods of organizing human activities and/or mental processes). Claims 1-7, 9, and 11-13 do not recite any additional elements other than those recited in Claim 10. Therefore, for the same reasons set forth with respect to Claim 10, Claims 1-7, 9, and 11-13 also do not integrate the judicial exception into a practical application or amount to significantly more.
Prior Art
The Examiner notes that after a thorough search on the corresponding claims, the claims, as amended, currently overcome prior art. The closest prior art found to date are the following:
Curtis et al. (US 9098387) discloses the concept of providing a customized user experience based on a spend frequency of a user in an online game.
Boyd, JR (US 2013/0325525 A1) discloses the concept of systems and methods for integration of systems associated with ticketing, advertising, membership, social networking, merchandizing, and/or similar commercially valuable functions.
Response to Arguments
Applicant's arguments filed 08/19/2025 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Regarding the rejections under 35 USC 101, Applicant states: “Above limitation (iii) is analogous to claim 1 of Example 37. For example, similarly to claim 1 of Example 37, the amended independent claims of the subject application recite a specific manner of modifying the activity notification screen and updating the notification to display the latest information on the usage frequency, the automatic use of advantages, and the statistical information. This provides a specific improvement over prior systems, resulting in an improved user interface for electronic devices.
Moreover, the amended independent claims recite calculating and displaying the
statistical information of actual usage frequency of the advantages used by paid members “such that the paid member can recognize a difference between the usage frequency [e.g., “Your number of uses”] and the statistical information [e.g., “Average number of uses’].” This enables the paid members to be aware of the latest advantage usage and utilize available advantages, thereby promoting game usage using the information processing device.”
In response, the Examiner respectfully disagrees. “Examiners are reminded that examples issued by the Office in conjunction with the Interim Eligibility Guidance are intended to show exemplary analyses only and should not be used as a basis for a subject matter eligibility rejection or relied upon in the same manner as a decision from a court” (see p. 2 of May 2016 Memorandum: Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection). Additionally, the facts of the application here do not uniquely match the facts at issue in claim 1 of Example 37. In fact, it appears the corresponding claims more uniquely match the facts at issue in claim 3 of Example 37. Wherein the information processing device is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing and displaying/outputting data (counting usage frequency, sending notification information, automatic usage of advantages, and notification to the user). Timely informing the user of information is not analogous to claim 1 of Example 37 nor is displaying/informing the user of information (i.e., updating a notification of usage frequency, automatic use of advantages, and the statistical information), an improvement to a user interface as displaying/outputting information is what computers do (i.e., a generic computer function). Thus, claims 1-7 and 9-13, as shown above, recite generic processor limitations with no more than mere instructions to apply the exception using a generic computer component. Accordingly, the above discussed elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
In light of the above analysis, the applicant’s arguments are not persuasive and the claimed invention fails to demonstrate patent-eligibility.
Conclusion
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/CHASE E LEICHLITER/Primary Examiner, Art Unit 3715