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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/28/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4-10 and 12-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 8 and 9 include the limitations of “establishing a second session with a game server…and receiving a remaining portion of the game contents from the game server via the second session” and there is not written description support in Applicant’s PGPUB for these limitations. See, e.g., F9, S920 and 930 and p94-95, which do not disclose any “game content” being received by the “game client” in the “second session.”
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 1-2, 4-10 and 12-18 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.
Claims 1, 8 and 9 include the limitations of “when the installation of the game client is completed and receiving a remaining portion of the game contents of the game from the game server via the second session.” It is unclear how additional “game contents” may be received after the “installation of the game client [has already been] completed”, and that renders these claims indefinite.
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 1-2, 4-10, and 12-18 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 1-2, 4-10, and 12-18 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being and/or recite the rules of a game.
In regard to Claims 1 and 8-9, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or claiming the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming:
[a] method for [providing] a game […] the method comprising:
starting [provision] of the game […];
establishing a first session of the game when [provision] of a game […] has started, the first session being a temporary interface for allowing a user to play the game by receiving a portion of game contents of the game;
storing play information…via the first session, the play information…of a tutorial; and
updating, based on the [provision] of the game […] being completed, an account of the game […] by matching…using the user [identification] information of the play information acquired via the first session
wherein updating the account of the game […] comprises establishing a second session […] when the [provision] of the game […] is completed and receiving a remaining portion of the game contents of the game […] via the second session.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being and/or recite the rules of a game.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., embodying Applicant’s abstract idea in computer software that is provided/installed via a client/server model by a computing “apparatus”, employing user interfaces, a non-transitory computer-readable medium, a computer program, and/or an apparatus comprising a memory and a controller, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., embodying Applicant’s abstract idea in computer software that is provided/installed via a client/server model by a computing “apparatus”, employing user interfaces, a non-transitory computer-readable medium, a computer program, and/or an apparatus comprising a memory and a controller, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F1-2 in Applicant’s PGPUB and text regarding same.
Response to Arguments
Applicant argues on pages 8-9 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is unpersuasive. Applicant includes numerous limitations (“game server”, “game client”) that are not identified in the 101 rejection made supra as being part of the abstract idea that can be performed mentally. What is more, starting a game with one set of rules and/or game mechanics and then later adding rules and/or game mechanics does not require a computer. See, e.g.,
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https://en.wikipedia.org/wiki/Expansion_pack.
Applicant further argues on page 9 of its Remarks in this regard:
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Applicant’s arguments are unpersuasive. See the response already made supra in regard to a computer not being needed to perform Applicant’s abstract idea as a mental process. Also, Applicant is literally claiming the “rules of a game”, in terms of a game beings with certain game rules/content and then later are added more game rules/content.
Applicant argues on page 9 of its Remarks that it has claimed a “practical application” by “improving [the] user experience” and thereby claimed patent eligible subject matter under the Mayo test. Applicant’s argument is not persuasive. The Mayo test is a legal test and “practical application” is not part of the Mayo test but is, instead, a burden placed on examiners by the Office when they are making a 101 rejection employing the Mayo test. Simply invoking “practical application” but without citing specific legal authority in support of Applicant’s argument that it has claimed patent eligible subject matter under the two-part Mayo test, therefore, does not provide a proper basis or rationale as to why the 101 rejection being made is allegedly deficient. What is more, improving a user’s experience in regard to interacting with a computer program is not patent eligible subject matter under the Mayo test:
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USAA vs. PNC Bank, slip. op., page x.
Applicant further argues on page 10 of its Remarks in regard to the rejections made under 35 USC 101 that it has claimed “unconventional features” (emphasis original) and thereby claimed “significantly more” than an abstract idea. Applicant’s argument is not persuasive because to the extent Applicant claims elements in addition to its abstract idea, embodying Applicant’s claimed abstract idea as computer code executing on a processor is well-known, routine, and conventional, as evidenced by the limited disclosure in that regard in Applicant’s specification.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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