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 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 1-20 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, 13, and 18 recite a “plurality of playing pieces”, but then refer to “the plurality of playing pieces” in several different contexts. This is a similar, but separate, problem from the previous Office action. The problem was introduced as a result of claim amendments received 9/12/2025.
In particular, taking claim 1 as exemplary, the claim recites “a plurality of playing pieces” at line 6. The amendments to the claim then recite (1) “the plurality of playing pieces termed decoys” (claim 1, line 21), (2) “the plurality of pieces termed markers” (claim 1, line 23), and (3) “the other plurality of playing pieces” (claim 1, lines 23-24). There is insufficient antecedent basis for (1), (2), and (3) because the claim did not previously introduce the decoys, the markers, or the “other” plurality of playing pieces. Claims 13 and 18 contain similar language to claim 1 and are rejected for the same reasons. For these reasons, independent claims 1, 13, and 18 are rejected as indefinite. Dependent claims 2-12, 14-17, and 19-20 are rejected due to their dependency on claims 1 or 13. Appropriate correction is required.
Relatedly, and similar to the previous Office action, dependent claims 2, 6, 7, 15, and 16 refer to “the plurality of playing pieces.” There is insufficient antecedent basis for this limitation in the claims because it remains unclear as to which plurality of playing pieces is being discussed. Taking claim 2 as exemplary, it is unclear whether “the plurality of pieces” (claim 2, line 2) refers to “a plurality of playing pieces” (claim 1, line 6), “the plurality of playing pieces termed decoys” (claim 1, line 21), “the plurality of playing pieces termed markers” (claim 1, line 23), “the other plurality of playing pieces” (claim 1, lines 23-24), or some combination thereof. Appropriate correction is required.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claims fall into one of the four statutory categories of invention. The claimed invention is directed to a “game device,” which is construed as an apparatus. However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the “present invention relates generally to a military war game that combines the elements of skill and chance” and “is based on strategies to defeat the opposing player.” Spec. 1. Additionally, the invention “involves the use of status relating to overall status of pieces on the board, and the status of pieces as they enter the various sectors of the board.” Id. More particularly, representative claim 1 recites the following (with emphasis):
1. A military war game device combining elements of skill and chance comprising:
a horizontal playing surface divided into a plurality of sectors, with each sector being subdivided into a plurality of squares;
each of the plurality of squares being assigned a string of characters to determine the distance a plurality of playing pieces can move or attack while positioned on the square;
the plurality of squares being organized on the horizontal playing surface with a plurality of numbered rows and a plurality of numbered columns;
at least two sets of plurality of playing pieces, with each set being associated with each of the at least two players or team of players;
the set of plurality of playing pieces comprising at least one tank piece, at least one special forces piece, at least one soldier piece, at least one aircraft piece, at least one wall piece, and at least one valley piece;
a plurality of status cards designating a regular status value to the set of plurality of playing pieces associated with the player who drew the status card and designate a sector status value to each of the plurality of sectors on the horizontal playing surface;
a status dial representing the regular status value of the set of plurality of playing pieces for a player;
the plurality of playing pieces termed decoys moving around the horizontal playing surface undetected unless within certain areas;
the plurality of playing pieces termed markers attaching to at least one of the plurality of playing pieces to indicate an injury; and
at least one playing dice containing a plurality of sides, each with a different numerical value.
The underlined portions of representative claim 1 generally encompass the abstract idea, which is a set of rules to a game. It can be seen from the diagrammed language above that the rules to the game are used in conjunction with various physical items used to play the game, such as a board, game pieces, cards, and one or more dice (addressed further below). The dependent claims further define the abstract idea by introducing various rules to the game (e.g., assigning a monetary value to the playing pieces which may be purchased or exchanged by players, instructions to roll the one or more dice to randomly determine outcomes of the game, specifying a matrix of elements in a 9x12 configuration, requiring the decoys to be unattackable, numerical values representing status which may be added or removed, dictating the number of tiles a given piece may move in a turn, dictating when game pieces may attack each other, etc.). The abstract idea may be viewed, for example, as:
a fundamental economic practice (e.g., rules for conducting a game) as discussed in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014), In re Smith, 815 F.3d 816 (Fed. Cir. 2016), and In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018),
a method of managing a game similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (non-precedential);
a set of game rules similar to increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results, as discussed in Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342 (Fed. Cir. 2021); and/or
a method of organizing human activities (e.g., allowing a human player to play an award-providing game according to rules of the game and/or to purchase or exchange items) as discussed in Bilski v. Kappos, 561 U.S. 593 (2010) and Alice Corp. v. CLS Bank.
The recited steps of conducting a game in the instant claims relate to the “fundamental economic practice” of rules for conducting a game (see Smith, Marco Guldenaar, and Alice). When the player of the game fulfils certain obligations (e.g., attacking an opponent or randomly determining an outcome), he may be rewarded with one or more in-game items or abilities (e.g., an adjustment to status of certain game items, purchase or exchanging game items, etc.). Based on the reasoning in Smith and Marco Guldenaar, the recited steps of conducting a game in the instant claims relate to the “fundamental economic practice” of rules for conducting a game. The abstract idea is also similar to that of Planet Bingo, in which a method of managing a bingo game was found to be an abstract idea. Though the instant claims are not limited to bingo games, they encompass the management of games in a similar way. The abstract idea is also comparable to the game rules presented on gaming machines in Bot M8 LLC v. Sony Corp. of America, in which rewards could be increased or decreased based on aggregating previous game outcomes played on the gaming machines. The Bot M8 decision also found that such abstract idea is “more broadly the difficulty[] of a multiplayer game.” The modification of the status of game items claimed here is comparable to that of Bot M8 because the instant claims cause a modification of the underlying game that results in one or more awards or benefits (such as increased status or additional game pieces). Finally, the claims allow a player to win an award based on certain behaviors (e.g., outcomes by drawing a card, rolling dice, or spinning a wheel, etc.) and buying, selling, or exchanging obligations created during the game. Such transactions are akin to the sort of organizing of human activities discussed in Bilski (and shadow accounts in Alice).
Under prong 1, the above analysis demonstrates that the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity. Under prong 2, the instant claims do not integrate the abstract idea into a practical application because they merely provide instructions to implement an abstract idea, add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. While certain physical elements (i.e., elements that are not an abstract idea) are present in the claims, such features do not effect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. For example, the claims (1) do not improve the functioning of a computer or other technology, (2) are not applied with any particular machine (only generic physical components), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any 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(a)–(c), (e)–(h). Therefore, the claims are directed to the judicially recognized exception of an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The claims encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se: a horizontal playing surface, a plurality of playing pieces, a plurality of status cards, a status dial, and one or more dice. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
The above additional elements are well-understood, routine, and conventional in the art of board games. For instance, The Game of Life board game originated in the 1800’s and traces its modern version to the 1960’s. The Game of Life provides a board, which corresponds to the claimed horizontal playing surface, a plurality of game pieces, a spinner or teetotum spun by players to determine outcomes, which corresponds to the claimed status dial, a plurality of cards which correspond to claimed status cards. In another example, the game of Monopoly provides a board, plurality of game pieces, cards that confer status such as community, chance, and property cards, and a pair of dice. Similarly, battle board games such as Axis & Allies, include a board, game pieces, territories on which both players battle, a plurality of dice to generate random outcomes, and cards, with one or more of these aspects being used to confer status on one or more game pieces. Finally, US 5,388,837 to Hoffman (which appears to be commonly owned) teaches a board game with a plurality of rows and columns, along with various game pieces, a selector to determine if one soldier can kill, capture, or wound an opponent’s soldier, status power being conferred on game pieces, rolling of dice to determine outcomes, and a selector disk or selector dial providing status power on various game pieces. Each of these references predates the instant application by multiple decades and demonstrates the additional elements recited in the claims are well-understood, routine, and conventional.
As shown by the examples above, the additional elements recited by the claims are well-understood, routine, and conventional, which the courts have repeatedly found to be insufficient in saving a claim from abstraction. Such features also represent extra-solution activities and/or an attempt to apply the abstract idea in a field of use (e.g., on a war game) rather than any meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea.
Taking the claimed elements individually yields no difference from taking them in combination because each element simply performs its respective function as discussed above. The claims do not effect an improvement in any other technology or technical field because the improvements center on the abstract idea, specifically, a set of rules to a game. The additional features merely amount to an instruction to apply the abstract idea using generic, functional, and conventional components well-known in the art. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
Response to Arguments
Applicant's arguments filed 9/12/2025 have been fully considered but they are not persuasive.
Applicant addresses the grounds of rejection under 35 U.S.C. § 112(b) on page 13 of the Remarks by reference to the instant amendments. For reasons given above in the grounds of rejection, the claims remain indefinite because it cannot be determined which “plurality of playing pieces” are under discussion.
Applicant addresses the grounds of rejection under 35 U.S.C. § 101 on pages 13-17 of the Remarks section. First, Applicant asserts that the claimed invention is directed to a board game which is a physical device. Remarks, 14. The Examiner notes that the grounds of rejection explain that the claims encompass a “game device,” which is construed as an apparatus. As such, the parties appear to largely agree at Step 1 of the eligibility analysis.
Turning to Step 2 of the eligibility analysis, Applicant acknowledges that the Smith court found that conventional activities, such as rolling dice, shuffling and dealing cards, etc. are conventional activities that are insufficient to recite an inventive concept. Remarks, 15. Applicant contends that the “present invention is a multi-player game that rewards the player based on status,” but “unlike a conventional status-based game that can be won or lost by simply rolling a dice, the outcome of the present invention is determined by skill and strategy that is unique to the game.” Id. at 16. The Examiner respectfully disagrees with this line of reasoning.
Even assuming arguendo that the particular set of rules addressing status of game pieces may be construed as unconventional, those rules remain a part of the abstract idea. The courts have repeatedly found that a novel abstract idea remains an abstract idea that is ineligible for patenting. See, e.g., SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“The claims here are ineligible because their innovation is an innovation in ineligible subject matter.”). Because the rules relating to game pieces are part of the abstract idea, their alleged innovation is an innovation in ineligible subject matter.
For the above reasons, the claimed invention fails to demonstrate patentability.
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 WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715