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
The examiner acknowledges applicant’s arguments in the Response dated January 12, 2026 directed to the Non-Final Office Action dated October 17, 2025. Claims 1-20 are pending in the application and subject to examination as part of this office action.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 is identified as “Previously Presented” although the claim includes amendments. Applicant is reminded to provide the proper claim status so as not to inadvertently overlook claims that have been amended. Appropriate correction is required.
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 1-20 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. Applicant has amended the claims to recites “a game controller” (claims 1-17 and 20), “controlling a graphical user interface (‘GUI’) to present, by a display of the XR device, the virtual element based on the assignment of the virtual element” (claim 1), “controlling a graphical user interface (‘GUI’) of an extended reality ("XR") device to present, by a display device” (claim 17), and “controlling a graphical user interface (‘GUI’) to present, by the display device, the virtual element within the virtual reality gaming environment based on whether the user intends the virtual element to be reassigned” (claim 20). In the response applicant states “Examples of support for the claim amendments can be found in the originally filed claims.” (Response [p. 8]). The examiner was unable to find any mention of a “game controller” in the specification. The examiner was also unable to find any mention of “a graphical user interface” or a “(‘GUI’)”, as well as displaying information based on an assignment.
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 an abstract idea without significantly more.
The determination of subject matter eligibility under 35 USC 101, relies on the Mayo/Alice two-step analysis.
In step 1 of the analysis, the claims are evaluated to determine whether they fall within one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter). In the present case, claims 1-14 are directed to a system (i.e., a machine), claims 15-19 are directed to a method (i.e., a process), and claim 20 is directed to an extended (“XR”) device (i.e., a machine). The claims are, therefore directed to one of the four statutory categories.
Under prong 1 of step 2A, the examiner is directed to determine whether the claim recites a judicial exception. The claims are compared to groupings of subject matter that have been found by courts as abstract ideas. These groupings include
(a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity—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); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Claim 1 is considered representative and recites (the abstract idea is underlined) a game controller for an extended reality ("XR") device configured to manage assignment of a virtual element associated with a virtual gaming environment displayed by the XR device, the game controller comprising:
a processor circuit; and
a memory coupled to the processor circuit, the memory comprising machine-readable instructions that, when executed by the processor circuit, cause the system game controller to perform operations comprising:
determining that the virtual element is assigned to a first entity;
determining that the virtual element has changed possession within the virtual gaming environment; and
responsive to determining that the virtual element has changed possession within the virtual gaming environment, determining whether to change the assignment of the virtual element; and
controlling a graphical user interface ("GUI") to present, by a display of the XR device, the virtual element based on the assignment of the virtual element.
The present claims are directed to managing assignment of a virtual element associated with a virtual gaming environment. These steps fall under the category of certain methods of organizing human activity. Specifically, they are directed to the sub-category of fundamental economic practices or principles because it involves the transfer of items having value. Additionally, it falls in the sub-category of commercial or legal interactions because it involves interactions between a first entity and a second entity involving the assignment and possession of a virtual element. The steps also fall in the category of managing personal behavior or relationships or interactions between people because the transfer of the virtual element takes place during the course of gameplay. Finally, the determining steps and displaying information are all steps that can be performed in the human mind, or by a human using a pen and paper. Therefore, the claims also fall into the category of mental processes. Accordingly, the claim recites an abstract idea.
Under prong 2 of Step 2A, the examiner considers whether additional elements integrate the abstract idea into a practical application. To do so, the examiner looks to the following exemplary considerations, looking at the additional elements individually and in combination:
• an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
• an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (not considered relevant to the present claims);
• an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
• an additional element effects a transformation or reduction of a particular article to a different state or thing; and
• an additional element applies or uses the judicial exception in some other 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.
The additional elements in the present claims are a processor circuit, a memory, a display, a device, processing circuitry, a game controller, an extended reality (“XR”) device, a display device. The additional elements do no integrate the judicial exception into a practical application. In particular, the additional elements do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. The additional elements do not implement a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim. The additional elements do not effect a transformation or reduction of a particular article to a different state or thing. The additional elements do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they does not impose any meaningful limits on practicing the abstract idea.
Under step 2B, the examiner evaluates whether the additional elements amount to significantly more than the judicial exception itself. The examiner considers if the additional elements:
• add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The present claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements in the present claims are well-known, routine, or convention as shown:
a game controller, a processor circuit, a memory, processing circuitry (Vagner, US 2015/0302482 A1, a general computer can include a memory, a processor, input/out components, and other components that are common for general computers, all of which are well known in the art [0099]), (Yoseloff et al., US 2007/0298854 A1, a main game controller motherboard may include a central microprocessor and related components well-known in the industry as computers using Intel brand Pentium.RTM. microprocessors and related memory or intelligence from any other manufacturing source [0091]) and
an extended reality (“XR”) device, a device (Collins, US 2008/0125218 A1, virtual reality devices or mechanisms are well known in the art [0004]);
a display, a display device (Tedesco et al., US 2008/0248865 A1, for gaming devices, common output devices include a cathode ray tube (CRT) monitor on a video poker machine, a bell on a gaming device (e.g., rings when a player wins), an LED display of a player's credit balance on a gaming device, an LCD display of a personal digital assistant (PDA) for displaying keno numbers [0120]).
Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
As a result, the claims are not directed to patent eligible subject matter.
Prior Art
There are currently no prior art rejections against claims 1-20.
Response to Arguments
Applicant's arguments filed January 12, 2026 have been fully considered but they are not persuasive.
Regarding the written description requirements, applicant states:
While the specification does not explicitly recite a "game controller" the specification does describe a central controller 40 of a gaming system 10 (see e.g., para. [0038]). Furthermore, the specification describes a video controller 30 of a gaming device 100 which controls display devices 116, 118, and 140 of the gaming device 100 (see e.g., para. [0058]). Paragraph [0082] of the present application states "certain gaming devices, such as electronic gaming machines (EGMs), mobile gaming devices, VR/AR headsets, etc." Accordingly, the central controller 40 and video controller 30 are both examples of a game controller for an XR device. (Response [p. 8])
Applicant identifies several components (i.e., central controller and video controller) that are examples of a game controller for an XR device. Consistent usage of the same terms between the specification and the claims is much preferred over creatively describing the same elements using different language. Using similar, yet slightly different claim language than is recited in the specification creates confusion. The term “game controller” is broader than the examples cited by applicant and therefore, the use of “game controller” is broader than is supported in the specification. The examiner would not object to claim language if “game controller” were amended to read “central controller” or a “video controller”. The examiner, therefore, maintains the rejection of the term “game controller”, as stated above.
Applicant also states:
While the specification does not explicitly recite a "graphical user interface," the specification describes various video/digital/XR displays and a person having ordinary skill in the art would understand that these displays are associated with a GUI. (Response [p. 9])
Consistent usage of the same terms between the specification and the claims is much preferred over creatively describing the same elements using different language. Using similar, yet slightly different claim language than is recited in the specification creates confusion. Applicant’s use of the term “GUI” rather than the language in the specification appears to be an attempt to fit the present claim language to other claim language that overcame rejections under 35 USC 101. If the specification referred to “various video/digital/XR displays”, then the particular displays should be referred to rather than using a broader term such as “GUI”. The examiner, therefore, maintains the rejection of the term “GUI”, as stated above.
Applicant also states:
While the specification does not explicitly recite "displaying information based on an assignment," the specification includes several examples describing how to virtual elements may be displayed in a virtual environment based on their assignment. For example, paragraphs [0091- 0093] and corresponding FIGS. 3A-B describe examples of "a view of a virtual table 310 in a virtual gaming environment 300 at two different points during a virtual game." (Response [p. 9])
Figures 3A-3B show game play at two different points during a virtual game. The specification states “Virtual cards 352, 354, 356 have been dealt (and potentially assigned) to the three players respectively. Furthermore, virtual cards 348 have been dealt (and potentially assigned) to the table.” (Specification [0093]). It is unclear how information is displayed based on an assignment since it is unclear how the figures show (or don’t show) assignment. The key legal requirement is that the amendment must find support in the original specification, drawings, or claims. It is best practice to use the original wording from the specification to avoid ambiguity. The examiner, therefore, maintains the rejection of the term “displaying information based on an assignment”, as stated above.
Regarding the rejections under 35 USC 101, applicant states:
As previously discussed, Claim 1 is not directed to a judicial exception, and accordingly satisfies the first prong. In particular, the term "certain methods of organizing human activity" grouping is specifically limited to "certain" methods, i.e., specific enumerated methods and not all methods of organizing human activity. These "certain" methods consist of fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people. Here, in contrast, Claim 1 is directed to, inter alia, a specialized game controller of an XR device that performs a detailed set of operations that, taken as a whole, describe a game mechanic for a virtual element associated with a virtual gaming environment displayed by the XR device. Thus, for at least this reason, Claim 1 is eligible under step 2A. (Response [p. 11])
The examiner does not agree with applicant’s interpretation of prong 1 step 2A. Applicant appears to distract from the limitations central to the present invention by focusing on a specialized game controller or an XR device. Applicant avoids addressing the limitations that were identified as abstract ideas.
Under prong 1 of step 2A, the examiner is directed to determine whether the claim recites a judicial exception. The claims are compared to groupings of subject matter that have been found by courts as abstract ideas. These groupings include
(a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity—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); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Claim 1 recites the following language that falls into the categories of certain methods of organizing human activity and mental processes:
determining that the virtual element is assigned to a first entity;
determining that the virtual element has changed possession within the virtual gaming environment; and
responsive to determining that the virtual element has changed possession within the virtual gaming environment, determining whether to change the assignment of the virtual element; and
controlling a graphical user interface ("GUI") to present, by a display of the XR device, the virtual element based on the assignment of the virtual element.
The present claims are directed to a system for managing assignment of a virtual element associated with a virtual gaming environment. These recited steps fall under the category of certain methods of organizing human activity. Specifically, they are directed to the sub-category of fundamental economic practices or principles because it involves the transfer of items having value. Additionally, it falls in the sub-category of commercial or legal interactions because it involves interactions between a first entity and a second entity involving the assignment and possession of a virtual element. The steps also fall in the category of managing personal behavior or relationships or interactions between people because the transfer of the virtual element takes place during the course of gameplay. Finally, the determining steps and displaying information are all steps that can be performed in the human mind, or by a human using a pen and paper. Therefore, the claims also fall into the category of mental processes. Accordingly, the claim recites an abstract idea.
The examiner maintains that the present claims recite an abstract idea under prong 1 of step 2A.
With respect to prong 2 of step 2A, applicant states:
In addition, Claim 1 recites a "game controller" for an "XR device" that "control[s] a Graphical User Interface ("GUI")". As a result, the claims are similar to the claims at issue in Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356 (Fed Cir 2018) (finding claims directed to an improved user interface for electronic devices to be patent eligible). Thus, for this additional reason, Claim 1 is eligible under step 2A, prong one. (Response [p. 11])
The examiner disagrees that the present claims are similar to the claims at issue in Core Wireless Licensing. The claims in Core Wireless Licensing disclose an application summary that can be reached directly from a menu, which the Court concluded were directed to an improved user interface for computing devices.
In the present claims, it is not clear what the claims improve. Figures 3A and 3B show gameplay at two different points during a virtual game from the perspective of one player (Specification [0091] and [Fig. 3A]-[Fig. 3B]). It is not clear how a player can identify what has or has not been assigned because “virtual cards 348 have been dealt (and potentially assigned) to the table”. There is no indication that the GUI has improved. Instead, the present claims appear to track assignments of gaming entities during gameplay. It is not clear how this an improvement to a GUI compared to how the assignment of virtual elements was previously carried out.
The examiner maintains that the additional elements do not integrate the abstract idea into a practical application under prong 2 of step 2A.
Next, applicant argues:
Because prong one of step 2A is satisfied, it is not necessary to analyze the claim under prong two of step 2A or step 2B. Nevertheless, to the extent that Claim 1 could be interpreted to recite an abstract idea, any such alleged abstract idea is integrated into a practical application, and therefore also independently satisfies prong two. In particular, Claim 1 is analogous to Claims 1 and 2 of Example 37 of the October Update of the 2019 PEG (which recite, inter alia, "receiving, via the GUI, a user selection"). Thus, for at least this additional reason, Claim 1 is eligible under prong two of step 2A. (Response [p. 11])
The examiner disagrees that the present claims are similar to claims 1 and 2 of Example 37. The examiner does not agree that the rearranging of icons based on use of each icon over time is similar to the present claims that describe the assignment of virtual elements. The examiner maintains that it is not clear how the GUI is improved by the applicant’s claims, as discussed above. The examiner maintains that the additional elements do not amount to significantly more than the judicial exception itself under step 2B.
Finally, applicant argues:
Under the Administrative Procedures Act (APA), "agency action, findings, and conclusions found to be [] arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law" are unlawful and must be set aside. 5 U.S.C. § 706(2)(A). Here, Applicant has amended the claims to specifically recite features that were previously found to be subject matter eligible, under the same regulatory standard (i.e., the 2019 Subject Matter Eligibility Guidelines), in the same area of technology, and in the same Art Unit. (Response [p. 12])
Applicant goes on to recite claim limitations from several issued patents arguing that the present claims recite features that were previously found to be subject matter eligible in the same area of technology and in the same art unit (Response [pp. 12-17]).
Patent eligibility (Alice/Mayo test) is determined on a case-by-case basis, and inconsistencies in past examination do not invalidate a current, correct rejection. The USPTO examines each application independently based on its own merits and claim language. The existence of similar, previously issued patents does not compel the USPTO to allow a new application that is found to be directed to an abstract idea.
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 WERNER G GARNER whose telephone number is (571)270-7147. The examiner can normally be reached M-F 7:30-15:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID LEWIS can be reached at (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WERNER G GARNER/ Primary Examiner, Art Unit 3715
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