DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 20, 2026, has been entered.
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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendment
Applicant’s amendment and remarks filed March 20, 2026, are responsive to the office action mailed January 7, 2026. Claims 1-9 and 11-15 were previously pending and claims 1 and 13-15 have been amended. Claims 1-9 and 11-15 are therefore currently pending and considered in this office action.
Pertaining to rejection under 35 USC § 102 and 103 in the previous office action
Claims 1-2 and 13-15 were rejected under 35 U.S.C. 102 as being anticipated by Maes et al. (Paper No. 20260104; Pub. No.: US 2002/0002502 A1) and claims 3-9 and 11-12 were rejected under 35 U.S.C. 103 as being unpatentable over Maes et al. (Paper No. 20260104; Pub. No.: US 2002/0002502 A1) in view of Froseth et al. (Paper No. 20250618; Patent No. US 8,249,946 B2). The amendment has overcome this rejection of these claims.
Response to Arguments
Pertaining to rejection under 35 USC § 101 in the previous office action
Applicant's arguments filed March 20, 2026, have been fully considered but they are not persuasive. Claims 1-9 and 11-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Applicant argues
“the claim integrates any recited abstract idea into a practical application because it recites an improvement in the functioning of the information provision device itself. Specifically, the claimed device improves how retail information systems operate by enabling real-time correlation of data from two distinct sources that were previously not integrated: (1) a wireless tag device storing individual property information unique to a specific physical product unit, and (2) a remote game play history database storing game elements associated with a customer.” Remarks p.10.
It is not apparent from the claims that they recite an improvement to any “information provision device.” This device appears only in preamble and as it comprises only what is recited in the claims, there is no improvement clearly recited, as noted in the rejection. The claims do not recite “real-time correlation of data.” They recite storing, accessing, and comparing data. The communication interface is treated in detail in the rejection. It is “configured to transmit” information, i.e., it is a transmission medium. The ”input/output interface” is similarly only “configured to read” information from a device. There is no correlation of any information recited in the claims. Information is simply presented to the customer with an indication of whether the information from each of the storage devices is the same. This is a mental process as explained in the rejection. The “wireless tag device” as recited appears to be any passive information storage tag containing identifying product information, such as an RFID tag on an item in a store. The argument directed to its particularity or uniqueness, and to the resulting practical application, is not supported by the claims.
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 1-9 and 11-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter) (step 1). If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (step 2A), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception (step 2B). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 189 L. Ed. 2d 296, 2014 U.S. LEXIS 4303, 110 U.S.P.Q.2D (BNA) 1976, 82 U.S.L.W. 4508, 24 Fla. L. Weekly Fed. S 870, 2014 WL 2765283 (U.S. 2014); MPEP 2106.
Step 1:
In the instant case claims 1-9 and 11-12 are directed to a machine, claims 13 and 15 are directed to processes, and claim 14 is directed to a manufacture. All claims are therefore within statutory categories. See MPEP 2106.03, Eligibility Step 1.
Step 2A, Prong 1:
These claims also recite, inter alia,
“communicating via a communication interface … the game play history information of a video game related to a subject product in a game play history database; transmitting via the communication interface a customer identifier and receiving, in response, the game play history information associated with the customer identifier; acquiring information relating to a customer including game play history information via the communication interface; extracting individual property information from … a subject individual via an input/output interface configured to read information carriers attached to individual products, wherein the subject individual is one individual of a subject product to which characteristics are individually given so that individual differences exist between individuals of a same item; determining characteristics to present for the subject individual by referring to the game play history information and the extracted individual property information, wherein the characteristics correspond to game elements associated with the customer's game play history; and presenting the customer with information relating to the characteristics of the subject individual including an indication of a match or mismatch between the characteristics of the subject individual and the characteristics related to the customer's game play determined from the game play history information, the indication enabling the customer to identify the subject individual as corresponding to the customer's game play history.” Claim 13.
An analysis of the above limitations, while reserving additional elements for consideration below, results in the conclusion that each limitation on its own recites an abstract idea and in combination all limitations merely recite a more detailed abstract idea. The recited abstract idea falls within the grouping of abstract ideas described as mental processes such as concepts performed in the human mind (including an observation, evaluation, judgment). See MPEP 2106.04(a); Eligibility Step 2A1. The claims must therefore be analyzed under the second prong of Eligibility Step 2 (Step 2A2; MPEP 2106.04(d)).
Step 2A, Prong 2:
In order to address prong 2 (MPEP 2106.04(d), Eligibility Step2A2) we must identify whether there are any additional elements beyond the abstract ideas and determine whether those additional elements (if there are any) integrate the abstract idea into a practical application. MPEP 2106.04(d), Eligibility Step 2A2. All claims include a customer information management device and a wireless tag device. Claim 13 includes no other additional elements. The “customer information management device” merely stores video game play history information in a game play history database, i.e., it stores information in a database, and it performs no active role in performing any particular function. The wireless tag device as recited also performs no other function than information storage. The information is used to identify a potentially unique item, however, as this only pertains to the information stored and the device performs no other function it does not integrate any abstract idea into a practical application. The “communication interface” is not recited as being part of any device or apparatus and so cannot be interpreted as anything but a passive medium through which communication occurs. It is not an “additional element” and in any case it is not recited as performing any particular active function. The entity actually performing the steps is unidentified. Claim 14 also includes “a non-transitory computer-readable program storing computer-readable instructions thereon which, when executed by a computer, cause the computer to perform the method” and claims 1 and 15 include “processing circuitry.” Claim 14 merely indicates in preamble that a program on a medium broadly and generally causes the performance of the method, and in claims 1 and 15 the “processing circuitry” is similarly only “configured to” broadly and generally perform the method.
These additional elements as indicated above fail to integrate the judicial exception into a practical application because the substantive limitations claimed are entirely a recitation of abstract ideas and largely passive, tangential, or broadly recited generic devices. The substantive process is recited only by descriptions of intended results of abstractly recited steps. See MPEP 2106.05.
If the disclosure describes any improvements to the functioning of a computer or to any other technology or technical field this improvement would need to be identifiable as the subject matter appearing in the claims. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies technical improvements realized by the claim over the prior art. The disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. MPEP 2106.05(a).
Step 2B:
Although there are no additional elements to integrate the abstract idea into a practical application the claims could still be eligible if they recite an inventive concept (“significantly more” than the judicial exception). MPEP 2106.05, Eligibility Step 2B. These claims do not amount to significantly more than a judicial exception because they fail to present a technical solution to a technical problem created by the use of surrounding technology. There is insufficient indication of surrounding technology to even establish that a technical problem might exist therein. Limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself. See Ret. Capital Access Mgmt. Co. v. U.S. Bancorp, 611 Fed. Appx. 1007, 2015 U.S. App. LEXIS 14351 (Fed. Cir. 2015) (“It may be very clever; it may be very useful in a commercial context, but they are still abstract ideas,” said Circuit Judge Alan Lourie.). MPEP 2106.05(h).
Finally, it is reiterated that dependent claims 2-9 and 11-12 fail to contribute any additional elements and do not add "significantly more" to establish eligibility because they merely recite additional abstract ideas that further describe the information involved in the abstract idea. A more detailed abstract idea is still abstract. PricePlay.com, Inc. v. AOL Adver., Inc., 627 Fed. Appx. 925, 2016 U.S. App. LEXIS 611, 2016 WL 80002 (Fed. Cir. Jan. 7, 2016) (in addressing a bundle of abstract ideas stacked together during oral argument, U.S. Circuit Judge Kimberly Moore said, "All of these ideas are abstract…. It’s like you want a patent because you combined two abstract ideas and say two is better than one.").
All of the above leads to the conclusion that additional claim elements do not provide meaningful limitations to transform the claimed subject matter into significantly more than an abstract idea. MPEP 2106.05; Eligibility Step 2B. As a result the claims are rejected under 35 USC 101 as being directed to non-statutory subject matter because they recite an abstract idea without being directed to a practical application, and they do not amount to significantly more than the abstract idea. MPEP 2106.05, supra..
The preceding analysis applies to all statutory categories of invention. Accordingly, claims 1-9 and 11-15 are rejected as ineligible for patenting under 35 USC 101 based upon the same analysis.
Potentially Allowable Subject Matter
Claims 1-9 and 11-15 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101 set forth in this Office action.
The following is a statement of reasons for the indication of potentially allowable subject matter:
Independent claim 1 recites a device comprising inter alia
“a communication interface configured to communicate with a customer information management device that stores game play history information of a video game related to a subject product in a game play history database, the communication interface configured to transmit a customer identifier and receive, in response, the game play history information associated with the customer identifier; an input/output interface configured to read a wireless tag device attached to an individual product, wherein the wireless tag device stores individual property information unique to that individual product; … extract the individual property information from the wireless tag device of a subject individual via the input/output interface, wherein the subject individual is one individual of a subject product to which characteristics are individually given so that individual differences exist between individuals of a same item, determine characteristics for a subject individual by referring to the game play history information and the extracted individual property information, wherein the characteristics correspond to game elements associated with the customer's game play history, and present the customer with information relating to the characteristics of the subject individual including an indication a match or mismatch between the characteristics of the subject individual and the characteristics related relate to the customer's game play determined from the game play history information, the indication enabling the customer to identify the subject individual as corresponding to the customer's game play history.”
The most closely applicable prior art has been previously introduced and distinguished by amendment and argument during the course of prosecution. Although the previously relied upon reference Maes et al. (Paper No. 20260104; Pub. No.: US 2002/0002502 A1) teaches requesting and receiving history information of interactions with items associated with a customer it does not disclose at least the presently amended features “the communication interface configured to transmit a customer identifier and receive, in response, the game play history information associated with the customer identifier.” Maes also fails to disclose at least
“an input/output interface configured to read a wireless tag device attached to an individual product, wherein the wireless tag device stores individual property information unique to that individual product; and… extract the individual property information from the wireless tag device of a subject individual via the input/output interface, … and present the customer with information relating to the characteristics of the subject individual including an indication (of) a match or mismatch between the characteristics of the subject individual and the characteristics related to the customer's game play determined from the game play history information, the indication enabling the customer to identify the subject individual as corresponding to the customer's game play history.” Claim 1.
Maes therefore does not alone or in combination with any other known references, teach, suggest, anticipate, disclose, nor otherwise fairly and reasonably render obvious the totality of limitations presently claimed in combination as recited above.
The most closely applicable prior art not previously discussed is IWABUCHI (Pub. No.: US 2015/0302509 A1). IWABUCHI teaches identifying a customer and presenting products to the customer based on previous purchases and further discloses
“the communication interface configured to transmit a customer identifier and receive, in response, the game play history information associated with the customer identifier; … an input/output interface configured to read a wireless tag device attached to an individual product, wherein the wireless tag device stores individual property information unique to that individual product”. Claim 1.
IWABUCHI however does not disclose at least
“present the customer with information relating to the characteristics of the subject individual including an indication (of) a match or mismatch between the characteristics of the subject individual and the characteristics related to the customer's game play determined from the game play history information, the indication enabling the customer to identify the subject individual as corresponding to the customer's game play history.” Ibid.
IWABUCHI therefore does not alone or in combination with any other known references, teach, suggest, anticipate, disclose, nor otherwise fairly and reasonably render obvious the totality of limitations presently claimed in combination as recited above.
In light of the above and examiner’s overall review of the prior art it is examiner’s conclusion that the body of prior art currently known to the examiner does not alone or in combination disclose, anticipate, or otherwise fairly and reasonably render obvious the above noted features of the present method. It should be noted that this conclusion is based on the presence of all claimed features as they operate in conjunction rather than solely on any one feature or isolated group of features.
The most relevant applicable and nonduplicative prior art having been previously introduced, addressed, and distinguished, by amendment and argument during the course of prosecution, it is examiner’s position that together with the above the record is clear with regard to the reasons for allowability of the claimed invention over the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
● Gangurde, S., Non-patent literature identified as item U on attached form PTO-892: teaches an approach to apply a multi-attribute decision making (MADM) method to evaluate product design alternatives. Different customers may have different choices for the particular product out of set of multi attribute alternatives. MADM methods provide more scientific way to evaluate and select the best product design alternative. Alternatives are ranked on the basis of composite score ‘Product Design Selection Index’, PDSI (Pi).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM LEVINE whose telephone number is (571)272-8122. The examiner can normally be reached Monday - Thursday 9am-7:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at 571.272.6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM L LEVINE/Primary Examiner, Art Unit 3689 May 16, 2026
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