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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/16/25 has 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 1-10, 12-14, 16, 18, and 21-25 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 1-10, 12-14, 16, 18, and 21-25 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 claims the rules of a game.
In regard to Claims 1, 14, and 18, 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in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or claim the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming: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 […] comprising:
Identifying […] one or more [codes] possessed by a user;
Identifying […] one or more characteristics of a portable object associated with the user;
receive an indication of an accomplishment of the user;
in response to receiving the indication of the accomplishment of the user, provide a notification that indicates to the user that the user is eligible to print one or more accessories based on the accomplishment of the user;
receive a user selection of a particular [code] of the one or more [code]s; and
in response to receiving the user selection, [providing an output regarding] the portable object with a modified appearance, wherein the [output] is based on the particular [code] of the one or more [code]s and the one or more characteristics of the portable object.
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 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., one or more processors and memory storing computer instructions; NFT’s; a portable object with an output device; a user device; a printer; a light emitter or speaker; an unmanned aerial vehicle; synching devices; and/or an accessory for the portable object 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., one or more processors and memory storing computer instructions; NFT’s; a portable object with an output device; a user device; a printer; a light emitter or speaker; an unmanned aerial vehicle; synching devices; and/or an accessory for the portable object, 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 in Applicant’s PGPUB and text regarding same; e.g., p16 regarding NFT’s; e.g., p30 regarding a printer; e.g., p52 regarding light emitter, speaker, and/or UAV; e.g., p24 regarding synching devices; and/or e.g., p30 regarding an accessory for the portable object.
Response to Arguments
Applicant argues in its Remarks on page 9-10 in regard to the rejections made under 35 USC 101
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Applicant’s arguments are not persuasive because NFT’s are not identified in the 101 rejection as being part of the alleged abstract idea that can be performed as a mental process and/or as the rules of a game but are, instead, identified as being claimed in addition to the mental process and addressed in the “practical application” and “significantly more” analyses.
Applicant argues that it has claimed a “practical application” 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. Applicant’s arguments in this regard also sound more in “utility” (“creat[ing a] more immersive, engaging experiences [sic]”) than in “subject matter eligibility”, however, these are separate burdens under 35 USC 101. What is more, increasing human happiness/performance (by, e.g., “creat[ing a] more immersive, engaging experiences [sic]”) does not render patent eligible subject matter under the Mayo test. See, e.g., the CAFC’s opinion in Trading Technologies v. IBG (2017-2257; 4/18/19), slip. op., page 9: “This invention makes the trader faster and more efficient, not the computer. This is not a technical solution to a technical problem”, emphasis original. Applicant’s similar arguments in regard to the “significantly more” analysis are likewise unpersuasive for the same reason.
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.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715