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 Arguments
Applicant's arguments filed 11/06/2025 have been fully considered but they are not persuasive.
Applicant’s arguments are non-responsive to the 35 U.S.C. § 112 rejection made in the Non-Final Rejection, see p. 2. The 35 U.S.C. § 112(b) rejection for language that makes it unclear whether certain limitations are part of the claimed invention in claim 1 is maintained.
With respect to 35 U.S.C. § 101, Applicant’s allegations, see p. 2, that the claimed system/platform “solve specific technological problems in the field of networked gaming and brand engagement” as supported by the cited specification are not found to be persuasive. Linking existing prior art computing devices through a generic, existing prior art cloud network does not represent a solution to any existing technological problem but instead represents generic components and technologies being used in their routine and conventional capacities in the art. The claimed hardware components are recited at a high level of generality and merely outline a generic technological field in which to apply the abstract promotional/sales practices through routine and conventional use of generic hardware, and using some implied software of unclaimed programming. “[T]he invocation of ‘already-available computers that are not themselves plausibly asserted to be an advance … amounts to a recitation of what is well-understood, routine, and conventional.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020). And “simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) “The receiving of input and storing steps represent the use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016 attributing particular generic computer functions for computer hardware to perform from well-known, routine, conventional functions performed by such hardware has been held to be insufficient to show an improvement to technology, Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264, 120 USPQ2d 1201, 1208 (Fed. Cir. 2016).
Applicant’s arguments that the claimed features integrate abstract concepts into a practical application or inventive concept are similarly found to be unpersuasive. The hardware environments of the claims are generic, existing prior art environments which cannot transform an abstract idea into significantly more, as described prior. Unlike in McRo v. Bandai, the instant claims do not recite specific computer rules for automating a human process in a way that functionally, tangibly improves the computer. The pending claims do not recite rules at all – they are drafted as intended uses and desired outcomes of operating generic hardware as instructed by some software of unspecified programming.
In other words, the instant claims are drafted as a list of desired results obtainable from operating generic computers, without any description in the claims as to how the desired results are achieved. This is the very scenario described in Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024) wherein "the claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves these results. Claims of this nature are almost always found to be ineligible for patenting under Section 101."
Examples of result-oriented claim language in the instant application includes “A GO4 software app … operating … wherein the app facilitates…” certain functions, “…the gaming apps enable pairing…”, “the PBGP allows players to…” perform functions. The claims lack any technical specifications of hardware or software attributed to the "mobile devices” or other computers that are necessary to accomplish the claimed results. The claims also lack specifying by what method or process ("how") these results are achieved. Courts have repeatedly emphasized that claims must describe the method or process used to accomplish the claimed results rather than simply claiming outcomes themselves.
Several Federal Circuit court cases are supportive of a conclusion that claims directed to results without a concrete machine or concrete method are ineligible. These include:
Interval Licensing LLC v. AOL Inc. (896 F.3d 1335): The court found that claims to a computer software "attention manager" that displays content on unused portions of a screen were result-oriented and invalid under 35 U.S.C. § 101 because they did not recite a specific technological method for achieving the claimed result.
Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024): The court held that claims must not only describe desired outcomes but also include a specific process or machinery for achieving that result.
In re Killian, 45 F.4th 1373 (Fed. Cir. 2022): The court reaffirmed that claims simply reciting a desired result without specifying how to achieve it are directed to an abstract idea and are ineligible under 35 U.S.C. § 101. The claims at issue were directed to analyzing data from two databases. In the Step Two of the Alice test, the court determined that there was no inventive concept because the additional elements merely involved generic and routine data gathering and analysis steps that could have been performed with or without a computer.
Broadband iTV, Inc. v. Amazon.com, Inc., No. 2023-1107, 2024 WL 4018253, *4 (Fed. Cir. Sept. 3, 2024). In the first step of the Alice test, the Federal Circuit affirmed that in the '026 patent family, the District Court, “correctly determined that receiving metadata and organizing the display of video content based on that metadata is abstract.”, likening the claimed subject matter to receiving and displaying information, and organizing it based on classifications. The Federal Circuit observed that claiming a user interface does not “automatically” provide patentable subject matter.
In the second step of the Alice test, the Federal Circuit affirmed that the District Court in the '026 patent family correctly “determined nothing transforms the claims into something other than the abstract idea because ... the claims ‘recite only generic and conventional components, arranged in a conventional manner, and provide only conventional functionalities.’” The Federal Circuit applied the same test to the '825 patent and held that “of the ’825 patent is directed to the abstract idea of collecting and using viewing history data to recommend categories of video content.” and wherein it was concluded that “the ’825 patent claims do not claim a technological solution to a technological problem.”
In Alice Step 2, the Federal Circuit agreed with the District Court's determination that generating and arranging displays based on relevance was merely a "feature of the abstract idea of recommending categories" and that "the idea of creating categories is a longstanding human practice that does not transform the claims," considering that the claim "does not describe how the desired end result is achieved."
The preceding court cases serve as additional evidence that the instant claims, that are drafted using result-oriented language devoid of any specificity as to what particular machine or method are used to accomplish the claimed results and wherein the results themselves are directed to abstract ideas, are directed to ineligible subject matter.
It is maintained that the pending claims are ineligible under 35 U.S.C. § 101 as being directed to certain methods for organizing human activity without significantly more.
With respect to the prior art: For convenience, Applicant’s arguments A through D will be addressed in the order they were presented.
Applicant’s arguments presented under heading A), that Washington allegedly does not teach arcades or kiosks, mobile sync, or sponsor facing web portal, are not found to be persuasive for the following reasons:
The word “kiosk” and phrase “mobile device synchronization” are not used in the pending claims and as such the prior art need not include these limitations. And regarding “arcade games”, this preamble-only limitation in claim 1 does not include an express description of any arcade game hardware or particular programming related to arcade game software integration with the instant invention, and as such is seen as a field of use that is non-limiting.
Although claims are read in light of the specification during examination, limitations of the specification that have no express basis in the claims are not read into the claims. MPEP § 2111 pertains to the examination of claims in terms of their broadest reasonable interpretation. Here the MPEP cites In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow."); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) The court agreed that the claim was not limited to using a machine to carry out the process since the claim did not explicitly set forth the machine. The court explained that "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim.). See also In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997) (The court held that the USPTO is not required, in the course of prosecution, to interpret claims in applications in the same manner as a court would interpret claims in an infringement suit. Rather, the "PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification.")
The facts of In re Prater are relevant to a finding that pending claim 1 does not describe any kiosk or arcade hardware or mobile device synchronization hardware or specific software instructions and as such, any references in the specification to further details of these features does not narrow the scope of claims 1-9.
Further regarding a web portal, the only mention of this feature is in claim 1, which states that some “web portal or app” having unspecified hardware or software enables brands to create or customize game promotions. As an initial matter, reciting a group “X or Y” only requires one of the limitations to be found in the prior art to meet the limitation. Any software instructions that are capable of meeting the claimed functions of promotion creation or management would meet this limitation. It is additionally noted that, because claim 2 and its parent claim 1 are apparatus claims, enumerated or named features such as “web portal” or “app”, lacking any structural specifications in the claim, do not distinguish over any prior art software platform that is capable of performing the same features. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) As discussed in the Non-Final Rejection, see p. 19, Burgin teaches the creation and management of promotions, see [0266], and as such meets a broadest reasonable interpretation of at least an app that performs these functions.
And the phrase “arcade games” is only found in the preamble of claim 1, where it is used in the clause “platform … for multiple gaming types, including … arcade games”. This clause does not positively claim arcade games or any arcade hardware devices, but merely expresses one of various intended fields of use of the software of the invention and does not breathe life into the claimed invention. For more information regarding the effect of a preamble on the scope of the claims, refer to MPEP § 2111.02. Note in particular, in section II, “During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim.” Because pending claim 1 is drafted as a list of functions attributable to a software application, and “for arcade games” does not include any description of hardware lacking in the prior art, what fields of use the claimed software is intended to have will not result in a structural difference in the claimed software itself.
Applicant’s arguments presented under heading B), that Burgin allegedly lacks a claimed pay-per-engagement mechanism, are not found to be persuasive for the following reasons:
The phrase “real-time engagement-based charging model…” argued by Applicant, see p. 4 of the Remarks, is not found in the claims. As explained prior and supported by citations of MPEP § 2111, the limitations of the specification are not read into the claim to narrow the scope of claims that do not explicitly set forth such limitations. This is especially true for the pending claims, which are apparatus claims and must distinguish over the prior art in terms of structure.
Applicant’s arguments presented under heading C), that Coulter does not suggest “Applicant’s AI Implementation” are not found to be persuasive for the following reasons:
Claim 7 recites a field of use of some unspecified type of AI and does not, for example, identify any particular data model that is being used, how it is being trained, or the like. Mention of AI in the pending claims is limited to what is seen in claim 7 – “the collection of analytic data and trend analysis using artificial intelligence (AI)”. The subsequent limitations describing what uses are enabled by the claimed collection and analysis are seen as a list of intended uses that do not further limit apparatus claim 7 and its parent claim 1. A broadest reasonable interpretation of claim 7 merely requires the prior art to collect and analyzed data and trends, which is found in Coulter in [0042], see p. 21 of the Non-Final Rejection.
The pending claims merely reciting performing data analysis “using AI” of some unspecified, generic type is noteworthy in that it is also a reason why no practical application of abstract ideas or an inventive concept are found when examining the claims for 35 U.S.C. § 101 compliance. The Court of Appeals for the Federal Circuit recently found, in the suits against Fox Corp. Fox Broadcasting Company, LLC and Fox Sports Productions, LLC, that when claims merely use machine learning to claim an abstract idea itself by “using a generic machine learning technique in a particular environment,” this is a failure to transform the claimed abstract idea into “significantly more” – there is “no inventive concept.” The CAFC opinion concluded with a note that “[m]achine learning is a burgeoning and increasingly important field and may lead to patent-eligible improvements in technology.” The court explained that its instant opinion held “only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.” The pending claim is an example of applying generic machine learning to a data environment. And because no particular machine learning models are claimed, none can be seen as improved.
Applicant’s arguments presented under heading D), regarding secondary considerations for non-obviousness, are not found to be persuasive for the following reasons:
The advantages alleged by Applicant, including measuring ROI or being ideal for distribution or purchases, are not concretely evident in the claims.
For these reasons, the prior art rejections of claims 1-9 previously presented in the Non-Final Rejection are maintained.
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 1-9 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.
Regarding claim 1, the phrase "optional block chain operations" renders the claim indefinite because it is unclear whether the limitation(s) designated as optional are part of the claimed invention. See MPEP § 2173.05(d).
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. The pending claims seek coverage for merchants promoting their brands to consumers through tournaments and sweepstakes and performing accounting, administrative and commercial activities to track and manage merchant and consumer progress in these promotions. These are activities explicitly mentioned as abstract ideas in the MPEP based on precedential court decisions. MPEP § 2106.04(a) identifies enumerated groupings of abstract ideas as including “Certain methods of organizing human activity” including “fundamental economic principles or practices” and “commercial or legal interactions (including … advertising, marketing or sales activities or behaviors”). Here, the MPEP cites In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, 1038 (Fed. Cir. 2009); where the court determined that “structuring a sales force or marketing company, which pertains to marketing or sales activities or behaviors” was directed to abstract commercial interactions. The MPEP also cites Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014) in which the courts found claims reciting methods for advertising in exchange for digital media was “an abstraction—an idea, having no particular concrete or tangible form" and thus was directed to an abstract idea, which the court described as "using advertising as an exchange or currency."
The same conclusion is reached that the pending-claimed promoting brands to consumers and conducting back-end administrative, accounting and commercial activities are fundamental human practices having no concrete or tangible form. These fundamental advertising, marketing, sales and accounting practices were known throughout history to be done by human beings, long predating digital computing. The pending claims merely recite intended results of operating generic computers to accomplish these fundamental human practices. The pending claims do not recite any particular programming steps or nonobvious computing hardware that could be seen as any attempt(s) to recite a practical application or provide an inventive concept. The pending claims do not reveal any improvements to the functions of computers per se or to a technological field. Any details of brand promotion, administrating, or accounting present in the claims, are rooted in human behavior and human experiences, the details of which are not equivalent to any examples the courts have found to represent significantly more.
Regarding computerized implementation of advertising, marketing, sales, accounting, and commercial activities using some “GO4 app” that is merely recited functionally, in terms of desired end results of its use but that is not claimed as requiring any particular nonobvious hardware and/or software, MPEP § 2106.04(a)(2)(II) explains that “the sub-groupings [of organized human activity] encompass … activity of a single person (for example, a person following a set of instructions or a person signing a contract online) … and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping.” The pending claim to fundamental commercial and financial activities, accomplished through activities with a computer, is a covered method organizing human activity.
The determination that the instant claims are directed to abstract ideas can be validated by considering four “well settled indicators of abstractness” articulated by the court in Beteiro v. DraftKings, No. 2022-2275 (Fed. Cir. June 21, 2024). In this decision to affirm the district court's ruling that the asserted claims are patent ineligible, the Federal circuit references four "well-settled indicators of abstractness":
1. The claims recite generic steps, such as "detecting information," "generating and transmitting a notification based on the information," "receiving a message," "determining ... and processing information," which are of a kind frequently held to be abstract.
2. The claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves those results.
3. The claims are analogous to those deemed abstract in Federal Circuit precedents.
4. The claims can be persuasively analogized to longstanding "real-world" ("brick and mortar") activities.
The pending claims include all of these indicators. They recite generic steps such as “enable pairing”, “enabling management, configuration and communication,” “allows players to receive online credits … and be rewarded”, “allowing sponsors to be charged”. The claims are drafted entirely using result-focused functional language. There are no technical specifications attributed to any of the hardware or software or any details of how any of these desired end results are to be accomplished.
The precedents to the pending claims In re Ferguson and Ultramercial v. Hulu. And the claims are analogous to longstanding real-world promotional, administrative and accounting practices that merchants carry out interacting with consumers - a “fundamental economic practice long prevalent in our system of commerce” and that is a “building block of our modern economy” as in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 219-20, 110 USPQ2d 1981-82 (2014). And "The category of abstract ideas embraces ‘fundamental economic practice[s] long prevalent in our system of commerce,’ … including ‘longstanding commercial practice[s]’" Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313, 120 USPQ2d 1353, 1356 (Fed. Cir. 2016).
As an initial matter of claim interpretation, it is noted that the preamble of claim 1 comprises a functional statement that, in the context of an apparatus claim, is not awarded patentable weight: “wherein the PBGP incentivizes customer awareness and enhances merchant visibility…”. There is nothing in the body of the claim that breathes life into these intended effects of incentivizing or enhancing. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
The following limitations of claim 1 are directed to judicial exceptions:
facilitates account information, settings, creation of events, and issuance of rewards; These are fundamental sales/marketing/commercial/financial activities long known to be conducted by human beings and are examples of Certain Methods of Organizing Human Activity.
allows players to receive online game credits to enter brand game promotions … while allowing sponsors to be charged when a player engages their game promotion or purchases their product
These statements of intended use describe fundamental marketing and accounting practices that are also grouped as Certain Methods of Organizing human activity.
The following limitations of claim 1 represents additional elements:
gamification platform … including mobile devices, consoles, arcade games, and home computers; a GO4 software app on a computer-readable non-transitory storage media operating on a mobile device;
These hardware components are recited at a high level of generality and merely outline a generic technological field in which to apply the abstract advertising, marketing, sales, and accounting practices the claims through routine and conventional use of generic hardware, and using some implied software of unclaimed programming. The instant disclosure’s silence as to any of the claimed hardware having any nonobvious structural or functional specifications or requirements or being used to solve any stated problems existing in computers per se or to provide any improvements to computers per se supports a finding that the hardware additional elements of the claimed apparatus comprises merely generic components and technologies used in their routine and conventional capacities in the art. “[T]he invocation of ‘already-available computers that are not themselves plausibly asserted to be an advance … amounts to a recitation of what is well-understood, routine, and conventional.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020). And “simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)
the app facilitates account information, settings … enables pairing, event activities, and data transmission; administrative functions, gaming app configurations, event setups, library files, optional bock chain operations, notifications;
Limiting the application of an abstract idea to a particular type of data has been held to be insignificant extra solution activity. See, e.g., Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (limiting use of abstract idea to the Internet); Electric Power, 830 F.3d at 1354, 119 USPQ2d at 1742 (limiting application of abstract idea to power grid data); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017) (limiting use of abstract idea to use with XML tags).
Additionally, “The receiving of input and storing steps represent the use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016 attributing particular generic computer functions for computer hardware to perform from well-known, routine, conventional functions performed by such hardware has been held to be insufficient to show an improvement to technology, Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264, 120 USPQ2d 1201, 1208 (Fed. Cir. 2016).
Dependent claims 2-9 recite additional details of generic computer implementation (a web portal, a database of offers) and details of fundamental advertising, sales, marketing, and accounting activities (the use of currencies, advertising during tournaments, monitoring games for revenue and promotion results, providing discount coupons, sending advertisements through email or text, providing “turnkey” advertising solutions). Such further details of categories of activities recognized by the courts to be abstract ideas cannot impart subject matter eligibility. Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)), if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."); Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)), “the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.” And Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) notes that "a claim for a new abstract idea is still an abstract idea.”
Dependent claim 7 recites an intended application of AI without any particulars thereof, or any evidence that AI is an integral part of the practice of the invention. Adding AI onto the invention without claiming any significance of its addition is seen as insignificant post-solution activity. As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). In Flook, the Court reasoned that “[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.”
Additionally, the recent Court of Appeals for the Federal Circuit recently found, in the suits against Fox Corp. Fox Broadcasting Company, LLC and Fox Sports Productions, LLC, that when claims merely use machine learning to claim an abstract idea itself by “using a generic machine learning technique in a particular environment,” this is a failure to transform the claimed abstract idea into “significantly more” – there is “no inventive concept.” The CAFC opinion concluded with a note that “[m]achine learning is a burgeoning and increasingly important field and may lead to patent-eligible improvements in technology.” The court explained that its instant opinion held “only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.”
Claims 1-9 fail to integrate the judicial exception into a practical application for the following reasons:
The judicial exception of claims 1-9, per the guidance outlined in MPEP 2106.04(d), are not integrated into a practical application because the claims as presented merely describe intended outcomes of operating generic computers to practice advertising, marketing, sales and accounting activities.
In MPEP § 2106.05(f), it explained that, “The recitation of claim limitations that attempt to cover any solution to an identified problem with no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it"”. This is the instant scenario - the pending claims do not include any description of mechanisms for accomplishing results. Instead, the claims use some unspecified computer and unspecified programming to conduct generic steps of facilitating or enabling promotional activities. The claims seek to cover any system for applying the abstract activities.
In the field of the instant invention (conducting marketing, sales and accounting activities using existing computer technology), an improvement would have to be found to an inherently technical problem existing in computers and would have to reveal how the computer(s) themselves are improved as a direct result of the claimed invention. And the details of the improvement to computers cannot be found in the details of the abstract ideas themselves. Genetic Techs v Merial, an inventive concept "cannot be furnished by the unpatentable law of nature" itself. A hypothetical improvement in a sponsor’s promotion management experience while using some generic computer is not an improvement to computers themselves or to computer technology, but rather an improvement to humans.
The court ruled in International Business Machines Corporation v. Zillow Group, Inc., (CAFC, 17 October, 2022) (emphasis added), that "improving a user's experience while using a computer application is not, without more, sufficient to render the claims" patent-eligible at step one. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
“A patent-eligible technical improvement requires solving an actual problem.” McRO, 837 F.3d at 1314 (a claim directed to automating part of a 3D facial-expression animation method focused on a specific asserted improvement where the prior-art animator performed the task manually); Data Engine Techs., 906 F.3d at 1007–08 (a claimed method was not abstract where it “provide[d] a specific solution to then-existing technological problems in . . . prior art electronic spreadsheets,” and those pre-existing problems — that users of three-dimensional spreadsheets had to “master many complex and arbitrary operations” — were taught by the specification); cf. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1347 (Fed. Cir. 2018) (rejecting an asserted improvement where “Interval Licensing [did] not allege that computer display devices were previously unable to display information from more than one source”). Neither the claims nor the specification of the instant invention identifies any existing problems that are inherently technical in nature that are being solved in specific ways by the steps of the claims. Instead, the application of marketing, sales, and accounting practices using generic computing components in routine and conventional ways, at best, could be seen as improving a user’s experience while using the claimed computer application, absent any additional elements that could render the claims patent eligible.
MPEP 2106.05(a) provides examples that the courts have indicated may show an improvement in computer functionality or show an improvement in existing technology. Here it is noted that:
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.
And MPEP 2106.05(f) describes that:
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone);
None of the examples provided by the courts for improving computer functionality are found in the instant claims. The instant claims are similar to examples the courts have not found to be enough to qualify as “significantly more”, including mere instructions to implement an abstract idea on a computer e.g., a limitation indicating that a particular function such as creating and maintaining electronic records for applying a commonplace business practice is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984. The claims invoke computers merely as a tool to apply the claimed abstract ideas for organized human activity.
The claims fail to recite details regarding how a computer aids the method or the significance of a computer to the performance of the method. No particular machine or manufacture is claimed that is used to implement the abstract idea or that is/are integral to the claim. There is no recited effectuation of a transformation or reduction of a particular article to a different state or thing. There is no application of the abstract ideas in any other meaningful way beyond generally linking the use of the abstract idea to a technological environment such that the claim as a whole is more than a drafting effort designed to monopolize the exception. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). 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, and cannot integrate a judicial exception into a practical application. Additionally, “If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1290-1291 (Fed. Cir. 2018).
Furthermore, none of the additional elements identified above are sufficient to amount to an inventive concept(s) because none of the additional elements reveal any specific improvements to the function of any computer(s) or to a field of technology, no particular machine or manufacture is claimed that is used to implement the abstract idea or that is/are integral to the claim, there is no recited effectuation of a transformation or reduction of a particular article to a different state or thing, and there is no application of the abstract ideas in any other meaningful way beyond generally linking the use of the abstract idea to a technological environment such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
A thorough analysis of each and every limitation of each and every claim, both individually and as part of an ordered combination shows that claims 1-9 are not patent-eligible under 35 USC § 101.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0005483 A1 to Washington et al. in view of US 2014/0316870 A1 to Burgin et al.
Re claim 1, Washington et al. teaches: A performance-based gamification platform (PBGP) for multiple gaming types, including mobile devices, consoles, arcade games, and home computers,
The prior art of Washington is titled, “Dynamic Placement of In-Game Ads”.
Claim interpretation: the intended-use limitation of “for multiple gaming types…” does not positively claim the subsequently listed mobile devices, consoles, arcade games and home computers, but instead merely outlines a perceived use of the platform of the claim.
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Additionally, in [0016], Washington discloses that his invention applies to mobile devices and casino gaming embodiments. [0412] describes that the invention of Washington can be implemented on mobile or handheld computing systems, PDAs, smart phones, notebook computers, tablets, notebooks, desktop computing systems, system servers, cloud computing and networked devices. [0413] describes using electronic gaming devices or other remote electronic devices.
[0266] discloses that an IAPP application enables publishers, developers, administrators to configure “in-game advertising, in-game product placement, and in-game promotion” to “define, sell, distribute, and manage advertisements, sponsorships, and placements that appear within the virtual game world”.
wherein the PBGP incentivizes customer awareness and enhances merchant visibility by enabling multiple commercial brands to sponsor tournaments, sweepstakes, scavenger hunts, and other promotional activities, comprising: a) a G04 software app on a computer-readable non-transitory storage media operating on a mobile device of a user, wherein the app facilitates account information, settings, creation of events, and issuance of rewards;
[0266] discloses that an IAPP application enables publishers, developers, administrators to configure “in-game advertising, in-game product placement, and in-game promotion” to “define, sell, distribute, and manage advertisements, sponsorships, and placements that appear within the virtual game world”. The IAPP application is configured “for managing various types of IAPP related activities such as for example: defining advertising campaigns, soliciting real-time advertisements from external ad networks, acquiring and managing advertising content (e.g., which may include images, audio, text, and/or video content), configuring advertising selection criteria, configuring advertising display criteria, etc.”
Regarding mobile devices implementing the invention of the disclosure of Washington, see:
[0139], “at least a portion of the GUIs may be configured or designed for use at one or more mobile devices”
See additionally [0010], [0016], [0254], [0402]-[0403], [0412]-[0413], [0442], [0468], [0626]-[0633]
b) a plurality of gaming apps connected to the G04 app through a cloud-based network, wherein the gaming apps enable pairing, event activities, and data transmission with the G04 app;
see paragraphs [0412], [0429] and [0434], network connections including a cloud may be leveraged to “facilitate pairing of and/or participation by remote players”.
c) administrative functions, gaming app configurations, event setups, library files, optional block chain operations, and notifications within the cloud-based network, enabling management, configuration, and communication between the G04 app, gaming apps, and authorized stakeholders; and
see [0266] disclosing providing “administrators with access to an IAPP management console for managing various types of IAPP related activities such as for example: defining advertising campaigns, soliciting real-time advertisements from external ad networks, acquiring and managing advertising content (e.g., which may include images, audio, text, and/or video content), configuring advertising selection criteria, configuring advertising display criteria, etc.”
[0415] discloses trend analysis and an account server providing and generating profit/loss reports.
[0341] and [0470] disclose monitoring, promotion, and maintenance.
d) wherein the PBGP allows players to receive online game credits to enter brand game promotions, select their favorite sponsors, and be rewarded with prizes or offers from the sponsors after gameplay,
See paragraphs [0458]-[0465], [0540], [0691]. See also [0029], [0073]
Although Washington teaches substantially the same inventive concept including an application that allows advertisements from a variety of different sponsors, see [0345]-[0346] including NIKE, WHITE CASTLE, GUINNESS, to be inserted into various formats of gaming, and mentions supporting collecting fees in [0438], Washington does not mention allowing sponsors to be charged when a player engages their game promotion or purchases their product.
Burgin is an analogous in-game advertising publishing reference that teaches it was known, see [0020]-[0021],that “Pricing for publication services provided to the advertisers may be in accordance with an outcome-based pricing structure or scheme, wherein advertising costs incurred by the advertiser (and thus due to the publisher) is variable as a function of player interactions resulting from publication of the advertising content. The term "player interaction" means an activity that is prompted or results from the publication of the advertising content, the activity being performed by a player of the game, and the activity being performed with respect to the advertising content or with respect to with respect to the advertiser.
The system may be configured to implement a pay-per-engagement pricing structure, in which the advertiser incurs advertising costs only for player interactions that satisfy engagement criteria defined by the pricing structure. The term "engagement" in this context applies only to player interactions that satisfy defined engagement criteria. The total cost to the advertiser for publication of an advertising campaign according to this pricing structure would thus be variable as a function of a total number of player engagements with associated advertising content published on the in-game advertising platform. Note that payment for publication of the advertising content is described variously as the publisher's price or as the advertiser's cost, and that these terms are used interchangeably herein.”
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention that Washington’s admittedly multi-sponsor advertising application could have charged sponsors based on player engagement as taught by Burgin. Charging online sponsors engagement-based fees is a notoriously well-known concept and dates back at least as far as pay-per-click webpage banner advertisements from the early 2000’s.
Re claim 2, as discussed in the rejection of claim 1, Burgin teaches that it was well-known to charge sponsors based on player engagement with their promotions, and the IAPP application as described at least in [0266] of Washington enables the creation and management of promotions.
Re claim 3, in [0084] Washington discloses in-game benefits provided to players including “currency”, “virtual currency” and other out-of-game redeemable promotions such as “promotional offers, coupons, discounts”.
Re claims 4, 5, 8, 9, these claims merely recite further intended uses of an apparatus – “the ability to advertise,” “tournaments can be showcased,” “the GO4 app allows users to connect and network…” “the ability to target players”, “enhances brand awareness”, “providing turnkey solutions”. None of these statements place any further structural limitations on the prior art beyond those stated in the parent claim, such as by reciting any additional hardware or particular programming thereof. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) Also, In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971) ("[I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art").
Re claim 5, regarding monitoring promotions and maintenance, see [0266] of Washington, disclosing providing “administrators with access to an IAPP management console for managing various types of IAPP related activities such as for example: defining advertising campaigns, soliciting real-time advertisements from external ad networks, acquiring and managing advertising content (e.g., which may include images, audio, text, and/or video content), configuring advertising selection criteria, configuring advertising display criteria, etc.”
Re claim 6, in [0084] Washington discloses benefits provided to players include “promotional offers, coupons, discounts, or the like”
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0005483 A1 to Washington et al. in view of US 2014/0316870 A1 to Burgin et al. and US 2018/0308317 A1 to Coulter.
Re claim 7, although Washington in view of Burgin teach substantially the same inventive concept for organizing and managing advertisements and promotions, Washington in view of Burgin lack using AI to make decisions and analyze trends.
Coulter is an analogous prior art gamification reference that provides relevant advertising and teaches the use of AI and neural networks for decision making and trend analysis, [0042].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention that Washington in view of Burgin could have leveraged AI as taught by Coulter for use in an analogous invention without causing any unexpected results. Coulter provides motivation for using AI in targeted advertising– to “improve the accuracy of the scenarios in a real-world setting”.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/STEVEN J HYLINSKI/Primary Examiner, Art Unit 3715