DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
After the amendments filed 02/05/2026, claims 1-20 remain pending.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Guidelines (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a system and/or process, which is are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Independent claim 1 recites the following, with the abstract ideas highlighted in bold, including an indication as to the abstract idea grouping(s) to which the indicated limitations belong to, according to the 2019 Revised Patent Subject Matter Guidelines. Independent claims 15 and 18, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
1. A system, comprising:
a non-transitory storage medium that stores instructions; and
a processor that executes the instructions to:
select opponents for a wheel type game (Mental Processes);
retrieve a first color for a first of the opponents and a second color for a second of the opponents (Mental Processes);
determine that the first color is similar to the second color (Mental Processes);
retrieve an alternate color (Mental Processes); and
animate output for the wheel type game including the first color and the alternate color (Mental Processes).
The limitations in claim 1 (as well as claim(s) 15 and 18) recite an abstract idea included in the groupings of Mental Processes, connected to technology only through application thereof using generic computing elements (e.g., a non-transitory storage medium, a processor, etc.) and/or insignificant extra-solution activity. According to the 2019 Revised Patent Subject Matter Guidelines, Mental Processes include concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Concepts performed in the human mind (e.g., “select opponents for a wheel type game”), which is an abstract idea included in the grouping of Mental Processes. These limitations are interpreted as at least Mental Processes insomuch as the claim limitations are directed to performing the concepts in the human mind, while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims.
Regarding dependent claims 2-14, 16-17 and 19-20:
Each claim is dependent either directly or indirectly from the independent claim identified above and includes all the limitations of said independent claim. Therefore, each dependent claim recites the same abstract idea as identified above. Each of the dependent claim further describes additional aspects of the abstract idea, i.e., additional aspects to the Mental Processes. For example, some dependent claims merely provide additional Mental Processes to be performed and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101.
Step 2A-2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
-Applying or using 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 - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Claims 1-20 clearly do not improve the functioning of a computer, as they only incorporate generic computing elements, do not effect a particular treatment, and do not transform or reduce a particular article to a different state or thing. Similarly, there is no improvement to a technical field. In addition the claims do not apply the judicial exception with, or by use of a particular machine. The claims do not apply or use the judicial exception in a meaningful way. The claimed invention does not suggest improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05 (a)).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (MPEP 2106.05 (h)). The claimed computer components are recited at a level of generality and are merely invoked as tool to perform the abstract idea. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
For the reasons as discussed above, the claim limitations are not integrated to a practical application.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of “a non-transitory storage medium, a processor”, etc. used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility. These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
Further, the claims would require structure that is beyond generic, such as structure that can be interpreted analogous to a general purpose structure and general purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims. See Alice Corp. v. CLS Bank International, 134 S. Ct. at 2358-59. The elements of a non-transitory storage medium and a processor are well known conventional devices used to electronically implement a game as evidence by 2006/0009278, which discloses that a conventional gaming machine comprises elements such as a a non-transitory storage medium and a processor to control the overall operation of the gaming machine (¶9, ¶87, ¶94-95). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The dependent claims do not add “significantly more” for at least the same reasons as directed to their respective independent claims, at least based on the position, as discussed above, that each of the dependent claims merely provide additional limitations to further expand the abstract idea of the independent claims, without adding anything which would establish eligibility under 35 U.S.C. 101.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stevens (U.S. 2018/0043257) in view of Madden NFL 2004 Manual (herein referred to as “Madden”)
Regarding claims 1, 15 and 18, Stevens discloses:
a system (¶75), comprising:
a non-transitory storage medium that stores instructions (¶81-83, ROM 46, RAM 48 and Storage 40 which store programs); and
a processor that executes the instructions (¶85-87, one or more processors which execute code modules) to:
process images in a digital media application, specifically during execution of a video game such as Madden NFL (¶20, ¶39, Fig. 4A), wherein output for the game is animated including a first color and an alternate color (¶26, ¶31, a Daltonization technique is applied to the video game wherein colors which are less perceivable to colorblind players are phase shifted to allow for improved ability to distinguish the colors, the Daltonization technique can be applied to particular elements of a videogame such as a player or to a portion of the user interface (i.e., a portion of the display includes the Daltonized colors and the remaining portion including the original colors)). Although Stevens does not specifically disclose that the video game is a “wheel type” game, Stevens does disclose that the disclosed system may be used for various digital media application, specifically during execution of video games (¶22), it would have been obvious to one of ordinary skill in the art at the time of filing to apply the color processing techniques taught in Stevens to any video game, including a “wheel type” game, as this is a simple matter of design choice as to the general genre of the game and does not inextricably change the underlaying function of the color comparison and display rendering.
However, Stevens does not specifically disclose:
selecting opponents for a wheel type game; or
retrieving a first color for a first of the opponents and a second color for a second of the opponents.
Madden teaches:
A console video game (pg. 2), wherein opponents are selected for participation in the game (pg. 10, a home and an away team which are selected via a team selection screen), and wherein a first color is retrieved for a first of the opponents and a second color for a second of the opponents (pg. 11, from the options menu a player may select team uniforms (i.e., colors) for home and away teams).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the game system, as taught by Stevens, to include the opponent selection interface, as taught by Madden, in order to provide the user with greater control over the gameplay experience, while ensuring selected team colors would be distinguishable to all users.
Regarding claims 2, 13, 16 and 19, Stevens discloses that which is discussed above. Stevens further discloses that:
the determining that the first color is similar to the second color comprises comparing a first RGB value of the first color to a second RGB value of the second color (¶20, ¶31, the Daltonization method uses red-blue-green (RGB) pixel values of a video frame to create LMS values which are used to identify luminosities and determining if Daltonization is required to improve visibility).
Regarding claims 3-4 and 17, Stevens discloses that which is discussed above. Stevens further discloses:
comparing the first RGB value of the first color to the second RGB value of the second color by: calculating a distance between the first RGB value and the second RGB value using a three- dimensional distance formula (¶20, the Daltonization method uses red-blue-green (RGB) pixel values of a video frame to create LMS values which are used to create color shifted pixel values which are shifted away from where the eye is weak (i.e., requiring a calculation of the distance between the colors to determine the required shift)); and
determining whether the distance is greater than a threshold (¶20, ¶35, ¶73, color clashing instances are identified where objects become indistinguishable to color blind persons which requires comparing the difference (i.e., distance) between the RGB values and a limit of perceptibility to determine if correction is necessary).
Regarding claim 5, Stevens discloses that which is discussed above. Stevens further discloses that:
the processor determines that the first color is similar to the second color when the processor determines that the threshold is not greater than the distance (¶20, ¶31, the Daltonization technique is applied to colors which have similar luminosities (i.e., are below a threshold distance from each other)).
Regarding claim 6, Stevens discloses that which is discussed above. Stevens further discloses that:
the processor selects the threshold from a number of different thresholds based on a mode of a number of different modes that respectively correspond to the different thresholds (¶64, the Daltonization technique can be modified to allow game developers to adjust the compensation values for each type of colorblindness).
Regarding claim 7, Stevens discloses that which is discussed above. Stevens further discloses that:
the different modes include a red/green colorblind mode (¶28, ¶64, the two general categories of partial colorblindness include red-green colorblindness).
Regarding claim 8, Stevens discloses that which is discussed above. Stevens further discloses:
Modifying color values in a 3D space (¶20, for example in RGB space and LMS space). Although Stevens does not specifically disclose that the three-dimensional distance formula comprises a three-dimensional Cartesian distance formula, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize the standard Euclidean (i.e., Cartesian) distance formula to calculate the difference between the RGB values as this is the known standard method of calculating distances in a 3D color space.
Regarding claim 9, Stevens discloses that which is discussed above. Stevens further discloses:
Modifying color values in a 3D space (¶20, for example in RGB space and LMS space). Although Stevens does not specifically disclose that the three-dimensional distance formula comprises a modified version of a three-dimensional Cartesian distance formula, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize a modified Euclidean (i.e., Cartesian) distance formula (for example a weighted Euclidean distance to account for perceptibility) to calculate the difference in the RGB values, as this is a known standard method of calculating distances in a 3D color space.
Regarding claim 10, Stevens discloses that which is discussed above. Stevens further discloses that:
the first color model value is a first RGB value and the second color model value is a second RGB value (¶20, the Daltonization technique uses RGB pixel values (i.e., comparing a red value to the RGB model and a green value to RGB model)).
Regarding claim 11, Stevens discloses that which is discussed above. Stevens further discloses that:
the processing unit converts the first color to the first color model value (¶20, the Daltonization uses pixel values to create LMS values (i.e., converting the initial color data into specific color model values for processing).
Regarding claim 12, Stevens discloses that which is discussed above. Stevens further discloses that:
the first color and the second color are different tints, tones, or shades of a same color (¶30-31, Fig. 1, boxes R3C1, R3C2 and R3C3 represent green colors having similar luminosities and require processes to be distinguishable).
Regarding claims 14 and 20, Stevens discloses that which is discussed above. Stevens further discloses that:
retrieving the first color for the first of the opponents and the second color for a second of the opponents and the retrieving the alternate color retrieves the first color, the second color, and the alternate color from a table that associates opponents and colors (¶23, ¶26, ¶64, parameters may be preset, for example by a game developer, the Daltonization technique can be modified to allow game developers to adjust the compensation values for each type of colorblindness, the examiner interprets the pre-set parameters for the Daltonization technique as stored in the memory in a database (i.e., table) for retrieval during the Daltonization based on a user’s selected team/uniform selection).
Response to Arguments
Applicant’s arguments, see Remarks, filed 02/05/2026, with respect to the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the claim limitations are improperly characterized as mental processes (See Remarks, pg. 6). The examiner must respectfully disagree. The steps of selecting opponents, retrieving colors, determining color similarity, retrieving alternate colors and animating an output for the wheel type game are all steps which can be reasonably performed in the human mind or using pen and paper. For example, a human could mentally select opponents for a game, mentally retrieve a first and second color, mentally determine if the colors are similar, mentally retrieve an alternate color and using pen and paper, animate a wheel type game using the determined first and alternative color. The claims recite these steps being performed using generic computer components, without any additional elements which are sufficient to amount to “significantly more” than the judicial exception
Applicant argues that the claims are directed to a technological improvement to a user interface that solves a specific technological problem (See Remarks, pgs. 6-7). The examiner must respectfully disagree. Applicant identifies an alleged technical problem (i.e., ¶233 of the Specification wherein user interfaces displaying similar colors for distinct opponents impairs the display by making players unable to distinguish which opponent is represented), however, the problem which applicant has identified is an aesthetic, creative and functional challenge of game layout and graphic design, not a technical problem rooted in computer user interface technology. The underlying display and user interface function exactly as designed and programmed, regardless of whether the color choices selected lack contrast. Adjusting the colors to enhance a player’s ability to better view the game, is a solution to a business problem. For example, by having a game which certain players cannot properly view, game developers would lose potential profits from those players who choose not to purchase a game which they cannot properly view. The solution changes what is displayed to the user rather than improving how the underlying hardware or graphical interface is improved, thus, it does not constitute a technological improvement to the functioning of the computer.
Applicant argues that the precedential decision in Ex Parte Desjardin supports eligibility (See Remarks, pg. 7). The examiner must respectfully disagree. The instant claims are not like those in Ex Parte Desjardin. In that case, claims involved stream management and data manipulation techniques that actively altered memory utilization, thereby optimizing computing resources. Applicant’s claimed invention does not address any such technical problems nor do the claims provide any specific improvements to the UI design.
Applicant argues that the examiner oversimplified the claims by looking at them generally and failing to account for specific structural requirements (See Remarks, pg. 8). The examiner must respectfully disagree. The examiner's characterization is grounded in the actual claim language, broadly and reasonably interpreted in light of the specification. Specifically, the instant claims recite steps such as selecting opponents, retrieving colors, determining color similarity, retrieving alternate colors and animating an output for the wheel type game, all of which are activities which fall within the realm of mental steps. game play logic. The claims do not recite any improvement to the computer functionality (e.g., new data structures, unconventional communication protocols, etc.) or any technological improvement to the processor, memory, or gaming hardware. Rather, the claims merely use generic computing components to implement the mental steps, which the courts have consistently held to be abstract. Further, applicant's specification describes the system components and their interactions only at a high level of generality, relying on broadly stated processors, memory devices, communication interfaces and software modules, without disclosing any specific technical improvements to their operations. Accordingly, the examiner's characterization is not an improper oversimplification, but an accurate reflection of the claims when read in light of the specification.
Applicant argues that the claims do not recite a mental process because the limitation cannot be practically executed by a human (See Remarks, pg. 8). The examiner must respectfully disagree. The fact that the mental processes which are claimed use digital parameters, (e.g., RGB values) or require the computational speed of a processor, does not make the claims automatically eligible. Automating a mental process on a computer because it is too complex or tedious to be performed manually does not convert the mental process into a technical solution, but rather, uses the computer as a tool to implement the abstract idea, utilizing generic computer components to apply the abstract idea to a particular environment.
Applicant’s arguments, see Remarks, filed 02/05/2026, with respect to the rejection under 35 U.S.C. 103 have been fully considered but they are not persuasive.
In response to applicant's argument that Stevens’ Daltonization technique addresses a fundamentally different problem (See Remarks, pg. 9), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that Stevens does not disclose “retrieving an alternate color” when the first color is determined to be similar to the second color (See Remarks, pg. 10). The examiner must respectfully disagree. Stevens disclose that the execution of the Daltonization technique can be preset by a game developer and that a user can select one of the preset parameters which are stored in the memory (¶23, ¶26, ¶64, wherein a game developer adjusts the compensation values for each type of colorblindness and stores the preset parameters which a user can select).
In response to applicant's arguments against the references individually (See Remarks, pgs. 11-12, wherein applicant argues that Stevens does not teach associating specific colors with specific opponents), one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Stevens was cited as teaching analyzing the first and second colors, retrieving an alternate color and animating an output using the first and alternate color. Madden explicitly supplies the interactive selection interface wherein distinct home and away opponents are selected and their corresponding uniform colors are loaded. It would have been obvious to one of ordinary skill in the art at the time of filing to apply the color adjustment technique, as taught by Stevens, to include the opponent selection interface, as taught by Madden, in order to provide the user with greater control over the gameplay experience, while ensuring selected team colors would be distinguishable to all users.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., opponents represented on segments of a wheel) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
THIS ACTION IS MADE FINAL. 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 JASON PINHEIRO whose telephone number is (571)270-1350. The examiner can normally be reached M-F 8:00A-4:30P ET.
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, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason Pinheiro/ Examiner, Art Unit 3715
/DMITRY SUHOL/ Supervisory Patent Examiner, Art Unit 3715
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