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 .
Applicant’s Submission of a Response
Applicant’s submission of a response on 12/10/2025 has been received and considered. In the response, Applicant amended claims 12 and 21 and cancelled claims 13 and 14 were previously rejected (5/13/23 preliminary amendment). Therefore, claims 1 – 12 and 15 - 21 are pending. Further, Examiner acknowledges the preliminary amended claims of 5/13/2023.
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 – 12 and 15 - 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1 – 12 and 15 - 21 are all within at least one of the four categories of invention, and have been analyzed to determine whether they are directed to any judicial exceptions.
Step 2A, Prong 1
Each of claims 1 – 12 and 15 - 21 recites at least one step or instruction for match-making players for a match game, which is grouped as a mental process and certain methods of organizing human activity under the 2019 PEG. The claimed limitations involve concepts performed in the human mind, namely observation, evaluation and judgement which are mental processes and managing personal behavior which are certain methods of organizing human activity under the 2019 PEG. Accordingly, each of Claims 1 – 12 and 15 - 21 recites an abstract idea.
Independent Claim 1 recites:
A match-making system for match-making between two or more players for a match game of an outside service which provides game play of the match game between the two or more players, comprising:
an accepting unit which accepts a connection from an information communication terminal;
a management unit which movably arranges, in a virtual space, an avatar corresponding to a user of an information communication terminal which is connected, and manages a state of the avatar (managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG);
a display control unit which causes a display unit of the connected information communication terminal to display the virtual space, based on information of the state of the avatar managed by the management unit (judgement or evaluation, which is grouped as a mental process and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG); and
a registration unit which performs match-making between users, as players, corresponding to a predetermined number of avatars for the match game, on condition that the users corresponding to the predetermined number of avatars are in a first state in the virtual space, and registers the users in the outside service (judgement or evaluation, which is grouped as a mental process and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG).
Independent Claim 19 recites:
A program for a computer which performs match-making between players for an outside service which provides game play of a match game between two or more players, the program executes the following steps of:
accepting a connection from an information communication terminal;
movably arranging an avatar corresponding to a user of the connected information communication terminal in a virtual space, and managing a state of the avatar (managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG);
displaying the virtual space on a display unit of the connected information communication terminal based on information of the state of the managed avatar managed (judgement or evaluation, which is grouped as a mental process and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG); and
performing match-making between users corresponding to a predetermined number of avatars as players of the match game on condition that the users corresponding to the predetermined number of avatars are in a first state, and registering the users in the outside service (judgement or evaluation, which is grouped as a mental process and managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG).
Independent Claim 21 recites:
A server, for providing a match-making service for performing match-making between players for a match game in an outside service which provides game play of the match game between two or more players, comprising:
an accepting unit which accepts a connection from an information communication terminal;
a management unit which movably arranges an avatar corresponding to a user of the connected information communication terminal in a virtual space, and manages a state of the avatar (managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG);
a display control unit which causes a display unit of the connected information communication terminal to display the virtual space based on information of the state of the avatar managed by the management unit (managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG); and
a registration unit which performs match-making between users corresponding to a predetermined number of avatars as players of the match game, on condition that the users corresponding to the predetermined number of avatars are in a first state, and registers the users in the outside service (managing personal behavior, which is grouped as a certain methods of organizing human activity under the 2019 PEG).
Accordingly, as indicated in bold above, each of the above-identified claims recites an abstract idea.
Further, dependent Claims 2 – 12, 15 - 18 and 20 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2
The above-identified abstract idea in each of independent Claims 1, 19 and 21 (and their respective dependent Claims 2 – 12, 15 – 18 and 20) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in independent Claims 1, 19 and 21), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of a server and a display as recited in independent Claims 1, 19 and 21 and its dependent claims are generically recited computer elements which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Furthermore, the cloud server and the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the
abstract idea on a computer/computing device. For at least these reasons, the abstract idea
identified above in independent Claims 1, 19 and 21 (and their respective dependent claims 2 – 12, 15 - 18 and 20) are not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application
under 2019 PEG because the claimed system merely implements the above-identified abstract
idea (e.g., mental process) using rules (e.g., computer instructions) executed by a computer (e.g.
a server and a display as recited in independent claims 1, 19 and 21). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer/computing device.
Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1, 19 and 21 (and their respective dependent claims 2 – 12, 15 - 18 and 20) are not integrated into a practical application under the 2019 PEG.
Step 2B
None of the Claims 1 – 12 and 15 - 21 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional elements of: a server and a display as recited in independent claims 1, 19 and 21.
The above-identified additional elements are generically claimed computer components
which enable the above-identified abstract idea(s) to be conducted by performing the basic
functions of automating mental tasks. The courts have recognized such computer functions as
well-understood, routine, and conventional functions when claimed in a merely generic manner
(e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev.
Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015);
and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Like SAP America vs InvestPic, LLC (Fed. Cir. 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
The recitation of the above-identified additional limitations in Claims 1 – 12 and 15 - 21 amounts to mere instructions to implement the abstract idea on a computer. Simply using 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 (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing
technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a
technical explanation as to how to implement the invention should be present in the specification
for any assertion that the invention improves upon conventional functioning of a computer, or
upon conventional technology or technological processes. That is, the disclosure must provide
sufficient details such that one of ordinary skill in the art would recognize the claimed invention
as providing an improvement. Here, Applicant’s specification does not include any discussion of
how the claimed invention provides a technical improvement realized by these claims over the
prior art or any explanation of a technical problem having an unconventional technical solution
that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d
1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide
sufficient details regarding the manner in which the claimed invention accomplishes any
technical improvement or solution.
For at least the above reasons, the system of Claims 1 – 12 and 15 - 21 are directed to applying an abstract idea (e.g., mental process or certain method of organizing human activity) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 1 – 12 and 15 - 21 provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements
do not provide significantly more. Specifically, when viewed individually, the above-identified
additional elements in independent Claims 1, 19 and 21 (and their dependent claims) do not add
significantly more because they are simply an attempt to limit the abstract idea to a particular
technological environment. That is, neither the general computer elements nor any other
additional element adds meaningful limitations to the abstract idea because these additional
elements represent insignificant extra-solution activity. When viewed as a combination, these
above-identified additional elements simply instruct the practitioner to implement the claimed
functions with well-understood, routine and conventional activity specified at a high level of
generality in a particular technological environment. As such, there is no inventive concept
sufficient to transform the claimed subject matter into a patent-eligible application. As such, the
above-identified additional elements, when viewed as whole, do not provide meaningful
limitations to transform the abstract idea into a patent eligible application of the abstract idea
such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 1 – 12 and 15 - 21 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 1 – 12 and 15 - 21 amounts to significantly more than the abstract idea itself.
Accordingly, claims 1 – 12 and 15 - 21 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas implemented on a generic computer in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
Response to Arguments
Applicant's arguments filed on 12/10/2025 have been fully considered but they are not persuasive. Applicant argues on p.10 – 11 that the limitations in the independent claims are not directed to an abstract idea. More specifically, states the limitations are not an abstract idea as they are not a mental process. The Examiner respectfully disagrees.
Humans are constantly performing actions in real-time. Simply receiving data about a player and arranging and match-making them with other players can easily be done by a human in real-time just by their knowledge of the players and the game. Theoretically, a person can quickly determine and match a player to a game. The claims are focused on gathering, processing and displaying information. The Examiner notes that SAP America, Inc v. Investpic, LLC and Electric Power Group, LLC, v. Alstom both showed complex calculations that were ostensibly beyond the skill of a human to do in real time, however both were found ineligible.
The Examiner directs Applicant to the October 2019 Update on Subject Matter Eligibility states “[c]laims can recite a mental process even if they are claimed as being performed on a computer” and “[c]laims requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (p. 8). Furthermore, the October 2019 Update states, “examiners may review the specification to determine if the underlying claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, 2) in a computer environment or 3) is merely using a computer as a tool to perform the concept” (p. 8).
The Examiner respectfully directs Applicant to claim 3 of Example 37 of the USPTO Section 101 guidelines because a server and a display are recited at a high level of generality, i.e., as a generic server performing a generic computer function of processing data. This generic server limitation is no more than mere instructions to apply the exception using generic computer components. The same is true for the claimed display. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea, and the claims are therefore directed to the abstract idea.
Applicant argues on p.12 that the Office ignores some of elements of claim 1, that is “a management unit which movably arranges, in a virtual space, an avatar corresponding to a user of an information communication terminal which is connected and manages a state of the avatar; a display control unit which causes a display unit of the connected information communication terminal to display the virtual space, based on information of the state of the avatar managed by the management unit and a registration unit which performs match-making between users, as players, corresponding to a predetermined number of avatars for the match game, on condition that the users corresponding to the predetermined number of avatars are in a first state in the virtual space, and registers the users in the outside service” and further state by this configuration, complex match-making processing is simplified so that the functioning of a computer can be improved. The Examiner respectfully disagrees. The limitations were not ignored in the above 101 rejection.
According to the October 2019 Update on Eligibility Guidance, the sub-groupings of
certain methods of organizing human activity “encompass both activity of a single person…and
activity that involves multiple people” (p. 5). The October 2019 Update concludes, “thus, certain
activity between a person and a computer… may fall within the ‘certain methods of organizing
human activity’ grouping” (p. 5). Because computer elements do not diminish the recitation of
certain methods of organizing human activity in a claim, the applicant’s argument is not persuasive.
Additionally, the October 2019 Update on Subject Matter Eligibility states “[c]laims can recite a mental process even if they are claimed as being performed on a computer” and “[c]laims requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (p. 8). Furthermore, the October 2019 Update states, “examiners may review the specification to determine if the underlying claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, 2) in a computer environment or 3) is merely using a computer as a tool to perform the concept” (p. 8).
Further, the October 2019 Update states on pages 4-5 that certain methods of organizing human activity encompass both activity of a single person as well as activity that involves multiple people. The guidance also notes that certain activities between a person and a computer may still fall into the category of certain methods of organizing human activity. Therefore, the instant claims, which include benefit transactions involving one or more users, are properly construed as certain methods of organizing human activity.
Therefore, the limitations are not indicative of an inventive concept (“significantly more”), as there is no improvement to the functioning of a computer, or to any other technology to technical field.
Further, the Applicant argues on p.13 – 14 that the additional elements in claim 1 including the use of an avatar in the match making for players as in the claimed invention, is not well-understood, routine, conventional activity in the field. The Examiner respectfully disagrees.
An avatar corresponding to a user can be considered as a placeholder for the user that is trying to be matched up for a game, which is similar to having a unique number or player number assigned to them at a poker room to represent the user while concealing personal information of the user (for example, one’s name or face, as mentioned in Applicant’s remarks).
Additionally, the above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well-understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Like SAP America vs InvestPic, LLC (Fed. Cir. 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
Therefore, the claimed invention is directed to an abstract idea of instruction for match-making players for a match game executed on generic and conventional computing devices. There is not any indication that the invention provides a technological solution to a technical problem. Rather, the claimed invention merely recites a technological environment in which the abstract idea is to be practiced. Therefore, the 101 rejection has been maintained.
Further, the amendments and remarks have overcome the 35 USC 112 rejection.
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 ANKIT B DOSHI whose telephone number is (571)270-7863. The examiner can normally be reached Mon - Fri. ~8:30 - ~5:30.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANKIT B DOSHI/Examiner, Art Unit 3715