DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/24/2026 has been entered. Applicant’s submission of a response on 7/24/2026 has been received and considered. In the response, Applicant amended claims 1, 19 and 21. Therefore, claims 1 – 12 and 15 – 21 are 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 – 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 users for a match game of an outside service which provides game play of the match game between the users, comprising:
an accepting unit which accepts a connection from an information communication terminal;
a management unit which movably arranges, in a virtual space, avatars respectively corresponding to the users of information communication terminals which are connected, and manages a state of each of the avatars (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 two or more of the users, as players, on condition that the two or more of the users are respectively placed at predetermined positions in the virtual space, and registers the two or more of 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).
Accordingly, as indicated in bold above, the above-identified claim (and claims 19 and 21) 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 7/24/2026 have been fully considered but they are not persuasive. Applicant amended each independent claim to replace the condition that the users “are in a first state” with the condition that the users “are respectively placed at predetermined positions in the virtual space,” and to recite avatars “respectively corresponding to” the users. These amendments specify the circumstance under which the match-making is performed; they do not remove the recited concept from the mental process or certain methods of organizing human activity groupings. Specifying the condition upon which a judgement is made further defines the abstract idea and does not make it any less abstract. See MPEP 2106.04(a); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287, 127 USPQ2d 1688, 1692 (Fed. Cir. 2018) (a claim is not patent eligible merely because it applies an abstract idea in a narrow way). Requiring that participants take up designated positions before being paired as players is the counterpart of requiring two patrons to be seated in the two chairs of a game table before an attendant pairs them as opponents and enters them on the roster of the game (the certain methods of organizing human activity grouping).
Applicant argues on pp. 9 – 10 that, because avatars are not conventionally used as a graphical user interface, the use of avatars as a graphical user interface is not well-understood, routine and conventional activity, and requests evidence and, in the event Official Notice is taken, an affidavit under 37 CFR 1.104(d)(2) and MPEP § 2144.03. The Examiner respectfully disagrees.
First, the well-understood, routine and conventional inquiry of Step 2B is applied only to the additional elements, i.e., to the claim elements beyond the recited judicial exception. See MPEP 2106.05 and MPEP 2106.07(a). As explained in Step 2A, Prong Two above, the recited avatar is not an additional element. Claim 1 recites the avatar only as a movable graphical placeholder that corresponds to a user, whose state is managed and whose position within the virtual space serves as the condition for pairing the users. Representing participants by placeholders and pairing the participants based on where those placeholders stand is the abstract idea itself (the same organizing activity that an attendant performs with name cards, chips or seats). No evidentiary showing is required to support the identification of a judicial exception.
Second, to the extent the avatar, the virtual space and the display are treated as additional elements, the required factual support has been provided in Step 2B above by citation to court decisions recognizing the underlying computer functions (receiving data over a network, storing and updating data in memory, electronic recordkeeping, and generating a display of stored data) as well-understood, routine and conventional. This is the form of support expressly contemplated by MPEP 2106.05(d)(II).
Applicant argues on p. 10 that, under McRO and Enfish, the claimed invention improves computer capabilities because conventional match-making requires users to communicate through social networking services or similar tools, whereas the claimed invention permits communication and match-making within the virtual space “by simply placing the avatar in the predetermined position.” The Examiner respectfully disagrees.
The stated benefit is an improvement in the manner in which people locate one another and agree to play. That is an improvement to the abstract idea itself and to the user’s experience but not an improvement in the functioning of a computer or in any other technology or technical field. See Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364-65, 2020 USPQ2d 10133 (Fed. Cir. 2020) (improving a user’s experience while using a computer application is not, without more, sufficient to render the claims patent eligible); and Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384-85, 2019 USPQ2d 138026 (Fed. Cir. 2019) (a graphical user interface that permitted users to place orders more efficiently and accurately was focused on improving the user, not on improving the functioning of the computer).
McRO is distinguishable. In McRO, the claims recited a specific set of rules of a particular type, applied in a particular way, that automated a task previously performed subjectively by human animators; the specific rules were themselves the improvement to the technology of automated lip-synchronized animation. Here, the claims recite no rule set and no particular technique by which any computer performs match-making. They recite only the condition that the users be respectively placed at predetermined positions and the result that the users are then matched as players and registered in the outside service. Claiming a desired result or function, without reciting how that result is achieved, does not establish an improvement to technology. See Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345, 127 USPQ2d 1553, 1560 (Fed. Cir. 2018); and Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337, 124 USPQ2d 1521, 1527 (Fed. Cir. 2017).
Enfish is likewise distinguishable. The self-referential logical table was a specific improvement to the way computers store and retrieve data, and the claims were directed to that improvement in database functionality. No analogous improvement to computer operation is recited here. The recited server, terminals and display store data, transmit data and render an image in their ordinary capacities, exactly as they did before.
For at least the above reasons, the rejection of claims 1 – 12 and 15 – 21 under 35 U.S.C. 101 is maintained.
Conclusion
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. ~9 - ~5:30.
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ANKIT B. DOSHI
Primary Examiner
Art Unit 3715
Prosecution Insights