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 3/2/2026 has been received and considered. In the response, Applicant amended claims 1, 9 and 10. Therefore, claims 1 – 7 and 9 – 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 – 7 and 9 – 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1 – 7 and 9 – 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 – 7 and 9 – 21 recites at least one step or instruction for playing a game matchup with guiding protocol and non-guiding protocol, 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 and following rules or instructions, which are methods of organizing human activity under the 2019 PEG. Accordingly, each of Claims 1 – 7 and 9 – 21 recites an abstract idea.
Independent Claim 1 recites:
A game operation guiding method, comprising:
entering, by a client device, a game matchup, and obtaining and running, by the client device, a game protocol corresponding to the game matchup, wherein the game protocol comprises a video recording of a pre-recorded game matchup, and running the game protocol comprises playing the video recording within the game matchup
providing in the game matchup, by the client device in response to the game protocol being a non-guiding protocol, a matchup performance corresponding to the non-guiding protocol; and
providing in the game matchup, by the client device in response to the game protocol being a guiding protocol, operation guiding information corresponding to the guiding protocol, wherein the guiding protocol is used for guiding a player of the client to complete a designated game operation.
Accordingly, as indicated above in bold, each of the above-identified claims recites an abstract idea, with substantially similar features found in claims 9 (device) and 10 (non-transitory computer-readable storage medium). Further, dependent Claims 2 – 7 and 11 - 21 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, 9 and 10 (and their respective dependent Claims 2 – 7 and 11 - 21) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in independent Claims 1, 9 and 10), 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 client device, an electronic device, a processor, a memory and a non-transitory computer-readable storage medium as recited in independent Claims 1, 9 and 10 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 client device 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, 9 and 10 (and their respective dependent Claims 2 – 7 and 11 - 21) 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 client device, an electronic device, a processor, a memory and a non-transitory computer-readable storage medium as recited in independent claims 1, 9 and 10). 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, 9 and 10 (and their respective dependent Claims 2 – 7 and 11 - 21) are not integrated into a practical application under the 2019 PEG.
Step 2B
None of the Claims 1 – 7 and 9 – 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 client device, an electronic device, a processor, a memory and a non-transitory computer-readable storage medium as recited in the independent claims.
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 – 7 and 9 – 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, claims 1 – 7 and 9 – 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 – 7 and 9 – 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, 9 and 10 (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 – 7 and 9 – 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 – 7 and 9 – 21 amounts to significantly more than the abstract idea itself.
Accordingly, claims 1 – 7 and 9 – 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 3/2/2026 have been fully considered but they are not persuasive. Applicant argues the claims are not directed to an abstract idea, more specifically states (i) the amended claims do not recite an abstract idea because the limitations “cannot be performed in the human mind, or by a human using a pen and paper”; (ii) the claims are integrated into a practical application under MPEP § 2106.05(a) (citing Data Engine Techs., LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018) and McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)); and (iii) the claims recite a specific client-side execution architecture allegedly improving the manner in which computing resources are organized (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). The Examiner respectfully disagrees.
The claims still recite a method of guiding a player to complete a designated game operation by selectively providing the player either (a) a playback of a pre-recorded matchup performance or (b) operation guiding information used for guiding the player. This directed to the type of human-tutoring or coaching activity that a coach, instructor, or experienced player has historically performed by, for example, showing a trainee a video of a previously played match and verbally instructing the trainee on what operations to perform. The recitation of “video recording” does not change this analysis, as it merely identifies a generic data format used to present the same observation, evaluation, and instruction (managing personal behavior and following rules or instructions, certain methods of organizing human activity). The claims further encompass mental processes of observation, evaluation, and judgment carried out by the player in response to the guiding information. The abstract idea falls within both the “Mental Processes” and “Certain Methods of Organizing Human Activity” groupings under the 2019 PEG.
Applicant argues that the conditional control of gameplay behavior based on protocol type “directly affects interactive state control, including whether client operations are permitted or prohibited.” However, the claims as drafted recite that the client device "provides" either a matchup performance or operation guiding information in response to which type of protocol is being run. The claim language does not actually require any modification of an internal game-engine state, any change to game physics or rules, or any technical control of computing resources. The conditional “guiding / non-guiding” determination is itself a routine logical operation that does not, of itself, transform the abstract idea into a non-abstract one. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (claims that merely recite collecting, analyzing, and displaying information using generic computers remain abstract).
Applicant's arguments under Prong 2 are not persuasive. The additional limitations recited in the claims do not integrate the abstract idea into a practical application because they fail to (i) improve the functioning of a computer or any other technology, (ii) effect a particular transformation, or (iii) apply the judicial exception in any meaningful way beyond generally linking the abstract idea to a particular technological environment (video gaming). See MPEP § 2106.04(d). The amendments merely specify the data format (“video recording”) of the previously claimed "game protocol" and tie the abstract idea more narrowly to the gaming environment. See Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016).
In Data Engine, the Federal Circuit found patent-eligibility where the claims provided a specific, structured solution (a system of notebook tabs that allowed users to navigate three-dimensional electronic spreadsheets) that improved the functioning of spreadsheet software by overcoming a known deficiency in prior art interfaces. Data Engine, 906 F.3d at 1008–09. Here, by contrast, the claims do not recite any specific user-interface structure, data structure, or other concrete technical mechanism that addresses a problem rooted in computer technology. The claims simply recite playing back a video recording with optional accompanying guiding information, wherein the functionality has been long performed by general-purpose computers and video playback systems. There is no analog to the “highly intuitive, user-friendly interface” found patent-eligible in Data Engine.
McRO claims were directed to specific rules with specific characteristics (rules that defined precisely how synchronization between phonemes, weight values, and morph targets should occur to automate a previously manual animation process) McRO, 837 F.3d at 1313. The Federal Circuit was careful to note that the claims were “limited to rules with specific characteristics” and that “the structure of the limited rules reflects a specific implementation not demonstrated as that which 'any [animator] engaged in the search for [an automation process] would likely have utilized.” The present claims recite no such specific rules. Conditionally rendering one of two display outputs (matchup playback vs. guiding information) based on a binary classification (guiding vs. non-guiding) is generic if/else conditional logic of the type performed by virtually any computer program. Therefore, it is not the kind of specific, narrowly defined rule set found patent-eligible in McRO.
Applicant's specification does not disclose any specific algorithm, data structure, hardware modification, or networking protocol that would improve the underlying computing technology. The disclosed implementation uses generic computer components (processor, memory, storage medium, client device) performing their conventional functions (storing data, executing instructions, displaying content). As in Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1263–64 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
Considered individually and as an ordered combination, the additional elements (client device, electronic device, processor, memory, non-transitory computer-readable storage medium, and the recitation of a "video recording" being "played") amount to no more than generic computer components performing well-understood, routine, and conventional functions: storing data, retrieving data, executing instructions, conditionally rendering display content, and playing back a video. The ordered combination is no more than the conventional sequence of obtaining, running, and rendering data on a generic client device, which adds nothing inventive. Accordingly, the claims fail to recite significantly more than the abstract idea.
Therefore, the 35 USC 101 rejection is maintained.
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.
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/ANKIT B DOSHI/Examiner, Art Unit 3715
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