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 .
Preliminary Amendment
After the amendments filed 08/04/2025, claim 13 was cancelled, therefore, claims 1-13 and 15-20 remain pending, of which 1, 19 and 20 were amended.
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 1-13 and 15-20 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 19 and 20, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
1. (Original) A non-transitory computer readable medium containing instructions that when executed by at least one processor cause the at least one processor to perform operations for implementing character movement relative to a multidimensional map, the operations comprising:
causing a display of the multidimensional map, the display containing a plurality of distributed spaces (Certain Methods of Organizing Human Activity);
receiving, via an input device, a signal indicative of a request to generate a random directionality outcome (Certain Methods of Organizing Human Activity);
based on the received signal, generating the random directionality outcome, wherein the random directionality outcome includes a combination of directionality indicators, each directionality indicator representing a direction (Certain Methods of Organizing Human Activity);
identifying a current character location on the multidimensional map (Mental Processes and/or Certain Methods of Organizing Human Activity);
using the identified current character location and the generated random directionality outcome, translating the combination of directionality indicators to the multidimensional map to determine a new character location (Certain Methods of Organizing Human Activity);
identifying a subset of spaces of the plurality of distributed spaces based on the current character location and the new character location (Mental Processes and/or Certain Methods of Organizing Human Activity); and
rendering a display of the subset of spaces of the multidimensional map on the electronic screen in a manner reflecting movement of the character from the current character location to a new character location (Certain Methods of Organizing Human Activity).
The limitations in claim 1 (as well as claim(s) 19 and 20) recite an abstract idea included in the groupings of Mental Processes and/or Certain Methods of Organizing Human Activity, connected to technology only through application thereof using generic computing elements (e.g., a non-transitory computer readable medium, at least one processor, a display, an input device, 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); and
Certain Methods of Organizing Human Activity include:
1. Fundamental Economic Principles or Practices (including hedging (i.e., wagering), insurance, mitigating risk);
2. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
3. Managing Personal Behavior or Relationships or Interactions Between People (e.g., social activities, teaching, and following rules or instructions). The interaction encompasses both activity of a single person (for example a person following a set of instructions) and activity that involves multiple people (such as a commercial or legal interaction). Thus, some interactions between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within this grouping.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Wagering: For example, in light of applicant’s specification the limitation “receiving a request to generate a random directionality outcome” is interpreted as placement of a wager during a wagering game (See Specification ¶191, ¶193, wherein receiving a request to provide an outcome includes receiving a signal an assurance and ¶58, wherein an assurance is defined as a wager). Wagering is a form of hedging, which is an abstract idea included in the grouping of Fundamental Economic Principles or Practices. These limitations are interpreted as at least Fundamental Economic Principles or Practices insomuch as the claim limitations are directed to performing the Fundamental Economic Principles or Practices 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.
B. Formation of a gambling contract (i.e., by a player placing a wager the player is entering into a contract with a game operator), which is an abstract idea included in the grouping of Commercial or Legal Interactions. These limitations are interpreted as at least Commercial or Legal Interactions insomuch as the claim limitations are directed to performing the Commercial or Legal Interactions 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; and/or
C. Following rules and/or instructions, such as including the functions related to the playing of a game, which is an abstract idea included in the grouping of Managing Personal Behavior or Relationships or Interactions Between People. These sets of rules are interpreted as at least certain methods of organized human activity insomuch as the claim limitations are directed to performing or following the set of rules or instructions concerning a game 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.
D. Concepts performed in the human mind (e.g., “identifying a current character location on the multidimensional map”), 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 2-13 and 15-18:
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 and/or Certain Methods of Organizing Human Activity. For example, some dependent claims merely provide additional Mental Processes and/or Certain Methods of Organizing Human Activity 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 computer readable medium, at least one processor, a display”, 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 computer readable medium, at least one processor and a display are well known conventional devices used to electronically implement a game as evidence by 2004/0204228, which discloses that a conventional gaming machine comprises a non-transitory computer readable medium, at least one processor, an input device, and a display to control the overall operation of the gaming machine (¶58). 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.
Response to Arguments
Applicant’s arguments, see Remarks, filed 08/04/2028, with respect to the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the claims are not drawn to an abstract idea, specifically a mental process (See Remarks, pg. 8). Applicant’s argument is not found persuasive, as can be shown by an analysis of the limitations of representative claim 1, which the examiner has indicated as reciting a mental process:
A. identifying a current character location on the multidimensional map can be performed by a human viewing a map drawn using a pen and paper and mentally identifying where the character is located; and
B. identifying a subset of spaces of the plurality of distributed spaces based on the current character location and the new character location can be performed by a human viewing a map drawn using a pen and paper and mentally identifying a subset of distributed spaces based on the current and new character locations.
As can be clearly seen, the claims include limitations which can be reasonably performed in the human mind, without any additional elements which are sufficient to amount to “significantly more” than the judicial exception.
The remaining limitations which applicant indicated are not indicated as being drawn to mental processes, but rather, are drawn to rules and/or instructions, such as including the functions related to the playing of a game. For example, receiving, via an input device, a signal indicative of a request to generate a random directionality outcome is a function related to playing of a game by a user, which is an abstract idea included in the grouping of managing personal behavior or relationships or interactions between people, which falls within the Certain Methods of Organizing Human Activity grouping.
Applicant argues that the claims contain no mention of wagering, placing wagers, forming contracts or gambling (See Remarks, pg. 9). The examiner agrees that the specific language of wagering (or the like) is not found within the instant claims, the claims are interpreted in light of the specification. When read in light of the specification, it is clear that the instant claims are broadly and reasonably interpreted as being drawn to a wagering game (See specification ¶58, “As mentioned above, wagers (e.g., assurances) for each session of a multidimensional map may be received. Historic session information may be retrieved related to prior sessions. The multidimensional map may be generated based on the retrieved historic session information and the received wagers”). Further, when read in light of the specification the limitation “receiving, via an input device, a signal indicative of a request to generate a random directionality outcome”, is broadly and reasonably interpreted as placement of a wager to initiate game play (See Specification ¶191, ¶193, “receiving the request includes at least one of an assurance and a user input” and ¶52, “A wager (e.g., an assurance) may be received from a player, and the multidimensional map may be generated based on the wager.”).
Applicant concedes that the instant claims include limitations which may be considered abstract ideas (See Remarks. pg. 9, “…Some of the steps recited in the claims may involve rules”). According to the MPEP, “If the claim recites a judicial exception (i.e., an abstract idea enumerated in MPEP § 2106.04(a), a law of nature, or a natural phenomenon), the claim requires further analysis in Prong Two.” (See MPEP 2106.04 II.A.1). Therefore, since applicant has conceded that the instant claims recite rules for playing a game, the claims are required to be analyzed under Prong Two of the eligibility analysis as provided for in the 2019 Revised Patent Subject Matter Guidelines.
Applicant argues that the claimed invention provides a technical improvement in the art (See Remarks, pgs. 9-10). The examiner must respectfully disagree. Improving a user experience is not a technical solution to a technical problem. The claimed invention does not solve a problem that arises due to technology. Applicant may have an improved abstract idea that keeps a player interested. But the abstract idea does not solve a technical problem. And a new abstract idea, regardless of how great it is, is still an abstract idea. Abstract ideas are not patent-eligible without “significantly more.” In this case, Applicant has merely implemented an abstract idea using a generic computer. This is not considered to be “significantly more” than the abstract idea since the Supreme Court’s Alice decision was handed down.
In response to applicant's argument that the claims recite zooming in on a specific portion of a multidimensional map (See Remarks, pg. 10), it is noted that such a feature is 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).
Applicant argues that the instant claims provide an improvement to computer game technology similar to the claims found allowable in Core Wireless Licensing SARLv LG Electronics (See Remarks, pg. 11). The examiner must respectfully disagree. The instant claims are not like those in Core Wireless. In that case, there was a technical problem having to do with the size of the display screen. The screen was too small to allow efficient use. The claims in Core Wireless provided specific improvements to the UI that solved this technical problem. Applicant’s claimed invention does not address any technical problems with EMG displays, nor do the claims provide any specific improvements to the UI design.
Applicant appears to argue that since the claims are novel, the claims must be eligible under 35 U.S.C. 101 (See Remarks, pg. 12). The Courts have ruled that 35 U.S.C. 101 stands on its own. Thus, novelty and non-obviousness have no bearing on eligibility under 35 U.S.C. 101. While the instant claims may be drawn to a novel abstract idea, they are still drawn an abstract idea without including additional elements that are sufficient to amount to significantly more than the judicial exception.
Applicant’s arguments, see Remarks, filed 08/04/2028, with respect to the 35 U.S.C. 102 and 35 U.S.C. 103 rejections have been fully considered and are persuasive. The 35 U.S.C. 102 and 35 U.S.C. 103 rejections have been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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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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