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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/31/25 has been entered.
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 1-8, 10-17, and 19 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.
Claims 1-8, 10-17, and 19 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being and/or the rules of playing a game.
In regard to Claims 1, 10, and 19, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or claiming the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming:
[a] [visual] character control method […] comprising:
displaying […] a [visual] character and a [visual] controller in a [visual] scene, the [visual] controller being configured to manipulate the [visual] character based on a user operation;
displaying the [visual] character being controlled to move in the [visual] scene in response to [receiving input data regarding actions] performed on the [visual] controller […];
displaying […] during the movement of the [visual] character, the [visual] character maintaining a current moving stated, in response to [receiving data regarding] a first touch operation to drag the [visual] controller to a first area in the [visual] scene, and in response to [determining] a duration of the first touch operation to keep the [visual] controller to stay in the first area not exceeding a predetermined duration; and
displaying […] the visual character performing a jumping or climbing action to move from one side of a target object to another side of the target object, in response to [receiving data regarding] a second touch operation to drag the [visual] controller to the first area in the [visual] scene, and in response to [determining] the duration of the second touch operation to keep the [visual] controller to stay in the first area exceeding the predetermined duration and the target object existing within a range around the [visual] character.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being and/or recite the rules of a game.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., embodying Applicant’s abstract idea as computer software instructions stored in a non-transitory computer readable storage medium and executed by a processor of an electronic device, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., embodying Applicant’s abstract idea as computer software instructions stored in a non-transitory computer readable storage medium and executed by a processor of an electronic device, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F13 in Applicant’s PGPUB.
Response to Arguments
Applicant argues on pages 10-11 of its Remarks in regard to the rejections made under 35 USC 101 that its claimed invention is analogous to that of Core Wireless and thereby patent eligible. Applicant’s argument is not persuasive. Applicant’s claimed invention does not concern a specific way to structuring a menu listing in a graphical user interface in order to maximize the utility of small cellphone display. Instead, Applicant’s invention is more analogous to that of Trading Technologies v. IBG LLC (2017-2257; 4/18/19) in terms of Applicant’s invention is directed to providing a GUI that has the potential to increase the user’s performance, specifically in the instant Application the user’s performance in playing a game. See, e.g., p3-4 in Applicant’s PGPUB. Such an advantage, however, is not patent eligible under the Mayo test to the extent they are not technological improvements. See, Id., slip. op., pages 9-10: “This invention makes the trader faster and more efficient, not the computer. This is not a technical solution to a technical problem”, emphasis original.
Applicant argues on page 12 of its Remarks that it does not claim an abstract idea in the form of a mental process because it claims employing a touch screen. Applicant’s argument is not persuasive because the claimed “touch screen” is not alleged in the 101 rejection to be part of the abstract idea that can be performed as a mental process. Furthermore, adding a touch screen to an otherwise abstract idea does not necessarily constitute “significantly more”. See, e.g., the CAFC’s opinion in Savvy Dog Systems (non-precedential) in that regard.
Applicant further argues in its Remarks that it has claimed a “practical application”. Applicant’s argument is not persuasive. The Mayo test is a legal test and “practical application” is not part of the Mayo test but is, instead, a burden placed on examiners by the Office when they are making a 101 rejection employing the Mayo test. Simply invoking “practical application” but without citing specific legal authority in support of Applicant’s argument that it has claimed patent eligible subject matter under the two-part Mayo test, therefore, does not provide a proper basis or rationale as to why the 101 rejection being made is allegedly deficient. Furthermore, to the extent that Applicant appears to be arguing that by providing its claimed method of processing user inputs to provide certain visual displays makes it easier for the user to play the game such an improvement to human performance does not render patent eligible subject matter. See the CAFC’s opinion in, e.g., USAA v. PNC Bank, slip. op., page 9:
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Applicant further argues in its Remarks at page 13:
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Applicant’s argument is unpersuasive. Applicant is describing here that its abstract idea may require fewer or different steps to be performed, and when embodied as computer code that may thereby require less computing power for that code to be executed. That is merely, however, an artifact of embodying Applicant’s abstract idea as computer code and not a generally applicable improvement to Applicant’s claimed, e.g., “at least one processor”. In other words, Applicant’s claimed processor is not able to generally run faster in regard to executing any computer program as result of embodying Applicant’s claimed invention.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715