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 amendments dated 5/11/26 are hereby 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in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or claiming the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming: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;
[receiving data regarding someone touching the visual] controller […];
displaying the [visual] character being controlled to move in the [visual] scene in response to [the input data regarding touching] the [visual] controller […];
[receiving data regarding] a first touch operation to drag the [visual] controller to a first area in the [visual] scene and a duration of the first touch operation;
displaying […] during the movement of the [visual] character, the [visual] character maintaining a current moving state, in response to the duration of the first touch operation to keep the [visual] controller to stay in the first area not exceeding a predetermined duration;
[receiving data regarding] a second touch operation to drag the [visual] controller to the first area in the [visual] scene and a duration of the second touch operation; 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 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 employing a touch screen, 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 employing a touch screen, 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 page 12 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive as Applicant’s claimed limitations in regard to a virtual character and detecting touch operations are not identified in the 101 rejection made supra as being part of the alleged abstract idea in the form of a mental process. What is more, various input devices used in games including a touch screen have been held to not constitute “significantly more” than an abstract idea. See, e.g., the CAFC’s decisions regarding the guitar input device in Yousician (non-precedential) and the touch screen in Savvy Dog Systems (non-precedential). As well as providing “virtual” images, e.g., via an augmented reality display, has likewise been held by CAFC to also not constitute “significantly more” than an abstract idea. See, e.g., the CAFC’s decision in Nantworks v. Niantic (non-precedential).
What is more, Applicant’s claimed invention is additionally alleged to be abstract as the rules of playing a game, which Applicant did not respond to in its Remarks. It is common in various card, dice, role-playing, and other games that hand movements as well as the movements of various game pieces are part of the game play itself. Hand motions are used to, e.g., indicate the desire for more cards in blackjack and poker. Dice are typically rolled by hand. As well as figurines may be moved by hand in RPG’s. Applicant’s claimed invention is, in other words, seeking to patent the rules of game in terms of various hand motions that are used as part of a game and is, thereby abstract.
Applicant argues that it has claimed a “practical application” and thereby claimed patent eligible subject matter under the Mayo test. 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. Applicant specifically argues that because when its abstract idea is embodied as a computer program it will not require as many steps to execute as, apparently, some other abstract idea embodied as computer code and, thereby “processing efficiency of the terminal device is improved.” This is not persuasive. Following Applicant’s logic, an abstract idea that is claimed to not be embodied as computer code would require no processor time to execute at all and, therefore, would allegedly result in increasing the “processing efficiency” of the world’s computing devices. This, of course, is non-sensical. In other words, in order to make a technological improvement to the processing efficiency of Applicant’s claimed computing device that “improvement” must be to the ability of the device generally to execute faster in regard to any computer program.
Applicant argues on page 14 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive as the 101 rejection made supra makes the required Berkheimer findings in regard to the ordered combination of 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 employing a touch screen being well-known, routine, and conventional. There is no requirement in order to make a prima facie 101 rejection that the Examiner make a Berkheimer finding in regard to the limitations alleged to be part of the abstract idea itself.
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 extension fee 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 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
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