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 .
Claim Status
After the amendments filed 03/04/2026, claims 8-11 were cancelled and 12-24 were newly added. Therefore, claims 1-7 and 12-24 remain pending, of which claims 1-7 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 1-7 and 12-24 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 6 and 7, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
1. A server device comprising:
a recording device configured to store data;
memory configured to store instructions; and
one or more processors which, upon execution of the instructions, are configured to perform operations comprising:
accessing first game play data associated with a first game (Mental Processes);
ascertaining, based on an amount of the first game play data being below a predetermined threshold amount, that game play information for the first game cannot be derived (Mental Processes);
in response to the ascertaining, accessing second game play data associated with a second game, wherein the second game has a predetermined relation to a first game based on attribute information associated with the first game, wherein the attribute information is indicative of at least one of a series, a genre, or a manufacturer of the first game (Mental Processes);
performing a statistical analysis on the second game play data to determine history information for a plurality of activities of the second game (Mathematical Concepts and/or Mental Processes);
specifying a first play unit in the first game that is similar to a second play unit of the second game, wherein the specifying is based on at least one of a name, a type, or a description of the respective play units (Mental Processes); and
providing, to one or more information processing apparatus executing the first game, generated information relating to the first play unit, wherein the generated information is based on history information determined for the similar second play unit (Mental Processes).
The limitations in claim 1 (as well as claim(s) 6 and 7) recite an abstract idea included in the groupings of Mental Processes and/or Mathematical Concepts, connected to technology only through application thereof using generic computing elements (e.g., a recording device, one or more processors, 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
Mathematical Concepts include mathematical relationships, mathematical formulas or equations, mathematical calculations.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Concepts performed in the human mind (Mental Processes): The claims include limitations (e.g., “accessing first game play data associated with a first game”, “ascertaining, based on an amount of the first game play data being below a predetermined threshold amount…”, “specifying a first play unit in the first game that is similar to a second play unit of the second game…”, “providing…generated information relating to the first play unit…), which are abstract ideas falling within the judicial exception grouping of Mental Processes (See MPEP 2106.04(a)(2)). These limitations describe concepts of observing data, making evaluative comparisons against a threshold, classifying items based on qualitative attributes (e.g., name, genre, description), and drawing conclusions, all of which are fundamental mental steps that can be practically performed in the human mind or with pen and paper. For example, a human reviewer can review a player’s history in a prior installment of a game (e.g., time taken to clear a specific objective) and, based on qualitative similarities between objectives, mentally estimate how long a player will take to clear a corresponding objective in a newly released game. 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; and
B. Mathematical Concepts: The claims include limitations (e.g., “performing a statistical analysis on the play data to determine a set of characteristics for a set of activities of the plurality of activities”), which is an abstract idea falling within the judicial exception grouping of Mathematical Concepts (See MPEP 2106.04(a)(1)). This limitation is directed to performing mathematical calculations and statistical evaluations (e.g., calculating averages, durations, or completion timing from numerical data), which represents performance of fundamental mathematical concepts. These limitations are interpreted as at least Mathematical Concepts insomuch as the claim limitations are directed to performing the calculations and statistical evaluations, 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 2-5 and 12-24:
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 Mathematical Concepts. For example, some dependent claims merely provide additional Mental Processes or Mathematical Concepts 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 1-7 and 12-24 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 claims of the present application as a whole amount to significantly more than the one or more judicial exceptions, as described above. For example, the recitations of utilization of “a recording device, memory, one or more processors”, 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 recording device, memory and one or more processors are well known conventional devices used to electronically implement a game as evidence by U.S. 2011/0028214, which discloses that a conventional gaming machine comprises a recording device, memory and one or more processors to control the overall operation of the gaming machine (¶23). 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 03/04/2026, 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 directed to a mantal process because it addresses a technical problem inherent in networked gaming systems (i.e., “the inability to provide useful, data-driven information for new games that lack a sufficient history of player data”) (See Remarks, pg. 10). The examiner must respectfully disagree. The problem applicant identified is an informational and statistical challenge regarding data availability, rather than, a technical defect or malfunction in computer hardware, software execution, or network architecture. The claimed solution merely relies on known mental steps, such as using a player’s past history in a related game to estimate how a player is likely to perform or clear an objective in a new game, rather than solving a technical computing problem.. Improving the content, accuracy, or availability of informational estimates presented to a user does not constitute an improvement to the function of a computer or technological system under Step 2A, Prong two (See MPEP 2106.05(a), Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016), Trading Technologies Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019)). Furthermore, confining this data analysis to the technological environment of networked gaming systems and transmitting the resulting data to client devices amounts to nothing more than field-of-use limitations and insignificant extra-solution activity (See MPEP 2106.05(g), (h)).
Applicant argues that the claims are not directed to a mantal process because, when viewed as a whole, they cannot be practically performed in the human mind (See Remarks, pgs. 10-11). The examiner must respectfully disagree. The underlying operational steps (e.g., determining if an amount of data satisfies a threshold, comparing qualitative attributes (i.e., names, types, or descriptions) to evaluate similarity, performing statistical calculations, and deducing estimated playtimes), are fundamental evaluations, comparisons, and mental steps that can be practically performed in the human mind or with pen and paper (See MPEP 2106.04(a)(1), (2)). The Federal Circuit has repeatedly held that executing computations faster or across large volumes of data using generic computer components does not transform an otherwise abstract idea into patent-eligible subject matter (In re Bilski 545 F.3d 943, 961 n.10 (Fed. Cir. 2008), Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1355 (Fed. Cir. 2016)). Merely reciting generic computer hardware to perform these steps at scale remains an abstract mental process and mathematical concepts under Step 2A, Prong One.
Applicant argues that the claims are eligible because they recite an inventive concept that amounts to “significantly more” than the judicial exception because they recite a specific, unconventional ordered combination of steps that improve the functioning of the server and the overall gaming system (See Remarks, pg. 11). The examiner must respectfully disagree. Under MPEP 2106.05(d) and Federal Circuit precedent, an inventive concept must consist of significantly more than the abstract idea itself. The hardware components recited in the instant claims (e.g., a generic server device, recording device, memory, and processors communicating over a network), are invoked at a high level of generality and perform only their well-understood, routine, and conventional functions of data storage, execution of instructions, calculations, and network transmission. The alleged “unconventional ordered combination” amounts to nothing more than sequencing the abstract data gathering, threshold evaluation, cross referencing, and statistical calculation steps in their natural, logical order. Reciting an abstract series of logical heuristics in a conventional sequence using generic hardware does not supply an inventive concept.
Applicant argues that the claims are eligible because the claimed server is not a generic computer used as a tool, but rather, is configured to perform a specific, unconventional process that results in a tangible technological improvement. Specifically, applicant argues that the claimed cross-game analysis, triggered by a data-deficiency condition, is not a routine or conventional use of a game server, but rather, is a specific, inventive solution to a data availability problem unique to this technological field (See Remarks, pg. 11). The examiner must respectfully disagree. The claimed conditional logic (i.e., checking whether data is below a threshold and, if so, querying a related data set) is an abstract rule of logical deduction and data substitution, not a technological improvement to computer hardware or software execution. Devising specific criteria to determine when and where to gather supplemental data is part of the abstract idea itself. The Federal Circuit has established that even a novel, specific, or customized rule for analyzing and selecting data does not supply an inventive concept under Step 2B. The physical components performing this rule (i.e., processors, memory, network connections, and recording devices), are generic and operate in their well-understood, conventional manner. Therefore, the cross game data analysis rule does not amount to “significantly more” than the abstract idea.
Applicant argues that the claims are eligible because the claimed server is not a generic computer used as a tool, but rather, is configured to perform a specific, unconventional process that results in a tangible technological improvement. Specifically, applicant argues that the claimed invention results in the generation of new, useful technical information that did not exist before and could not be obtained through traditional means, and therefore, the server is transformed into a more intelligent and useful component of the networked system (See Remarks, pgs. 11-12). The examiner must respectfully disagree. Generating new informational content, such as an estimated average playtime or activity prediction, is an improvement to the information or data itself, not an improvement to the technological functioning of the server, the network, or the client device. Generating new information and presenting it to a user does not qualify as an improvement to computer functionality (See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)). Enhancing the user’s gameplay experience or making the server “more intelligent” by providing useful estimates describes a user-facing informational benefit, not a technical solution to a computational shortcoming. Furthermore, delivering this generated data to client devices across a network represents conventional data transmission, which is considered extra-solution activity (See MPEP 2106.05(g)). Because the claim merely produces and delivers informational content using standard generic hardware operating conventionally, it fails to recite “significantly more” under Step 2B.
Conclusion
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
/JUSTIN L MYHR/Primary Examiner, Art Unit 3715
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