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 08/28/2025, claim 7 was cancelled and 9-13 were newly added. Therefore, claims 1-6 and 8-13 remain pending, of which 1-6 and 8 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 1-6 and 8-13 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 8 and 13, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
A server device comprising:
one or more processors;
one or more memories storing computer readable instructions that, upon execution by the one or more processors, configure the server device to:
receive event data relating to a game from a plurality of users (Mental Processes);
determine a play order of activities performed within the game based on analysis of the event data (Mental Processes);
determining a status of a user (Mental Processes), and
specify an activity to be recommended to the user based on the status of the user and the play order of the activities (Mental Processes).
The limitations in claim 1 (as well as claims 8 and 13) recite an abstract idea included in the groupings of Mental Processes, connected to technology only through application thereof using generic computing elements (e.g., a processor, a server device, one or more memories, 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).
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 (e.g., “determining a status of a user”), 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 2-6 and 9-12:
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. For example, some dependent claims merely provide additional Mental Processes 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 1-6 and 9-13 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 processor, a server device”, 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 processor and memory are well known conventional devices used to electronically implement a game as evidence by U.S. 2004/0204228, which discloses that a conventional gaming machine comprises a processor and a server device 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.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-6 and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marr et al (U.S. 2016/0005270) in view of Kolen et al (U.S. 2020/0306632)
Claim(s) 1, 8 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Regarding claims 1, 8 and 13, Marr discloses:
a server device (¶56, server(s) 150 which hosts gameplay between user devices) comprising:
one or more processors (¶62);
one or more memories storing computer readable instructions that, upon execution by the one or more processors (¶62, ¶76), configure the server device to:
receive event data relating to a game from a plurality of users (¶132, gameplay information of a player is received by feedback engine 124);
determine activities performed within the game based on analysis of the event data (¶24, ¶145, the system stores information related to a player’s game progression and identifies an optimal match based on the information stored in the player profile);
determining a status of a user (¶25, the system determines of a given player has logged in), and
specify an activity to be recommended to the user based on the status of the user and the play order of the activities (¶25, ¶176, the system matches players based on their completed objectives and based on the player being logged into the gaming system).
However, Marr does not specifically disclose that:
the determined play activities include a play order of the play activities performed within the game based on event data.
Kolen teaches:
a gaming system which receives interaction data from a plurality of users (¶4), wherein the data is analyzed to determine prediction models for the users (¶4), wherein the interaction data includes historical data for the users (¶72, historical data 152), wherein the historical data includes interactions performed by the users playing the video game as well as the sequence of user interactions (¶73, historical data 152 includes the sequence of user interactions, for example it may indicate that a user performed interactions A, B, and C in that order).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the information related to a player’s game progression, as taught by Marr, to include the historical data, including sequence of user interactions, as taught by Kolen, in order to yield the predictable result of reducing the load time players experience interacting with other players in a game by providing players with more optimal matches who use similar resources and thus provide players with a more enjoyable gaming experience, thereby leading to increased influence on the players to make more game related purchases, leading to increased playtime and profitability for game developers (See Kolen, ¶1-3).
Regarding claim 2, Marr discloses that which is discussed above. Marr further discloses that:
the status of the user includes a timestamp (¶87, the player status includes for example a time that the player has waited to be matched).
Regarding claim 3, Marr discloses that which is discussed above. Marr further discloses that:
the server device is further configured to:
determine, based on the status of the user, that the user has not yet started the game (¶119, players who have not been placed into a game); and
specify the activity to be recommended to the user further based on the determination that the user has not yet started the game (¶119, a suggested game match is provided to players who have not yet begun playing).
Regarding claim 4, Marr discloses that which is discussed above. Marr further discloses that:
the server device is further configured to:
estimate a timing at which the user will end game play, based on the status of the user (¶164, the expected total logon time is determined for a player); and
determine that the user is about to end the game play, based on the estimated timing (¶148, players are matched based on expected game times which match their stored player status, the examiner interprets matching a player with an expected match duration as determining that the player will end game play based on the length of the match).
Regarding claim 5, Marr discloses that which is discussed above. Marr further discloses that:
the server device is further configured to:
specify the activity to be recommended to the user, based on a selection criterion corresponding to the status of the user (¶171, a player may tune coefficients which effect potential matches).
Regarding claim 6, Marr discloses that which is discussed above. Marr further discloses that:
the selection criterion is set for each game type, wherein the activity to be recommended to the user is determined based on one or more selection criteria that are specific to the game type of the game (¶171, a player may tune coefficients which effect potential matches, including, for example, clan composition, the examiner interprets clan composition as being game specific).
Regarding claim 9, Marr discloses that which is discussed above. Marr further discloses that:
the event data indicates a start or end of activities in the game (¶148, the match data includes the start time for the game).
Regarding claim 10, Marr discloses that which is discussed above. Marr further discloses that:
a playing time for an activity is calculated based on a time stamp included in the event data (¶87, the player status includes for example a time that the player has waited to be matched) and
the specifying an activity is based on the playing time (¶87, players are matched based on the time that the player has waited to be matched).
Regarding claim 11, Marr discloses that which is discussed above. Marr further discloses that:
the status of the user is based on contextual information including logging into the server device, activating the game to start gameplay, or terminating execution of the game to end the gameplay (¶25, ¶176, the system matches players based on their completed objectives and based on the player being logged into the gaming system).
Regarding claim 12, Marr discloses that which is discussed above. Marr further discloses that:
the server device is further configured to:
transmit information regarding the activity to be recommended to an information processing device of the user for display to the user (¶36, the system suggests a match to the player based on the matchmaking process).
Response to Arguments
Applicant's arguments filed 08/28/2025, with respect to the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant's arguments are substantially directed to newly added limitations. The Examiner has updated the rejection to reflect the newly added limitations. Accordingly, the Applicant is directed to the rejection of the claims above for a detailed response to Applicant's arguments as to the eligibility of claims under 35 U.S.C. 101.Specifically, the examiner finds that the instant claims are still drawn to concepts performed in the human mind, which is an abstract idea included in the grouping of Mental Processes, 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.
Applicant’s arguments with respect to claim(s) 1-6 and 8-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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
/JUSTIN L MYHR/Primary Examiner, Art Unit 3715