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 .
Response to Arguments
Applicant's arguments filed 01/02/2026 have been fully considered but they are not persuasive. The language of the claim amendments entered 01/02/2026 merely appends an additional idea, described functionally, to the system of the claim without providing any description of methods or mechanisms for accomplishing it.
MPEP § 2106.05(f) explains that, “The recitation of claim limitations that attempt to cover any solution to an identified problem with no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it"”. The amended language attempts to cover any changes to electronic games by any computer hardware and by any computer software.
Additionally, the courts have repeatedly held that claims that recite an idea of an outcome without reciting a specific process of achieving it remain ineligible. The claims, for example, lack any technical specifications of hardware or software or methods of operation attributed to the "game management system” that are necessary to accomplish the amended outcomes of changes to electronic games. The claims also lack specifying by what method or process ("how") these results are achieved. Courts have repeatedly emphasized that claims must describe the method or process used to accomplish the claimed results rather than simply claiming outcomes themselves.
In Interval Licensing LLC v. AOL Inc. (896 F.3d 1335), the court found that claims to a computer software attention manager that displays content on unused portions of a screen were result-oriented and invalid under 35 U.S.C. § 101 because they did not recite a specific technological method for achieving the claimed result.
In Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024), the court held that claims must not only describe desired outcomes but also include a specific process or machinery for achieving that result.
In re Killian, 45 F.4th 1373 (Fed. Cir. 2022): The court reaffirmed that claims simply reciting a desired result without specifying how to achieve it are directed to an abstract idea and are ineligible under 35 U.S.C. § 101. The claims at issue were directed to analyzing data from two databases.
In Internet Patents Corporation v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015) (The recitation of maintaining the state of data in an online form without restriction on how the state is maintained and with no description of the mechanism for maintaining the state describes "the effect or result dissociated from any method by which maintaining the state is accomplished" and does not provide a meaningful limitation because it merely states that the abstract idea should be applied to achieve a desired result).
And in Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024), the court stated that "the claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves these results. Claims of this nature are almost always found to be ineligible for patenting under Section 101. See, e.g., Elec. Power Grp., 830 F.3d at 1356 (“[T]he essentially result-focused, functional character of claim language has been a frequent feature of claims held ineligible under § 101, especially in the area of using generic computer and network technology to carry out economic transactions.”); Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“The claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way.”).
The preceding court cases serve as evidence that the amendment of “providing … a change to two or more electric games” fails to provide a practical application of the abstract ideas of the pending claims or an inventive concept. For this reason, the 35 U.S.C. § 101 rejection of claims 1-20 is maintained.
Claim Rejections - 35 USC § 101
Claims 1-20 are rejected because they are directed to abstract ideas without significantly more. The pending claims seek coverage for collecting data, storing it, analyzing it for relationships, and outputting results of the analysis, which were held to be abstract “mental processes” in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). The claims are also directed to “mathematical calculations.”
Step 1: In this step of the Alice analysis, it is determined that all of the pending claims fall into statutory categories. The claims meet step 1 as follows:
Claims 1-7 are directed to a process (method);
Claims 8-14 are directed to a machine (system);
Claims 15-20 are directed to a product (computer-readable medium);
Step 2A, Prong 1: In this step of the Alice analysis, judicial exception(s) that fall into enumerated abstract idea groupings enumerated are identified and quoted.
The pending claims involve “collecting … information related to a player … and a theme”, “generating … a first data table,” “calculating … statistics”, “generating … a second data table comprising the statistics,” and “providing … an indication of the relationships”. This is the same grouping of activities found to be abstract in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). Here, collecting data, analyzing it, and displaying results of the analysis, especially where the data analysis steps are recited at a high level of generality such that they could be performed by humans, was held to be abstract. In Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011), claims to collecting and comparing known information were found to be directed to abstract ideas. Also in University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 763, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014), comparing gene sequences and determining the existence of alterations, where the claims cover any way of performing the comparison, was also found to be directed to abstract ideas.
In the pending claims, the “generating…” and “calculating” steps are generic, with no specifics provided describing by what particular software instructions, formulas, algorithms, etc., these steps are accomplished. The same conclusion is reached that the instant claims cover any way of indicating relationships between compared gathered theme data, and furthermore that human beings would be capable of observing video game play, noting common themes, and expressing such findings. The instant claims are found to be directed to abstract mental processes, see MPEP § 2106.04(a)(2)(III).
The “calculating” step in the instant claims is also directed to the enumerated grouping of abstract ideas of mathematical concepts in the form of mathematical calculations, see MPEP § 2106.04(a)(2)((I)(C).
The steps directed to abstract ideas in claim 1, which is considered representative of the independent claims, includes:
collecting from a plurality of games information related to a player of each electronic game and a theme of each electronic game;
This step is directed to the enumerated abstract idea grouping of mental processes. There are no specifics in the claim of any particular hardware and/or software instructions required to perform this collecting, or of any unusual type of data that is collected that would be impossible for a human being to observe, leaving the possibility that this step is capable of being performed by human beings.
Also, “The receiving of input and storing steps represent the use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016 attributing particular generic computer functions for computer hardware to perform from well-known, routine, conventional functions performed by such hardware has been held to be insufficient to show an improvement to technology, Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264, 120 USPQ2d 1201, 1208 (Fed. Cir. 2016).
generating a first data table based on the collected information … generating a second data table comprising the plurality of statistics indicating relationship between two or more themes of the plurality of electronic games;
These steps are also directed to mental processes – again, the claims do not recite by what particular software instructions this generic generating of data tables is performed, so the claims are attempting to cover any way of generating data and comparing it. Additionally, there is nothing in the claim precluding human beings with the aid of pencil and paper from recording observed game information and/or themes in tabular form.
calculating … a plurality of statistics indicating relationships …;
This step is directed to the enumerated grouping of abstract ideas of mathematical concepts – mathematical calculations.
The steps of collecting, generating and calculating merely represent the idea of a solution or outcome without providing any specificity of how hardware and/or software are to accomplish them. Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024) explains that when "the claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves these results … Claims of this nature are almost always found to be ineligible for patenting under Section 101."
Step 2A, Prong 2: In this step, any additional elements beyond the identified abstract ideas are identified and evaluated for any integration into a practical application. In particular, any claimed technological improvement is considered.
Additional elements in the claims include:
a game management system (claim 1); a processor and a memory (in claim 8); a computer-readable medium (In claim 15);
These hardware components are recited at a high level of generality and merely outline a generic technological field in which to apply the abstract equivalents of human mental work and mathematical calculations through routine and conventional use of generic hardware, and using some implied software of unclaimed programming. The instant disclosure’s silence as to any of the claimed hardware having any nonobvious structural or functional specifications or requirements or being used to solve any stated problems existing in computers per se or to provide any improvements to computers per se supports a finding that the hardware additional elements of the claimed apparatus comprises merely generic components and technologies used in their routine and conventional capacities in the art. “[T]he invocation of ‘already-available computers that are not themselves plausibly asserted to be an advance … amounts to a recitation of what is well-understood, routine, and conventional.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020). And “simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)
Additionally, claims directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Also, a claim that generically recites an effect of the judicial exception or claims every mode of accomplishing that effect (in the pending claims, any software application and any computing device, as there are no details recited of how the functional end results of the claims are accomplished), amounts to a claim that is merely adding the words "apply it" to the judicial exception (mental processes and organized human activity). See Internet Patents Corporation v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015) (The recitation of maintaining the state of data in an online form without restriction on how the state is maintained and with no description of the mechanism for maintaining the state describes "the effect or result dissociated from any method by which maintaining the state is accomplished" and does not provide a meaningful limitation because it merely states that the abstract idea should be applied to achieve a desired result).
providing … a change to two or more electronic games of the plurality of electronic games (claims 1, 8, 15);
This amendment entered 01/02/2026 merely appends an additional idea of an outcome, described functionally, to the system of the claim without providing any description of mechanism(s) for accomplishing it. MPEP § 2106.05(f) explains that, “The recitation of claim limitations that attempt to cover any solution to an identified problem with no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it"”. The amended language attempts to cover any changes to electronic games by any computer hardware and by any computer software.
Additionally, the courts have repeatedly held that claims that recite an idea of an outcome without reciting a specific process of achieving it remain ineligible. The claims, for example, lack any technical specifications of hardware or software or methods of operation attributed to the "game management system” that are necessary to accomplish the amended outcomes of changes to electronic games. The claims also lack specifying by what method or process ("how") these results are achieved. Courts have repeatedly emphasized that claims must describe the method or process used to accomplish the claimed results rather than simply claiming outcomes themselves.
In Interval Licensing LLC v. AOL Inc. (896 F.3d 1335), the court found that claims to a computer software attention manager that displays content on unused portions of a screen were result-oriented and invalid under 35 U.S.C. § 101 because they did not recite a specific technological method for achieving the claimed result.
In Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024), the court held that claims must not only describe desired outcomes but also include a specific process or machinery for achieving that result.
In re Killian, 45 F.4th 1373 (Fed. Cir. 2022): The court reaffirmed that claims simply reciting a desired result without specifying how to achieve it are directed to an abstract idea and are ineligible under 35 U.S.C. § 101. The claims at issue were directed to analyzing data from two databases. In the Step Two of the Alice test, the court determined that there was no inventive concept because the additional elements merely involved generic and routine data gathering and analysis steps that could have been performed with or without a computer.
And in Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024), the court stated that "the claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves these results. Claims of this nature are almost always found to be ineligible for patenting under Section 101. See, e.g., Elec. Power Grp., 830 F.3d at 1356 (“[T]he essentially result-focused, functional character of claim language has been a frequent feature of claims held ineligible under § 101, especially in the area of using generic computer and network technology to carry out economic transactions.”); Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“The claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way.”).
Claims 2-3 directed to insignificant post-solution activity – providing a report and a dashboard. Claims 4-5 describe fields of use, a multi-game gaming system and a plurality of gaming systems, without any particular hardware and/or software being attributed to this use. Claims 6-7 describe contents of data per se (indications of relationships, game themes) which amounts to nonfunctional descriptive material, which does not belong to a statutory category of invention. Claim 9 recites reordering data, which is both a human-adjacent activity and insignificant post-solution activity. Claims 10-14 and 16-20 recite further particulars of data per se, which again does not belong to a statutory category of invention and cannot impart eligibility to abstract ideas.
As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). In Flook, the Court reasoned that “[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.”
Claims 1-20 fail to integrate the judicial exception into a practical application for the following reasons:
The judicial exception of claims 1-20, per the guidance outlined in MPEP 2106.04(d), are not integrated into a practical application because the claims as presented merely describe intended outcomes of operating generic computers to practice the collecting, storing, analyzing and displaying of data.
In MPEP § 2106.05(f), it explained that, “The recitation of claim limitations that attempt to cover any solution to an identified problem with no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it"”. This is the instant scenario - the pending claims do not include any description of mechanisms for accomplishing results. Instead, the claims use some unspecified computer and unspecified programming to conduct generic steps of facilitating or enabling promotional activities. The claims seek to cover any system for applying the abstract activities.
In the field of the instant invention (conducting data collecting, storage, analysis and output using existing computer technology), an improvement would have to be found to an inherently technical problem existing in computers and would have to reveal how the computer(s) themselves are improved as a direct result of the claimed invention. And the details of the improvement to computers cannot be found in the details of the abstract ideas themselves. Genetic Techs v Merial, an inventive concept "cannot be furnished by the unpatentable law of nature" itself.
The instant claims appear to limit the abstract ideas to a particular type of data (collected game and game theme data) which has been held to be insignificant extra solution activity. See, e.g., Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (limiting use of abstract idea to the Internet); Electric Power, 830 F.3d at 1354, 119 USPQ2d at 1742 (limiting application of abstract idea to power grid data); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017) (limiting use of abstract idea to use with XML tags).
The instant claims are contrasted to those at issue in Data Engine Techs., 906 F.3d at 1007–08. In Data Engine Techs, a claimed method was not abstract where it “provide[d] a specific solution to then-existing technological problems in . . . prior art electronic spreadsheets,” and those pre-existing problems — that users of three-dimensional spreadsheets had to “master many complex and arbitrary operations” — were taught by the specification); cf. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1347 (Fed. Cir. 2018) (rejecting an asserted improvement where “Interval Licensing [did] not allege that computer display devices were previously unable to display information from more than one source”). In the instant claims, there is no evidence that the use of first and second data tables are solving such an existing problem specific to computing technology.
MPEP 2106.05(a) provides examples that the courts have indicated may show an improvement in computer functionality or show an improvement in existing technology. Here it is noted that:
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.
And MPEP 2106.05(f) describes that:
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone);
None of the examples provided by the courts for improving computer functionality are found in the instant claims. The instant claims are similar to examples the courts have not found to be enough to qualify as “significantly more”, including mere instructions to implement an abstract idea on a computer e.g., a limitation indicating that a particular function such as creating and maintaining electronic records for applying a commonplace business practice is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984. The claims invoke computers merely as a tool to apply the claimed abstract ideas for organized human activity.
The claims fail to recite details regarding how a computer aids the method or the significance of a computer to the performance of the method. No particular machine or manufacture is claimed that is used to implement the abstract idea or that is/are integral to the claim. The claims do not recite a specific improvement to the functioning of a computer (e.g., no improved rendering pipeline, no reduced latency synchronization protocol, no novel memory management, no graphics or physics engine management.)
There is no recited effectuation of a transformation or reduction of a particular article to a different state or thing. There is no application of the abstract ideas in any other meaningful way beyond generally linking the use of the abstract idea to a technological environment such that the claim as a whole is more than a drafting effort designed to monopolize the exception. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. Additionally, “If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1290-1291 (Fed. Cir. 2018).
Step 2A Prong 2 concludes in a determination that the additional elements do not amount to a practical application of the claimed abstract ideas.
Step 2B: In this step of the Alice analysis, it is assessed whether additional elements amount to significantly more than abstract ideas. Any well-understood, routine, conventional (“WURC”) activity is also discussed along with evidentiary considerations.
Absent integration into a practical application, the claims lack “significantly more” than the abstract idea.
Additional elements that are generic computer implementation and conventional components are:
“a game management system,” “a processor”, “a memory”
The specification characterizes these computing components as being conventional computing hardware and software performing ordinary functions (spec. [0005] and [0031]-[0033], a memory stores instructions, a processor processes instructions from memory, [0018] admits that any existing EGM’s can be used in the practice of the invention) supporting a finding that the implementation is well-understood, routine, and conventional (WURC). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (WURC must be supported); here, the instant specification itself indicates conventionality.
A thorough analysis of each and every limitation of each and every claim, both individually and as part of an ordered combination shows that claims 1-20 are not patent-eligible under 35 USC § 101.
Possible remedies:
To improve subject matter eligibility under 35 USC § 101, it is recommended to anchor the claims to concrete, non-generic technical mechanisms (such as particular software processes or nonobvious system architectures) in a way that there is evidence in the claims of certain improvements to computer or network operations or to another technology. In the field of the instant invention, an improvement would have to be found to an inherently technical problem existing in computers and would have to reveal how the computer(s) themselves are improved as a direct result of the claimed invention. The details of the improvement to computers cannot be found in the wording of the abstract ideas (details of ideas capable of being performed by human beings) themselves. Genetic Techs v Merial, an inventive concept "cannot be furnished by the unpatentable law of nature" itself. A subjective improvement in a user’s experience (by providing certain results of data analysis accomplished by unspecified hardware or software) is not an improvement to computers themselves or to computer technology and does not solve any stated problem that is inherently technical in nature.The court ruled in International Business Machines Corporation v. Zillow Group, Inc., (CAFC, 17 October, 2022), that "improving a user's experience while using a computer application is not, without more, sufficient to render the claims" patent-eligible. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
Examples might include to:
Tie abstract steps to a specific, non-generic technological implementation that improves computer functionality or another technology (e.g., reduces network latency by X, improves memory utilization via Y, improves image fidelity through Z), with technical mechanisms claimed.
Provide evidence of improvements to computers or network operations in the claims by claiming certain network nonobvious server-side architecture that is also claimed as solving problems existing in the art, or claiming a certain improvement in rendering such as a GPU-accelerated improvement that provides measurable improvements to game functionality.
Add claim elements showing a particular machine or a transformation of an article, beyond mere data manipulation or display functions.
Replace result-oriented terms (“collecting”, “generating”, “calculating”, “providing”) with concrete steps and parameters tied to the technical mechanism (e.g., explicit algorithmic operations, message formats, timing constraints, thresholds).
Limit scope to a specific technological field and architecture (e.g., “a distributed game server cluster employing [named protocol] with defined message cadence and buffer management”) and claim the architecture itself, avoiding broad “apply it on a computer” formulations.
Provide specification support demonstrating the asserted improvements are not well-understood, routine and conventional:
Implementation details: algorithms with stepwise operations, data structures with constraints, hardware configurations, protocol diagrams.
Performance evidence: benchmarks, latency/throughput graphs, memory usage comparisons versus baselines.
Engineering rationale: why existing approaches fail and how your mechanism achieves measurable gains.
Recite in the claims a technical solution to a technological problem (e.g., secure hardware-backed attestations, novel protocol flows, improved cryptographic operations, sensor fusion pipelines).
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 STEVEN J HYLINSKI whose telephone number is (571)270-1995. The examiner can normally be reached Mon-Fri 10-530.
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/STEVEN J HYLINSKI/Primary Examiner, Art Unit 3715