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 Submission of a Response
Applicant’s submission of a response on 5/5/2026 has been received and considered. In the response, Applicant amended claims 1, 10 and 19. Therefore, claims 1 – 20 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “one or more activable elements” in the limitation directed to generating a list of available gaming sessions, and subsequently recites “an activatable element of the one or more activatable elements” and “the activatable element”. The term “activable” and “activatable” are used inconsistently within the claim. There is insufficient antecedent basis for the limitation “the one or more activatable elements”, because only “one or more activable elements” was previously mentioned. Therefore, it is unclear whether the recited “activatable elements” are the same as, or distinct from, the previously-recite “activable elements”. For the purpose of examination, the terms are treated as referring to the same element(s). Claims 10 and 19 recites the same inconsistency between “one or more activable elements” and “the one or more activatable elements” and “the activatable element”.
All dependent claims inherit the deficiencies of the claim(s) from which they depend and are similarly rejected for the same reason.
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- 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1- 20 are all within at least one of the four categories of invention, and have been analyzed to determine whether they are directed to any judicial exceptions.
Step 2A, Prong 1
Each of claims 1 – 20 recites at least one step or instruction for facilitating a gaming session between two or more players, which is grouped as a mental process and certain methods of organizing human activity under the 2019 PEG. The claimed limitations involve concepts performed in the human mind, namely observation, evaluation and judgement, which are mental processes and managing personal behavior and following rules or instructions, which are methods of organizing human activity under the 2019 PEG. Accordingly, each of Claims 1 - 20 recites an abstract idea.
Independent Claim 1 recites:
A system comprising:
at least one processor; and
memory storing instructions that, when executed by the at least one processor, causes the system to perform a set of operations, the set of operations comprising:
providing a remote device access, via a network, to a social network platform, wherein the social network platform is associated with a type of activity,
receiving, via activation of a selectable user interface element included in a user’s feed, a request to view game sessions (managing personal behavior which is grouped as a certain method of organizing human activity and judgement or evaluation, which is grouped as a mental process and managing personal behavior under the 2019 PEG);
in response to receiving the request, generating a list of available gaming sessions, wherein the list of available gaming sessions comprises one or more activable elements associated with one or more gaming sessions in the list of available gaming sessions (managing personal behavior which is grouped as a certain method of organizing human activity and judgement or evaluation, which is grouped as a mental process and managing personal behavior under the 2019 PEG);
receiving an indication of selection of an activatable elements of the one or more activatable elements associated with the one or more gaming session (managing personal behavior which is grouped as a certain method of organizing human activity and judgement or evaluation, which is grouped as a mental process and managing personal behavior under the 2019 PEG);
when the activatable element is associated with joining a gaming session of the one or more gaming sessions (managing personal behavior which is grouped as a certain method of organizing human activity and judgement or evaluation, which is grouped as a mental process and managing personal behavior under the 2019 PEG):
retrieving, from a gaming session datastore, information related to the gaming session (managing personal behavior which is grouped as a certain method of organizing human activity and judgement or evaluation, which is grouped as a mental process and managing personal behavior under the 2019 PEG); and
providing the information related to the gaming session (managing personal behavior which is grouped as a certain method of organizing human activity and judgement or evaluation, which is grouped as a mental process and managing personal behavior under the 2019 PEG); and
facilitating communication, via the social network platform, between two or more mobile devices associated with the gaming session (managing personal behavior which is grouped as a certain method of organizing human activity and judgement or evaluation, which is grouped as a mental process and managing personal behavior under the 2019 PEG).
Accordingly, as indicated above, each of the above-identified claims recites an abstract
idea. Further, dependent Claims 2 – 9, 11 – 19 and 20 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2
The above-identified abstract idea in each of independent Claims 1 , 10 and 19 (and their respective dependent Claims 2 – 9, 11 – 19 and 20) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in independent Claims 1, 10 and 19), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of: processor, memory, remote device, a network, user interface and social network platform as recited in independent Claims 1, 10 and 19 and its dependent claims are generically recited computer elements which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Furthermore, social network platform and the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer/computing device. For at least these reasons, the abstract idea identified above in independent Claims 1, 10 and 19 (and their respective dependent Claims 2 – 9, 11 – 19 and 20) are not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application
under 2019 PEG because the claimed system merely implements the above-identified abstract
idea (e.g., mental process) using rules (e.g., computer instructions) executed by a computer (e.g.
processor, memory, remote device, a network, user interface and social network platform as recited in independent claims 1, 10 and 19). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer/computing device.
Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1, 10 and 19 (and their respective dependent Claims 2 – 9, 11 – 19 and 20) are not integrated into a practical application under the 2019 PEG.
Step 2B
None of the Claims 1 – 20 include additional elements that are sufficient to amount to
significantly more than the abstract idea for at least the following reasons. These claims require the additional elements of: processor, memory, remote device, a network, user interface and social network platform as recited in the independent claims.
The above-identified additional elements are generically claimed computer components
which enable the above-identified abstract idea(s) to be conducted by performing the basic
functions of automating mental tasks. The courts have recognized such computer functions as
well-understood, routine, and conventional functions when claimed in a merely generic manner
(e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev.
Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015);
and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Like SAP America vs InvestPic, LLC (Fed. Cir. 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
The recitation of the above-identified additional limitations in Claims 1 – 20 amounts to
mere instructions to implement the abstract idea on a computer. Simply using 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 (e.g., a fundamental economic practice or mathematical equation) does
not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing
technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a
technical explanation as to how to implement the invention should be present in the specification
for any assertion that the invention improves upon conventional functioning of a computer, or
upon conventional technology or technological processes. That is, the disclosure must provide
sufficient details such that one of ordinary skill in the art would recognize the claimed invention
as providing an improvement. Here, Applicant’s specification does not include any discussion of
how the claimed invention provides a technical improvement realized by these claims over the
prior art or any explanation of a technical problem having an unconventional technical solution
that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d
1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide
sufficient details regarding the manner in which the claimed invention accomplishes any
technical improvement or solution.
For at least the above reasons, claims 1 – 20 are directed to applying an abstract idea (e.g., mental process or certain method of organizing human activity) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 1 – 20 provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements
do not provide significantly more. Specifically, when viewed individually, the above-identified
additional elements in independent Claims 1, 10 and 19 (and their dependent claims) do not add
significantly more because they are simply an attempt to limit the abstract idea to a particular
technological environment. That is, neither the general computer elements nor any other
additional element adds meaningful limitations to the abstract idea because these additional
elements represent insignificant extra-solution activity. When viewed as a combination, these
above-identified additional elements simply instruct the practitioner to implement the claimed
functions with well-understood, routine and conventional activity specified at a high level of
generality in a particular technological environment. As such, there is no inventive concept
sufficient to transform the claimed subject matter into a patent-eligible application. As such, the
above-identified additional elements, when viewed as whole, do not provide meaningful
limitations to transform the abstract idea into a patent eligible application of the abstract idea
such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 1 – 20 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a
technical field (as in DDR).
Therefore, none of the claims 1 – 20 amounts to significantly more than the abstract idea
itself.
Accordingly, claims 1 – 20 are not patent eligible and rejected under 35 U.S.C. 101 as
being directed to abstract ideas implemented on a generic computer in view of the Supreme
Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
Response to Arguments
Applicant's arguments filed 5/5/2026 have been fully considered but they are not persuasive. Applicant argues on p. 9 – 10 that the claims are not directed to a method of organizing human activity because the amended claims relate to facilitating a connection between two or more mobile devices associated with a gaming session. Applicant argues “establishing a network connection between devices” is not included in the enumerated groupings of organizing human activity. The Examiner respectfully disagrees.
First, the claims do not recite “establishing a network connection between devices”. The limitations in the independent claims recites “facilitating communication, via the social network platform, between two or more mobile devices associated with the gaming session”. Neither this limitation nor any other limitation of the claims recites establishing or setting up a network connection, nor any specific technical mechanism by which the connection would be established (e.g., any networking protocol, handshake, routing, etc). The limitation is recited in result-oriented terms, the outcome of “facilitating communication” without reciting how communication is achieved at a technical level.
Further, the amendment of “players” to “mobile devices” does not remove the claims from the enumerated groupings of abstract ideas. Under the broadest reasonable interpretation, facilitating communication between two or more mobile devices associated with a gaming session is the facilitation of communication and interaction among the players participating in that gaming sessions. The recited mobile devices are generically recited and function as proxies for the participants. Facilitating communication among participants of a gaming session is a certain method of organizing human activity (interactions between people, social activities, and following rules or instructions) and/or mental process.
According to the October 2019 Update on Eligibility Guidance, the sub-groupings of
certain methods of organizing human activity “encompass both activity of a single person…and
activity that involves multiple people” (p. 5). The October 2019 Update concludes, “thus, certain
activity between a person and a computer… may fall within the ‘certain methods of organizing
human activity’ grouping” (p. 5). Because computer elements do not diminish the recitation of
certain methods of organizing human activity in a claim, the applicant’s argument is not persuasive.
Additionally, the October 2019 Update on Subject Matter Eligibility states “[c]laims can recite a mental process even if they are claimed as being performed on a computer” and “[c]laims requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (p. 8). Furthermore, the October 2019 Update states, “examiners may review the specification to determine if the underlying claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, 2) in a computer environment or 3) is merely using a computer as a tool to perform the concept” (p. 8).
Additionally, the above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well-understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Like SAP America vs InvestPic, LLC (Fed. Cir. 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
Therefore, the 101 rejection is maintained.
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 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 ANKIT B DOSHI whose telephone number is (571)270-7863. The examiner can normally be reached Mon - Fri. ~8:30 - ~5:30.
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/ANKIT B DOSHI/Examiner, Art Unit 3715
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