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 .
Response to Amendment
Examiner acknowledges receipt of amendment/arguments filed 01/23/2026. The arguments set forth are addressed herein below. Claims 1, 3-7, 10-20, and 23 remain pending, no Claims have been newly added, and Claims 2, 8-9, and 21-22 have been currently canceled. Currently, Claims 1, 3, 7, 10-12, 14, 19-20, and 23 have been amended. No new matter appears to have been entered.
The amendment to Claim 14 is sufficient to overcome the corresponding claim objection. The claim objection of Claim 14 has been withdrawn.
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, 3-7, 10-20, and 23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 3-6, 15, and 17-19 is/are directed towards a statutory category they are directed to either a process, machine, manufacture, or composition of matter (Step 1, Yes).
Claim 19 recites, in part, the limitations of […]; […]; and […]: […] execute a game; stores, […], one or more game types that have been registered as a favorite by a player […]; receives, from the player […], a display request to display a list […] showing the registered game types, wherein the display request is associated with a specific condition that an execution deadline indicating an end of the game type has not yet arrived at a time of receiving the display request; in response to receiving the display request, identifies, from among the registered game types, a game type that satisfies the specific condition; and […] display the game type that has been identified, at a top of a list of the registered game types on the list […]. These limitations, individually and in combination, describe or set forth the abstract idea in claim 19 (and similarly in claim 1). The Examiner notes that the specific limitations that describe or set forth the abstract idea in Step 2A Prong 1 can be identified either individually or in combination (see p. 54 of 2019 Revised Patent Subject Matter Eligibility Guidance).
Under the broadest reasonable interpretation, the claims recite limitations that can be practically performed in the human mind or by a human using pen and paper. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found 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” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Thus, the claims recite a mental process.
The claims also recite limitations that are considered a fundamental economic principle or practice (e.g., relating to commerce and economy), commercial interactions, business relations, managing personal behavior or relationships or interactions between people. The Examiner notes that certain activity between a person and a computer may fall within the certain methods of organizing human activity grouping (see p. 5 of the October 2019 Update: Subject Matter Eligibility).
Therefore, the claims fall under the following enumerated groupings of abstract ideas: mental processes (e.g., concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)), and/or certain methods of organizing human activity (e.g., fundamental economic principles or practices (including hedging, insurance, mitigating risk), commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)) (Step 2A, Prong 1, Yes).
Claim 19 recites the additional element(s) of “An information processing device that communicates with a terminal device comprising a display device via a network, the information processing device, comprising: a storage device […]; a display device […]; and a processor that: causes the terminal device to execute […]; stores, in the storage device, […]; receives, from the player via the terminal device, […] display a list screen […]; […]; and causes the display device of the terminal device to preferentially display […]. These additional element(s) are recited at a high level of generality, and under the broadest reasonable interpretation are generic processor(s) and/or generic computer component(s) that perform generic computer functions. The generic processor and/or generic computer component limitation(s) are no more than mere instructions to apply the exception using a generic computer component. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional elements amount to adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computers and/or generic computer components does not integrate the judicial exception or amount to 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. Using a computer to generate data, compute a result, and return the result to a user amounts to electronic data query and retrieval—some of the most basic functions of a computer. “[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application or add significantly more. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (Step 2A Prong 2, No).
Additionally, the specification makes it clear that the apparatus for displaying a game type from a list of registered game types that satisfies a specific condition can be implemented on a generic computer.
[0049] Each terminal device 12 is an information processing device belonging to a player, and is an information processing device that provides a game to a player by executing the game program 14 received from the server device 10 after the instructions have been installed. Examples of these terminal devices 12 include video game machines, arcade game machines, mobile phones, smartphones, tablets, personal computers, and various other such devices.
As such, the information processing device, for implementing the abstract idea, may require no more than generic, conventional, and well-known computer devices such as a general purpose computer (as evidenced in Para. 49).
In Step 2B, the additional element(s) also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong 2. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. However, unless an Examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B (see 2019 Revised Patent Subject Matter Eligibility Guidance). Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application or amount to significantly more because they do not impose any meaningful limits on practicing the abstract idea (Step 2B, No).
Thus, Claims 19 and 1 are rejected as shown above. Additionally, Claims 3-6, 15, and 17-18 also recite limitations that are similar to the abstract ideas identified with respect to Claim 19 above (i.e., certain methods of organizing human activities and/or mental processes). Claims 3-6, 15, and 17-18 do not recite any additional elements other than those recited in Claim 19. Therefore, for the same reasons set forth with respect to Claim 19, Claims 3-6, 15, and 17-18 also do not integrate the judicial exception into a practical application or amount to significantly more.
Claims 7, 10-14, 16, 20, and 23 is/are directed towards a statutory category they are directed to either a process, machine, manufacture, or composition of matter (Step 1, Yes).
Claim 20 recites, in part, the limitations of […]; […]; and […]: […] execute a game; stores, […], one or more game types that have been registered as a favorite by a player […]; receives, from the player […], a display request to display a list […] showing the registered game types, wherein the display request is associated with a specific condition a number of game executions by the player is at least a first specific number of times or less than the first specific number of times; in response to receiving the display request, identifies, from among the registered game types, a game type that satisfies the specific condition; and […] display the game type that has been identified, at a top of a list of the registered game types on the list […]. These limitations, individually and in combination, describe or set forth the abstract idea in claim 20 (and similarly in claim 7). The Examiner notes that the specific limitations that describe or set forth the abstract idea in Step 2A Prong 1 can be identified either individually or in combination (see p. 54 of 2019 Revised Patent Subject Matter Eligibility Guidance).
Under the broadest reasonable interpretation, the claims recite limitations that can be practically performed in the human mind or by a human using pen and paper. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found 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” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Thus, the claims recite a mental process.
The claims also recite limitations that are considered a fundamental economic principle or practice (e.g., relating to commerce and economy), commercial interactions, business relations, managing personal behavior or relationships or interactions between people. The Examiner notes that certain activity between a person and a computer may fall within the certain methods of organizing human activity grouping (see p. 5 of the October 2019 Update: Subject Matter Eligibility).
Therefore, the claims fall under the following enumerated groupings of abstract ideas: mental processes (e.g., concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)), and/or certain methods of organizing human activity (e.g., fundamental economic principles or practices (including hedging, insurance, mitigating risk), commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)) (Step 2A, Prong 1, Yes).
Claim 20 recites the additional element(s) of “An information processing device, that communicates with a terminal device comprising a display device via a network, comprising: a storage device […]; a display device […]; and a processor that: causes the terminal device to […]; stores, in the storage device, […]; receives, from the player via a terminal device, […] display a list screen […]; […]; and causes the display device of the terminal device to preferentially display […]. These additional element(s) are recited at a high level of generality, and under the broadest reasonable interpretation are generic processor(s) and/or generic computer component(s) that perform generic computer functions. The generic processor and/or generic computer component limitation(s) are no more than mere instructions to apply the exception using a generic computer component. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional elements amount to adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computers and/or generic computer components does not integrate the judicial exception or amount to 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. Using a computer to generate data, compute a result, and return the result to a user amounts to electronic data query and retrieval—some of the most basic functions of a computer. “[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application or add significantly more. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (Step 2A Prong 2, No).
Additionally, the specification makes it clear that the apparatus for displaying a game type from a list of registered game types that satisfies a specific condition can be implemented on a generic computer.
[0049] Each terminal device 12 is an information processing device belonging to a player, and is an information processing device that provides a game to a player by executing the game program 14 received from the server device 10 after the instructions have been installed. Examples of these terminal devices 12 include video game machines, arcade game machines, mobile phones, smartphones, tablets, personal computers, and various other such devices.
As such, the information processing device, for implementing the abstract idea, may require no more than generic, conventional, and well-known computer devices such as a general purpose computer (as evidenced in Para. 49).
In Step 2B, the additional element(s) also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong 2. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. However, unless an Examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B (see 2019 Revised Patent Subject Matter Eligibility Guidance). Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application or amount to significantly more because they do not impose any meaningful limits on practicing the abstract idea (Step 2B, No).
Thus, Claims 20 and 7 are rejected as shown above. Additionally, Claims 10-14, 16, and 23 also recite limitations that are similar to the abstract ideas identified with respect to Claim 20 above (i.e., certain methods of organizing human activities and/or mental processes). Claims 10-14, 16, and 23 do not recite any additional elements other than those recited in Claim 20. Therefore, for the same reasons set forth with respect to Claim 20, Claims 10-14, 16, and 23 also do not integrate the judicial exception into a practical application or amount to significantly more.
Prior Art
The Examiner notes that after a thorough search on the claims as currently presented, the claims currently overcome prior art. The closest prior art found to date are the following:
Hirota (US 2007/0087827) discloses the concept of when the competitive game schedule creation unit creates a competitive game schedule such as a league schedule and tournament schedule, it may set an expiration date for them, FIG. 11 shows a pending list to manage a competitive game in which the expiration date has not elapsed, the competitive game schedule creation unit registers in the pending list, for example, the created competitive game ID in association with its expiration date.
Response to Arguments
Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Regarding the rejections under 35 USC 101, Applicant states: “Firstly, under Step 2A, prong (1), the amended independent claims reciting the above
combination of limitations cannot practically be performed in the human mind or by a human using pen and paper. For example, the above limitations require an information processing device that communicates with a terminal device comprising a display device via a network and causing a display device to render an image preferentially displaying a game type identified as satisfying a specific condition that an execution deadline indicating an end of the game type has not yet arrived at a time of receiving the display request or a specific condition that a number of game executions by the player is at least a first specific number of times or less than the first specific number of times. The human mind cannot "practically" perform these steps. See, e.g., MPEP § 2106.04(a)(2).III.A ("Claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind"); see id. ("Examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include: a claim to detecting suspicious activity by using network monitors and analyzing network packets, [and] a claim to a method for rendering a halftone image of a digital image"). Nor are the amended independent claims directed to any "method of organizing human activity." The amended claims does not, at all, relate to "fundamental economic principles or practices," "commercial or legal interactions," or "managing personal behavior or relationships or interactions between people," as provided in MPEP § 2106.04(a)(2)II.”
In response, the Examiner respectfully disagrees. The limitations outlined above, that exclude the additional elements, are limitations that can be practically performed in the human mind, and are considered certain methods of organizing human activity. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found 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” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The additional elements identified above are being used as tools, in their ordinary capacity, to perform the abstract idea. The advance lies entirely in the realm of the abstract idea.
Additionally, as recited above, the claims also recite limitations that are considered a fundamental economic principle or practice (e.g., relating to commerce and economy), commercial interactions, business relations, managing personal behavior or relationships or interactions between people. Such that, the claims, based on sorting favorite games, in a list, based on a deadline or a number of plays, fall under the abstract idea grouping relating to certain methods of organizing human activity (e.g., fundamental economic principles or practices (including hedging, insurance, mitigating risk), commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)). The claims, as outlined above, clearly relate to rules/steps for sorting or organizing listed favorite games (i.e., organizing human activity).
Thus, claims 1, 3-7, 10-20, and 23 recite limitations that are considered at least a mental process or certain methods of organizing human activity.
Regarding the rejections under 35 USC 101, Applicant states: “Similarly to Example 37, the above limitations of the amended independent claims
recite a specific manner of "preferentially display[ing] the game type that has been identified, at a top of a list of the registered game types on the list screen," based on whether the game type satisfies "a specific condition that an execution deadline indicating an end of the game type has not yet arrived at a time of receiving the display request" or "a specific condition that a number of game executions by the player is at least a first specific number of times or less than the first specific number of times." According to above limitations, the terminal device, in cooperation with the information processing device, preferentially displays the game type that "have been registered as a favorite" and "satisfies
the specific condition" at the top of the list on the list screen. This configuration improves the functionality of the display device for selecting games that are registered as the favorite and have not yet been executed or that have been executed less than a specific number of times. See id. at paras. [0162]-[0165] and [0218]-[0221]. This provides a concrete improvement over prior systems,
resulting in an improved user interface for electronic devices.”
In response, the Examiner respectfully disagrees. “Examiners are reminded that examples issued by the Office in conjunction with the Interim Eligibility Guidance are intended to show exemplary analyses only and should not be used as a basis for a subject matter eligibility rejection or relied upon in the same manner as a decision from a court” (see p. 2 of May 2016 Memorandum: Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection). Additionally, the facts of the application here do not uniquely match the facts at issue in claim 1 of Example 37. In fact, it appears the corresponding claims more uniquely match the facts at issue in claim 3 of Example 37. Wherein the information processing device is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing and displaying/outputting data (sorting favorite games, in a list, based on a deadline or a number of plays, and displaying said list). Sorting favorite games, in a list, based on a deadline or a number of plays is not analogous to claim 1 of Example 37 nor is sorting and displaying a list of information, an improvement to a user interface as displaying/outputting information is what computers do (i.e., a generic computer function). Thus, claims 1, 3-7, 10-20, and 23, as shown above, recite generic processor limitations with no more than mere instructions to apply the exception using a generic computer component. Accordingly, the above discussed elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Regarding the rejections under 35 USC 101, Applicant states: “Moreover, under Step 2B, the amended claims recite unconventional steps that are not
well-understood, routine, or conventional in the field. The Examiner has not contended otherwise either in the outstanding Office Action or during the December 11 interview. Therefore, the combination of the above limitations is as a whole amounts to "unconventional steps that confine the claim to a particular useful application," namely, "significantly more" than the abstract idea.”
In response, the Examiner respectfully disagrees. "[L]ack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional activities. Because they are separate and distinct requirements from eligibility, patentability of claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101". (MPEP 2106.05(I)). Therefore, as shown above, the claims do not integrate the judicial exception into a practical application or amount to significantly more.
In light of the above analysis, the applicant’s arguments are not persuasive and the claimed invention fails to demonstrate patent-eligibility.
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 CHASE E LEICHLITER whose telephone number is (571)270-7109. The examiner can normally be reached Monday-Friday (10-6).
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/CHASE E LEICHLITER/Primary Examiner, Art Unit 3715
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