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
Applicant’s amendments necessitated the new ground of rejection set forth herein; therefore, this action is made Final.
Examiner acknowledges receipt of Applicant’s amendments and arguments filed 12/31/2025. The arguments set forth are addressed herein below.
Claim 20 was cancelled and claim 21 was added.
Claims 1-19 and 21 are now pending.
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 to 19, and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. Each of Claims 1 to 19, and 21 has been analyzed to determine whether it is directed to any judicial exceptions.
The examiner follows the two step-analysis, as described in MPEP 2106 (available at https://www.uspto.gov/web/offices/pac/mpep/s2106.html). The following diagram is an overview of the steps involved.
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Step 1
Step 1 of the two step-analysis considers whether the claims fall into one of the four statutory categories of invention such as a process, machine, manufacture, or composition of matter. The instant invention claims a computer implemented method in Claims 1-10, a device in Claims 11 to 19, and a non-transitory computer readable medium in Claim 21. As such, the claimed invention falls into the broad statutory categories of invention. However, claims that fall within one of the four statutory categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas.
Step 2A
Step 2A has been further divided into two prongs as shown in the following diagram.
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Step 2A, Prong 1
Under prong 1 of step 2A, the examiner considers whether the claim recites an abstract idea, law of nature or natural phenomenon. The term “abstract idea” is not interpreted as a layperson might. Instead, the term “abstract idea” is interpreted as described in legal opinions by courts.
According to MPEP 2106.04(a):
the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – 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); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Specifically, independent Claim 1 (and similarly recited Claims 11 and 21) recites “…1. (Currently Amended) A computer-implemented method
determining, by [[the]] a device, a user attention parameter relative to [[the]] an electronic game content being outputted on a display, wherein the user attention parameter corresponds to an estimate of user focus on a presentation of the electronic game content
determining, by the device, based at least in part on the user attention parameter, a presentation format that modifies the electronic game content presentation;
generating, by the device, based at least in part on the user attention parameter, an in-game reward for use in the electronic game content;
providing, by the device, the in-game reward in the electronic game content; and
outputting, by the device, the electronic game content on the display using the presentation format.”
The italicized portions of representative Independent Claim 1, and similarly recited Independent Claims 11 and 21, generally encompass the abstract ideas. The Independent Claims generally encompass the abstract ideas, for example as, each of at least one step or instruction or rule for: (i) an observation, judgement or evaluation, which is a mental process under the 2019 PEG. The claims generally encompass the steps of determining…, and generating…, which are steps that can be done in the human mind. The claim can also encompass a method of organizing human activities (e.g., platform management) as discussed in Bilski v. Kappos, 561 U.S. 593 (2010) and Alice Corp. v. CLS Bank. The claim recites rewards based on user attention and presenting content based on engagement, which maybe categorized as managing personal behavior and/or following rules or instructions activity. The dependent claims 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. Accordingly, each of Claims 1 to 19 and 21 recites an abstract idea.
Step 2A, Prong 2
Under prong 2 of step 2A, the examiner considers whether the additional elements in the claims integrate the abstract idea into a practical application. According to 2019 PEG, the following considerations indicative of integration into a practical application includes looking at the elements individually and in combination:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses 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.
Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
The claims further recite additional elements such as a device, a display, an interface, a memory, a processor, and non-transitory computer-readable media, yet these are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
The determining, and generating steps, are deemed to be data gathering and data presentation for the use of the judicial exception and similarly are recited at a high level of generality. Thus, these limitations are a form of insignificant extra-solution activity (See MPEP 2106.05(g), See also selecting a particular source and type of data to be manipulated where “Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)). Furthermore, the additional elements do not 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.
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, 11, and 21 (and their respective dependent claims) is not integrated into a practical application under 2019 PEG.
Accordingly, Claims 1, 11, 21, and their dependent claims as a whole does not integrate the recited judicial exception into a practical application and these claims are directed to the judicial exception. Thus, Claims 1-19, and 21 lack the eligibility requirements of Step 2 Prong II.
Step 2B
Finally, under step 2B, the examiner evaluates whether the additional elements:
add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present (MPEP 2106.05(d)); or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018).
Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
Independent Claims 1, 11, and 21 do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. As discussed above with respect to the lack of a practical application, the additional elements in the claim of a device, a display, an interface, a memory, a processor, and non-transitory computer-readable media, amount to no more than mere instructions to apply the exception using generic computer components used as tools. These additional elements are generically claimed computer components which enable a game to be conducted by performing the basic functions of: (i) receiving, processing, and storing data, (ii) automating mental tasks and (iii) receiving or transmitting data over a network, e.g., using the Internet to gather data. 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. Further, under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be reevaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
Here, the determining, and generating steps of the claims are deemed to be data gathering and data presentation extra-solution activity. Court decisions cited in MPEP 2106.05(d)(II) indicate that these limitations are well-understood, routine, and conventional function when it is claimed in a merely generic manner (as they are here). See storing and retrieving information in memory (MPEP 2106.05(d)(II)(iv) and then to present or display said information is well known as in presenting offers and gathering statistics (MPEP 2106.05(d)(II)(iii). Accordingly, a conclusion that the step is well-understood, routine, conventional activity is supported under Berkheimer. Therefore, these limitations remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more.
For at least the above reasons, the Claims 1-19, and 21 are directed to applying an abstract idea (e.g., rules for organizing human activities and/or mental process) 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 to 19, and 21 provides 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.
Therefore, none of the Claims 1 to 19, and 21 amounts to significantly more than the abstract idea itself (Step 2B: NO).
Accordingly, Claims 1 to 19, and 21 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 the 2019 PEG.
Dependent Claims are ineligible and lack a practical application. They further recite extra-solution activities and further define the abstract idea of the independent claims. Claims 2-9 inherit the same abstract idea as Claim 1. Claims 12-19 inherit the same abstract idea as Claim 11.
AIA Notice
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 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.
Claim Rejections - 35 USC § 103
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2023/0007343 A1 to Daly et al. (hereinafter Daly) in view of U.S. Patent Application Publication 2019/0076736 A1 to Timm.
Regarding Claim 1, and similarly recited Claims 11 and 21, (Currently Amended) Timm discloses a computer-implemented method
determining, by [[the]] a device, a user attention parameter relative to [[the]] an electronic game content being outputted on a display, wherein the user attention parameter corresponds to an estimate of user focus on a presentation of the electronic game content
based at least in part on the user attention parameter, a that modifies the electronic game content presentation (paras. [0034]-[0035] discloses selecting/altering the presentation format based on the attention parameter, for example adjusting audio); and
outputting, by the device, the electronic game content on the display using the presentation format (paras. [0030]-[0040]).
Daly does not explicitly disclose the content as an electronic game and generating, by the device, based at least in part on the user attention parameter, an in-game reward for use in the electronic game content; and providing, by the device, the in-game reward in the electronic game content.
In a related invention, Timm discloses the content as an electronic game (para. [0004] discloses at least one processor to receive from a camera at least one image of a player of a computer game) and
generating, by the device, based at least in part on the user attention parameter, an in-game reward for use in the electronic game content (see at least claim 1, determine a direction of gaze of the player, correlate the direction of gaze to at least one object in the computer game to establish a correlation, use the correlation to determine at least one of: a player skill attribute; figs. 4-5, paras. [0046], [0048]-[0051], [0053]); and
providing, by the device, the in-game reward in the electronic game content (figs. 4-5, paras. [0046], [0048]-[0051], [0053] discloses the player's attention is correlated to an object in the commuter game. When eye tracking is used, this may be done by determining, based on the direction of the player's gaze, the location of the game frame the player is looking at, in some cases based on the assumption that the display presenting the game is located directly in front of the player's face. update a count or score based on the object correlated … based on the count/score, game execution can be modified … game execution may be modified by establishing, based on the attention focus logic of FIG. 4, the player's skill level or other gamer attribute such as the player's (or character representing the player) “morality” score/flag, adjusting bonuses/penalties to non-player character (NPC) interactions, etc.) (the skill upgrade or score increment derived from player attention is the “in-game reward”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the features of Daly with the attention-based gaze feature of Timm in order to incentive players for their sustained attention during game play and further enhance their enjoyment of the game.
Regarding Claim 2, and similarly recited Claim 12, (Original) Daly in view of Timm discloses the method of claim 1, wherein the electronic game content is presented including at least one of audio and video content, and wherein the presentation format scales output of the at least one of the audio and video content (Daly, paras. [0035]-[0045] discloses scaling audio and/or video output).
Regarding Claim 3, and similarly recited Claims 13, (Currently Amended) Daly in view of Timm discloses the method of claim [[1]]4, wherein determining the user attention parameter is at least in part on eye tracking data captured of a user during presentation of the electronic game content (Timm, paras. [0047]-[0048], [0054] discloses gaze tracking and receiving from a camera at least one image of a player … determine a direction of the gaze).
Regarding Claim 4, and similarly recited Claim 14, (Currently Amended) Daly in view of Timm discloses the method of claim 1, wherein determining the user attention parameter is at least in part on at least one of camera data, eye tracking data, user accelerometer data, [[and]] or content interaction data (Timm, paras. [0033], [0047]-[0048], [0053]-[0054]).
Regarding Claim 5, and similarly recited Claim 15, (Currently Amended) Daly in view of Timm discloses the method of claim 1, wherein the user attention parameter tracks user focus relative to at least one of a user [[]]-controlled game element and a target of the electronic game content (Timm, paras. [0033], [0047]-[0048], [0053]-[0054]).
Regarding Claim 6, and similarly recited Claim 16, (Currently Amended) Daly in view of Timm discloses the method of claim 1, wherein determining the presentation format includes reducing output quality of at least one display area of the electronic game content based on the user attention parameter (Daly, paras. [0046]-[0047]).
Regarding Claim 7, and similarly recited Claim 17, (Currently Amended) Daly in view of Timm discloses the method of claim 1, wherein determining the presentation format includes scaling display size of at least one electronic game element image (Daly, paras. [0045]-[0046]).
Regarding Claim 8, and similarly recited Claim 18, (Currently Amended) Daly in view of Timm discloses the method of claim 1, further comprising determining, by the device, that the user attention parameter is maintained for a predetermined period of time, wherein generating the in-game reward is in response to determining that the user attention parameter is maintained for the predetermined period of time
Regarding Claim 9, and similarly recited Claim 19, (Currently Amended) Daly in view of Timm discloses the method of claim 1, further comprising detecting, by the device, a sound level for an environment of the display wherein determining the presentation format is based at least in part on the environment
Regarding Claim 10, and similarly recited Claim 19, (Original) Daly in view of Timm discloses the method of claim 9, wherein output of the electronic game content includes controlling directive output of electronic game audio based on the sound level of the environment (Daly, paras. [0049]-[0050]).
Response to Arguments/Remarks
Applicant’s arguments filed 12/31/2025 have been fully considered but they are moot because the arguments do not apply to any of the references used in the current rejection. The 102(a)(2) rejection over Daly (US 2023/0007343) is hereby withdrawn in view of Applicant’s addition of “generating … an in-game reward” and “providing … the in-game reward” limitations to Independent Claims 1 and 11. However, upon conducting an updated search and consideration, the pending claims are rejected the new ground(s) set forth above.
Conclusion
Claims 1-19, and 21 are examined above.
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.
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/S.N.H/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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