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
This is in response to the amendments filed on 3/13/26. Claims 1, 10, and 11 have been amended. Claims 1 – 11 are pending in the current application.
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 - 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1: It must be determined whether the invention falls in one of the four statutory categories of invention. Claims 1 – 11 are directed towards a system and a medium, (machine), which is a statutory category of invention.
Step 2a:
Prong 1: It must be determined whether the invention is directed to judicially recognized exception. Claim 1 is analyzed below with limitations indicating recitations of an abstract idea.
1. A game system comprising: a game terminal device configured to execute a video game including one or more contents used in a game; a server device configured to connect to the game terminal device via a communication network and configured to control progress of the video game; and one or more controllers configured to: issue a non-fungible token (NFT) corresponding to the content in a blockchain network, with a user who is an acquirer of the content as an owner, acquire transaction information of secondary distribution for each NFT corresponding to the content in the blockchain network, wherein the transaction information of the secondary distribution indicates that the NFT that has been put on a market once is sold again, and grant an in-game privilege to a user of the video game, if a granting condition related to the transaction information is satisfied.
The abstract idea is defined by the underlined portions exemplary claim 1, with substantially similar features found in claims 10 and 11. Dependent claims 2 – 9, further define the abstract idea or relate to the implementation of the abstract idea. The abstract idea is defined in at least the following grouping below:
Certain methods of organizing human activity (fundamental economic practice)
Mental processes (observation, evaluation, judgment)
The claims are directed towards an abstract idea of a fundamental economic practice which falls into the category of organizing human activity, (See MPEP 2106/04(a)(2)(II)(C)). More specifically, the claimed invention recites a gaming system executes an NFT transaction with a player of the gaming system. Controlling a game that allows a player to acquire an NFT represents a fundamental economic practice. This also represents following rules/instructions that define how the contest is conducted.
The claims are also directed towards a series of steps which can practically be performed by one or more human, which fall into the category of mental processes, (See MPEP 2106.04(a)(2)(III)). More specifically, the claimed invention is drawn towards a gaming system that may grant an in-game privilege to a player of the game if a granting condition is satisfied. The claims recite instructions for controlling a game with these features. Here, a human observe than an in-game privilege has been granted, and make the determination that a granting condition has been satisfied. Therefore, since the claimed invention can practically be performed in the human mind, it represents an ineligible abstract mental process.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
The claims recite a generic terminal device, server, and one or more controllers along with instructions that generate and present a game to a player, wherein said player may acquire an NFT, which is viewed as no more than instructions to implement a judicial exception.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2b: It must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception.
The claim language does recite a terminal device, a server, one or more controllers, and non-fungible tokens that are maintained via a blockchain, however, viewed as a whole, these additional elements are indistinguishable from conventional computing elements known in the art. The claims further discloses that the NFTs are maintained on a blockchain network. The recitation that the NFT is issued via a blockchain network, is likewise contextual and not tethered to a specific, claimed technical mechanism. See MPEP 2106.05(f) (data gathering) and 2106.05(g) (insignificant extra-solution activity). Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Viewing the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 - 11 rejected under 35 U.S.C. 102(a)(2) as being anticipated by Benedetto et al. (U.S. 2023/0182025.
Regarding claims 1, 10, and 11, Benedetto discloses a game system and computer-readable medium, (“the video game may be an online game, or a console game that is not online”, par. 0064), comprising a game terminal device configured to execute a video game including one or more contents used in a game, (“The game inputs may be provided using a game object in the video game. The game inputs generate outcomes within the video game”, par. 0064), a server device configured to connect to the game terminal device via a communication network and configured to control progress of the video game, (fig. 6), one more controllers configured to issue an NFT corresponding to the content in a blockchain network, with a user who is an acquirer of the content as an owner, (“The digital asset earned by the player may be used in the video game during gameplay”, par. 0041), acquire transaction information of secondary distribution for each NFT corresponding to the content in the blockchain network, (“The digital asset earned by the player may be used in the video game during gameplay or traded or sold to other players”, par. 0041 and fig. 2, part 217), wherein the Examiner views the digital asset being sold to other players as being equivalent a secondary distribution and part 217 of fig. 2 disclosing use of the digital asset being tracked as being equivalent to acquiring transaction information. Bennedetto further discloses wherein the transaction information of the secondary distribution indicates that the NFT that has been put on a market once is sold again, (“ The digital asset may be used by the player within the video game, or may be offered for sale or trade to other players for use in the video game, or may be ported to a different video game”, par. 0045), wherein the Examiner views the NFT being offered for or trade to other players as being equivalent to secondary distribution that indicates that the NFT has been put on a market again. Bennedetto further discloses granting an in-game privilege to a user of the video game, if a granting condition related to the transaction information is satisfied, (“The NFT generated for the digital asset is associated with the player who earned the digital asset in the video game. The digital asset may be a special game object or may be a privilege accorded to the player within the video game”, par. 0006).
Regarding claim 2, Benedetto discloses wherein the transaction information comprises identification information of a transferor and a transferee of the NFT corresponding to the content, and wherein the one or more controllers are configured to grant the in-game privilege to at least one of a user who is the owner of the NFT or a user who was a past owner of the NFT corresponding to the content for which the granting condition related to the transaction information is satisfied, (“The trading is initiated in response to selection of an option for trading of the digital asset by the player and identification of the select ones of the other players of the video game to trade with”, par. 0018).
Regarding claims 3 and 5, Benedetto discloses wherein the granting condition comprises a condition that a number of transactions of the NFT corresponding to the content has reached a predetermined number, and wherein the one or more controllers are configured to grant the in-game privilege to a user who has logged into the game during a predetermined period, if the granting condition is satisfied, (“When the game inputs provided by the player using the game asset (i.e., game object) result in a significant event occurring in the video game, the digital asset tracking engine 200 may award a digital asset to the player. The digital asset awarded to the player may be a “golden key” or a “golden pass” with capabilities to unlock a certain game item or a certain level in the video game, or may be a “trophy” that can be used to avail special privileges in the video game”, par. 0041).
Regarding claim 4, Benedetto discloses wherein the game system is configured to communicably cooperate with another system configured to provide a predetermined service associated with the video game to each user via the communication network, and wherein the in-game privilege comprises a privilege associated with the video game on the other system, (fig. 6).
Regarding claims 6 - 9, Benedetto discloses wherein the video game comprises a plurality of contents, wherein the one or more controllers are configured to: issue an NFT by associating granting target information with a content to which the in-game privilege is to be granted among the plurality of contents; and acquire the transaction information of the NFT associated with the granting target information among NFTs corresponding to the contents, (“The digital asset may be a game object or may be a trophy or golden key or golden pass or golden item awarded to the player to provide special privileges to the player”, par. 0047 and fig. 3).
Response to Arguments
Applicant's arguments filed on 3/13/26 have been fully considered but they are not persuasive. Regarding step 2A, with respect to claims 1, 10, and 11, Applicants argue that “the claimed limitations are not such a practice, an agreement, or management of personal behavior or relationships.” It is argued that the claim limitation of the NFT being sold again, “clearly represents improvements to the functioning of the game system”. The Examiner respectfully disagrees. The claims disclose issuing an NFT to a user who is acquiring the NFT. The further discloses the resale of an NFT. These steps administer issuance, storage, and redemption/authorization of a digital coupon, a prototypical commercial interaction. See MPEP 2106.04(a)(2)(II); Alice Corp. v. CLS Bank, 573 U.S. 208 (2014) (intermediated settlement is abstract), which represents a fundamental economic practice which falls into the category of organizing human activity.
Regarding step 2B, Applicants further argue that the “claimed elements and features, cannot reasonably be characterized as well-understood, routine, or conventional computer activity”. More specifically, it is argued, with respect to issuing an NFT corresponding to the content in a blockchain network, “the claims clearly represent improvements to the functioning of the game system and its controllers as well as the computer or the server side”. The Examiner respectfully disagrees. In response to this, as stated above, merely invoking a blockchain and “issuing an NFT corresponding to the content in a blockchain network”, does not, as claimed, improve the functioning of computers, networks, or blockchain technology. The client is simply issued an NFT . The claims do not recite how the client leverages or performs any consensus/cryptographic verification to improve performance, security, or reliability (e.g., no proof verification, reduced latency protocol, or resource optimization). The blockchain context is a field-of-use limitation, wherein steps like, issuing, sending, downloading, receiving a transaction request, for example, are generic instructions to apply an abstract commercial scheme using conventional components. The recitation that the NFT is issued via a blockchain network, is likewise contextual and not tethered to a specific, claimed technical mechanism. See MPEP 2106.05(f) (data gathering) and 2106.05(g) (insignificant extra-solution activity).
Applicants further argue with respect to step 2B that “the claims include elements that are sufficient to amount to significantly more than the judicial exception”. The Examiner respectfully disagrees. The additional elements, the terminal and server devices that execute and present a video game to users are well-understood, routine, and conventional computer functions. See Alice (generic computer). The issuing and acquiring of NFTs via a blockchain network, without a non-conventional arrangement of components or specific protocol details that improve computer operation (contrast BASCOM, 827 F.3d 1341 (Fed. Cir. 2016), does not specify any client-side verification or protocol optimization; it merely states a result of the platform’s normal consensus activity and thus cannot supply an inventive concept, (Berkheimer v. HP, 881 F.3d 1360 (Fed. Cir. 2018)). Therefore, the generic recitations are properly treated as conventional. For these reasons, it appears that the claims are not patent-eligible under 35 USC §101 as the claims do not integrate the exceptions into a practical application or add an “inventive concept” beyond well-understood, routine, and conventional computer components and functions.
Regarding the 102 rejection of claims 1 – 11, Applicants argue that “Bennedetto is silent regarding the transaction information of secondary distribution which indicates that the NFT that has been put on a market once is sold again”. The Examiner respectfully disagrees. As cited above, Bennedetto discloses, “ The digital asset may be used by the player within the video game, or may be offered for sale or trade to other players for use in the video game, or may be ported to a different video game”, (par. 0045), wherein the Examiner views the NFT being offered for or trade to other players as being equivalent to secondary distribution that indicates that the NFT has been put on a market again. Therefore, the Examiner maintains that Bennedetto anticipates the present invention as claimed.
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.
Conclusion
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/E.M.T/ Examiner, Art Unit 3715
/JUSTIN L MYHR/ Primary Examiner, Art Unit 3715
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