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 .
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 an abstract idea without significantly more. A detailed analysis of claim 1 is as follows:
Claim 1 (method):
“storing a reward for a user performing an event of a game program as a first blockchain of a user account of the user in a connected blockchain network;”
“extracting information about a reward of the user account deducted as a price for changing a parameter of the game program from a client connected by the user account;”
“distributing a second blockchain including information about the deducted reward to the connected blockchain network.”
Step 1: Statutory category determination.
The claim is drawn to a “method,” i.e., a process under 35 U.S.C. § 101. Thus, they fall within a statutory category.
Step 2A, Prong 1: Identify judicial exception(s) with citations to PEG groupings; quote offending clauses.
The claim “recites” abstract ideas within the 2019 PEG groupings:
Certain methods of organizing human activity—fundamental economic practices and commercial/legal interactions (reward accounting, pricing, token/cryptocurrency transactions, account-based ledger updates): • “extracting information about a reward of the user account deducted as a price for changing a parameter of the game program” (pricing and payment);• “storing a reward … as a first blockchain of a user account” (account-based recordkeeping of economic value);• “distributing a second blockchain including information about the deducted reward” (transaction/ledger distribution);
These limitations are paradigmatic of abstract data-only steps and economic activity per the PEG (Abstract Idea groupings: commercial/legal interactions and mental processes).
Step 2A, Prong 2: Analyze integration into a practical application; discuss any claimed technological improvement; address whether extra-solution activity or field-of-use limitations are present.
The additional elements do not integrate the abstract idea into a practical application:
No improvement to computer functionality or another technology is recited. The claim uses generic components (“client,” “blockchain node,” “connected blockchain network”) and high-level operations (“generating a source code,” “converting … into an EVM byte code,” “generating a transaction,” “distributing …”) without any specific technical mechanisms (e.g., novel consensus, data structures, gas optimization, opcode-specific compilation strategies, or latency/throughput improvements).
Merely applying the abstract idea on a particular platform (Ethereum/EVM/“blockchain”) is a field-of-use limitation that, under the PEG, does not constitute integration. The specification itself describes Ethereum, nodes, EVM, and transactions as conventional infrastructure used to execute smart contracts and distribute transactions (see spec ¶¶ [31], [47]–[49], [86]–[87]).
The “game parameter” context is a non-technical field-of-use. Adjusting a game “difficulty” via token payments is an economic/game governance concept, not a technological improvement to the operation of the computer, the network, or the blockchain itself.
The recited steps amount to data gathering (“storing … reward,” “extracting information”), data processing/recordation (“generating source code,” “converting to EVM byte code,” “generating a transaction”), and dissemination (“distributing … to the network”), which the PEG treats as extra-solution activity when not tied to a specific technical enhancement.
Accordingly, the claims fail Prong 2.
Step 2B: Assess whether additional elements are significantly more; discuss WURC with evidentiary considerations.
The claims do not recite “significantly more” than the abstract idea:
The use of a “blockchain node,” “connected blockchain network,” Ethereum, EVM bytecode generation, and transaction distribution are well-understood, routine, and conventional activities in the art of blockchain-based applications. The specification confirms these are standard operations (spec ¶¶ [31]–[33], [47]–[49], [71]–[75], [86]–[87]), and no unconventional architecture, protocol, or data structure is asserted. Additionally, use of Blockchain technology is considered conventional per 20180276626, paragraph 91.
The steps are result-oriented without particularized implementation details—e.g., no recitation of specific EVM opcodes, compiler passes, gas accounting strategies, consensus modifications, sharding schemas, memory models, or security primitives that would depart from routine smart contract handling.
Therefore, the claims lack an inventive concept that would transform the nature of the claim into a patent-eligible application.
Conclusion: Eligible/ineligible under § 101.
Ineligible. The claims are directed to an abstract idea (economic management of rewards and pricing for altering game parameters; data extraction/recording/distribution) and do not integrate that idea into a practical application or add significantly more.
All dependent claims have been analyzed but either are additional abstract ideas and/or are merely applying the abstract idea into a particular field of use which is not enough to bring the claim into patent eligibility.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,872,494. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘494 are narrower than the present claims and as such read on the present claims.
Prior Art
The nearest prior art of record appears to be US Patent Application Publication No. 2018/0114403 to Jayachandran. However, Jayachandran does not appear to explicitly disclose “extracting information about a reward of the user account deducted as a price for changing a parameter of the game program from a client connected by the user account; and distributing a second blockchain including information about the deducted reward to the connected blockchain network,” as required by the independent claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found on the Notice of References Cited.
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/Jay Trent Liddle/Primary Examiner, Art Unit 3715