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 .
Information Disclosure Statement
The information disclosure statement filed 11/7/2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
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, 2, and 5-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/696306 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to patentably indistinct subject matter. More particularly, both inventions relate to a dart game device, method, and computer readable medium in which a dart game is played under a play time constraint by two or more players. In each set of claims, dart related data is displayed for each of the players’ respective play devices, which are located remotely from one another. The displays include a number of play result data and object data representing each of the players.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, and 5-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 15, and 17-22 of copending Application No. 18/696310 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to patentably indistinct subject matter. More particularly, both inventions relate to a dart game device, method, and computer readable medium in which a dart game is played under a play time constraint by two or more players. In each set of claims, dart related data is displayed for each of the players’ respective play devices, which are located remotely from one another. Each set of claims provides various display effects related to the dart game. Finally, each set of claims includes a time constraint set for a limited number of rounds of dart pin throwing.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, and 5-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/573328 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to patentably indistinct subject matter. More particularly, both inventions relate to a dart game device, method, and computer readable medium in which a dart game is played under a play time constraint by two or more players. In each set of claims, dart related data is displayed for each of the players’ respective play devices, which are located remotely from one another. The displays include a number of play result data and object data representing each of the players.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 2, and 5-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
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.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claims fall into one of the four statutory categories of invention. The claimed invention is directed to a method, device, and computer readable medium, which fall within the statutory categories. However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the invention is directed to an online dart game played in real time. Spec. 1. More particularly, representative claim 1 recites the following (with emphasis):
1. A method of providing a dart game image performed by a dart game device participating in a play session which imposes a play time constraint to two or more devices, the method comprising:
displaying, on a display unit, a first object displaying first information related to a first device among two or more devices participating in the play session and a second object displaying second information related to a second device;
receiving play-related data of devices participating in the play session; and
determining, based on the received play-related data, whether to change a relative position of the first object and the second object by:
determining, based on the received play-related data, first proximity between play-related data related to the first object and play-related data of the dart game device, and second proximity between play-related data related to the second object and the play-related data of the dart game device;
comparing the first proximity and the second proximity to determine whether there is a change in a superiority/inferiority relationship between the first proximity and the second proximity; and
changing the relative positions of the first object and the second object when it is determined that there is a change in the superiority/inferiority relationship by performing a spinning operation in which the relative positions of the first object and the second object are repeatedly exchanged a predetermined number of times;
wherein the first information includes an image related to a play of a player of the first device or an image generated based on dart game play result information of the first device, and
the second information includes an image related to a play of a player of the second device or an image generated based on dart game play result information of the second device.
The underlined portions of representative claim 1 generally encompass the abstract idea, with substantially identical features found in claims 14 and 15. The dependent claims further define the abstract idea by modifying rules of a game played (e.g., determining a superior or inferior score for a given player, providing time constraints, providing a number of rounds of play, etc.). The abstract idea may be viewed, for example, as:
a fundamental economic practice (e.g., rules for conducting a game) as discussed in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014), In re Smith, 815 F.3d 816 (Fed. Cir. 2016), and In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018),
a method of managing a game similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (non-precedential);
a set of game rules similar to increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results, as discussed in Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342 (Fed. Cir. 2021); and/or
a method of organizing human activities (e.g., allowing a human player to play a game according to rules of the game) as discussed in Bilski v. Kappos, 561 U.S. 593 (2010) and Alice Corp. v. CLS Bank.
The recited steps of conducting a game in the instant claims relate to the “fundamental economic practice” of rules for conducting a game (see Smith, Marco Guldenaar, and Alice). When the player of the game fulfils certain obligations (e.g., behaviors relating to operational inputs), he may be rewarded with one or more in-game effects (e.g., a superior score position of the player’s object). Based on the reasoning in Smith and Marco Guldenaar, the recited steps of conducting a game in the instant claims relate to the “fundamental economic practice” of rules for conducting a game. The abstract idea is also similar to that of Planet Bingo, in which a method of managing a bingo game was found to be an abstract idea. Though the instant claims are not limited to bingo games, they encompass the management of games in a similar way. The abstract idea is also comparable to the game rules presented on gaming machines in Bot M8 LLC v. Sony Corp. of America, in which rewards could be increased or decreased based on aggregating previous game outcomes played on the gaming machines. The Bot M8 decision also found that such abstract idea is “more broadly the difficulty[] of a multiplayer game.” The game claimed here is comparable to that of Bot M8 because the instant claims cause the game to become more or less difficult based on, for example, the aggregate score over a number of rounds or the spinning operation related to the superiority/inferiority relationship. Finally, the claims allow players to participate in a game based on certain behaviors (e.g., following rules relating to operational inputs). Such transactions are akin to the sort of organizing of human activities discussed in Bilski (and shadow accounts in Alice).
Under prong 1, the above analysis demonstrates that the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity. Under prong 2, the instant claims do not integrate the abstract idea into a practical application because they merely provide instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea, add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. While certain physical elements (i.e., elements that are not an abstract idea) are present in the claims, such features do not effect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (only generic gaming components), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any 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. See MPEP §§ 2106.05(a)–(c), (e)–(h). Therefore, the claims are directed to the judicially recognized exception of an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The claims encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se: a display unit, two or more devices, a network communication unit, a control unit, and a storage medium including instructions to carry out the abstract idea.
Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. These elements are generic computer components, which the courts have repeatedly found to be insufficient in saving a claim from abstraction. Such features also represent extra-solution activities and/or an attempt to apply the abstract idea in a field of use (e.g., on a computerized system) rather than any meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea. The specification admits that the gaming systems on which the invention is implemented include well-understood, routine and conventional devices, such as mobile devices and a server that may comprise any type of computer system or computer device, such as a microprocessor, a mainframe computer, a digital processor, a handheld device, or a device controller. See Spec. 16-17.
Taking the claimed elements individually yields no difference from taking them in combination because each element simply performs its respective function as discussed above. The claims do not purport to improve the functioning of a computer itself, nor do they effect an improvement in any other technology or technical field. Instead, the additional features merely amount to an instruction to apply the abstract idea using generic, functional, and conventional components well-known in the art. Viewed as a whole, these additional claim elements 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. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
Response to Arguments
Applicant's arguments filed 12/3/2025 have been fully considered but they are not persuasive.
As an initial matter, the Examiner acknowledges Applicant’s request to hold the double-patenting rejections in abeyance. The previous grounds of rejection under 35 U.S.C. § 112 have been withdrawn in light of Applicant’s explanations. Remarks, 7-8.
Applicant addresses the grounds of rejection under 35 U.S.C. § 101 on pages 8-9 of the Remarks section. Applicant contends that the claims have been amended to recite three further details of the alleged practical application of the abstract idea. Id. The Examiner respectfully disagrees. First, these features were already addressed in the rejection of original claims 3-4, which are now cancelled and integrated into the independent claims. Second, each of the amended aspects of the independent claims simply provide additional details of the abstract idea. For instance, in the first detail, determining proximity between the first and second object’s play-related data is simply a comparison or judgment derived from comparing game data. Such comparison is explicitly recited in the second detail. The third detail applies the comparison from the first two details and performs a “spinning operation” that switches between the first and second objects. The third detail is therefore a specific game rule that applies to each individual game player’s performance data, and switches between them under certain conditions. Each of these features requires no more than a mental process during the game or a certain method of organizing human activities.
The Examiner has considered the other arguments but finds them similarly unpersuasive. To the extent that Applicant argues the novelty of the claims is sufficient to demonstrate eligibility, the Examiner notes that novel abstract ideas remain abstract ideas that are ineligible for patenting. See, e.g., SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“The claims here are ineligible because their innovation is an innovation in ineligible subject matter.”).
In light of the above analysis, the claimed invention fails to demonstrate patentability.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715