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.
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 an “interactive game,” which is construed as an apparatus, and a method of playing an interactive game. 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. Representative claim 1 recites the following (with emphasis):
1. A computer game system comprising:
an operation device including a detection section for detecting physical interactions of a user with the operation device with respect to a game;
one or more processors; and
at least one memory for storing a program code that, when executed by the one or more processors, cause the one or more processors to at least:
execute the game,
obtain information indicating a detection result according to the physical interactions with the operation device during gameplay associated with the game,
calculate, as a background process outside of the game, points on a basis of the detection result, and
modify the execution of the game according to the points as calculated,
wherein the detection result includes one or more of a presence or an absence of an operation with respect to the operation device, a type of physical interactions, a number of times for the physical interaction, and an amount of execution time for the physical interactions, and
wherein calculating the points comprises:
assigning a redemption rate to each one of the physical interactions, and
calculating the points according to the redemption rate of each one of the physical interactions in the detection result operation points to be redeemed by a user.
The underlined portions of representative claim 1 generally encompass the abstract idea, with substantially similar language found in independent claims 7, 9, and 10. The dependent claims further define the abstract idea by introducing various rules to the game (e.g., selecting operation piece types, using the points for different uses, generating a character with the points, carrying out a game with the points, adjusting redemption rates, etc.) or ways to implement the abstract idea (e.g., using a keyboard, 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); and/or
a method of organizing human activities (e.g., allowing a human player to play an award-providing game according to rules of the game and/or to purchase or exchange items) 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., a particular input), he may be rewarded with points. 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. Finally, the claims allow a player to win an award based on certain behaviors (e.g., performing certain operation inputs) during the game. 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, mathematical calculations, 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, 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. For example, the claims (1) do not improve the functioning of a computer or other technology, (2) are not applied with any particular machine (only generic physical 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: at least one memory and one or more processors for carrying out the abstract idea and an operation device such as a keyboard, mouse, controller, or touch panel. 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.
The above additional elements are well-understood, routine, and conventional in the art of computer games. These elements amount to a handful of generic computer components. Such features also represent extra-solution activities and/or an attempt to apply the abstract idea in a field of use rather than any meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea.
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 effect an improvement in any other technology or technical field because the improvements center on the abstract idea, specifically, a set of rules to a game. 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 3/4/2026 have been fully considered but they are not persuasive.
As an initial matter, the previous grounds of rejection under 35 U.S.C. § 102 have been withdrawn in light of the instant claim amendments. Additionally, the previous objection to the specification is withdrawn in light of the instant amendment.
Applicant addresses the grounds of rejection under 35 U.S.C. § 101 on pages 9-12 of the Remarks section. More particularly, Applicant asserts that the amended claims relate to the operations of a computer game system rather than an abstract idea. Remarks 11. Applicant asserts that the claims involve sensing physical interactions of a player during a game and calculating a number of points according to a redemption rate relative to the detection of physical interactions. Id. Applicant concludes that the recitations of exemplary claim 1 bridge the gap between physical interactions, tracking and calculating, and then modifying the game execution based on the points calculated outside of gameplay. Id. The Examiner respectfully disagrees with this line of reasoning.
As discussed in the grounds of rejection above, the claimed invention is directed to an abstract idea in the form of mental processes, mathematical calculations, and/or certain methods of organizing human activity. Courts have broadly determined that rules to a game are fundamental methods of organizing human activity that also involve mental processes. See rejection, above. In the instant claims, a player is playing a game and his interactions are monitored using a computer game system. The interactions could be monitored by a human mentally or with the aid of pen and paper. The interactions are used to determine a number of points to award the player, which is akin to fundamental economic practices. The points are then converted, using a redemption rate, to a benefit for the player. This conversion is a mathematical concept. Therefore, the claims involve at least one, and as many as three, categories of abstract idea.
Furthermore, the claims require no more than a generic and conventional computer to carry out the abstract idea. Courts have broadly determined that, in the absence of something more, merely implementing an abstract idea with well-understood, routine, and conventional computer components will not save a claim from abstraction. See, e.g., Alice and MPEP § 2106. In the instant application, the claims encompass a computer system having one or more processors and at least one memory. The computer system further encompasses an operation device including a detection section for detecting physical interactions of a user. The dependent claims make clear that the detection section may simply be a generic keyboard and/or mouse. See, e.g., claim 8. Because the claims provide only well-understood, routine, and conventional computer components to implement the abstract idea, the claims fail to demonstrate patent eligibility.
For the forgoing reasons, the grounds of rejection under §101 are maintained.
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
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