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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/20/2026 has been entered.
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 1-3 and 6-22 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 computer game system 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,
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,
wherein modifying the execution of the game further comprises:
generating a character in the game according to the points, and
determining one or more of a shape of the character, a number of the character, and movement details for the character according to the points, and
displaying the character at a display of the computer game system.
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, displaying a candidate for the character, etc.) or ways to implement the abstract idea (e.g., using a keyboard, a gyro sensor and an acceleration sensor, 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, touch panel, directional key, gyro sensor and acceleration sensor. 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 (e.g., processor, memory, touchscreen, keyboard, mouse) or components that are well-known in the art of computer games. For instance, US 2013/0065682 to Izuno et al. teaches the use of a game device having a plurality of directional keys (e.g., cross-shaped button 14A for indicating up/down/left/right in Fig. 1 and ¶ 87) along with a gyro sensor (angular velocity sensor 40 in Fig. 2, described as a gyro sensor in ¶ 117) and acceleration sensor (39 in Fig. 2). Izuno teaches that the acceleration sensor may be used to determine the angle at which the device is held (e.g., angles of inclination in ¶ 146) which may be divided into separate ranges (e.g., larger or smaller than a prescribed angle in ¶ 149).
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. This is particularly clear because the types of input devices are varied and recited as alternative ways to interact with the game system rather than as any required component. Finally, there is no indication that the invention as claimed or disclosed improves the performance of these computer- or gaming related electronic components.
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 7/10/2026 have been fully considered but they are not persuasive.
Applicant addresses the grounds of rejection under 35 U.S.C. § 101 on pages 10-13 of the Remarks section. More particularly, Applicant asserts that the independent claims have been amended to include features of now cancelled claims 4 and 5. Remarks, 10. The Examiner notes that claims 4 and 5 were rejected under substantially similar grounds as the independent claims. Nevertheless, Applicant asserts that claim 1 incorporates the assessment of physical interactions with an operation device into a practical application of modifying the execution of the game to provide an additional character that was otherwise unavailable in the game. Remarks, 11. The Examiner respectfully notes that any computer game necessarily assesses physical interactions with an operation device because the user must give certain commands to the game device. To the extent that the claimed devices are, e.g., a mouse, keyboard, or touchscreen such features are purely conventional computer components.
Further on page 11 of the Remarks, Applicant discusses the decision in Planet Bingo. Applicant asserts that while a bingo game player may be rewarded for winning cards, and may earn additional prizes, the instant invention provides accumulation of points outside of the gameplay, which points are then used to control visual characteristics of a virtual character. In sum, Applicant appears to argue that the instant claims sense actions of a game player, but do so as an independent or isolated process. The Examiner notes that the sensing of player actions appears to overlap with the playing of the game, so while the claimed invention might categorize the processes as separate, it is not clear that there is any technological difference between them. For instance, it is not clear whether there is any technological problem solved by separating these processes or whether the separation is purely for enjoyment or business reasons. At present, the distinction between the instant claims and Planet Bingo seems to be no more than a different set of rules. Courts have generally found that rules for playing a game are abstract ideas. See, e.g., In re Smith and In re Marco Guldenaar.
The Examiner respectfully disagrees with Applicant’s statement that the point calculation does not dictate or alter player behavior within the gameplay itself, and therefore would not manage human behavior. It is clear from the plain language of the claim that the points are generated according the human user’s behaviors and the user is rewarded with certain benefits for his/her character, such as the shape of the character or the movement details for the character. See, e.g., Claim 1.
On pages 12-15, Applicant contends that the claimed invention integrates the abstract idea into a practical application by way of the assessment of the player’s interaction using a separate, background process outside of the normal game execution operations of the computer game system. As before, the Examiner reiterates that computer games necessarily require physical inputs from a player of the game and that the separation of the background process is not clearly a technological solution to any technical problem. Further still, even if the game process and the background process are treated as wholly separate, this would at best result in the player participating in two games at once. This is analogous to playing a video game tournament where players are playing individual games that contribute to progress in the overall tournament. In the same way as the claimed invention, progress in a given game is also progress in an overarching contest. In other words, the tournament game can be considered a “background” game that the player contributes points toward while he plays an individual game. The ‘processes’ are separate in that the outcome of the tournament is dependent on the interactions of many individual games, but any given game does not, in and of itself, dictate the outcome of the tournament. Therefore, even if the processes are treated as separate, this would not result in a patent-eligible distinction because they are at best two separate games played simultaneously.
For the forgoing reasons, the grounds of rejection under §101 are maintained.
Conclusion
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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