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 Arguments
Applicant's arguments filed 04/01/20206 with respect to 35 USC 101 have been fully considered but they are not persuasive. The amended limitations filed 04/01/2026 amount to a) details of pre-solution data collection using generic technologies (reading a program from some terminal of unclaimed hardware or software specifications, obtaining position information from GPS, using unclaimed hardware/software and through high-level steps that amount to use of an existing technology for its inherent purpose), b) a graphical appearance of printed data (map data includes user position in a virtual space) and c) generic data transactions among devices (triggering some unclaimed “event” and sending data between a server and a mobile terminal, wherein neither the server nor mobile terminal have any claimed hardware or software specifications or operate in accordance with any particular method steps or are arranged in any particular architecture). None of which transform an abstract idea into a practical application or inventive concept.
Limitations of the type a) and b) identified above represent pre- and post- solution activity. As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. And regarding using some generic mobile terminal and server to send and receive data as in c) above, “The receiving of input and storing steps represent the use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016 attributing particular generic computer functions for computer hardware to perform from well-known, routine, conventional functions performed by such hardware has been held to be insufficient to show an improvement to technology, Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264, 120 USPQ2d 1201, 1208 (Fed. Cir. 2016).
And regarding data gathering being performed “with a GPS”, because neither the claims nor specification identify the GPS as anything other than existing prior art technology being used for its inherent purpose of gathering location data, this is seen as extra-solution activity as well as an attempt to apply abstract ideas in a generic technological context. In order for a computerized device in the claim to represent significantly more, it would have to be described and used in a way where there is evidence of tangible improvements to the function of computers per se and/or to a technological field by its inclusion. Merely using some GPS having unspecified hardware over a network of unspecified architecture to obtain and transmit location data in unspecified manners does not provide evidence of such improvements. “[T]he invocation of ‘already-available computers that are not themselves plausibly asserted to be an advance … amounts to a recitation of what is well-understood, routine, and conventional.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020). Adding a generic GPS for data collection in the claims is also seen as “simply adding a general-purpose computer or computer components after the fact to an abstract idea” which as noted above, was found in Affinity Labs v. DirectTV does not integrate a judicial exception into a practical application or provide significantly more.
The claims remain drafted as lists of functional outcomes desired from operating generic computers to gather data and generate a virtual map based on a user’s location, activities which have been held in case law to represent abstract ideas without significantly more. As noted in the prior office action, the claims lack any technical specifications of hardware or software attributed to the computers that are necessary to accomplish the claimed results. And the claims lack specifying by what method or process ("how") these results are achieved. Courts have repeatedly emphasized that claims must describe the method or process used to accomplish the claimed results rather than simply claiming outcomes themselves. The pending claims are found to fall into the latter category and remain rejected under 35 USC 101 for being directed to abstract ideas without significantly more.
Applicant’s arguments with respect to the prior art rejections of claims 1-9 have been considered but are not found to be persuasive. Mahajan teaches the amended requirement for “selection of the object by the user triggers an event related to the progress of the game.” In [0245], Mahajan describes that “The user interface 600D may enable the player (e.g., by clicking on the map or visual representations of game data overlaid on the map) to view information about a location, a boss of the location, or a mob (or group of players) with which a boss of a location is affiliated. The user interface 600D may include a navigation bar for accessing different user interfaces of the Turf Wars game. For example, the navigation bar may include buttons for accessing game data related to the turf (e.g., the map screen or location-selection screen), the wars (e.g., a "wars" screen that displays information about wars currently being fought over the turf), or the mafia (e.g., information about the mafias or groups of players who are participating in the game). The navigation bar may also include a user interface element (e.g., a "Back" button) for accessing the screen that was accessed by the player immediately before the current screen.”
Launched graphical user interfaces that display location, boss location or affiliations are equivalent to events that are related to progress of the game and that are triggered by user object selection. For this reason the 35 U.S.C. § 102(a)(1) rejection of claims 1-5 and 8-9 under Mahajan and the 35 U.S.C. § 103(a) rejection of claim 7 over Mahajan in view of US 2007/0087828 A1 to Robertson are maintained.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. The claims recite desired functional outcomes obtained from operating generic computers for gathering user position data and displaying this data in the form of a gamified virtual map. No technical details are provided for what hardware, software or system architecture are configured for accomplishing the claimed outcomes. Tailoring digital content based on a user’s location, creating digital travel logs, providing information based on a location on a map and providing map-related data based on a user’s status are all activities the courts have identified to be abstract ideas in the cases of Intell. Ventures I v. Cap. One, Weisner v. Google LLC, and Sanderling Mgmt. Ltd. v. Snap Inc. as will be further discussed below.
Detailed Analysis
The following detailed analysis is based on the subject matter eligibility examination guidelines provided in the MPEP at https://www.uspto.gov/web/offices/pac/mpep/s2106.html
Steps 1 and 2 of the analysis have been conducted for all of the pending claims.
Step 1 (See MPEP §2106.03): In this step, it is determined whether the pending claims are directed to at least one of the four statutory categories of subject matter. Here it is determined that all of the pending claims fall into statutory categories. The claims meet step 1 as follows:
Claims 1-7 recite an article of manufacture (computer-readable medium).
Claim 8 recites a process (method).
Claim 9 recites an article of manufacture (apparatus).
Step 2A, Prong 1 (see MPEP 2106.04(I)): In this step of the analysis, judicial exception(s) that fall into one or more of the abstract idea groupings enumerated in MPEP 2106.04(a) are identified and quoted.
The claims recite the following judicial exceptions:
“Certain methods of organizing human activity” (MPEP 2106.04(a)(2)).
This enumerated abstract idea grouping covers “certain activity between a person and a computer” which includes “tailoring content based on a user’s location”, an activity held to be abstract in Intell. Ventures I v. Cap. One, 792 F.3d at 1369.
MPEP 2106.04(a)(2) also cites the Federal Circuit finding that “Claims to “collect[ing] information on a user's movements and location history [and] electronically record[ing] that data” (i.e., “creating a digital travel log”), Weisner v. Google LLC, 51 F.4th 1073, 1082 (Fed. Cir. 2022), is an example of “managing personal behavior or relationships or interactions between people.”
Courts have also held that “providing information based on a location on a map is an abstract idea because it is directed to filtering or picking information or materials relevant to a location or context, which is a human problem, not any specific improvement to a computing technology.”, see TecSec, 978 F.3d at 1293.
The Federal Circuit decision in Sanderling Mgmt. Ltd. v. Snap Inc. also determined that displaying material including racing graphics and a race competitor on a map based on GPS and/or weather data is merely directed to displaying material based on location information and does not amount to any improvements to existing computing technology.
In Location Based Servs., LLC v. Niantic, Inc., 295 F. Supp. 3d 1031, 1045–49 (N.D. Cal. 2017), aff’d, 742 F. App’x 506 (Fed. Cir. 2018)”, providing map-related data based on a user’s “status” (meaning, any information about location) is just analyzing information about a location, which is data analysis and an abstract idea. The instant-claimed gathering of user position data and using it to generate virtual maps divided into regions and that are displayed to a user is activity found to be directed to abstract ideas.
The language directed to abstract ideas are:
In each of independent claims 1, 8 and 9:
a position information game in which a user position specified from position information of a user moves in a virtual space; displaying region data divided into a plurality of regions to be superimposed on map data of the real space of the user that includes a position corresponding to the user position in the virtual space; arranging an object for each of the regions;
These limitations represent the sort of “tailoring content based on a user’s location” found to be abstract in Intell. Ventures I v. Cap. One. These limitations are also analogous to “collect[ing] information on a user's movements and location history [and] electronically record[ing] that data” (i.e., “creating a digital travel log”), and displaying material including gaming (racing) graphics and a virtual game character (a race competitor) on a map based on recorded location data, Weisner v. Google LLC, and Sanderling Mgmt. Ltd. v. Snap Inc. Furthermore, “Providing map-related data based on a user’s “status” (meaning, any information about location) is just analyzing information about a location, which is data analysis and an abstract idea” Location Based Servs., LLC v. Niantic, Inc.
selection of the object by the user triggers an event related to the progress of the game; and claim 4 recites a condition for granting a benefit.
A person interacting with a computer to follow rules for playing a game falls under the enumerated grouping of abstract ideas of “Certain methods of organizing human activity”. In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018), The Federal Circuit determined that the claims were directed to the abstract idea of "rules for playing games", which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011.
Step 2A, Prong 2: In this step, any additional elements beyond the identified abstract ideas are identified and evaluated for any integration into a practical application. In particular, any claimed technological improvement is considered.
Additional elements recited in the claims include:
In independent claims 1, 8 and 9:
a non-transitory computer-readable medium, an information processing program, a computer;
There are no technical specifications claimed for the computer and there are no further details claimed of any specific software instructions executed by these devices. As such, the computing device of the claims cannot be specifically identified, and the claims are seen as covering any and all computers. Such general-purpose computers that apply a judicial exception by use of conventional computer functions do not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions)
MPEP § 2106.05(b) provides guidance for determining the particularity or generality of elements of a machine or apparatus. An example provided of a particular machine is “an antenna system” wherein “The claim recited the particular type of antenna and included details as to the shape of the antenna and the conductors, particularly the length and angle at which they were arranged” in Mackay Radio & Tel. Co. v. Radio Corp. of America, 306 U.S. 86, 40 USPQ 199 (1939).
The computer of the pending claims stands in stark contrast to the above example– the instant claims merely identify a field-of-use limitation that serves as a generic technological context in which to apply abstract ideas for digital mapmaking, which has been held to be an abstract idea. Claims directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981).
an information processing program being read from at least one mobile terminal; data relating to the game is sent and received between a server and the at least one mobile terminal according to the progress of the game;
“The receiving of input and storing steps represent the use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016 attributing particular generic computer functions for computer hardware to perform from well-known, routine, conventional functions performed by such hardware has been held to be insufficient to show an improvement to technology, Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264, 120 USPQ2d 1201, 1208 (Fed. Cir. 2016).
obtaining the position information in the real space of the user by measuring with a GPS; displaying region data; arranging an object related to progress of a game for each of the regions;
The court in Electric Power Group, LLC v. Alstom S.A., found that collecting information, analyzing it, and displaying certain results of the collection and analysis was simply be an attempt to limit the use of an abstract idea to a particular technological environment. And as discussed above, in Tecsec and Sanderling Mgmt. Ltd, displaying gathered location and context-based data in the form of a map including a gamified map depicting a virtual race among users were abstract ideas used to solve human problems and did not represent any specific improvements to computing technology.
Regarding data gathering being performed “with a GPS”, because neither the claims nor specification identify the GPS as anything other than existing prior art technology being used for its inherent purpose, gathering location data, this is seen as extra-solution activity as well as an attempt to apply abstract ideas in a generic technological context. In order for a computerized device in the claim to represent significantly more, it would have to be described and used in a way where there is evidence of tangible improvements to the function of computers per se and/or to a technological field by its inclusion. Merely using some GPS having unspecified hardware over a network of unspecified architecture to obtain and transmit location data in unspecified manners does not provide evidence of such improvements. MPEP 2106.05(b) explains that, when determining whether a claim integrates a particular exception into a practical application by being applied by or by use of a particular machine, “the particularity or generality of the elements of the machine or apparatus … the degree to which the machine in the claim can be specifically identified (not any and all machines)” must be determined. It is also considered whether the machine or apparatus is integral to achieving the performance of a method as opposed to merely being a contemplated field of use. In the amended pending independent claims, the GPS cannot be identified as any particular GPS hardware, and it cannot be identified that use of a GPS (for extra-solution data collection) is integral to the performance of the method.
Claim 2 recites determining whether to grant some undefined benefit related to a map region. Because the benefit is not claimed as having any particular definition, characteristics or features or enablement by any particular computer programming steps, any feature of the prior art having any perceived type of benefit, such a graphic conveying information to a user, can be interpreted as a benefit. Additionally, providing any such additional information to a user represents insignificant extra-solution activity.
Claim 3 recites additional details of data-gathering (acquiring user position information) and enabling acquiring of the undefined benefit (insignificant post-solution activity.) In the Parker v. Flook decision, it was found that conventional post-solution activity cannot transform abstract principles. Also, "collecting information, analyzing it, and displaying certain results of the collection and analysis," was found to be directed to abstract ideas in Electric Power Group v. Alstom. The addition of abstract ideas to the abstract ideas of the independent claims cannot impart eligibility.
Claims 5-7 recites characteristics of displayed map graphics in terms of region boundary criteria, region and zone sizes, and superimposing data. The particular appearance of computer graphics, wherein these graphics exist merely to inform a human being and lack any functional transformation of the computer(s), is equivalent to claiming nonfunctional descriptive material (“printed matter”) which does not belong to a statutory class of invention and cannot impart eligibility to abstract ideas being applied by generic computers. These claims also represent extra-solution display steps. As discussed with respect to Parker v. Flook, post-solution activity cannot transform unpatentable abstract ideas.
These additional elements merely express observation and recordation of data usable for conducting abstract methods of organizing human activity without providing any improvements to a computer or to a field of technology. In the field of the instant invention – displaying digital maps comprised of regions and zones that convey the information to a human observer, an improvement would have to be found to an inherently technical problem existing in computers per se and would have to reveal how the computer(s) themselves are improved as a direct result of the claimed invention. And the details of the improvement to computers cannot be found in the details of the abstract ideas themselves.
Genetic Techs v Merial, an inventive concept "cannot be furnished by the unpatentable law of nature" itself. A hypothetical improvement in how location-based data is gathered or graphically conveyed to human users is not an improvement to computers themselves or to computer technology, but rather an improvement to humans. TecSec, 978 F.3d at 1293, “providing information based on a location on a map is an abstract idea because it is directed to filtering or picking information or materials relevant to a location or context, which is a human problem, not any specific improvement to a computing technology.” A hypothetical improvement in speed or efficiency of recording, analyzing, and presenting geographic athletic data to users also does not impart eligibility. Intellectual Ventures I, 792 F.3d at 1367 (“improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept”); Ericsson Inc. v. TCL Commc’n Tech. Holdings, 955 F.3d 1317, 1330 (Fed. Cir. 2020).
None of the instant-claimed descriptions of data per se or display of certain graphics meant to inform human users serves to solve any stated problem that is inherently technical in nature or provide any meaningful limitations beyond generally linking the abstract idea to the technological environments of the general-purpose computing devices. The Supreme Court has held that “generic computer components” do not become patent eligible simply upon being “configured” to perform “specific computerized functions.” Alice, 134 S. Ct. at 2360.
Additionally, the court ruled in International Business Machines Corporation v. Zillow Group, Inc., (CAFC, 17 October, 2022) (emphasis added), that "improving a user's experience while using a computer application is not, without more, sufficient to render the claims" patent-eligible at step one. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
“A patent-eligible technical improvement requires solving an actual problem.” McRO, 837 F.3d at 1314 (a claim directed to automating part of a 3D facial-expression animation method focused on a specific asserted improvement where the prior-art animator performed the task manually); Data Engine Techs., 906 F.3d at 1007–08 (a claimed method was not abstract where it “provide[d] a specific solution to then-existing technological problems in . . . prior art electronic spreadsheets,” and those pre-existing problems — that users of three-dimensional spreadsheets had to “master many complex and arbitrary operations” — were taught by the specification); cf. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1347 (Fed. Cir. 2018) (rejecting an asserted improvement where “Interval Licensing [did] not allege that computer display devices were previously unable to display information from more than one source”). “Mere novelty, by contrast, is not enough.” See, e.g., SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
Whereas McRO v. Bandai Namco Games Am. involved a specified, automated, rules-based process for facial animation that was different from manual approaches performed by animators and that solved, in contrast, the instant claims merely involve generic steps. And whereas Data Engine Techs provided a solution to an actual problem existing in prior art spreadsheets, the instant claims do not solve any such problem existing in computers themselves or in the relevant computing art.
In Affinity Labs v. DirecTV, a claimed advance in a process of downloading and streaming was found to be an improvement to computer functionality, but a claimed advance in the information content itself was not. The instant claims fall under the latter scenario; they are directed towards what particular contents of information is received and graphically displayed, for the purpose of informing human users. The instant claims do not focus on any asserted improvements to computers themselves or computer technology, and none of the examples provided by the courts, see MPEP 2106.05(a), for improving computer functionality are found in the instant claims.
Furthermore, none of the additional elements identified above are sufficient to amount to an inventive concept(s) because none of the additional elements reveal any specific improvements to the function of any computer(s) or to a field of technology. They:
Invoke generic computers, memories, and conventional networked game environments. See where the instant specification discloses a standard mobile terminal and server that communicate generically (e.g., on p. 4 of the specification). “[T]he invocation of ‘already-available computers that are not themselves plausibly asserted to be an advance … amounts to a recitation of what is well-understood, routine, and conventional.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020). And “simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)
Do not recite a specific improvement to the functioning of a computer (e.g., no improved rendering pipeline, no reduced latency synchronization protocol, no novel memory management, no graphics or physics engine enhancement).
Do not effect a transformation of an article.
Are drafted as applying the abstract idea in the field of computer games (field-of-use) with result-oriented language (e.g., “obtaining”, “displaying”, “arranging”).
Result-oriented claim language
The following factors were taken into consideration in reaching a conclusion that the pending claims being drafted using result-oriented language without any specificity as to how the claimed results are achieved is indicia of a lack of practical application or inventive concept.
MPEP § 2106.05(f) explains that, “The recitation of claim limitations that attempt to cover any solution to an identified problem with no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it"”.
Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024) explains that when "the claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves these results. Claims of this nature are almost always found to be ineligible for patenting under Section 101." See also Interval Licensing LLC v. AOL Inc. (896 F.3d 1335) wherein the court found that claims to a computer software "attention manager" that displays content on unused portions of a screen were result-oriented and invalid under 35 U.S.C. § 101 because they did not recite a specific technological method for achieving the claimed result; Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024): The court held that claims must not only describe desired outcomes but also include a specific process or machinery for achieving that result; In re Killian, 45 F.4th 1373 (Fed. Cir. 2022): The court reaffirmed that claims simply reciting a desired result without specifying how to achieve it are directed to an abstract idea and are ineligible under 35 U.S.C. § 101. The claims at issue were directed to analyzing data from two databases. In the Step Two of the Alice test, the court determined that there was no inventive concept because the additional elements merely involved generic and routine data gathering and analysis steps that could have been performed with or without a computer.
Interval Licensing LLC v. AOL Inc. (896 F.3d 1335): The court found that claims to a computer software "attention manager" that displays content on unused portions of a screen were result-oriented and invalid under 35 U.S.C. § 101 because they did not recite a specific technological method for achieving the claimed result.
Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024): The court held that claims must not only describe desired outcomes but also include a specific process or machinery for achieving that result.
In re Killian, 45 F.4th 1373 (Fed. Cir. 2022): The court reaffirmed that claims simply reciting a desired result without specifying how to achieve it are directed to an abstract idea and are ineligible under 35 U.S.C. § 101. The claims at issue were directed to analyzing data from two databases. In the Step Two of the Alice test, the court determined that there was no inventive concept because the additional elements merely involved generic and routine data gathering and analysis steps that could have been performed with or without a computer.
Broadband iTV, Inc. v. Amazon.com, Inc., No. 2023-1107, 2024 WL 4018253, *4 (Fed. Cir. Sept. 3, 2024). In the first step of the Alice test, the Federal Circuit affirmed that in the '026 patent family, the District Court, “correctly determined that receiving metadata and organizing the display of video content based on that metadata is abstract.”, likening the claimed subject matter to receiving and displaying information, and organizing it based on classifications. The Federal Circuit observed that claiming a user interface does not “automatically” provide patentable subject matter.
Step 2A Prong 2 concludes in a determination that the additional elements do not amount to a practical application of the claimed abstract ideas.The pending claims do not include any technical description of mechanisms for accomplishing the claimed results. Instead, the claims use client and server computers and a GPS of unclaimed hardware/software specifications and operating in accordance with unspecified programming to conduct generic, result-oriented steps such as “information … being read from at least one mobile terminal”, “obtaining the position information,” “arranging an object”, “data … is sent and received” for following game rules by a person interacting with a computer. The claims seek to cover any system and any method (such as any hardware devices, any programming instructions) for applying the abstract methods of organizing human activity (interactive mapmaking and following game rules or instructions through human interaction with a computer). As such the claims are found to be directed to ineligible subject matter without a practical application or inventive concept.
Step 2B: In this step of the Alice analysis, it is assessed whether additional elements amount to significantly more than abstract ideas. Any well-understood, routine, conventional (“WURC”) activity is also discussed along with evidentiary considerations.
Absent integration into a practical application, the claims lack “significantly more” than the abstract idea.
Additional elements that are generic computer implementation and conventional components are:
“computer-readable recording medium”, “a computer”, “an information processing apparatus”, “GPS”, “mobile terminal”, “server”
The specification characterizes these computing components as conventional computing hardware and software performing ordinary functions (spec. p. 4, supporting a finding that the implementation is well-understood, routine, and conventional (WURC). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (WURC must be supported); here, the instant specification itself indicates conventionality.
Conclusion:
Claims 1-9 are found to be ineligible under 35 U.S.C. § 101. Although step 1 is satisfied (the claims recite manufacture/process/machine), in Step 2A Prong 1, the claims are found to recite an abstract idea—digital mapmaking based on gathered user location data and a human being interacting with a computer to play a game subject to rules. And as found in Step 2A Prong 2, the abstract ideas are not integrated into a practical application; only generic computer implementation and field-of-use limitations are claimed. There are no technical details in the claims that reveal how any of the claimed result-oriented language is to be accomplished. And performing Step 2B, there is nothing “significantly more” found beyond WURC elements as evidenced by the specification.
Possible remedies:
To improve subject matter eligibility under 35 USC § 101, it is recommended to anchor the claims to concrete, non-generic technical mechanisms (such as particular software processes or nonobvious system architectures) in a way that there is evidence in the claims of certain improvements to computer or network operations or to another technology.
In the field of the instant invention (training a machine learning model), an improvement would have to be found to an inherently technical problem existing in computers and would have to reveal how the computer(s) themselves or the field of machine learning are improved as a direct result of the claimed invention. The details of the improvement to computers cannot be found in the wording of the abstract ideas (details of how a human being interacts with a computer to view location-based digital maps or follow game rules) themselves. Genetic Techs v Merial, an inventive concept "cannot be furnished by the unpatentable law of nature" itself. A subjective improvement in a game player’s user experience (by providing a game that might provide arguably unique rules) is not an improvement to computers themselves or to computer technology and does not solve any stated problem that is inherently technical in nature.The court ruled in International Business Machines Corporation v. Zillow Group, Inc., (CAFC, 17 October, 2022), that "improving a user's experience while using a computer application is not, without more, sufficient to render the claims" patent-eligible. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
Examples might include to:
Tie abstract steps to a specific, non-generic technological implementation that improves computer functionality or another technology in some tangible way (e.g., reduces network latency by X, improves memory utilization via Y, improves image fidelity through Z), with technical mechanisms claimed.
Provide evidence of improvements to computers or network operations in the claims by claiming certain network nonobvious server-side architecture that is also claimed as solving problems existing in the art, or claiming a certain improvement in rendering such as a GPU-accelerated improvement that provides measurable improvements to game functionality.
Add claim elements showing a particular machine or a transformation of an article, beyond mere data manipulation or display functions.
Replace result-oriented terms (“execute…”, “control a plurality of types of objects,” “cause a fourth object to appear”) with concrete steps and parameters tied to the technical mechanism (e.g., explicit algorithmic operations, message formats, timing constraints, thresholds).
Limit scope to a specific technological field and architecture (e.g., “a distributed game server cluster employing [named protocol] with defined message cadence and buffer management”) and claim the architecture itself, avoiding broad “apply it on a computer” formulations.
Provide specification support demonstrating the asserted improvements are not well-understood, routine and conventional:
Implementation details: algorithms with stepwise operations, data structures with constraints, hardware configurations, protocol diagrams.
Performance evidence: benchmarks, latency/throughput graphs, memory usage comparisons versus baselines.
Engineering rationale: why existing approaches fail and how your mechanism achieves measurable gains.
Recite in the claims a technical solution to a technological problem (e.g., secure hardware-backed attestations, novel protocol flows, improved cryptographic operations, sensor fusion pipelines).
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0005466 A1 to Mahajan et al..
Re claim 1, Mahajan teaches: A non-transitory computer-readable recording medium, in which an information processing program is recorded,
[0238], “… Mass storage 518 provides permanent storage for the data and programming instructions to perform the above-described functions implemented in servers 422, whereas system memory 514 (e.g., DRAM) provides temporary storage for the data and programming instructions when executed by processor 502.”
[0241], “… the above-described elements and operations can be comprised of instructions that are stored on non-transitory storage media. The instructions can be retrieved and executed by a processing system. Some examples of instructions are software, program code, and firmware. Some examples of non-transitory storage media are memory devices, tape, disks, integrated circuits, and servers. The instructions are operational when executed by the processing system to direct the processing system to operate in accord with the disclosure.”
the information processing program being read from at least one mobile terminal and implementing a position information game in which a user position in a virtual space specified from position information in a real space of a user moves in a virtual space,
[0074], [0221], describe that a user’s location relative to real-world locations “can be determined using various devices or applications, such as a GPS device, a social networking site (e.g., Facebook, Twitter), a location tracking site (e.g., Foursquare, Google Latitude), a location reservation site (e.g., OpenTable, Expedia), and the like.”
[0172] describes that motion detection sensors in the real-world, such as accelerometers, may provide finer-grained user movement information than GPS alone would enable.
[0226], “the user 101 could own … a cell phone … that is in communication with a GPS system and game networking system 320b through a network. Game networking system 320b could then track the physical presence of the user 101 relative to one or more locations 115. In another example, the mobile client system 330 could be in communication with a GPS system and location networking system 320a through a network. Location networking system 320a could then track the physical presence of the user 101 relative to one or more locations 115. Location networking system 320a could then inform game networking system 320b of the physical presence of the user 101 relative to the location 115.”
[0245], illustrating a preferred embodiment of the invention titled the “Turf Wars” game describes that “The player's current location may be based on global positioning satellite (GPS) data. The user interface 600D may designate the player's current location relative to the nearby locations by displaying a red dot on the map.”
the information processing program causing a computer to execute: obtaining the position information in the real space of the user by measuring with a GPS
[0226], “the user 101 could own … a cell phone … that is in communication with a GPS system and game networking system 320b through a network. Game networking system 320b could then track the physical presence of the user 101 relative to one or more locations 115
displaying region data divided into a plurality of regions by a predetermined method to be superimposed on map data of the real space of the user that includes a position corresponding to the user position in the virtual space;
Fig. 6D illustrates a map representing real-world locations graphically divided into regions by lines representing boundaries of properties, land parcels, streets, etc. For example, Union Square Park, Cheese Cake Factory, and Louis Vuitton locations are illustrated as being graphically distinguished on the map.
[0246] notes that the invention keeps track of regions that are considered popular based on locations where players have recently performed jobs, regions where a large number of jobs have been performed, or regions where turf wars have recently or frequently been performed.
As a matter of claim interpretation, the intended-use statement of “to be superimposed,” in the context of an apparatus claim, is not further limiting over any prior art reference capable of being programmed to perform this function. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that Mahajan, in [0250], identifies that his system is configured to render user interface graphics by overlaying.
and arranging an object for each of the regions
Fig. 6D illustrates and [0245] describes that in a “Turf Wars” game, images of “bosses” or players who have won turf wars at certain locations are displayed over these locations.
[0250], “The notification may indicate that the winner of the turf war is now the current boss of the location. As the current boss of the location, the player's photo may be overlaid on the map screen of the Turf War game (e.g., when players are nearby to the location). Additionally, the game networking system 120b may update the profile of the winner to, for example, increment a number of turf wars won by the player.”
wherein selection of the object by the user triggers an event related to the progress of the game
[0245], “The user interface 600D may enable the player (e.g., by clicking on the map or visual representations of game data overlaid on the map) to view information about a location, a boss of the location, or a mob (or group of players) with which a boss of a location is affiliated. The user interface 600D may include a navigation bar for accessing different user interfaces of the Turf Wars game. For example, the navigation bar may include buttons for accessing game data related to the turf (e.g., the map screen or location-selection screen), the wars (e.g., a "wars" screen that displays information about wars currently being fought over the turf), or the mafia (e.g., information about the mafias or groups of players who are participating in the game). The navigation bar may also include a user interface element (e.g., a "Back" button) for accessing the screen that was accessed by the player immediately before the current screen.
wherein data relating to the game is sent and received between a server and the at least one mobile terminal according to the progress of the game
The invention of Mahajan is implemented using client/server data communications, see Figs. 1A, 2C, 2D, and [0216]-[0218], “Communication between client system 330, location networking system 320a, and game networking system 320b can occur over any appropriate electronic communication medium or network using any suitable communications protocols.” wherein “a server generally transmits a response to a request from a client. The response may comprise one or more data objects. For example, the response may comprise a first data object, followed by subsequently transmitted data objects.”
Re claims 2-3, [0248]-[0250] describes an illustrative process for determining whether a turf war has begun at a given location and, based on the rules of the turf war and other conditions such as virtual items owned by players, and determining the progress of the turf war and eventually who has won the turf war. [0254]-[0255] describes a “shoplifting” game mechanic wherein a player can gain ownership of a virtual item by performing a location based action such as scanning a code of a real-world item or purchasing the item.
[0250], “6H illustrates an example user interface 600H of a congratulations screen … may include a message indicating that the player … is the winner of the turf war. The notification may indicate that the winner of the turf war is now the current boss of the location. As the current boss of the location, the player's photo may be overlaid on the map screen of the Turf War game (e.g., when players are nearby to the location). Additionally, the game networking system 120b may update the profile of the winner to, for example, increment a number of turf wars won by the player.”
Re claim 4, [0245] describes that viewing a progress-related object on the map may require clicking on a visual representation of game data overlaid on the map. Additionally, [0254]-[0255] describes that acquiring a virtual item may require scanning a code or purchasing it, both of which require a player’s proximity to the object.
Re claim 5, regions in the “Turf Wars” game user interface are depicted as being defined by geographical zones at present, see Fig. 6D.
Re claims 8-9, refer to the rejection of claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mahajan in view of US 2007/0087828 A1 to Robertson.
Re claim 7, although Mahajan teaches the same inventive concept wherein a virtual game user interface depicts a map of a real-world location with game graphics overlaid on it, and wherein the map identifies real-world locations such as retail stores and a park, Mahajan lacks displaying superimposed address information on these zones.
Robertson is an analogous location aware video game that teaches it was known as of the year 2007 to superimpose location information on a game-displayed map, see [0049] and Figs. 12, 15.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the instant invention that Mahajan’s map in Fig. 6D could have additionally included superimposed address data without causing any unpredictable results. The motivation would be to facilitate a player finding a real-world location.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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