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 .
Response to Amendment
Examiner acknowledges receipt of Applicant’s amendments and arguments filed 03/17/2026. The arguments set forth are addressed herein below.
Applicant’s amendments necessitated the new ground of rejection set forth herein; therefore, this action is made Final.
Claims 1-9 were cancelled and claims 11-15 were added.
Claims 10-15 are now pending.
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 10-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. 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. Each of Claims 10-15 has been analyzed to determine whether it is directed to any judicial exceptions.
The examiner follows the two step-analysis, as described in MPEP 2106 (available at https://www.uspto.gov/web/offices/pac/mpep/s2106.html). The following diagram is an overview of the steps involved.
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Step 1
Step 1 of the two step-analysis considers whether the claims fall into one of the four statutory categories of invention such as a process, machine, manufacture, or composition of matter. The instant invention claims an information processing apparatus in claims 10-15. As such, the claimed invention falls into the broad statutory categories of invention. However, claims that fall within one of the four statutory categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas.
Step 2A
Step 2A has been further divided into two prongs as shown in the following diagram.
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Step 2A, Prong 1
Under prong 1 of step 2A, the examiner considers whether the claim recites an abstract idea, law of nature or natural phenomenon. The term “abstract idea” is not interpreted as a layperson might. Instead, the term “abstract idea” is interpreted as described in legal opinions by courts.
According to MPEP 2106.04(a):
the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Here, each of Claims 10-15 recite steps or instructions involving observations, judgements or evaluations, which are mental processes as these can be performed in the human mind under the 2019 PEG. Additionally, the claims also recite managing personal behavior or relationships or interactions such as following rules or instructions for gameplay, considered certain methods of organizing human activity. Specifically, independent Claim 10 recites “
As indicated above, the underlined portions of representative Independent Claim 10, generally encompass the abstract ideas, for example as, each of at least one step or instruction or rule for: (i) an observation, judgement or evaluation, which is a mental process under the 2019 PEG. Further, the dependent claims include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed. Accordingly, each of Claims 10-15 recites an abstract idea.
Step 2A, Prong 2
Under prong 2 of step 2A, the examiner considers whether the additional elements in the claims integrate the abstract idea into a practical application. Here, the abstract idea is not integrated into a practical application. According to 2019 PEG, a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
Claims 10-15 further recite a memory, a display and a processor, yet these are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
The steps in the claims are deemed to be data gathering and data presentation for the use of the judicial exception and similarly are recited at a high level of generality. Thus, these limitations are a form of insignificant extra-solution activity (See MPEP 2106.05(g), See also selecting a particular source and type of data to be manipulated where “Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)).
Even when the limitations are viewed in combination, the additional elements in this claim do no more than automate the organizing activities needed to be performed, using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Latric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality). Furthermore, the additional elements do not serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Accordingly, Claims 10-15 as a whole does not integrate the recited judicial exception into a practical application and these claims are directed to the judicial exception. Thus, Claims 10-15 lack the eligibility requirements of Step 2 Prong II.
Step 2B
Finally, under step 2B, the examiner evaluates whether the additional elements:
• add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present (MPEP 2106.05(d)); or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
Claims 10-15 do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. As discussed above with respect to the lack of a practical application, the additional elements in the claim (i.e. a memory, display, a processor, etc.) amount to no more than mere instructions to apply the exception using generic computer components used as tools. These additional elements are generically claimed computer components which enable a game to be conducted by performing the basic functions of: (i) receiving, processing, and storing data, (ii) automating mental tasks and (iii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Further, under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be reevaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. Here, the steps of the claims are deemed to be data gathering and data presentation extra-solution activity. Court decisions cited in MPEP 2106.05(d)(II) indicate that these limitations are well-understood, routine, and conventional function when it is claimed in a merely generic manner (as they are here). See storing and retrieving information in memory (MPEP 2106.05(d)(II)(iv) and then to present or display said information is well known as in presenting offers and gathering statistics (MPEP 2106.05(d)(II)(iii). Accordingly, a conclusion that the step is well-understood, routine, conventional activity is supported under Berkheimer. Therefore, these limitations remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Therefore, claims 10-15 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).
Dependent Claims are ineligible and lack a practical application.
Claims 11-15 inherit the same abstract idea as Claim 10.
The dependent claims recite further extra-solution activities and further define the abstract idea of the independent claims.
AIA Notice
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2002/0165027 A1 to Kaminagayoshi in view of U.S. Patent 7,591,721 to Matsuno et al.
Regarding Claim 10. (Currently amended) Kaminagayoshi discloses an information processing apparatus comprising
a memory (fig. 56, ¶¶ 219);
a display (fig. 56); and
a processor coupled to the memory (fig. 56, ¶¶ 219), the processor being configured to:
start a first period for letting a player character perform a first action, performed with an action of an opponent character as a trigger, executable in response to a first operation received via an input device from [[by]] a players (figs. 1-24,¶¶ [0014]-[0018]); and
start a second period after the first period starts, the first period and the second period overlapping, and the second period continuing after the first period ends (figs. 1-24, ¶¶ [0014]-[0018]),
in a case in which a second operation is received via the input device from [[by]] the player for letting the player character perform a second action, different from the first action, during the second period, let the player character perform the second action rather than the first action (figs. 1-24, ¶¶ [0014]-[0018]).
However, it does not explicitly disclose:
display, at the display, the first action or the second action performed by the player character, the second action being an action that is more disadvantageous for the player than the first action.
In a related invention, Matsuno discloses a rule (applied to a battle) is set according to a stage of the progress of a game every time the stage of the game advances. When a battle is started, either a player character or an enemy character that can execute an action is determined. When it is decided that the player character can execute the action, a player selects the action of the player character. Matsuno discloses:
display, at the display, the first action or the second action performed by the player character, the second action being an action that is more disadvantageous for the player than the first action. (Col. 2:1-65 discloses imposing a penalty on a player when breaking a rule in a battle type of video game)(breaking a rule is disadvantageous for the player).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the features of Matsuno with the gaming system of Kaminagayoshi in order to provide a game that maintain’s a player’s interest in the game (Matsuno discloses that this is a key objective of their game, see Col. 1:52-55).
Regarding Claim 11, (New) Kaminagayoshi in view of Matsuno discloses the information processing apparatus according to claim 10, wherein the player character is in a state of being affected by an action of the opponent character in a case in which the second action is not performed after the first period ends (Kaminagayoshi, figs. 1-24, ¶¶ [0014]-[0018]).
Regarding Claim 12, (New) Kaminagayoshi in view of Matsuno discloses the information processing apparatus according to claim 10, wherein the first operation and the second operation are identical (Kaminagayoshi, figs. 1-24, ¶¶ [0014]-[0018]).
Regarding Claim 13, (New) Kaminagayoshi in view of Matsuno discloses the information processing apparatus according to claim 10, wherein the processor is configured to: start a third period after the second period ends; and make a transition to the first period in a case in which the first operation by the player is received during the third period (Kaminagayoshi, figs. 1-24, ¶¶ [0014]-[0018]).
Regarding Claim 14, (New) Kaminagayoshi in view of Matsuno discloses the information processing apparatus according to claim 10, wherein the processor is configured to make a transition to the first period in a case in which the first operation by the player is received after the first action is completed (Kaminagayoshi, (figs. 1-24, ¶¶ [0014]-[0018]).
Regarding Claim 15, (New) Kaminagayoshi in view of Matsuno discloses the information processing apparatus according to claim 10, wherein the processor is configured to change an effect of the first action to be more advantageous for the player character as a time from reception of the first operation to reception of an attack from the opponent character is shorter (Kaminagayoshi, figs. 1-24, ¶¶ [0014]-[0018]).
Response to Arguments/Remarks
Applicant’s arguments filed 03/17/2026 have been fully considered.
Applicant argues that Huang (US 2021/0322879) discloses a second operation within a target time period after the first action is completed and that Huang's second action is advantageous (faster energy collection, improved winning rate), whereas amended claim 10 requires overlapping first/second periods (the second continuing after the first ends), a second operation received during the second period, and a second action that is more disadvantageous than the first. This is persuasive as to Huang: Huang's windows are sequential (second after first completes) rather than overlapping, and Huang's second action is beneficial. The §102 rejection over Huang is therefore withdrawn. The argument is not persuasive as to §101 (see above): the amendments recite a game rule on generic hardware and do not render the claims eligible.
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.
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/S.N.H/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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