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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. The claims recite “Certain methods for organizing human activity” in the form of a person interacting with a computer to follow game rules and instructions (predefined goals, predefined state-based object behaviors), and the management of aspects of the game by a generic computer, which are activities held to be abstract by the courts. The claims are drafted as lists of desired end-results of the operation of generic computing devices, without any technical description of how the results are achieved, and wherein the results themselves are directed to abstract ideas. No practical application(s) or inventive concept(s) are found that could transform the claims into eligible subject matter.
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 1-13: Manufacture (electronic gaming device)
Claims 14-19: Process (method).
Claim 20: Machine (system).
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.
The claims recite the following judicial exceptions:
“Certain methods of organizing human activity” including “managing personal behavior or relationships or interactions between people” and “following rules or instructions.” See MPEP § 2106.04(a)(2)(III)(A).
The pending claims recite a player interacting with a computer for following rules or instructions to play a game, (i.e., causing objects to move and controlling how the objects behave depending on whether other certain objects have been obtained prior) wherein the game is managed by the computer. See In re Smith, 815 F.3d 816 (Fed. Cir. 2016) (rules for a card game conducted between persons are abstract); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014) (managing a bingo game via a computer is abstract).
And as instructed in MPEP 2106.04(a)(II), conducting abstract activities between one or more persons and a generic computer(s) is covered activity within an enumerated grouping of abstract ideas. “the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping.” In the pending claims, one or more players making operations to proceed a game subject to certain rules or instructions using a computer is covered activity within this grouping.
The following limitations of claim 1 are directed to judicial exceptions. Claim 1 is representative, independent claims 14 and 20 rise and fall with claim 1:
execute an action game having a plurality of courses each including at least one goal and a first object;
move a second object in the course in accordance with an operation by a player
control a plurality of types of third objects in the course in first behavior preset for each course;
control any one type of the third objects in second behavior preset for each course in accordance with the second object acting on the first object;
cause a fourth object to appear in the course in accordance with the second object acting on the first object;
control any one type of the third objects controlled in the second behavior in the first behavior in accordance with the second object acting on the fourth object;
These quoted limitations collectively amount to managing rule-based play of a game conducted between at least one user and a computer, falling squarely within the abstract-idea grouping of certain methods of organizing human activity. See In re Smith, 815 F.3d 816 (Fed. Cir. 2016) (rules for a card game conducted between persons are abstract); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014) (managing a bingo game via a computer is abstract). And as instructed in MPEP 2106.04(a)(II), conducting abstract activities between one or more persons and a computer(s) is covered activity within an enumerated grouping of abstract ideas.
Dependent claims:
Claims 2-13 and 15-19 list further interactions that can occur between a player and a computer for managing the play of a strategy game. These elaborate the abstract idea and do not introduce a technological improvement. Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)), if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."); Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)), “the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.”
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:
a non-transitory computer-readable medium storing computer-executable instructions; a processor; (claim 1)
a game system (claims 1, 8)
a game screen (claims 5, 18)
The preceding additional elements, considered alone and in the context of the claims, do not integrate the abstract game management or game rules into a practical application that improves computer functionality or another technology. They:
Invoke generic computers, memories, and conventional networked game environments. See where the instant specification discloses a standard CPU, input, display, storage, server, etc. (e.g., [0034], [0035], a generic game apparatus comprising a CPU or SoC of unknown technical specifications, and a generic display unit 5). “[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., “execute”, “move”, “control”, “cause”) and typical game operations (moving characters based on player operations, controlling objects based on programmed attributes).
With regard to interpreting result-oriented claim language when performing a 35 USC §101 analysis, see Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024) 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.
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"”.
The pending claims do not include any technical description of mechanisms for accomplishing the claimed results. Instead, the claims use some unspecified computer and unspecified programming to conduct generic, result-oriented steps such as “execute”, “move”, “control”, and “cause”, for performing abstract certain methods of organizing human activity. The claims seek to cover any system and any method (such as any hardware devices, any programming instructions) for applying the abstract game rules and instructions for game players. As such the claims are found to be directed to ineligible 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.
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:
“non-transitory computer-readable medium,” “a game program,” “a processor”
The specification characterizes these computing components as conventional computing hardware and software performing ordinary functions (spec. ¶¶ [0034]-[0035]), 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 1–20 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—rules and instructions for playing a game between at least one player and a computer, and managing the operation of the game (certain methods of organizing human activity). 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 (new rules/instructions to be followed by persons playing a game and new ways of managing a game), 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 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 game play 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 (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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN J HYLINSKI whose telephone number is (571)270-1995. The examiner can normally be reached Mon-Fri 10-530.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN J HYLINSKI/Primary Examiner, Art Unit 3715
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