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 1-9 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 following game rules or instructions, 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 comprise rule-based player operation in a competitive game. No practical application(s) or inventive concept(s) are found that could transform the claims into eligible subject matter.
A detailed discussion follows that is based on the guidance provided in the 2019 PEG and Oct. 2019 Update. Steps 1 and 2 of the Alice analysis have been conducted for pending claims 1-9.
Claim 1 is treated as representative; independent claims 8 and 9 are commensurate in scope and rise or fall with claim 1.
Claim 1 (non-transitory computer-readable medium):
L1: A non-transitory computer-readable medium storing computer-executable instructions that cause one or more computers to perform a method of processing a competitive play in a competitive game between a plurality of attacking users and at least one defending user.
L2: Moving, in a game space created by the defending user, each of a plurality of characters respectively associated with the plurality of attacking users, based on operations by the respective attacking users.
L3: Causing an attacking user to acquire a specific object placed in the game space due to the character operated by the attacking user having reached the specific object.
L4: Determining that a winning condition for the attacking user who has acquired the specific object is satisfied and ending that attacker’s competitive play; continuing other competitive plays for other attackers.
L5: Determining that a winning condition for the defending user is satisfied and ending the competitive play for all parties when a remaining status of specific objects not yet acquired by attackers is kept from reaching a predetermined remaining status until a predetermined time elapses from start of the competitive play (i.e., defender wins if objects remain at time limit).
Dependent claim overview:
Claim 2: End play for all when all attackers acquire the specific object before the time limit.
Claim 3: An item (e.g., key) is necessary to acquire the specific object; acquisition requires the character with the item reaching the object.
Claim 4: Attacker can acquire the item from the field or from another attacker who previously acquired it.
Claim 5–6: Item is newly placed based on additional conditions (e.g., passage of time).
Claim 7: Defending user can customize restrictive objects that limit movement in the game space.
Claim 8: Method claim with the same operations as claim 1.
Claim 9: System (one or more computers and memories) storing instructions to perform the method of claim 1.
Step 1: In this step of the Alice analysis, it is determined that all of the pending claims fall into statutory categories. The claims meet step 1 as follows:
Claims 1-7 are directed to an article of manufacture (non-transitory computer-readable medium).
Claim 8 is directed to a process (method).
Claim 9 is directed to a machine (system with computers/memories).
Step 2A, Prong 1: In this step of the Alice analysis, judicial exception(s) that fall into abstract idea groupings enumerated in the 2019 PEG are identified and quoted.
The pending claims recite rules and outcomes for multi-user competitive gameplay conducted among persons and between persons and a computer (i.e., determining winners/ending play based on acquisition status/time limits; gating acquisition on possession of an item; customizing movement restrictions). Under the 2019 PEG, “certain methods of organizing human activity” include “managing personal behavior or relationships or interactions between people” and “following rules or instructions.” See MPEP 2106.04(a)(2)(III)(A). In the pending claims, gameplay rules and player coordination and competition steps are seen as managing personal behavior and relationships among players and describing ideas of rules and instructions to be followed by players.
And to the extent generic computer(s) are used to facilitate organized human activity among users and between users and the computer(s), MPEP 2106.04(a)(2)(II), “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 following game rules or instructions using a computer is covered activity within this grouping.
Limitations directed to abstract ideas (excerpts):
“determining that a winning condition for the attacking user who has acquired the specific object … is satisfied and ending a competitive play for the attacking user…”
“determining that a winning condition for the defending user is satisfied and ending the competitive play for all of the defending user and the attacking users in case that a remaining status of the specific objects … is kept from reaching a predetermined remaining status until a predetermined time elapses…”
“causing an attacking user…to acquire at least a specific object … due to the character … having reached the specific object” (claim 1), and, in claim 3, “wherein an item necessary … is placed … and … the character which has acquired the item [reaches] the one of the plurality of specific objects.”
Claim 7’s “allowing the defending user to customize at least a restrictive object that restricts movement of the character in the game space when creating the game space” is also an expression of game rule/content configuration, not a technological improvement to a computer.
These quoted limitations collectively amount to recited rules for playing a competitive game—i.e., organizing multi-user interactions, setting conditions, and determining outcomes—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 2-7 recite further game-rule details (all attackers acquire an object to end play; item/key gating; item transfer; timed spawning; stage customization). 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.”
Independent claims 8 (method) and 9 (system with instructions) are directed to the same abstract idea implemented via generic computers; they likewise fail Step 2A Prong 2 and Step 2B.
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; (claim 1)
one or more computers; (claim 8)
a game system; one or more computers; one or more memories; (claim 9)
The preceding additional elements, considered alone and in the context of the claims, do not integrate the abstract game-rule logic 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, communication unit, input, display, storage, server, etc. (e.g., ¶¶ [83]–[88], [89]–[92], [110]–[118]), and generic “game devices” and “game servers.” “[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 results-oriented language (e.g., “determining … ending … winning condition”) and typical game operations (“moving characters based on player operations,” “acquiring objects when reached”).
With regard to interpreting results-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 “causing”, “displaying”, “determining”, for performing abstract certain methods of organizing human activity. The claims seek to cover any system and any method (such as 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,” “one or more computers,” “memories that store computer-executable instructions,” generic “game device” and “game server.”
The specification characterizes these computing components as conventional computing hardware and software performing ordinary functions (spec. ¶¶ [83]–[92], [110]–[118], [221]–[225]), 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—rules for playing a competitive game and managing multi-user interactions and outcomes (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. 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.
In the field of the instant invention (new rules to be followed by persons playing 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).
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 results-oriented terms (“determining winning condition,” “ending play”) 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.
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/STEVEN J HYLINSKI/Primary Examiner, Art Unit 3715