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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. The claims recite the use of generic computing technology applied to the abstract idea of verifying ownership of an item. Ownership verification of an item is rooted in human activity long pre-dating digital computing and falls under the grouping of abstract ideas of “Certain methods for organizing human activity” of the types of “managing personal behavior or relationships or interactions between people”. When a user is instructed to perform this activity as per the claims, it also qualifies as “following rules or instructions.” See MPEP 2106.04(a)(2)(III)(A). No practical application(s) or inventive concept(s) are found that could transform the claims into eligible subject matter. The claims merely list desired end results of operating some computers of unknown specifications or programming and imply a system architecture of unclaimed specifications. The claims lack any technical details describing how hardware and/or software are configured to achieve the recited end results. As such, there is no possibility of finding an improvement to a computer or to a technical field. The claims are drafted using result-focused language that describes desired outcomes including generic uses of computer, server, a token, digital wallet and blockchain, without any limitations that explain how hardware and/or software are particularly configured to accomplish these outcomes and as such as seen as routine and conventional use of existing technologies in an “apply it” scenario that fails to transform an abstract idea.
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 1-21.
Claim 1 is treated as representative; independent claims 8 and 15 are commensurate in scope and rise or fall with claim 1.
Claim 1 (a method) is parsed into the following limitations:
L1: receiving an identifier identifying a character including character attributes;
L2: receiving an owner identifier identifying an owner of a character;
L3: verifying an owner of a character;
L4: communicating character attributes based on a verified owner;
Dependent claim overview:
Claims 2, 9, 16: the method of claims 1, 8 and 15, respectively, applied to a generic technical field comprising some generic token, wallet, and blockchain, wherein unspecified software or hardware are required to implement these features and no steps are claimed that recite how these technologies are to be implemented or integrated with the concept of the invention;
Claims 3, 10, 17: creation and storage of a character;
Claims 4, 11, 18: creation and storage of a character and verification, by unclaimed method steps, programming, and/or hardware, by some generic blockchain system;
Claims 5, 12, 19: communicating data over a network;
claims 6, 13, 20: recites the location of data (on a user computer)
Claims 7, 14, 21: recites that some computer system of unclaimed technical specifications is separate from some other computer system of unclaimed technical specifications on a system having architecture of unclaimed technical specifications
Claim 8: Apparatus 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 a process (method);
Claims 8-14 are directed to a machine (computing apparatus);
Claims 15-21 are directed to an article of manufacture (non-transitory computer-readable medium).
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 the use of generic computing technology applied to the abstract idea of verifying ownership of an item. 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). The pending claims read as a list of instructions for a user of a computer system for assessing ownership of a character and as such 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) (“a user computer system,” a “character server”, “a character token”, “wallet identifier”, “a blockchain system”) 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 of representative claim 1):
“verifying that an owner of the character corresponds to the asserted owner…”
In claims 3-4, 10-11, 18-19, “instruction to create the character … creating the character”;
These quoted limitations collectively amount to an equivalent of fundamental human activity long predating server-based computing or blockchain technologies. Human beings have, for centuries, sought to verify ownership of items. In a generic computer context including characters, these are also interpreted as rules for playing a competitive game—i.e., organizing 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 3-4, 10-11, 18-19 recite further game-rule details (instructions to create characters). These elaborate the abstract idea of parent claims 1, 8 and 15 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 (apparatus) and 15 (computer-readable media) 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:
A1: a character server; a user computer system; (claim 1) a computing apparatus (claim 8); non-transitory computer readable storage medium, one or more processors of a server (claim 15);
A2: communicating … character attributes; (claim 1) storing the character at the character server (claims 3-4, 10-11, 17-18); receiving … an instruction to communicate the one or more of character attributes … between the character server and the gameplay application;
A3: a character token; wallet identifier; a blockchain system (claims 2, 4, 9, 11, 16, 18)
A4: “making separable” of generic computer devices in a system of unclaimed architecture;
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 generic user devices, servers, and software applications that are merely described functionally but lack any technical details as to how they are programmed (e.g., ¶¶ 33, 35-39 which describes one or more servers, databases, and user computers having no particular technical specifications or programming having an intended use of operating with some service front end and front-end application to practice the invention. Any functions attributed to software, such as ‘marketplace application 108’, ‘front end application 110’ and ‘blockchain application 112’ lack any description of how computer(s) are programmed. All of the computers in the specification are described functionally and cannot be specifically identified.” ¶ 69 admits that “This disclosure contemplates any suitable number of the computing systems … a server, a desktop computing system, a mainframe…” ¶ 70 enumerates conventional features attributed to a computing system of the invention such as a processor 408, memory 402, storage 404, 406, communications interface 416, network adapters and standard peripheral devices.”
[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 particular improvements to a server or a blockchain system. As no particular programming steps are claimed or disclosed that would describe how character tokens are created or maintained, how wallet identifiers are applied, or how some unspecified blockchain system processes wallets and tokens, and as the computers and servers of the claims and the network(s) on which they communicate cannot be specifically identified, there is no evidence of improvements to the functions of computers themselves or to the field of blockchain systems.).
Do not effect a transformation of an article.
Are drafted as applying the abstract idea in the field of computer software involving characters and character attributes (field-of-use) and in the field of blockchain systems (also field of-use) with results-oriented language [ (e.g., “verifying that an owner of the character…” “communicating … the one or more character attributes”) ] and typical game operations [ (“receiving … an instruction to create the character”, “storing the character”)
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 2 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 “communicating”, “comparing”, “receiving”, “creating”], for performing abstract certain methods of organizing human activity. The claims seek to cover any system and any method (such as any programming instructions, any server, and any blockchain system) for applying the abstract rules and instructions for game users. 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:
[ “a character server”, “a user computer system”, “storage medium”, “processors”
The specification characterizes these computing components as conventional computing hardware and software performing ordinary functions (spec. ¶¶ 69-70), 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 1-21 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 a user initiating ownership verification and managing user-computer 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 such as how “a blockchain system” is configured to perform the “providing”, “receiving”, “comparing” steps. 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 (rules to be followed by a user operating software involving characters), 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 rules/instructions to be followed by users) 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 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 (“verifying”, “communicating”, “providing”, “receiving”, “comparing”) 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 20230125021 A1 to Meyers et al.
Re claim 1, Meyers teaches:
L1: a method of a character server, comprising: receiving, from a user computer system: a character identifier corresponding to a character stored at the character server,
The abstract describes the invention of Meyers as a game system that operates by “receiving character attribute selection data to be associated with a game character, wherein the character attribute selection data indicates a unique subset of a set of character attributes of a character attribute database;”
L2: the character comprising one or more character attributes applicable within a scenario with which the character may be used;
Refer to descriptions of “game character 1570”, “performance data associated with the game character, “other character parameters and/or attributes that are used in the game,” “their specific capabilities/skills” in [0391]-[0395].
And note where [0397] describes that “The system operates by: receiving character attribute selection data 4022 to be associated with a game character, wherein the character attribute selection data indicates a unique subset of a set of character attributes of a character attribute database 4020.”
Regarding the attributes being “applicable within a scenario”, note:
[0391], “other data 1574 can include performance data to be associated with the game character as well as other character parameters and/or attributes that are used in the game to dictate and/or guide the performance of the game character and/or their specific capabilities/skills.”
[0402], “Character attribution selection data 4022 has been used to select a unique subset of character attributes of the character attribute database .... A game ancillary object (a walking stick of wisdom … providing hints and unlocking certain challenges in the game) has also been selected via game accessory data 4026 for association with the game character.”
L3: and an asserted owner identifier corresponding to the character identifier; verifying that an owner of the character corresponds to the asserted owner identifier;
[0317] identifies that a primary use of Meyers is to use a game token NFT and digital wallet for “authenticating the user to the game as the actual game owner or other authorized user/player.”
See also: in [0327], [0329], the “ownership check 6736 that is sent to the blockchain system 6720” that can include “additional owner/user information, such as user authentication data … and/or other data/metadata to be used to validate the NFT data from the wallet 6725”
See also an illustrative token ownership check process in Fig. 16K.
L4: and communicating, between the character server and the user computer system, the one or more character attributes of the character based on the verification that the owner of the character corresponds to the asserted owner identifier.
Fig. 16K shows that game play including a character associated with a token NFT can only proceed if an ownership check of the token by a blockchain system 6920 passes. Function 6718-4 “presenting, via the game application, play of the game” including a validated token NFT associated with a character meets the limitation of communicating character attributes based on owner verification. As discussed in the analysis of L2, characters associated with token NFT’s have prescribed characteristics and attributes such as weapons, abilities, powers, etc.
[0359], [0366] also states that ownership verification for a token NFT is performed each time a player tries to generate a new token or tries for “augmentation of a particular player/character in a game with special attributes, abilities, strengths, weaknesses”. Successful augmentation or generation of a character including certain attributes based on ownership verification additionally teaches L4.
[0391], [0397], [0404] additionally describes that data associated with a particular game character 1570 and its corresponding token can be displayed, including performance data and character parameters.
Re claims 8 and 15, refer to the rejection of claim 1 wherein the rejection of the method necessarily involves a discussion of a computer apparatus executing software from memory.
Re claim 2, 9 and 16, Refer to the illustrative token ownership check process in Fig. 16K which includes a wallet identifier (“a wallet associated with a user of the client device, the wallet containing a private key associated with the game token NFT”) and verifying that the owner of the character corresponds to the asserted owner using a blockchain system that performs an ownership check, see steps 6710-4 through 6714-4. See also the description of this process in [0331], [0351] and [0353], which notes that the ownership check includes not only checking an NFT token corresponding to a player character of defined characteristics but also an owner identifier “owner/user information such as user authentication data, associated with the user and/or owner of the player token NFT 6822”.
Re claims 3-4, 10-11 and 18-19, [0359], [0366] describe that ownership verification by a blockchain system for a token NFT is performed each time a player tries to generate a new token that comprises player-chosen special attributes, abilities, strengths, weaknesses. As noted in [0390], these generated player tokens are synonymous with generated “game characters”. [0391] describes that “display data to be associated with a game character 1570, together with other data 1574, is used to generate a game character NFT 1572. In various examples, the other data 1574 can include performance data to be associated with the game character as well as other character parameters and/or attributes that are used in the game to dictate and/or guide the performance of the game character and/or their specific capabilities/skills.”
Re claims 5, 12 and 20, refer back to Fig. 16K wherein at function 6718-4, a player token (character) that has passed a blockchain system-enabled ownership verification is allowed to be used by a game application.
Re claims 6-7, 13 and 21, [0132] describes that Meyer’s system including client devices can comprise one or more servers, cloud computing, or other decentralized or distributed computer systems or nodes. And [0237] describes that this decentralized system and network stores a game application 6518 comprising playable game data such as application binary and data corresponding to illustrative game 812.
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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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