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 .
Applicant’s amendments dated 5/8/26 are hereby entered.
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, 3-4, 6-12, 14-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1, 3-4, 6-12, 14-15, and 17-20 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being and/or the rules of a game.
In regard to Claims 1, 12, and 20, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Trading Technologies v. IBG LLC (2017-2257; 4/18/19) and Yousician v Ubisoft (non-precedential); and/or claim the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming:
A method for controlling [an] item, comprising:
[…] display[ing an inventory including a plurality of […] items;
receiving [data regarding] a first sliding operation on a display element corresponding to a first virtual item of the plurality of virtual items, the display element being displayed in a first display region;
in response to the first sliding operation, [moving] the display element of the first […] item […] as the first sliding operation progresses;
determining […] whether a sliding distance of the first sliding operation is greater than or equal to a first threshold;
in response to determining that the sliding distance is greater than or equal to the first threshold […] displaying […] a quantity selection [display] for the first […] item, the quantity selection [display] including a slider bar and a slider on the slider bar, a position of the slider on the slider bar indicating a selected quantity of the first […] item that is based on a total quantity of the first virtual item, the quantity selection [display] being displayed in a second display region that is different from the first display region;
updating the selected quantity of the first […] item on the quantity selection [display] based on the sliding distance of the first sliding operation on the display element as the first sliding operation progresses;
adjusting the position of the slider on the slider bar as the selected quantity of the first […] item changes during progression of the first sliding operation;
performing a first operation on the selected quantity of the first […] item when the first sliding operation is released […]; and
outputting for display the inventory in an updated display state based on the first operation.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being and/or the rules of a game.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., a non-transitory computer readable medium storing instructions embodying Applicant’s abstract idea, a processor, a touch screen, a graphical user interface, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., a non-transitory computer readable medium storing instructions embodying Applicant’s abstract idea, a processor, a touch screen, a graphical user interface, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F11-12 in Applicant’s PGPUB and text regarding same and, e.g., p152 in regard to employing a user interface.
Response to Arguments
Applicant argues on pages 10-11 of its Remarks in regard to the rejections made under 35 USC 101 that its claimed invention is analogous to that of Core Wireless and, thereby, patent eligible under the Mayo test. Applicant’s argument is not persuasive because the CAFC in Core Wireless held that the invention claimed therein was patent eligible because its claimed combination of menus improved the utility of a touchscreen display on a small mobile device. Applicant does not claim any analogous improvement to any computing device. Instead, Applicant claims certain interactive visual displays that make it easier and/or faster for a human being to make certain inputs. Applicant’s claimed invention is more closely analogous to one that was held by the CAFC in Trading Technologies v. IBG LLC (4/18/2019). Applicant likewise claims user interface elements that allow for the selection of certain quantities that are desired to be acquired which when selected then triggers an updated display via the user interface. This is the same functionality claimed in Trading Technologies, See, e.g.,:
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Id., slip. op., pages 5-6.
The CAFC in Trading Technologies that such a user interface did not constitute patent eligible subject matter to the extent that it, at best, improved human performance and not the performance of the claimed computing device itself:
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Id., slip. op., pages 12-13.
Applicant contend in its specification that its invention improves the ease and efficiency with which a human player can select items for use in a game. This is closely analogous to Trading Technologies in that both inventions are intended to allow the human being to improve his/her performance and is not a technological improvement.
Applicant further argues in this regard on page 11 of its Remarks:
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Applicant’s argument is not persuasive as there is no such holding in either Core Wireless or Data Engine Technologies that simply by claiming a user interface with specificity that patent eligible subject matter is claimed for purposes of the Mayo test. This is clear from the holding of Trading Technologies, cited supra, which concerned a user interface claimed with specificity. This is also made further clear by the CAFC’s opinion in Broadband ITV v. Amazon, which discusses both Core Wireless and Data Engine Technologies:
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Id., slip. op., page 13.
Again, and as pointed out supra, Applicant’s claimed invention, at best, has the potential to improve the performance of the human player by allowing him/her to quickly and more easily select a quantity of items for use in a game. This, however, following Trading Technologies and Broadband ITV is not a technological improvement, regardless of the specificity with which the mechanics of the selection operation are claimed.
Applicant argues that its claimed invention is not analogous to that of Yousician nor Savvy Dog Systems. Applicant’s argument is not persuasive to the extent that Applicant claims the rules by which a human being may take certain actions in a game.
Applicant further argues in its Remarks:
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Applicant’s argument is not persuasive as the 101 rejection made supra makes the required Berkheimer finding in regard to the elements claimed in addition to the Applicant’s abstract idea in terms of the claimed computerized embodiment of an abstract idea as being well-known, routine, and conventional. In other words, Applicant claim software to embody its abstract idea and a computing device to execute that software, as well as claims a touchscreen to receive user inputs, all of which are well-known, routine, and conventional. Contrary to Applicant’s argument, there is no Berkeheimer requirement to make factual findings in regard to the alleged abstract idea itself as being well-known, routine, and conventional.
For these reasons the rejections made under 101 are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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