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
Claims 1-10 are rejected because they are directed to abstract ideas without significantly more. The pending claims seek coverage for selling access to video game play knowledge learned from observing game play. Selling is fundamental economic practice and providing access to a gaming knowledge base is rooted in the pre-digital human behavior of purchasing printed “Gamer FAQ” type magazines such as NINTENDO POWER. Both selling and teaching/learning activities fall into the enumerated abstract idea grouping of “certain methods of organizing human activity.” See MPEP 2106.04(a)(2)((II)(A) and (C), noting that “fundamental economic practices” including “local processing of payments”, “following rules or instructions” and “teaching” are among covered activities.
To the extent generic computers are used to deliver relevant game play knowledge, in Bascom, the district court found that “content provided on the Internet is not fundamentally different from content observed, read, and interacted with through other mediums like books, magazines, television, or movies.” The court in Bascom found that no inventive concept existed when delivering content was performed using a “well-known, generic computer component [ ]” or a standard filtering mechanism. Id. at 654. As in Bascom, the game knowledge content that is queried and fetched in the pending claims, too, has its origins in printed text. Game-title specific "hints and tips" or "FAQ" type content originated in printed publications such as the "Nintendo Power", “Electronic Gaming Monthly” and “Game Informer” magazines that long pre-dated the existence of the internet. The instant claims fetch the same type of pre-existing game strategy content in a digital context by fetching relevant content, which is a process that was traditionally performed by human beings reading such magazines. And as in Bascom, the instant claims lack attributing any nonobvious structural specifications for the claimed computers or any description of nonobvious software functionality.
Additionally regarding the use of generic computers to provide access to game play knowledge, MPEP 2106.04(a)(2), describing "Certain methods of organizing human activity," indicates that this grouping covers certain activity between a person and a computer. In the instant case, it is well-known that before the existence of the internet, persons could pay for access to game-state specific knowledge in print publications. It is held that the instant-claimed providing knowledge learned from gaming is rooted in pre-digital, nontechnical organized human activities.
The language directed to abstract ideas in each of independent claims 1, 9 and 10 is as follows:
the game player model having learned an action of a learning target in a second play state based on play data … and an action taken by a player in the first play state;
The above activities are rooted in the nontechnical activity of publishing print copies of game strategy magazines that feature game scenario-specific knowledge learned from observing play by other gamers. And as informed by BASCOM, selecting information from a database and delivering to users by generic computers is not fundamentally different from interacting with traditional print media.
The following additional elements exist in the independent claims:
a memory configured to store instructions, a processor configured to execute the instructions, an information processing apparatus; In TLI Communications, 823 F.3d at 612, 118 USPQ2d at 1747, the court found that claimed steps of recording, administration and archiving of digital data wherein a client device and server were merely used as tools to execute the abstract idea did not add significantly more to the abstract idea because they were simply applying the abstract idea on a computer network without any recitation of details of how to carry out the abstract idea. The same conclusion is reached in the instant application, that the claims to a generic computing context merely uses the computer in its ordinary capacity and lack any details as to how they are used to carry out the abstract idea.
Additionally, “The receiving of input and storing steps represent the use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or 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 attributing particular generic computer functions for computer hardware to perform from well-known, routine, conventional functions performed by such hardware has been held to be insufficient to show an improvement to technology, Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264, 120 USPQ2d 1201, 1208 (Fed. Cir. 2016).
accept a user instruction; output model information for using the game player model in response to the use instruction;
This represents another instance of using a computer in its ordinary capacity to receive and transmit data as discussed with respect to Affinity Labs v. DirecTV. Additionally, outputting existing data is seen as insignificant post-solution activity.
It is additionally noted that the steps of “accept a user instruction,” “to make a game player model available”, “output model information…” merely represent the idea of a solution or outcome without providing any specificity of how hardware and/or software are to accomplish them. Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024) explains that 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." Such is found to be the case in the pending claims.
The dependent claims are summarized as follows:
Claims 2-4 recites accepting a usage fee subject to certain terms and conditions, which is directed to a fundamental financial or commercial practice, which is a covered abstract idea. 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.”
Claim 5 recites outputting audio containing a voice, which is an insignificant post-solution activity. This is also a recitation of data per se (nonfunctional descriptive material or “printed matter”) which in accordance with MPEP § 2106.03 does not belong to a statutory category of invention. When considered as an additional element under the Alice analysis, then, matters of data per se cannot impart eligibility to judicial exceptions.
Claims 6-7 recite the use of labels in a machine learning model attributed to data, one representing a learning target and one representing data contrary to a learning target.
In other words, the claim limits the type of data to particular type of data. This activity has been held to be insignificant extra solution activity. See, e.g., Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (limiting use of abstract idea to the Internet); Electric Power, 830 F.3d at 1354, 119 USPQ2d at 1742 (limiting application of abstract idea to power grid data); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017) (limiting use of abstract idea to use with XML tags). Additionally, tagging data for use in a machine learning model, recited at a high level without any details claimed as to how this result is accomplished, is seen as using a generic machine learning method in a particular environment.
Claim 8 recites an intended use of a machine learning model “…so as to get close to play data”. There are no programming steps claimed that define how this intended use of the machine learning model is to be achieved.
The recent Court of Appeals for the Federal Circuit recently found, in the suits against Fox Corp. Fox Broadcasting Company, LLC and Fox Sports Productions, LLC, that when claims merely use machine learning to claim an abstract idea itself by “using a generic machine learning technique in a particular environment,” this is a failure to transform the claimed abstract idea into “significantly more” – there is “no inventive concept.” The CAFC opinion concluded with a note that, “[m]achine learning is a burgeoning and increasingly important field and may lead to patent-eligible improvements in technology.” The court explained that its instant opinion held “only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.” The pending claims are seen as merely adding machine learning to video game-FAQ type materials without disclosing any improvements to machine learning models themselves.
Following the guidance outlined in MPEP 2106.04(d), the judicial exception of claims 1-10 are not integrated into a practical application because the claims as presented merely apply organized human behavior for accessing data learned from gaming and conveying it over a generic computerized environment subject to a fee, without providing significantly more than the idea itself. The claims list ideas of outcomes that are implemented by some implied, general purpose computing device that is not claimed as having any nonobvious structure or programming, without causing improvements to any technology, improvements in the functioning of the computer itself or in the art of databases, or providing any meaningful limitations beyond generally linking the abstract idea to the technological environments of the general purpose computing devices. The instant-claims recite ideas of results from high-level programming operations without any evidence of how these results are to be obtained by hardware or software. None of these computing operations are claimed as necessitating or creating a particular, special purpose computing device that would distinguish it as being anything other than a general-purpose computing device in the art.
In the field of the instant invention (accessing and filtering information from a database using generic prior art computers), an improvement would have to be found to an inherently technical problem existing in computers per se or databases and would have to reveal how the computer(s) or databases themselves are improved as a direct result of the claimed invention. And the details of the improvement to computers cannot be found in the details of the abstract ideas themselves. Genetic Techs v Merial, an inventive concept "cannot be furnished by the unpatentable law of nature" itself. A hypothetical improvement in a video game player’s customer experience (by transmitting and displaying certain pre-existing content) is not an improvement to computers themselves or to computer technology, but rather an improvement to humans. Fetching data intended to teach users how to play games and displaying it in certain ways to the user does not solve any stated problem that is inherently technical in nature or provide any meaningful limitations beyond generally linking the abstract idea to the technological environments of the general-purpose computing devices. The Supreme Court has held that “generic computer components” do not become patent eligible simply upon being “configured” to perform “specific computerized functions.” Alice, 134 S. Ct. at 2360.
The court ruled in International Business Machines Corporation v. Zillow Group, Inc., (CAFC, 17 October, 2022) (emphasis added), that "improving a user's experience while using a computer application is not, without more, sufficient to render the claims" patent-eligible at step one. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
“A patent-eligible technical improvement requires solving an actual problem.” McRO, 837 F.3d at 1314 (a claim directed to automating part of a 3D facial-expression animation method focused on a specific asserted improvement where the prior-art animator performed the task manually); Data Engine Techs., 906 F.3d at 1007–08 (a claimed method was not abstract where it “provide[d] a specific solution to then-existing technological problems in . . . prior art electronic spreadsheets,” and those pre-existing problems — that users of three-dimensional spreadsheets had to “master many complex and arbitrary operations” — were taught by the specification); cf. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1347 (Fed. Cir. 2018) (rejecting an asserted improvement where “Interval Licensing [did] not allege that computer display devices were previously unable to display information from more than one source”).
Neither the claims nor the specification of the instant invention identifies any existing problems that are inherently technical in nature that are being solved in specific ways by the steps of the claims. Instead, fetching data and displaying it to users using generic computing components in routine and conventional ways, at best, could be seen as improving a user’s experience, independent of any improvement to computers or to a technological field, which is not sufficient to impart eligibility.
MPEP 2106.05(a) provides examples that the courts have indicated may show an improvement in computer functionality, as well as examples that may not be sufficient to show an improvement in computer functionality. In Affinity Labs v. DirecTV, a claimed advance in a process of downloading and streaming was found to be an improvement to computer functionality, but a claimed advance in the information content itself was not found to be an improvement. The pending claims fall under the latter scenario; they are directed towards what particular contents of information is rendered and displayed and not to an improvement to any process(es) of some computing function(s) that would represent an improvement to the functioning of any computers themselves, which is evidence that the claimed alleged improvements are not sufficient to impart eligibility to the abstract ideas. MPEP 2106.05(a) additionally notes that:
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.
And MPEP 2106.05(f) describes that:
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or 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. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone);
None of the examples provided by the courts for improving computer functionality are found in the instant claims. The instant claims are similar to examples the courts have not found to be enough to qualify as “significantly more”, including mere instructions to implement an abstract idea on a computer. The claims invoke computers merely as a tool to apply the claimed abstract ideas for organized human activity.
The claims fail to recite details regarding how a computer aids the method or the significance of a computer to the performance of the method. No particular machine or manufacture is claimed that is used to implement the abstract idea or that is/are integral to the claim. There is no recited effectuation of a transformation or reduction of a particular article to a different state or thing. There is no application of the abstract ideas in any other meaningful way beyond generally linking the use of the abstract idea to a technological environment such that the claim as a whole is more than a drafting effort designed to monopolize the exception. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. Additionally, “If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1290-1291 (Fed. Cir. 2018).
Furthermore, none of the additional elements identified above are sufficient to amount to an inventive concept(s) because none of the additional elements reveal any specific improvements to the function of any computer(s) or to a field of technology, no particular machine or manufacture is claimed that is used to implement the abstract idea or that is/are integral to the claim, there is no recited effectuation of a transformation or reduction of a particular article to a different state or thing, and there is no application of the abstract ideas in any other meaningful way beyond generally linking the use of the abstract idea to a technological environment such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
In searching for any additional elements in the instant claims, the facts in Enfish are considered, in which a claimed algorithm implementing a self-referential table for a computer database was determined to be an improvement to existing computer functionality. The court found that the claimed invention was not simply the addition of general-purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. The features in Enfish enabled the claimed database table to achieve benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.
Enfish stands in contrast to the instant-claimed application, in which generic computers and routine and conventional software functions are used to output relevant video game learning content to users, which are activities traditionally done by humans in the field of video game strategy guides. This “apply it” scenario does not improve the field of databases or provide any other advances in computer technology.
A thorough analysis of each and every limitation of each and every claim, both individually and as part of an ordered combination shows that claims 1-10 are not patent-eligible under 35 USC § 101.
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 1-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by JP 2022525413A (hereinafter referred to as the ‘413 reference).
Re claims 1, 9 and 10, The 413 reference teaches: a game player model use provision apparatus
The abstract describes ‘413 as being directed to AI modeling of a video game for coaching and matchmaking. A machine learning model is trained using gameplay data from distinct user’s sessions as input.
comprising: at least one memory configured to store instructions; and at least one processor configured to execute the instructions
Paragraphs 6-8 of the Description of ‘413 describe that, in order for machine learning model 112 to be trained from video game session video frames and user input, “the video 110 and the user input 108 are recorded … and then the recorded data is used to train the machine learning model 112”. The training may optionally occur in real-time.
to accept a use instruction to make a game player model available, the game player model having learned an action of a learning target in a second play state based on play data including a first play state in a game and an action taken by a player in the first play state and based on a label indicating whether or not to be a learning target;
In one embodiment of ‘413, a trained game play model of another player, trained based on their game sessions, may be made available for sale to a player. The Description of ‘413, see the paragraph preceding the reference to Fig. 2, states that, “the user may deliberately play for himself by borrowing another user's AI bot, and any achievements or achievements during such gameplay are preserved and of the original user. … In some embodiments, the user may pay the usage fee of another player's AI bot using, for example, virtual currency, digital assets, digital credits, real currency, and the like. Thus, it is possible to create a market where users can train and improve AI bots through regular gameplay and progress of video games and rent trained AI bots to other users. In some embodiments, the AI bot can be rented on a unit-hourly basis or in some other measurement unit that quantifies the usage of the AI bot, so that the amount paid for the rental of the AI bot is The AI bot depends on the amount actually used. In such an ecosystem, usage statistics for a given AI bot can be posted and made available, and users may leave comments related to a given AI bot after using that AI bot.”
and output model information for using the game player model in response to the use instruction.
The thirteenth paragraph of the Description of ‘413 states that once trained, the machine learning model 112 can be used for “inserting AI bots … coaching … and matchmaking”, all of which will necessarily involve a displayed output in the video game.
The description of Fig. 4 indicates that, “ the system is configured to recommend specific coaching to the player based on the evaluation / classification of the machine learning model to assist in the development and improvement of the player's gameplay skill set. That is, the assessment can be configured to identify areas of the user's gameplay to improve, such as specific skills or techniques. In some embodiments, the recommended logic 404 may provide in-game coaching 406, which provides hints or other useful information to the player during gameplay of the video game. It will be appreciated that these coaching advices are specific to a particular user as they are determined or selected based on a particular user's evaluation of the trained machine learning model. In some embodiments, the recommended logic 404 may recommend the tutorial or lesson 408 to the user, which generally occurs outside the context of the actual gameplay of the video game. As an example, such a tutorial or lesson can be accompanied by, but is not limited to, rendering of a practice environment in which the user can be instructed to practice a particular skill.”
Re claims 2-4, The Description of ‘413, see the paragraph preceding the reference to Fig. 2, states that, “the user may deliberately play for himself by borrowing another user's AI bot, and any achievements or achievements during such gameplay are preserved and of the original user. … In some embodiments, the user may pay the usage fee of another player's AI bot using, for example, virtual currency, digital assets, digital credits, real currency, and the like. Thus, it is possible to create a market where users can train and improve AI bots through regular gameplay and progress of video games and rent trained AI bots to other users. In some embodiments, the AI bot can be rented on a unit-hourly basis or in some other measurement unit that quantifies the usage of the AI bot, so that the amount paid for the rental of the AI bot is The AI bot depends on the amount actually used. In such an ecosystem, usage statistics for a given AI bot can be posted and made available, and users may leave comments related to a given AI bot after using that AI bot.”
Re claim 5, this claim is directed to the contents of data (that “indicating a voice of a player”.) Such claims lacking any functional alteration or transformation of the device that would define it as a new apparatus, are not awarded patentable weight because they are considered nonfunctional descriptive material. MPEP 2111.05 Part III. provides instructions for the examination of claims directed to computer-readable media. Here it is explained that:
… where the claim as a whole is directed to conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists. … Such claims are directed toward conveying meaning to the human reader rather than towards establishing a functional relationship between recorded data and the computer.
The pending-claimed conveying a sound of a voice to a human being without causing any function that improves the function of the computer itself or otherwise causes a transformation that would define the contents of the message combined with the computer as a new invention fails to distinguish over the prior art of ‘413, especially considering that ‘413 admits prior art “Game engines include graphics rendering … sound…” and “May include a library” which defines ‘413 as inherently capable of using sound-based nonfunctional descriptive media.
Re claims 6-8, the description of Fig. 3 in ‘413 notes that the system distinguishes between observed actual user behavior and AI bot user behavior in training machine learning models, and tests whether the model responds consistent with a user’s tendencies or not.
Re claims 9-10, refer to the rejection of claim 1, wherein a method of use and computer-readable media are necessarily discussed in the rejection of the apparatus of ‘413.
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