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 .
Procedural Summary
This is responsive to the claims filed 06/03/2024.
Claims 1-11 are pending.
Applicant’s IDS submission is acknowledged and provided herewith.
The Drawings filed on 06/03/2024 are noted.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or, for pre-AIA , the applicant regards as the invention.
First, claims 1-9 recite various elements which are claimed not in terms of their structures, but in terms of their functions. Such an approach is explicitly permitted by 35 USC 112(f), which states:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
However, the quid pro quo for the convenience of employing this claiming technique is that the corresponding structure for each such element must be clearly linked or associated to the function recited, so that the element may be construed in the manner specified by the statute. When a clear link or association is not present, it is impossible to determine the metes and bounds of the claim containing the element, and the claim therefore fails to satisfy the requirement of 35 USC 112(b) that an invention must be particularly pointed out and distinctly claimed. See MPEP 2181.
The following claim elements are limitations that invoke 35 U.S.C. 112(f) paragraph because a skilled artisan would conclude that they are so devoid of structure that the drafter constructively engaged in means-plus-function claiming (for example, by using “means” or a nonce term that is not an art-recognized name of a structure of class of structures in conjunction with functional language):
“learning unit” as recited in claims 1 and 2;
“assistance unit” as recited in Claims 1 to 9; and
any other claimed “unit” in conjunction with functional language that may have been inadvertently omitted from the list above.
However, for each element listed above, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or act performs the claimed function. Consequently, each claim containing an element listed above fails to particularly point out and distinctly claim the subject matter which the applicant regards as his invention.
For each claim and each limitation listed above, Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f); or
(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function.
For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Note: Applicant is respectfully reminded that a trivial amendment (such as replacing the word “unit” with an equally non-structural term such as “section” or “module” or “device”) would not be sufficient to prevent the claims from being interpreted under 35 USC 112(f). Furthermore, for a computer-implemented invention, examples of “corresponding structure” include a specific arrangement of circuitry or a specific algorithm running on a general-purpose processor. Merely referencing a specialized computer (e.g., a “bank computer”), some undefined component of a computer system (e.g., an “access control manager”), “logic,” “code,” or elements that are essentially a black box designed to perform the recited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function. See MPEP 2181.
Any claim not specifically addressed above is rejected for inheriting the deficiencies of a parent claim.
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 to 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The examiner follows the two step-analysis, as described in MPEP 2106 (available at https://www.uspto.gov/web/offices/pac/mpep/s2106.html). The following diagram is an overview of the steps involved.
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Step 1 of the two step-analysis considers whether the claims fall into one of the four statutory categories of invention such as a process, machine, manufacture, or composition of matter. The instant invention claims an information processing device, and an information processing method. As such, the claimed invention falls into the broad statutory categories of invention. However, claims that fall within one of the four statutory categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas.
Step 2A has been further divided into two prongs as shown in the following diagram.
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Under prong 1 of step 2A, the examiner considers whether the claim recites an abstract idea, law of nature or natural phenomenon. The term “abstract idea” is not interpreted as a layperson might. Instead, the term “abstract idea” is interpreted as described in legal opinions by courts.
According to MPEP 2106.04(a):
the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Here, representative claim 1 recites the following (with emphasis)(and similarly recited Claims 10 and 11): “[Claim 1] An information processing device comprising:
a learning unit that learns an action of a user on an application by machine learning; and
an assistance unit that executes, across one or more of the applications, operation assistance processing of assisting an input by the user on the application by using a learning result of the learning unit.”
The underlined portions of representative claim 1 generally encompass the abstract idea, with substantially similar features in claims 10 and 11. The abstract idea may be viewed, for example, as:
use of machine learning in a given environment (e.g., for learning an action of a user) as discussed in Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025); and/or
mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Like the claims in Recentive, the instant claims merely recite the use of generic machine learning applied to a given data environment. The Recentive court determined that claimed methods are not rendered patent eligible by the fact that using existing machine learning technology they perform a task previously undertaken by humans with greater speed and efficiency than could previously be achieved. The courts have consistently held, in the context of computer-assisted methods, that such claims are not made patent eligible under § 101 simply because they speed up human activity. The claims generally encompass the steps of learning, identifying, calculating, and assisting, which are steps that can be done in the human mind. The dependent claims further define the abstract idea by identifying correlations between user operations and outcomes; calculating or specifying input values based on learned correlations; and assisting, replacing, or coaching user input). These dependent claims include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed. Accordingly, each of Claims 1 to 11 recites an abstract idea.
Step 2A, Prong 2
Under prong 2 of step 2A, the examiner considers whether the additional elements in the claims integrate the abstract idea into a practical application. According to 2019 PEG, a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
Here, the abstract idea is not integrated into a practical application. Claims 1, 11, and 12 further recite a learning unit, and an assistance unit yet these are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
The learning, assisting, correlation, calculating, and replacing elements in the claims are deemed to be data gathering and data presentation for the use of the judicial exception and similarly are recited at a high level of generality. Thus, these limitations are a form of insignificant extra-solution activity (See MPEP 2106.05(g), See also selecting a particular source and type of data to be manipulated where “Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)).
Even when the limitations are viewed in combination, the additional elements in this claim do no more than automate the organizing activities needed to be performed, using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Latric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality).
Furthermore, the additional elements do not serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Accordingly, Claims 1, 10, and 11 as a whole does not integrate the recited judicial exception into a practical application and these claims are directed to the judicial exception. Thus, Claims 1-11 lack the eligibility requirements of Step 2 Prong II.
STEP 2B
Finally, under step 2B, the examiner evaluates whether the additional elements:
add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The present claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements recite a learning unit and an assistance unit. These additional elements are generically claimed computer components which enable a game to be conducted by performing the basic functions of: (i) receiving, processing, and storing data, (ii) automating mental tasks and (iii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application.
Additionally, a claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. While the specification discusses the use of machine learning, it does not provide any indication that the machine learning themselves are improved in any way. In light of the court decision in Recentive, this is not sufficient to save a claim from abstraction. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
Furthermore, taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1, 10, and 11 (and their dependent Claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to conduct a game with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The above-identified additional elements, when viewed as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.
For at least the above reasons, the apparatuses of Claims 1 to 11 are directed to applying an abstract idea (e.g., mental process) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 1 to 11 provides meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
AIA Notice
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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 1-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent 10,576,380 to Beltran et al. (hereinafter Beltran).
Regarding Claim 1, and similarly recited Claims 10 and 11, Beltran discloses an information processing device, … an information processing method …, and a program …, comprising:
a learning unit that learns an action of a user on an application by machine learning (figs 1A, 2A-3B1, deep learning or machine learning engine, Col. 7:25 – Col. 8:45, Col. 9:60 – Col. 10:30 discloses n AI model 160 can be built (e.g., trained) using the network of servers that are configured to execute instances of the gaming application in support of the multiple game plays. In particular, training data 345 is collected from the execution of the instances of the gaming application at the plurality of servers 205. In particular, the collection for use as training data is performed without the knowledge of any of the remote players that are associated with the various game plays of the gaming application. The training data 345 includes controller input 236 used to direct corresponding game plays, game states 133 of the instances of the gaming application occurring during the game plays, response metrics, success criteria 135, success metrics, additional analysis performed on the game plays, etc.); and
an assistance unit (figs. 1A, analyzer 140) that executes, across one or more of the applications, operation assistance processing of assisting an input by the user on the application by using a learning result of the learning unit (Col. 5:33-60, Col. 8:13-31, Col. 15:51 – Col. 16:6 discloses In particular, the trained AI model 160 may be implemented and/or supported by a back-end server through a network 150 (e.g., internet), wherein the back-end server provides artificial intelligence and/or deep, machine learning (e.g., through the deep, machine, learning engine 190) for building and applying the trained AI model 160 that relates to a gaming application and/or game plays of the gaming application of one or more players in one or more locations throughout the world. The trained AI model 160 is trained to learn the intricacies of the gaming application, and/or intricacies of playing the gaming application (e.g., through a corresponding game play). In that manner, given as input a condition of a game play of the gaming application (e.g., game state of a particular game play), the AI model can analyze the condition and provide an appropriate response to the condition. The response may be dependent on a predefined objective (e.g., provide assistance, etc.). For example, the trained AI model 160 is able to determine how the gaming application should respond, or how the player should respond during a corresponding game play).
Regarding Claim 2, Beltran discloses the information processing device according to claim 1, wherein
the application is a game application (Col. 7:57-60 discloses the analyzer 140 is configured to perform various functionalities in relation to a gaming application and/or game plays of the gaming application),
the learning unit learns correlation of operation before an input with respect to a specific input in the game application and a result of the specific input, and the assistance unit uses a learning result of the correlation and assists the input by the user in such a manner that a result of the specific input by the user becomes successful (Col 5:33-60, Col. 7:48-Col. 8:12).
Regarding Claim 3, Beltran discloses the information processing device according to claim 2, wherein
the assistance unit (fig. 1A, analyzer 140)
calculates an input value that makes the result of the specific input successful for each pattern of the operation before the input by using the learning result of the correlation, and specifies, in a case where a pattern of the operation before the input by the user is detected, the input value corresponding to the operation before the input in which operation the pattern is detected (Col. 23:50 – Col. 24:5).
Regarding Claim 4, Beltran discloses the information processing device according to claim 3, wherein
the assistance unit (fig. 1A, analyzer 140)
temporarily invalidates the input by the user and replaces the input by the user with the specified input value (Col. 15:61 – Col 16:30).
Regarding Claim 5, Beltran discloses the information processing device according to claim 2, wherein
the assistance unit (fig. 1A, analyzer 140) further
executes the operation assistance processing of performing coaching on the input by the user (Col. 25:48 – Col. 26:8).
Regarding Claim 6, Beltran discloses the information processing device according to claim 5, wherein
the assistance unit (fig. 1A, analyzer 140)
executes the operation assistance processing in such a manner as to perform the coaching corresponding to a skill of the user (Col. 25:48 – Col. 26:8).
Regarding Claim 7, Beltran discloses the information processing device according to claim 5, wherein
the assistance unit (fig. 1A, analyzer 140,
executes, in a case where a pattern of the operation before the input by the user is detected, the operation assistance processing in such a manner as to perform the coaching that responds to the operation before the input, in which operation the pattern is detected, in real time (Col. 25:48 – Col. 26:10).
Regarding Claim 8, Beltran discloses the information processing device according to claim 5, wherein
the assistance unit (fig. 1A, analyzer 140)
executes the operation assistance processing in such a manner as to change a method of the coaching according to a surrounding environment of the user (Col. 25:48 – Col. 26:8).
Regarding Claim 9, Beltran discloses the information processing device according to claim 2, wherein
the assistance unit (fig. 1A, analyzer 140)
notifies another user other than the user, via a network, that the user is assisted by the operation assistance processing (Col. 13:25-52).
Conclusion
Claims 1-11 are examined above.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and is provided in the Notice of References cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAUNA-KAY HALL whose telephone number is (571)270-1419. The examiner can normally be reached M-F 9:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.N.H/Examiner, Art Unit 3715