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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/17/26 has been 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 1-13 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 1-13 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being, a method of organizing human activity, and/or the rules of a game.
In regard to Claims 1 and 8-9, 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in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); claim commercial or legal interactions, held by the CAFC to be an abstract idea as a certain method of organizing human activity, see MPEP 2106.04(a)(2)(II); 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identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming: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 of playing a] game […], comprising:
[providing a] game including content used in the […] game;
[…]
receive a purchase request for content selected by a user from among the content for which a […] token […] is issuable;
transmit […] an […] issuance request corresponding to the selected content together with information specifying the content and information specifying the user as an owner, to issue [a token] corresponding to the content in a [ledger] with the user as the owner within a range of an upper limit number;
in response to receiving […] information indicating completion of issuance of the [token], send the [token] corresponding to the content to […] the user and update […] an issuance number of [tokens] issued corresponding to the content for each same type of content;
acquire […] information for specifying a remaining number of [tokens] corresponding to the same type of content in the [ledger], the information including the issuance number and a burn number of [tokens] corresponding to the same type of content.
calculate the remaining number by subtracting the burn number from the issuance number; and
updated […] at least a part of status data associated with the content according to the calculated remaining number, the updated status data being reflected to users who can user [tokens] corresponding to the content.
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 a method of organizing human activity 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 game system, comprising: a terminal device configured to execute a video game including content used in the video game, a server device connected to the terminal device via a communication network and configured to control progress of the video game; and a processor configured to execute Applicant’s abstract idea as computer code, an NFT in a blockchain network, a storage unit, a virtual wallet, 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 game system, comprising: a terminal device configured to execute a video game including content used in the video game, a server device connected to the terminal device via a communication network and configured to control progress of the video game; and a processor configured to execute Applicant’s abstract idea as computer code, an NFT in a blockchain network, a storage unit, a virtual wallet, 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., F1 in Applicant’s PGPUB and text regarding same; and, e.g., p27 regarding an NFT in a blockchain network.
Response to Arguments
Applicant argues on page 10 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive because the 101 rejection does not allege that the claimed “blockchain-derived NFT” is part of the abstract idea that may be performed as a mental process.
Applicant argues on page 10 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive because the 101 rejection does not allege that the claimed blockchain network and NFTs are part of the alleged abstract idea that is the rules of a game. Furthermore, Applicant claims limitations that may be fairly characterized as being directed to the rules of a game as Applicant claims a process whereby a user may purchase certain content for use in a game.
Applicant argues that it has claimed a “practical application” and thereby claimed patent eligible subject matter under the Mayo test. Applicant’s argument is not persuasive. The Mayo test is a legal test and “practical application” is not part of the Mayo test but is, instead, a burden placed on examiners by the Office when they are making a 101 rejection employing the Mayo test. In regard to “practical application”, the MPEP provides examples of Supreme Court and CAFC decisions where a claimed invention has been held to be directed to patent eligible subject matter. See MPEP 2106.05(d)(I). Simply invoking “practical application” but without citing specific legal authority in support of Applicant’s argument, such as from these examples, that it has claimed patent eligible subject matter under the two-part Mayo test, therefore, does not provide a proper basis or rationale as to why the 101 rejection being made is allegedly deficient. For example, Applicant argues on page 11 of its Remarks that because it has claimed a “specific technological implementation” it has thereby allegedly claimed patent eligible subject matter under the Mayo test. It is, again, unclear what the basis is for this argument as the Applicant cites not legal authority in support of it. What is more, merely claiming a particular technological environment to embody an otherwise abstract idea does not necessarily render patent eligible subject matter. See cases cited at MPEP 2106.05(h) in this regard. In other words, Applicant merely claims the use of, e.g., a blockchain network and NFTs to embody its abstract idea and these technologies are not improved in any way qua technologies by this embodiment. Any form of tokens or ledger for keeping track of said tokens would work just as well as Applicant’s claimed computerized embodiment for purposes of Applicant’s abstract idea.
Applicant further argues on page 13 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive because there is no requirement when making a 101 rejection applying the Mayo test to make a finding that the ordered combination of all of the applicant’s claimed limitations is well-understood, routine, and conventional. The finding need only be made in regard to the elements that Applicant claims in addition to the abstract idea. See MPEP 2106.05(d).
Applicant further argues on page 13 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive because deciding how many more tokens to issue as a part of a game based on how many tokens have already been issued is an abstract idea and not any technological improvement to any of the elements Applicant claims in addition to its abstract idea. Applicant’s claimed computing device, e.g., will not generally run faster, use less power, and/or be able to be manufactured more cheaply as a result of embodying Applicant’s claimed invention.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
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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