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 4/16/26 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 1-9 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 1-9 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 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in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or claim the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming: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;
[…]
issue a […] token […] corresponding to the content in a [ledger] with a user as an owner within a range of an upper limit number;
acquire information for specifying a remaining number of [tokens] corresponding to the same type of content in the [ledger]; and
change at least a part of a status associated with the content according to the remaining number.
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 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, 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, 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 6 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, e.g., the “non-fungible token” and the “blockchain network” to be part of the abstract idea that can be performed as a mental process.
Applicant further argues on pages 6-7 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive. Applicant merely embodies its abstract idea by employing generic NFT’s and blockchain technology, as evidenced by the limited disclosure in its PGPUB in regard to how to make and/or use these technologies. Such disclosure would not be enabling were these technologies not already well-known, routine, and conventional and, therefore, embodying Applicant’s abstract idea by employing NFT’s and blockchain does not add “significantly more”. In other words, Applicant’s invention does not improve the claimed NFT’s and/or blockchain technologically in any way. What is more, Applicant’s claimed invention may be fairly characterized as claiming the “rules of a game” given that Applicant is basically claiming changing the content of a game based on how many tokens related to that game have been issued.
Applicant further 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. Simply invoking “practical application” but without citing specific legal authority in support of Applicant’s argument 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.
Applicant further argues that it has claimed “significantly more” based on the alleged complexity of its abstract idea (“the specific conditional relationships in the claims”). Claiming a particularly complicated abstract idea, however, does not necessarily render patent eligible subject matter under the Mayo test. See, e.g., the eleven-step method claim that was invalidated in Ultravercial.
Applicant further 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. A Berkheimer finding may be made by citing to
an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional 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).
MPEP 2106.07(a)(III); emphasis added.
Consistent with this provision of the MPEP, the 101 rejection made supra cites to specific portions of Applicant’s PGPUB as evidence that the elements that Applicant claims in addition to its abstract idea are well-known, routine, and conventional and, thereby, do not add “significantly more”.
Applicant further 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. Merely embodying an abstract idea on generic computing devices does not qualify as a “particular machine” for the “machine or transformation” test:
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Ultramerical, slip. op., pages 12-13.
For these reasons, the rejections made under 35 USC 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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