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 07/01/2024.
Claims 1-20 are pending.
The Drawings filed on 07/01/2024 are noted.
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 1-020 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
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 a method and a non-transitory computer readable medium in claims 1-20. 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
Step 2A has been further divided into two prongs as shown in the following diagram.
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Step 2A, Prong 1
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): “Regarding Claim 1, and similarly recited Claim 12, a method for indicating receptiveness of a player of a video game to incoming communication, comprising:
monitoring gameplay activity occurring in the video game;
monitoring activity of the player during the video game;
using the monitored gameplay activity and the monitored activity of the player to determine a level of receptiveness of the player to incoming communication;
rendering a visual indicator that is responsive to the level of receptiveness of the player.”
The underlined portions of representative claim 1 generally encompass the abstract idea, with substantially similar features in claim 12. As indicated above, the underlined portions of representative Independent Claim 1, and similarly recited Independent Claims 12, generally encompass the abstract ideas, for example as,:
a method of managing a game similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (non-precedential);
a set of game rules, as discussed in Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342 (Fed. Cir. 2021);
use of machine learning in a given environment 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).
The claims generally encompass the steps of monitoring, determining, and/or rendering, which are steps that can be done in the human mind. 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 monitoring, determining, and rendering, which are steps that can be done in the human mind. 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 20 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 to 20 further recite a at least one computing device, 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 monitoring and determining steps 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 and 12, and their dependent claims, 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 to 20 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 at least one computing device. 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 and 12 (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, Claims 1 to 20 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 20 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).
The dependent claims recite further extra-solution activities and further define the abstract idea of the independent claims.
Dependent Claims are ineligible and lack a practical application.
Claims 2-11 inherit the same abstract idea as Claim 1.
Claims 13-20 inherit the same abstract idea as Claim 12.
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 1-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication 2023/0381649 A1 to Karp et al. (hereinafter Karp).
Regarding Claim 1, and similarly recited Claim 12, Karp discloses a method for indicating receptiveness of a player of a video game to incoming communication, comprising:
monitoring gameplay activity occurring in the video game (figs. 1-3, paras. [0024]-[0027] discloses during the training phase, telemetry data 115 is collected from a plurality of game plays 110 of the player playing one or more video games; Specifically, game state data defines the state of the game play of an executing video game for a player at a particular point in time. Game state data allows for the generation of the gaming environment at the corresponding point in the game play. For example, game state data may include states of devices used for rending the game play (e.g., states of the CPU, GPU, memory, register values, etc.), identification of the executable code to execute the video game at that point, game characters, game objects, object and/or game attributes, graphic overlays, and other information);
monitoring activity of the player during the video game (figs. 1-3, paras. [0024]-[0027] discloses telemetry data (or state data) may include game state data, user saved data, and metadata. Other data may include information about the player, such as biometric data, or motion data, or controller motion data that may indicate a particular emotion of the user (e.g., determine when the user is intense, or when the user is concentrating, etc.); User saved data includes information that personalizes the video game for the corresponding player. For example, user saved data may include character information and/or attributes that are personalized to a player (e.g., location, shape, look, clothing, weaponry, assets, etc.) in order to generate a character and character state that is unique to the player for the point in the game play, game attributes for the player (e.g., game difficulty selected, game level, character attributes, character location, number of lives, trophies, achievements, rewards, etc.), user profile data, and other information.);
using the monitored gameplay activity and the monitored activity of the player to determine a level of receptiveness of the player to incoming communication (paras. [0029]-[0030], [0034] discloses player’s level of game involvement and immersion; [0036], [0039]-[0042], [0046]-[0047], [0052]-[0053] discloses Each player may have a corresponding AI model that is configured to recognize levels of immersion of the player when playing one or more video games. For instance, the AI model is able to determine a level of immersion during a current game play of a video game by the player. As such, the AI model is executed continuously to determine levels of immersion in the game play of the player. More particularly, at 340, the method includes using the AI model to determine a level of user immersion for gaming for the current point in the game play. In one implementation, the level of immersion is also determined to exceed a threshold indicating that the player is highly engaged with the video game);
rendering a visual indicator that is responsive to the level of receptiveness of the player (figs. 1, 3, 4A-4C, [0036], [0047]-[0048], [0053] discloses the method includes automatically generating an indicator that is presented to a physical environment surrounding the player, wherein the indicator provides notification that the player should not be interrupted. That is, when the player is highly immersed in the game play, that player probably does not want to be disturbed for the period of time of high immersion. As such, once it is determined that the user is highly immersed in the game play of the video game, the indicator is generated and/or presented to the surrounding environment to notify others that the player is currently engaged in gaming during an intense period for the user and does not want to be interrupted).
Regarding Claim 2, and similarly recited Claim 13, Karp discloses the method of claim 1, wherein monitoring gameplay activity includes monitoring gameplay audio generated from the video game (figs. 1-2, game play 110, 110A, game state data 115, paras. [0027]-[0030], [0040]).
Regarding Claim 3, and similarly recited Claim 14, Karp discloses the method of claim 1, wherein monitoring gameplay activity includes monitoring gameplay video generated from execution of the video game (figs. 1-2, game play 110, 110A, game state data 115, paras. [0027]-[0030], [0040]).
Regarding Claim 4, and similarly recited Claim 15, Karp discloses the method of claim 1, wherein monitoring gameplay activity includes analyzing game state data to identify events occurring in the video game (figs. 1-2, game play 110, 110A, game state data 115, paras. [0027]-[0030], [0040]).
Regarding Claim 5, and similarly recited Claim 16, Karp discloses the method of claim 1, wherein monitoring activity of the player includes monitoring inputs generated from a controller device operated by the player (paras. [0028], [0029], [0039]-[0040], [0050] discloses during an implementation phase of the AI model of the identifier 200A, data is collected from a current game play 110A, as is shown in FIG. 1. In particular, various data is provided to the feature extractor 210, including game state data 115 (e.g., used to define gaming context, user inputs, user skill level, etc.) and other data that may define user behavior (e.g., biofeedback data, or motion data of objects controlled by or worn by the player, such as hand controllers or HMD, etc.)).
Regarding Claim 6, and similarly recited Claim 17, Karp discloses the method of claim 1, wherein monitoring activity of the player includes analyzing motion data indicative of movements of the player (paras. [0027], [0039], [0040]).
Regarding Claim 7, and similarly recited Claim 18, Karp discloses he method of claim 1, wherein rendering the visual indicator is defined by activating a light worn by the player (figs. 3, 4A-4C, paras. [0053]-[0054], [0056]-[0057] discloses automatically generating an indicator that is presented to a physical environment surrounding the player, wherein the indicator provides notification that the player should not be interrupted … the indicator may be a light source emitting light continuously of one or more colors … the indicator (i.e., light, audio, etc.) may be located on or in association with the user, such as on an HMD worn by the player, or on a controller used by the player).
Regarding Claim 8, and similarly recited Claim 19, Karp discloses the method of claim 7, wherein activating the light includes responsively setting a color of the light based on the level of receptiveness (figs. 3, 4A-4C, paras. [0053]-[0054], [0056]-[0057] discloses automatically generating an indicator that is presented to a physical environment surrounding the player, wherein the indicator provides notification that the player should not be interrupted … the indicator may be a light source emitting light continuously of one or more colors … the indicator (i.e., light, audio, etc.) may be located on or in association with the user, such as on an HMD worn by the player, or on a controller used by the player).
Regarding Claim 9, and similarly recited Claim 20, Karp discloses the method of claim 1, wherein the level of receptiveness is configured to be inversely correlated to an amount of engagement of the player (paras. [0039]-[0042], [0051]-[0052], [0056]-[0057]).
Regarding Claim 10, Karp discloses the method of claim 1, further comprising:
training a machine learning model (fig. 1, AI model 135; paras. [0024]-[0026] discloses AI model 135 configured for a training phase);
wherein determining the level of receptiveness includes applying the machine learning model to the monitored gameplay activity and the monitored activity of the player (figs. 1-2, paras. [0024]-[0026] discloses the AI model 135 may be configured for a training phase (e.g., horizontal direction through the AI model 135 to learn levels of immersion in game plays 110 of the player in one or more video games). For example, the AI model 135 can be configured to monitor gaming session activity in order to provide input into the AI model for learning levels of immersion for the player during various game contexts of game plays 110 of one or more video games and based on user data (e.g., biometric, motion, emotion, data). As such, the AI model 135 is personalized to the player).
Regarding Claim 11, Karp discloses the method of claim 10, wherein the machine learning model is trained using data describing prior instances of the video game and communications occurring during the prior instances of the video game (figs. 1-2, paras. [0024]-[0026] discloses the AI model 135 may be configured for a training phase (e.g., horizontal direction through the AI model 135 to learn levels of immersion in game plays 110 of the player in one or more video games). For example, the AI model 135 can be configured to monitor gaming session activity in order to provide input into the AI model for learning levels of immersion for the player during various game contexts of game plays 110 of one or more video games and based on user data (e.g., biometric, motion, emotion, data). As such, the AI model 135 is personalized to the player).
Conclusion
Claims 1-20 are examined above.
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 /DAVID L LEWIS/Supervisory Patent Examiner, Art Unit 3715