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 claim amendments filed 6/17/2026.
Claims 1-20 are pending.
Response to Arguments/Amendment
Applicant’s prior art arguments filed 6/17/2026 have been fully considered but are moot in view of the new grounds of rejection.
Applicant’s filing of a terminal disclaimer overcomes the double patenting rejection. (Remarks, Page 8).
Applicant arguments concerning § 101 have been full considered but are unpersuasive. Applicant argues the claims effect improvements in the functioning of a computer, or an improvement to a technical field. (Remarks, Page 8.) Examiner respectfully disagrees because the claims are tantamount to an instruction to apply a wholly abstract concept using generic and conventional computers. See discussion below. The rejection is respectfully maintained.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
The claims are drawn to process & apparatus categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claim 1 is analyzed below, noting that independent Claims 11 & 16 recite substantially similar limitations but being drawn to different statutory classes:
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The claim limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG1:
“Mental Processes”: concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
The claimed invention requires determining a frequency of user inputs in a game session. A duration within the session is determined and presented to a user.
Here, the claimed steps can be performed by a human observing a player’s physical inputs during a game session, recording the session and presented it to the player or other users. For example, a human can observe a player’s high interest level via aspects including concentration, keystrokes, perspiration, etc., and determine that the duration is particularly important. Choosing a duration and presenting it thereafter is a mental process insomuch as a human shares the timestamps of durations with increased interest level.
“Certain Methods Of Organizing Human Activity”: managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
The claimed invention is managing personal behavior because it is drawn to managing what durations of a player’s gaming session are high interest and presenting these durations to others.
This also represents managing interactions between people, i.e., the players. Gaming is also a social activity. And, to the extent the claims only require following a prescribed order, this represents following rules and instructions.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations drawn to a computing system with a processor and memory, (a GUI).
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, U.S. Patent No.: 10,245,509 B2 shows the conventionality of computing elements/systems to infer user interest in video game sessions including to generate highlight reels. These elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Additionally, Applicant’s Specifications acknowledge that generic devices including “general-purpose computers” are used to implement the claimed invention.2
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they only recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls3:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 & 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over Marr et al. (U.S. Pub. No.: 2017/0113136 A1) in view of Muller (U.S. Pub. No.: 2013/0143669 A1)
Regarding Claims 1, 11 & 16: Marr discloses a system (Abstract) comprising: one or more processors (Fig. 1, 112), to perform operations including: determining a relative frequency of user input events associated with a session of an application, (¶¶ 140-145); selecting one or more durations within the session based at least on the relative frequency of user input events corresponding to each duration of the one or more durations, (¶ 143); and presenting, on a user device, the one or more selected durations, (e.g., Fig. 5, 516, ¶¶ 31, 33, 169).
Regarding the amendment: Marr discloses the invention substantially but does not make explicit, “evaluating a first rate of input of” … “time periods” … “correspond to the first rate of input” …”evaluation”.
However in a related invention, Muller’s player classification/aggregation system shows each of the presently amended limitations. (See Muller e.g., ¶¶ 60, 142-145, 174). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have provided Muller’s player classification techniques in Marr’s system for the purpose of more accurately determining player interests over time periods. Muller is explicit that such improvements to player classification systems yield better player experiences and gaming customizations. (Muller, e.g., ¶¶ 23, 24.)
Regarding Claims 2, 12 & 17: Marr discloses comparing a first indicia of a frequency of user input events during the session to a second indicia of a frequency of user input events during the one or more durations, (¶¶ 140-145).
Regarding Claims 3, 13 & 18: Marr discloses for each duration of the one or more durations, a frequency of user input events during the duration is greater than or equal to the frequency of user input events associated with the session of the application, (¶¶ 140-145).
Regarding Claims 14 & 19: Marr discloses wherein the user input events are registered by an operating system associated with the session of the application, (e.g., Fig. 3, 302 and related description.)
Regarding Claim 7: Marr discloses wherein the relative frequency corresponds to one or more of an average or percentile of one or more frequency-based metrics over a plurality of sessions of the application, (e.g., ¶¶ 25, 98, 144, 145).
Regarding Claim 8: Marr discloses wherein the application includes one or more of a game application, (Abstract), a streaming application, a chat application, or a user communication application.
Regarding Claim 9: Marr discloses wherein the presenting the one or more selected durations is based at least on: determining for each duration of the one or more durations and using a set of user input events corresponding to the duration, a user interest score corresponding to the duration based at least on the selecting of the one or more durations; and determining the user interest score exceeds a threshold value, (e.g., ¶¶ 144, 145, 174).
Regarding Claim 10: Marr discloses wherein the presenting the one or more selected durations includes presenting at least one of one or more session summarizations corresponding to the one or more selected durations or one or more video clips corresponding to the one or more selected durations, (¶¶ 140-145).
Regarding Claims 15 & 20: Marr discloses wherein the system is comprised in at least one of: a system for performing one or more deep learning operations; a system for determining ground truth data for one or more machine learning models; a system for performing one or more perception operations for a machine; a system for presenting at least one of virtual reality content (e.g., ¶ 138), or augmented reality content; a system incorporating one or more virtual machines (VMs); or a system implemented at least partially using cloud computing resources.
Examiner’s Note
It is noted that Claims 4-6 recite limitations that are not shown by the prior art. However, due to the outstanding § 101 rejection, no claim is formally indicated as allowable.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached M-F, generally 9am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached on 571-272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMKAR A DEODHAR/ Primary Examiner, Art Unit 3715
1 See MPEP 2106
2 Specifications:
[0027] The client devices 104 may include a smart phone, a laptop computer, a tablet computer, a desktop computer, a wearable device, a game console, a virtual reality system (e.g., a headset, a computer, a game console, remote(s), controller(s), and/or other components), a streaming device, (e.g., an NVIDIA SHIELD), a smart-home device that may include an intelligent personal assistant, and/or another type of device capable of supporting game play. (Emphasis Added.)
[0122] The disclosure may be described in the general context of computer code or machine-useable instructions, including computer-executable instructions such as program modules, being executed by a computer or other machine, such as a personal data assistant or other handheld device. Generally, program modules including routines, programs, objects, components, data structures, etc., refer to code that perform particular tasks or implement particular abstract data types. The disclosure may be practiced in a variety of system configurations, including hand-held devices, consumer electronics, general-purpose computers, more specialty computing devices, etc. The disclosure may also be practiced in distributed computing environments where tasks are performed by remote-processing devices that are linked through a communications network. (Emphasis Added.)
3: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)
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