DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 08/13/2026. Presently, claims 1-20 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 9,387,392. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘392 are narrower than the present claims, the only additional elements claimed in the present claims would be repeating the process (tracking the activity after a subsequent game is played) and as such would have been anticipated to one of ordinary skill in the art because those claims were not meant to only be done one time and then never again and thus read on the claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,360,758. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘392 are narrower than the present claims, the only additional elements claimed in the present claims would be repeating the process (tracking the activity after a subsequent game is played) and as such would have been anticipated to one of ordinary skill in the art because those claims were not meant to only be done one time and then never again and thus read on the claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,957,152. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘392 are narrower than the present claims, the only additional elements claimed in the present claims would be repeating the process (tracking the activity after a subsequent game is played) and as such would have been anticipated to one of ordinary skill in the art because those claims were not meant to only be done one time and then never again and thus read on the claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,727,749. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘392 are narrower than the present claims, the only additional elements claimed in the present claims would be repeating the process (tracking the activity after a subsequent game is played) and as such would have been anticipated to one of ordinary skill in the art because those claims were not meant to only be done one time and then never again and thus read on the claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,100,264. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘392 are narrower than the present claims, the only additional elements claimed in the present claims would be repeating the process (tracking the activity after a subsequent game is played) and as such would have been anticipated to one of ordinary skill in the art because those claims were not meant to only be done one time and then never again and thus read on the claims.
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 an abstract idea without significantly more. The claim(s) recite(s) a recommendation system comprising: at least one memory device; and at least one processor configured to execute instructions stored in the memory device, which when executed by the processor, cause the at least one processor to at least: receive, from a player via a web-based player interface, activity data associated with at least one game previously played by the player; generate, using at least the activity data associated with at least one game previously played by the player, at least one game recommendation personalized for the player based on a strength of association between the at least one game previously played by the player and at least one other game determined based at least in part on a quantification of an amount of play of the at least one game previously played by the player; provide, via the web-based interface, at least one game recommendation to the player including the at least one other game; and determine, based on the activity data associated with at least one game previously played by the player and on activity data associated with the at least one other game received subsequently to providing the recommendation, a level of activity of the player; and cause to be displayed, via the web-based interface, the determined level of activity. The above underlined portions of the claim are categorized as a mental process as they are data gathering steps and presenting an analysis after such data gathering This judicial exception is not integrated into a practical application because the steps are merely applying the abstract idea into basic computing technology. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements to the claims are generic computing parts which do not bring the abstract idea into patent eligibility as determined by the Supreme Court in Alice. Dependent claims have been evaluated but simply add further abstract ideas and thus do not cure the deficiencies of the independent claims.
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 (i.e., changing from AIA to pre-AIA ) 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7, 10-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US Patent Application Publication No. 2010/0048302 to Lutnick in view of US Patent Application Publication No. 2010/0298040 to Joshi
With regard to claim 1, Lutnick discloses a recommendation system comprising: at least one memory device (0175-0176); and at least one processor configured to execute instructions stored in the memory device, which when executed by the processor (0175-0176), cause the at least one processor to at least: receive, from a player via a web-based player interface, activity data associated with at least one game previously played by the player (0290-0296); generate, using at least the activity data associated with at least one game previously played by the player, at least one game recommendation personalized for the player (1075); provide via the web-based interface at least one game recommendation to the player including the at least one other game (0290-0291; 1075); and determine, based on the activity data associated with at least one game previously played by the player and on activity data associated with the at least one other game received subsequently to providing the recommendation, a level of activity of the player (1075); and cause to be displayed, via the web-based interface the determined level of activity (0290-0296).
Lutnick does not appear to be explicitly clear about how the recommendations are determined. However, the combination of Lutnick and Joshi teaches generate, using at least the activity data associated with at least one game previously played by the player, at least one game recommendation personalized for the player based on a strength of association between the at least one game previously played by the player and at least one other game determined based at least in part on a quantification of an amount of play of the at least one game previously played by the player (Lutnick at 0999, 1075; Joshi at 0033-0035); provide, via the web-based interface at least one game recommendation to the player including the at least one other game (Lutnick at 1075; Joshi at 0033-0035); and determine, based on the activity data associated with at least one game previously played by the player and on activity data associated with the at least one other game received subsequently to providing the recommendation, a level of activity of the player (Lutnick at 1075; Joshi at 0033-0035).
With regard to claim 2, Joshi teaches wherein the instructions cause the at least one processor to compare the activity data associated with the at least one other game received subsequently to providing the recommendation to a plurality of predefined levels of activity determined based on associated with at least one game previously played by the player (0033-0035).
With regard to claim 3, Joshi teaches wherein the at least one game recommendation is further personalized for the player based on a strength of association between the player and a second player who has played the at least one other game (0033-0035).
With regard to claim 4, Lutnick discloses wherein the instructions further cause the at least one processor to provide the web-based player interface to a web browser of the player (0294-0295).
With regard to claim 5, Lutnick discloses wherein the instructions further cause the at least one processor to provide the at least one game recommendation to the player via the web-based player interface (0294-0295; 1075).
With regard to claim 6, Joshi teaches wherein the instructions further cause the at least one processor to at least generate, using at least the activity data received from the player, a list of game recommendations personalized for the player based on a plurality of determined strengths of association between the at least one game previously played by the player and a plurality of games included in the list of games (figs. 3, 4; 0025-0028; 0031-0036).
With regard to claim 7, Lutnick discloses wherein the instructions further cause the at least one processor to at least provide the list of game recommendations to the player via the web-based player interface (0294-0295; 1075).
With regard to claim 10, Lutnick discloses wherein the web-based player interface includes an app stored on one of a smartphone or a tablet computing device of the player, and wherein the instructions further cause the at least one processor to provide the at least one game recommendation to the app (0291; 0411; wherein one of ordinary skill in the art understands how cell phones work and thus would understand that this is how it would also work in Lutnick).
With regard to claim 11¸Lutnickdiscloses that the quantification of the amount of play includes at least one of i)an amount of time spent by the player playing the at least one game previously played by the player, ii) an amount of money spent by the player playing the at least one game previously played by the player, or iii) a frequency with which the player played that least one game (1075).
Claims 12-20 mirror claims 1-7 and 11 and are rejected in like manner.
It would have been obvious for one of ordinary skill in the art at the time the application was filed to combine the teachings of Joshi with the disclosure of Lutnick in order to provide better recommendations for users so that the recommendations are more likely to be engaged with by the user.
Claims 8 and 9 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lutnick in view of Joshi as applied to claim 1 above, and further in view of US Patent Application Publication No. 2012/0184362 to Barclay
With regard to claim 8, Lutnick does not appear to explicitly disclose sharing of an achievement or recommendations. However, Barclay teaches wherein the instructions further cause the at least one processor to: receive, from the player via the web-based player interface, a request to share at least one of a game achievement or a game recommendation with a different player; and provide the at least one of the game achievement or the game recommendation to the different player (0078-0079).
With regard to claim 9, Barclay teaches wherein the instructions further cause the at least one processor to provide the at least one of the game achievement or the game recommendation to a social media account of the different player (0078-0079).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to combine the teachings of Barclay with the disclosure of Lutnick so that friends would be able to share items with other friends thus providing a more engaging way to play as well as cheap advertising to get others to also play the game.
Response to Arguments
Applicant provides no arguments related to the double patenting rejection and as such it has been maintained.
With regard to the rejection based upon 35 USC 101, Applicant takes the position that the claims are not directed towards an abstract idea, but rather to a web-based interface. Applicant seems to be of the belief that as long as the language “web-based interface” is included in the claims that the claims must be patent eligible. However, this is contrary to the decision in Alice that determined that putting an abstract idea onto a generic computing device does not make it patent eligible. Similarly here, merely adding the language of “web-based interface” does not transform the abstract idea into patent eligible subject matter. Applicant’s arguments that the claims contain a practical application or are significantly more than the abstract idea are also not found to be convincing because the claims could merely be done by someone watching someone play one match 3 game for a long time and then saying “why don’t you try this other match 3 game now?” Thus, directly reading on a mental process and as such Applicant’s arguments are in no way convincing.
With regard to the rejection based upon prior art, Applicant appears to be confusing the rejection. Applicant states, “However, paragraphs [0033] to [0035] of Lutnick described determining recommendations based on demographics of a player rather than a quantification of previous play of the player,” (Arguments, page 10). First it is noted that 0033-0035 are related to Joshi, not Lutnick. Second, Applicant does not address the fact at all that Lutnick collects all kinds of data about the player and what they are doing as disclosed in 1075. As this is a 103 rejection (with Lutnick as a base reference no less), Applicant has not addressed the rejection at all other than a conclusory statement that it is their belief that neither Lutnick nor Joshi disclose the limitation. But Lutnick does provide recommendations (1075) and collects data about various play aspects (1075) and all of that together with Joshi (0033-0035) reads on the present limitations presented.
Therefore, Applicant’s arguments are not found to be convincing and the rejections of the claims have been maintained (and new rejections added for claims 11 and 19 based upon amendments to the claims).
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 Jay Liddle whose telephone number is (571)270-1226. The examiner can normally be reached M-F 9-5.
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/Jay Trent Liddle/Primary Examiner, Art Unit 3715
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