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 .
Response to Arguments
Applicant's arguments filed 07/17/2026 have been fully considered but they are not persuasive. Claim amendments filed 07/17 that attribute a variety of stated outcomes to some unknown AI model lack written description and thus fail to comply with 35 U.S.C. §112(a) for the reasons described below.
The fact that the instant disclosure’s mention of AI is limited to a mere field of use statement in [00101] is also evidence that AI as claimed is extra-solution activity and fails to integrate the claimed judicial exceptions into a practical application or inventive concept. Although Applicant’s attempt to recite additional details in the claims of how an AI model might be used in the invention is appreciated, the specification invoking AI merely as a field of use without supplying any technical details of how it could enable accomplishing the claimed functions fails to improve the subject matter eligibility of the invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claim amendments filed 07/17/2026 purporting that some “AI model adapts at least one threshold … via adjusting of a sensitivity … by causing at least one threshold to increase … and thus be more sensitive when the tracked performance declines….” lack support in the specification. The paragraphs cited by Applicant as allegedly supporting the amendments fail to contain any disclosure that any of the disclosed “AMS” functions are directly attributable to any particular AI model or that Applicant had possession of the instant invention including integrated AI functionality. In other words, the amended claims recite extensive end results that are purported to be achieved using some unknown AI model, but the specification fails to identify technical details of the model or how these end results are achieved. Mere mention of a desire to apply a burgeoning and broad technical field such as AI to accomplish stated end results is insufficient to prove the inventor had possession of the invention configured to accomplish the end result.
MPEP 2163.03(v) cites Ariad Pharms., Inc. v. Eli Lilly & Co. as evidence that, “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved” (emphasis added). This section also cites Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) as evidence that, “The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement."
Support for the use of artificial intelligence in the instant specification is limited to a single paragraph, [00101]. This paragraph merely contemplates that “the AMS application can be configured to use artificial intelligence or machine learning algorithms to perform actuation profile updates and/or other aspects of method 1000.”. The language “can be configured” is equivalent to an expression of a desired field of use of AI. AI is a broad and burgeoning field; merely expressing an intended field of use of the entire field of AI for the disclosed AMS without any further detail is not seen as evidence of sufficient written description for the claim limitations at-issue.
Taking into consideration the level of ordinary skill in the art, the complexity of the art, and the criticality of the claimed features to the practice of the invention, it is determined that there is insufficient support in the specification to conclude that Applicant had possession of the invention including the claimed AI model threshold adaptation and all of the surrounding detail as of the effective filing date. The specification must particularly point out how AI is used to achieve stated end results such as by what particular machine learning model(s), how the model is structured, how the model is trained, what inputs the model receives and how, how inferences are made by the model, and how outputs are generated.
As an example of what would be considered sufficient written description to claim the use of artificial intelligence to perform certain tasks in a claim is US 10,068,557 B1 to Engel et al. Engl focuses on the use of a neural network for audio encoding. The specification of Engl goes into detail as to how an encoder neural network receives input, what type of input it receives, how the encoder neural network is structured (a stack of non-causal convolutional layers), how the encoder neural network operates (embedding certain information such as pitch information, upsampling processes, etc.), how the encoder neural network is trained (on a particular loss function which can be backpropagated through a decoder neural network and continue through an encoder neural network). This sort of detail stands in contrast to the instant disclosure that merely contemplates fields of use of neural networks or statistical analysis.
For these reasons it is held that the claims are presented 07/17/2026 fail to meet the written description requirement and thus constitute new matter.
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, 12 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to activities that the courts have recognized as abstract ideas, namely “certain methods of organizing human activity” and “mental processes”, without a practical application or inventive concept.
The claims are drafted as a list of outcomes desired to be obtained from operating a computer in accordance with unclaimed programming operations to determine various game controller button settings, wherein the determining is attributed to some generic AI model without any technical details claimed or supported in the disclosure of what the model is, how it is structured, how it is trained, how it makes inferences, how it generates outputs or how particular outputs are used by a programmed processor. This lack of support for a particular AI model or its operation or integration leaves AI as an extra-solution field of use.
Conceiving of various possible game controller button threshold settings, without any claimed technical details of how this is done by particularly programmed computers, is equivalent to human mental work that belongs to the enumerated abstract idea grouping of “Mental Processes.” A human being, through organized thought, could conceive of possible game controller configurations. And one person interacting with a computer (or another user) for instructing changes in game controller button configurations falls under “Certain Methods of Organizing Human Activity” in the form of following rules or instructions. The claims do not recite any technical details as to how computers are programmed to receive input data or what type of data is received, what type of learning model is used or how any particular computers are programmed to train the model, what steps the model uses to make inferences about appropriate outputs, or how output data is generated. The claims are essentially a list of functionally-recited desired end results for applying generic, existing of machine learning language model training in a conceived field of use (for determining appropriate game controller button settings). Because the claims lack any description of novel hardware and/or software and because an AI model is merely claimed as a field of use, no improvements to the performance of computers or to the field of neural networks can be identified.
Detailed Analysis
The following detailed analysis is based on the subject matter eligibility examination guidelines provided in the MPEP at https://www.uspto.gov/web/offices/pac/mpep/s2106.html
Steps 1 and 2 of the Alice analysis have been conducted for the pending claims.
Step 1 (See MPEP 2106.03): In this step of the Alice analysis, it is determined that all of the pending claims fall into statutory categories. The claims meet step 1 as follows:
Claims 1-11 are directed to a process (method)
Claims 12-19 are directed to an article of manufacture (computer-readable medium).
Claim 20 is directed to a process (method.)
Step 2A, Prong 1 (MPEP 2106.04(I)): In this step of the Alice analysis, judicial exception(s) that fall into abstract idea groupings enumerated by the courts are identified and quoted.
Limitations directed to abstract ideas in the pending claims are:
determining first and second game controller button actuation and release thresholds based on monitored performance of a gamer with respect to gaming actions while a game is being used, and adapting these thresholds as a result of monitored use.
Making judgements and recommendations, including for customizing video game controller settings, is activity traditionally performed by human beings – a notoriously well-known scenario being a spectator watching another person play a video game and giving advice on how to improve their performance. This activity belongs to the grouping of “Mental Processes” (See MPEP § 2106.04(a)(2)(III)). Although the claims as amended 07/17/2026 alleged that the “determining” steps are attributable to some “artificial intelligence (AI) model”, neither the claims nor specification contain any technical detail to prove how any particular AI model achieves the determining steps or that the Applicant had possession of a functional AI model achieving them.
Support for why the pending claimed invention is directed to abstract mental processes can be found in Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016), wherein "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, were held to be abstract.
Instructing a video game player on how to better play a game, such as by changing controller settings, falls into the grouping of “certain methods of organizing human activity” through “managing personal behavior … or interactions between people” including “teaching” and “following rules or instructions”. See MPEP § 2106.04(a)(2)(II)(C) which expounds on this grouping as including communicating notifications to users using computing devices, considering historical usage information while a user inputs data, as well as automating activities traditionally performed as mental processes. And as instructed in MPEP § 2106.04(a)(II), conducting abstract activities between one or more persons and a computer(s) is covered activity.
Independent claims 12 and 20 are directed to the same abstract idea implemented by generic computers; they likewise fail step 2A prong 2 and Step 2B.
Step 2A, Prong 2 (MPEP § 2106.04(d)): In this step, any additional elements beyond the identified abstract ideas are identified and evaluated for any integration into a practical application. In particular, any claimed technological improvement is considered.
Additional elements recited in the claims include:
In L1-L4 of claim 1, “a processing system including a processor”
These hardware components and the implied-but-unclaimed software of a video game are recited at a high level of generality and merely outline a generic technological field in which to apply the abstract ideas for applying generic machine learning to providing video game hints or tips through routine and conventional use of generic hardware, and using some implied software of unclaimed programming. The instant disclosure’s silence as to any of the claimed hardware or software having any nonobvious structural or functional specifications or requirements or being used to solve any stated problems existing in computers per se or to provide any improvements to computers per se supports a finding that the hardware additional elements of the claimed apparatus comprises merely generic components and technologies used in their routine and conventional capacities in the art. “[T]he invocation of ‘already-available computers that are not themselves plausibly asserted to be an advance … amounts to a recitation of what is well-understood, routine, and conventional.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020). And “simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)
In claim 20, assigning thresholds to a profile that can later be invoked during a video game.
“The receiving of input and storing steps represent the use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016 attributing particular generic computer functions for computer hardware to perform from well-known, routine, conventional functions performed by such hardware has been held to be insufficient to show an improvement to technology, Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264, 120 USPQ2d 1201, 1208 (Fed. Cir. 2016).
“wherein the determining the first threshold … the second threshold … the third threshold, and the determining the fourth threshold involve use of an artificial intelligence (AI) model; ”
Applying existing machine learning models to a particular field of use has been held to be ineligible by the Federal Circuit in RECENTIVE ANALYTICS, INC. v. FOX CORP., FOX BROADCASTING CO., FOX SPORTS PRODUCTIONS, LLC (2023-2437, 04/18/2025). In RECENTIVE, the two patents at issue, ‘367 and ‘960, are “Machine Learning Training” patents that are used to learn from the scheduling of live events by iteratively collecting, training, outputting, and updating a model. The outputs of the model in RECENTIVE were, in one patent, used for recommending updates to optimize a live event schedule.
The “determining” steps allegedly using an AI model in the instant application parallel RECENTIVE in that they imply making inferences on some [unclaimed] data, using an unclaimed model, through unclaimed training methods, and wherein the outputs are recommendations for optimizing [controller button settings].
The Federal Circuit noted that in RECENTIVE, the specification teaches that the machine learning model “employs any suitable machine learning technique” such as a “random forest, a regression, a neural network, a decision tree” or “a Bayesian network [or] other type of technique”.
In the pending application in [0101], the specification merely admits the invention of the disclosure could be applied by AI models or a machine learning algorithm. Because no particular model is identified, no training or inference methods are identified, the only logical conclusion is that the AI and ML are generic to the prior art. So the pending application, like the patents in RECENTIVE, is directed to training existing machine learning models for a conceived field of use.
In step 1 of the Alice test, the Federal Circuit found that RECENTIVE claimed an activity that pre-dated the existence of machine learning – event planners considering prior ticket sales, weather forecasts, etc. to determine when and where to schedule event(s). The Federal Circuit explained that applying machine learning to such a field of use was not patent eligible, citing that “[a]n abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment.” Intell. Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015). The court also held that “the application of existing technology to a novel database does not create patent eligibility.” and cited SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018); Elec. Power, 830 F.3d at 1353 (“[W]e have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas.”
The pending claimed activities of determining different game controller settings pre-dates the existence of machine learning and was traditionally conducted by human beings, either through trial-and-error or based on recommendations of another. Limiting the use of some unclaimed type of ML model to the field of use of video game controller setting selection is not patent eligible and furthermore collecting input data in a database does not create patent eligibility.
In Alice step two, the Federal circuit court in RECENTIVE agreed with the district court’s finding that the RECENTIVE patents were not directed to an “inventive concept” that would “amount[] to significantly more than a patent upon the [ineligible concept] itself,” id. at 456 (quoting Alice, 573 U.S. at 217–18), because the machine learning limitations were no more than “broad, functionally described, well-known techniques” and claimed “only generic and conventional computing devices,” id. at 457.
The pending claims, too, merely recite the training and use of a MLe model in broad, functionally described, well-known techniques and fail to provide an inventive concept for the same reason.
The Federal Circuit held in RECENTIVE that patents that merely claim applying existing machine learning models to a new field of use are not patent eligible. The Federal Circuit agreed with the District Court that claims to machine learning training were directed to abstract ideas when they “do not delineate steps through which the machine learning technology achieves an improvement.” The Federal circuit explained that patents to machine learning training were not eligible when “they appl[ied] machine learning to [a] new field of use.” The court held “that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.”
The same conclusion is reached in the pending claims. The description in the claims of an (AI) model” is limited to mere mention thereof. There is nothing about the model, any programming of computers using it, or any of the computer hardware claimed that reveals anything more than generic application of the model to a conceived new field of use. The claims are drafted using result-oriented language that lists desired end results of operating generic computers without describing in any detail how any of the desired end results are accomplished. There are also no details in the claims that reveal what specific types of learning model(s) are used or any details of computer programming that enables training or using the models. As such a broadest reasonable reading of the claims is that prior art existing learning models are being trained, at best, in a new field of use.
The preceding additional elements, considered alone and in the context of the claims, do not integrate the abstract idea of generating audible game hints using a generic language model into a practical application that improves computer functionality or another technology. They:
Invoke generic computers, memories, and AI models. The specification admits that the instant invention seeks to apply existing machine learning models in a conceived new field of use or with new data, which is not an improvement to ML models or computers (see the instant specification on [0101]. In essence, the specification is seen as an admission that the instant application seeks to train existing machine learning models using new data. RECENTIVE supports a conclusion that the instant claims merely identify a conceived field of use.)
[T]he invocation of ‘already-available computers that are not themselves plausibly asserted to be an advance … amounts to a recitation of what is well-understood, routine, and conventional.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020). And “simply adding a general-purpose computer or computer components after the fact to an abstract idea […] does not integrate a judicial exception into a practical application or provide significantly more.” Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)
Do not recite a specific improvement to the functioning of a computer (e.g., no particular improvements to a server or a machine learning model). As no particular programming steps are claimed or disclosed that would describe how video game input data is encoded, received, used to train a model, how the model functions, or how button configuration outputs are generated, no evidence of improvements to an AI model or computers can be found.
Do not effect a transformation of an article.
Are drafted as applying the abstract idea in the field of computer software involving AI models (field-of-use) using generic computing operations (“determine” steps, with no description of how these operations are accomplished.)
With regard to interpreting results-oriented claim language when performing a 35 USC §101 analysis, see Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024) when "the claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves these results. Claims of this nature are almost always found to be ineligible for patenting under Section 101." See also Interval Licensing LLC v. AOL Inc. (896 F.3d 1335) wherein the court found that claims to a computer software "attention manager" that displays content on unused portions of a screen were result-oriented and invalid under 35 U.S.C. § 101 because they did not recite a specific technological method for achieving the claimed result; Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024): The court held that claims must not only describe desired outcomes but also include a specific process or machinery for achieving that result; In re Killian, 45 F.4th 1373 (Fed. Cir. 2022): The court reaffirmed that claims simply reciting a desired result without specifying how to achieve it are directed to an abstract idea and are ineligible under 35 U.S.C. § 101. The claims at issue were directed to analyzing data from two databases. In the Step 2 of the Alice test, the court determined that there was no inventive concept because the additional elements merely involved generic and routine data gathering and analysis steps that could have been performed with or without a computer.
MPEP § 2106.05(f) explains that, “The recitation of claim limitations that attempt to cover any solution to an identified problem with no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it"”.
The pending claims do not include any technical description of mechanisms for accomplishing the claimed results. Instead, the claims use some unspecified computer and unspecified programming to conduct generic, result-oriented “determining” for performing abstract certain methods of organizing human activity and performing mental-equivalent work. The claims seek to cover any system and any method (such as any programming instructions, any computer, any language models) for determining various game controller button settings. As such the claims are found to be directed to ineligible subject matter.
Step 2A Prong 2 concludes in a determination that the additional elements do not amount to a practical application of the claimed abstract ideas.
Step 2B (MPEP § 2106.05): In this step of the Alice analysis, it is assessed whether additional elements amount to significantly more than abstract ideas. Any well-understood, routine, conventional (“WURC”) activity is also discussed along with evidentiary considerations.
Absent integration into a practical application, the claims lack “significantly more” than the abstract idea.
Additional elements that are generic computer implementation and conventional components are:
[0101] of the specification indicates that the field of artificial intelligence, in general, is a desired field of use, without any details provided of how it is to be used in the invention.
Conclusion:
Claims 1-20 are found to be ineligible under 35 U.S.C. § 101. Although step 1 is satisfied (the claims recite manufacture/process/machine), in Step 2A Prong 1, the claims are found to recite an abstract idea—determining various game controller button configurations, which is a method of organizing human activity and the equivalent of mental processes. And as found in Step 2A Prong 2, the abstract ideas are not integrated into a practical application; only generic computer implementation and field-of-use limitations are claimed such as some “(AI) model” desired to perform “determining” steps. There are no technical details in the claims that reveal how any of the claimed result-oriented language is to be accomplished such as how some generic “(AI) model” is trained or how inferences might be used to generate insights or outputs. And performing Step 2B, there is nothing “significantly more” found beyond WURC elements as evidenced by the specification.
Possible remedies:
To improve subject matter eligibility under 35 USC § 101, it is recommended to anchor the claims to concrete, non-generic technical mechanisms (such as particular software processes or nonobvious system architectures) in a way that there is evidence in the claims of certain improvements to computer or network operations or to another technology. Examples might include to:
Tie abstract steps to a specific, non-generic technological implementation that improves computer functionality or another technology with technical mechanisms claimed.
Replace high-level “receive input”, “a task for a model to execute,” “present an audible output” result-oriented steps with concrete algorithmic operations and data structures with constraints that provide a computer-functionality improvement (faster lookup, reduced cache misses, deterministic scheduling, etc.).
Provide evidence of improvements to computers or network operations in the claims by claiming certain network nonobvious server-side architecture that is also claimed as solving problems existing in the art or claiming a certain improvement in rendering such as a GPU-accelerated improvement that provides measurable improvements to game functionality.
Provide specification support (benchmarks, comparative studies) establishing that the recited computer improvements are not WURC (per Berkheimer), enabling either Step 2A integration or Step 2B “significantly more.”
Add claim elements showing a particular machine or a transformation of an article, beyond mere data manipulation or display functions.
Limit scope to a specific technological field and architecture (e.g., “a distributed game server cluster employing [named protocol] with defined message cadence and buffer management”) and claim the architecture itself, avoiding broad “apply it on a computer” formulations.
Provide specification support demonstrating the asserted improvements are not well-understood, routine and conventional:
Implementation details: algorithms with stepwise operations, data structures with constraints, hardware configurations, protocol diagrams.
Performance evidence: benchmarks, latency/throughput graphs, memory usage comparisons versus baselines.
Engineering rationale: why existing approaches fail and how your mechanism achieves measurable gains.
Recite in the claims a technical solution to a technological problem (e.g., secure hardware-backed attestations, nonobvious protocol flows, improved cryptographic operations, sensor fusion pipelines).
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 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 STEVEN J HYLINSKI whose telephone number is (571)270-1995. The examiner can normally be reached Mon-Fri 10-530.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN J HYLINSKI/Primary Examiner, Art Unit 3715
