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 Amendment
Applicant has amended the claims and alleges the claims are directed to patent-eligible subject matter under 35 USC § 101. Examiner disagrees. The claims still recite abstract mathematical relationships and do not express a technological improvement to the functioning of the system.
Applicant has cancelled or amended Claims 22, 27, 28, 31 and 37, thus the objections to the claims are withdrawn.
Applicant has amended the claims and Examine agrees that the prior art does not teach or suggest behavior and communication metrics forming a ratio of game play activity to chat-based activity; evaluate differences in in-game communication patterns; and limit functionality of a platform bason on the difference. Thus, the rejections under 35 USC § 103 are withdrawn.
Claim Objections
Claims 1, 29, and 38 are objected to because of the following informalities:
Claim 1, line 18: Change “satifies” to – satisfies --.
Claim 29, line 22: Change “satifies” to – satisfies --.
Claim 38, line 20: Change “satifies” to – satisfies --.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
6. 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.
7. Claims 1 and 21, 23-24, 26-30, 32-33, and 35-39 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
8. Step 1
Claims 1 and 21, 23-24, 26-30, 32-33, and 35-39 are directed to an apparatus or method meeting the requirements for Step 1.
9. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 29 and 38), the following bolded steps recite an abstract measuring (observation), comparing, determining, and designating which are activities that can be performed in the mind and as such are mental processes as well as a machine learning model that is trained to correlate one or more game state indicators which is an abstract mathematical relationship.
1. A computer-implemented method comprising:
a game-dependent behavior metric that measures in-game patterns of interaction with other individuals by the user, wherein the game-dependent behavior metric comprises a game- context based chat metric that reflects patterns of communication that have occurred between users during game play, and wherein the patterns of communication comprise a ratio of videogame play activity to chat-based activity by the user;
using a machine learning model that is trained to correlate one or more game state indicators with patterns of normal communications between users within a game to model the pattern of communication and to identify typical levels and changes of the ratio as a function of game state, to evaluate a difference in in-game communication patterns of the user;
comparing the metric with a corresponding reference metric for one or more other users;
determining, based at least on comparing the metric with the corresponding reference metric, that a difference between the metric and the corresponding reference metric satisfies one or more criteria at least one of a plurality of criteria;
in response to determining that the difference satisfies the one or more criteria at least one of the plurality of criteria, designating the user as a bad actor; and
in response to designating the user as a bad actor, limiting functionality of a platform network accessible by the user based on which of the plurality of criteria is satisfied by the difference.
As explained in the MPEP 2106.04 and 2106.05(II), in situations like this where a series of steps recite judicial exceptions, examiners should combine all recited judicial exceptions and treat the claim as containing a single abstract idea for purposes of further eligibility. Thus, for purposes of further discussion, the abstract ideas are collectively viewed as a single abstract idea of reciting a mathematical concept or mathematical relationship.
10. Step 2A Prong II
The abstract idea is not integrated into a practical application. According to MPEP 2106, 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, processors, computer-readable media, and instructions (of Claims 29 and 38), are recited 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. Applicant’s Specification does not disclose that these elements are directed to a technological solution to a technological problem that “overcome some sort of technical difficulty.” (citing ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 768 (Fed. Cir. 2019).
According to Applicant’s specification:
Thus the required adaptation to existing parts of an equivalent device may be implemented in the form of a computer program product comprising processor implementable instructions stored on a non-transitory machine-readable medium such as a floppy disk, optical disk, hard disk, solid state disk, PROM, RAM, flash memory or any combination of these or other storage media, or 45 realized in hardware as an ASIC (application specific integrated circuit) or an FPGA (field programmable gate array) or other configurable circuit suitable to use in adapting the conventional equivalent device.
(Page 10, ll. 41-47).
of these or other networks.
Consequently, these elements are viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer or as a means to automate the steps. 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).
Examiner deems wherein the patterns of communication comprise a ratio of videogame play activity to chat-based activity by the user metric as extra-solution activity akin to the creation of shadow prices in Alice – an artifact facilitating the computational process.
Even when the limitations are viewed in combination, the elements in this claim do no more than automate the steps 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).
Accordingly, each claim, as a whole, does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception.
As to the addition of the machine learning model, in December 2025, the USPTO issued an advance notice that the MPEP will be updated to include Ex Pate Desjardins. The Ex Parte Desjardins decision analyzed eligibility in terms of whether the claims were directed to an improvement in the functioning of a computer, or an improvement to other technology or technical field under longstanding Federal Circuit precedent in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). See also MPEP §§ 2106.04(d)(l) and 2106.05(a). The MPEP will contain in-part:
the claimed invention was a method of training a machine learning model on a series of tasks. The Appeals Review Panel (ARP) overall credited benefits including reduced storage, reduced system complexity and streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks as technological improvements that were disclosed in the patent application specification…In Step 2A Prong Two, the ARP then determined that the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. Importantly, the ARP evaluated the claims as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the specification. Accordingly, the claims as a whole integrated what would otherwise be a judicial exception instead into a practical application at Step 2A Prong Two, and therefore the claims were deemed to be outside any specific, enumerated judicial exception. (MPEP 2106.04 (d)(III).
According to Applicant’s specification no disclosure of improvements similar to those examples in Ex Parte Desjardins of reduced storage, reduced system complexity and streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks as technological improvement (to overcome catastrophic forgetting) could be identified. (See Advance notice of change to the MPE in light of Ex Parte Desjardins, December 5, 2025).
Thus, Claim 1, and similarly Claims 29 and 38, lack the eligibility requirements of Step 2 Prong II.
11. Step 2B
According to MPEP 2106, in addition to the considerations discussed in Step 2A, an additional consideration indicative of an inventive concept (aka “significantly more”) is the addition of a specific limitation other than what is well-understood, routine, conventional activity in the field (MPEP 2106.05(d)). Conversely, an additional consideration not indicative of an inventive concept is simply appending well-understood, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
The “wherein the patterns of communication comprise a ratio of videogame play activity to chat-based activity by the user metric as extra-solution activity” is a form of gathering statistics (MPEP 2106.05(d)(II)(iii)) and (arranging a hierarchy of groups, sorting information (MPEP 2106.05(d)(II)(vi)) which are well-known, routine activities.
Thus, Claim 1, and similarly Claims 29 and 38, do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. Thus, Claims 1, 29 and 38 are ineligible.
12. Dependent Claims 21, 23-24, 26-28, 30, 32-33, 35-37, and 39
Claims 21, 26-27, 30, 35-36, and 39 recite extra-solution details of the metrics.
Claims 23-24, 28, 32-33, and 37 recite additional abstract mental processes and extra-solution details of patterns. Thus, none of the claims supply a practical application or inventive concept sufficient to transform the nature of the claim into a patent-eligible application.
Additionally, the combination of additional elements adds nothing that is not already present when considered individually where the additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept. Thus, Claims 21-28, 30-37, and 39 are ineligible.
Conclusion
13. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
15. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
16. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached on (571) 270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/Primary Examiner, Art Unit 3715
