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 .
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.
This subject matter eligibility analysis follows the latest guidance for Patent Subject Matter Eligibility Guidance.
Claims 1 - 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
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?
Claims 1 - 10 are exemplary because they require substantially the same operative limitations of the remaining claims (reproduced below.) Examiner has underlined the claim limitations which recite the abstract idea, discussed in detail in the paragraphs that follow.
1. A non-transitory machine readable medium including instructions for direct modeling using a virtual environment, the instructions, when executed by processing circuitry, cause the processing circuitry to perform operations comprising:
obtaining a set of behavioral conditions for an entity represented in a virtual environment, the virtual environment being a computer virtual environment, a behavioral condition in the set of behavioral conditions pertaining to a behavior exclusive to the virtual environment;
tracking entity behavior in the virtual environment with respect to the behavioral condition to create a behavioral metric;
creating a predicted action value for the entity based on the behavioral metric, the predicted action value corresponding to an action that is absent from the virtual environment; and
transmitting a representation of the predicted action value.
The claims recite italicized limitations that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG, namely, Mental Processes.
More specifically, under this grouping, the italicized limitations represent concepts performed in the human mind (including an observation, evaluation, judgment, opinion) For example, the italicized limitations are directed towards the observation of an entity’s actions to determine a behavior condition to create behavior metric and determining a prediction value of an action to be taken outside of the virtual environment and transmitting that value. This equates to an observation, evaluation and judgement being made by a human utilizing manual means.
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 as follow, (emphasis added): processing circuitry and non-transitory computer readable medium.
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. Therefore, since the additional limitations, individually or in combination, are indistinguishable from a computer used as a tool to perform the abstract idea, the analysis continues to Step 2B, below.
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 and routine computer implementation and mere instructions for implementing the abstract idea on generic computing devices.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract idea. Applicant has claimed computer processing circuitry and non-transitory computer readable medium. However, all of 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.
As the Alice court cautioned, citing Flook, patent eligibility cannot depend simply on the draftsman’s art. Here, amending the claims with generic computing elements does not (in this Examiner’s opinion), confer eligibility.
Regarding the Berkheimer decision, Applicant’s specification establishes that these additional elements are generic:
The machine (e.g., computer system) 400 may include a hardware processor 402 (e.g., a central processing unit (CPU), a graphics processing unit (GPU), a hardware processor core, or any combination thereof), a main memory 404, a static memory (e.g., memory or storage for firmware, microcode, a basic- input-output (BIOS), unified extensible firmware interface (UEFI), etc.) 406, and mass storage 408 (e.g., hard drives, tape drives, flash storage, or other block devices) some or all of which may communicate with each other via an interlink (e.g., bus) 430. The machine 400 may further include a display unit 410, an alphanumeric input device 412 (e.g., a keyboard), and a user interface (UI) navigation device 414 (e.g., a mouse). In an example, the display unit 410, input device 412 and UI navigation device 414 may be a touch screen display. The machine 400 may additionally include a storage device (e.g., drive unit) 408, a signal generation device 418 (e.g., a speaker), a network interface device 420, and one or more sensors 416, such as a global positioning system (GPS) sensor, compass, accelerometer, or other sensor. The machine 400 may include an output controller 428, such as a serial (e.g., universal serial bus (USB), parallel, or other wired or wireless (e.g., infrared (IR), near field communication (NFC), etc.) connection to communicate or control one or more peripheral devices (e.g., a printer, card reader, etc.).
[0042] The term "machine readable medium" may include any medium that is capable of storing, encoding, or carrying instructions for execution by the machine 400 and that cause the machine 400 to perform any one or more of the techniques of the present disclosure, or that is capable of storing, encoding or carrying data structures used by or associated with such instructions. Non-limiting machine readable medium examples may include solid-state memories, optical media, magnetic media, and signals (e.g., radio frequency signals, other photon based signals, sound signals, etc.). In an example, a non-transitory machine readable medium comprises a machine readable medium with a plurality of particles having invariant (e.g., rest) mass, and thus are compositions of matter. Accordingly, non- transitory machine-readable media are machine readable media that do not include transitory propagating signals. Specific examples of non-transitory machine readable media may include: non-volatile memory, such as semiconductor memory devices (e.g., Electrically Programmable Read-Only Memory (EPROM), Electrically Erasable Programmable Read-Only Memory (EEPROM)) and flash memory devices; magnetic disks, such as internal hard disks and removable disks; magneto-optical disks; and CD-ROM and DVD-ROM disks.
Therefore, 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).
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 merely provide conventional computer implementation.
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 merely 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 has said in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
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 § 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)(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.
Claim(s) 1 – 9 and 11 - 19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Landers et al (US 10,357,713).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
As per claim 1, Landers discloses:
obtaining a set of behavioral conditions for an entity represented in a virtual environment, the virtual environment being a computer virtual environment, a behavioral condition in the set of behavioral conditions pertaining to a behavior exclusive to the virtual environment; (Landers discloses the monitoring of an entity represented in a virtual environment controlled by a user to determine behavioral conditions pertaining the actions exclusive to the virtual environment) (Landers 5:57 – 9:20). Landers discloses the determination of behavioral conditions such as a user’s choosing actions within a game such as violent actions or driving fast in the game (Landers 7:28 – 40) and associated that user with riskier behavior in the real world) (Landers 6:6 – 19)
tracking entity behavior in the virtual environment with respect to the behavioral condition to create a behavioral metric; (Landers tracks the behavior of the entity to create a behavior metric or trait such as risk taking) (Landers 8:34 – 63)
creating a predicted action value for the entity based on the behavioral metric, the predicted action value corresponding to an action that is absent from the virtual environment; and (Landers discloses the determination of a risk score (prediction value of risk) based on the determined traits of the user within the game) (Landers 12:62 – 13:17)
transmitting a representation of the predicted action value. (Landers discloses the transmission of the risk score) (Landers 13:1 – 12)
As per claim 2, wherein the entity is a human and the virtual environment is a video game. (Landers discloses a FPS game) (Landers 7:19 – 37)
As per claim 3, wherein the behavioral condition is performance of a task in the video game. (Landers discloses the behavior condition being how the user races in the game) (Landers 7:19 – 37)
As per claim 4, wherein the task 's creation of an in-game object. (Landers discloses a task or activities related to building skills or building their character) (Landers 9:10 – 20)
As per claim 5, wherein the task 's completion of an in-game objective defined by the video game that results in modification to a character attribute or character object. (Landers discloses a task or activities related to building skills or building their character) (Landers 9:10 – 20)
As per claim 6, wherein the in- game objective is a victory in a head-to-head competition in the video game. (Landers discloses the tracking of whether a user gains an advantage over another in a head to head competition between other users) (Landers 4:8 – 21)
As per claim 7, wherein the task is completion of an in-game objective solely defined by the behavioral condition. (“One trait that may be evaluated by the session analysis module 220 is regarding discretionary violence or passivity. For example, some computer games may include optional aspects of violent conduct within the game (“discretionary violence”, e.g., conduct which is not necessary to complete objectives within the game, but that the user 102 may decide to perform anyway). The session analysis module 220 may receive session-based behavior data indicating that the user 102 has performed such discretionary violence and, as such, may evaluate the user 102 as not trustworthy, and thus a riskier prospect for various financial services. “) (Landers 6:6 – 19
As per claim 8, wherein obtaining the set of behavioral conditions includes an allocation of in-game resources to a character of the human, and wherein the behavioral condition is performance of a transfer of resources back from the human. (Landers discloses the game having an in-game marketplace component wherein a user can use the virtual character to sell items to generate in-game currency) (Landers 10:57 – 67)
As per claim 9, wherein the resources back from the human are from the character. (Landers discloses the game having an in-game marketplace component wherein a user can use the virtual character to sell items to generate in-game currency) (Landers 10:57 – 67)
Independent claim(s) 11 is/are anticipated by Landers based on the same analysis set forth for claim(s) 1, which are similar in claim scope.
Dependent claim(s) 12-19 is/are anticipated by Landers based on the same analysis set forth for claim(s) 2 - 9, which are similar in claim scope.
Claim Rejections - 35 USC § 103
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.
Claim(s) 10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Landers et al (US 10,357,713) in view of Holder et al (US 2012/0225722).
As per claim 10, Landers fails to disclose:
wherein the operations comprise performing an involuntary transfer of the resources from the human based on a failure to meet the behavioral condition.
However, in a similar field of endeavor, Holder teaches the use of a video game wherein players must meet game objectives and if they fail to do so, they lose points. ( Holder 0007).
It would be obvious to one of ordinary skill in the art, at the time of filing, to modify Landers in view of Holder to utilize a known technique to modify similar devices in the same way by means of deducting points from players that are playing a game when they fail to meet game objectives. This would be beneficial as it would provide a player with an incentive to meet game objectives knowing their points or resources would be at risk if they fail to meet the objectives.
Dependent claim(s) 20 is/are made obvious by the combination of Landers and Holder based on the same analysis set forth for claim(s) 10, which are similar in claim scope.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROSS A WILLIAMS whose telephone number is (571)272-5911. The examiner can normally be reached Mon-Fri 8am - 4pm.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at (571)270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RAW/ Examiner, Art Unit 3715
8/8/2026
/KANG HU/ Supervisory Patent Examiner, Art Unit 3715
Prosecution Insights