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 .
Status of Claims
This Office action is in response to correspondence received May 7, 2026.
Claims 1, 6, 8, and 11 are amended. Claims 1-15 are pending and have been examined.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
An association unit which automatically associates; association unit performing the association in claims 1 and 6.
Further association unit limitations in claims 3 and 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The association unit is described in, at least, pars 041-044 (terminal device, output device, storage unit, etc.).
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 1-15 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):
Claims 1, 6, and 11, which are similar in scope:
automatically associates, with a first user, a second user who has decided to share, is sharing, or has shared a predetermined experience in a predetermined service with the first user,
performing the association based on the predetermined experience and without receiving a user selection of the second user by the first user.
This is an abstract idea that is a certain method of organizing human activity - managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions). See MPEP 2106.04(a)(2). This step is management of relationship or interaction between people because it can only be understood as pairing people together based on a certain criteria. Therefore claims 1, 6, and 11 recite an abstract idea that is a certain method of organizing human activity.
This judicial exception is not integrated into a practical application. The additional elements in claims 1, 6, and 11 recite generic computing components such as:
Claim 1:
A non-transitory computer readable medium having recorded thereon a program for causing a computer to function as: an association unit, the association unit performing
Claim 6:
An information processing apparatus comprising: At least one processor, an association unit, the association unit performing, using the at least one processor.
Claim 11:
computer implemented,
These elements amount to no more than instructions to apply the above identified abstract idea to a computer, see MPEP 2106.05(f)(2), see “A commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014); Gottschalk v. Benson, 409 U.S. 63, 64, 175 USPQ 673, 674 (1972); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).” The elements in combination further amount to the same: instructions to apply the abstract idea to a computer. Therefore there is no practical application of the abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, for the reasons identified above in the practical application section, there is not significantly more recited than the abstract idea, either alone or in combination.
Claims 2-5; 7-10; and 12-15 further describe the abstract idea of the independent claims, and the additional elements were previously described in the independent claims.
Therefore, claims 1-15 are rejected under 35 USC 101.
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.
The factual inquiries 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.
Claim(s) 1, 2, 4-7, 9-12, 14, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saraf et al., US PGPUB 20150148127 A1 (“Saraf”) in view of Miller et al., US PGPUB 20220148097 A1 (“Miller”).
Per claims 1, 6, and 11, which are similar in scope, Saraf teaches
Per claim 1, A non-transitory computer readable medium having recorded thereon a program for causing a computer to function as in par 083: “In one embodiment, the hardware system 900 comprises a processor 902, a cache memory 904, and one or more executable modules and drivers, stored on a tangible computer-readable storage medium, directed to the functions described herein. Additionally, the hardware system 900 may include a high performance input/output (I/O) bus 906 and a standard I/O bus 908.”
Per claim 6, An information processing apparatus comprising at least one processor, the at least one processor, in par 085: “The hardware system 900 may include a variety of system architectures and various components of the hardware system 900 may be rearranged. For example, cache memory 904 may be on-chip with the processor 902. Alternatively, the cache memory 904 and the processor 902 may be packed together as a "processor module," with processor 902 being referred to as the "processor core." Furthermore, certain embodiments of the present disclosure may neither require nor include all of the above components.”
Per claim 11, A computer implemented method comprising is taught in par 093: “the methods described herein may be at least partially processor-implemented.”
Then, per claims 1, 6, and 11, which are similar in scope, Saraf teaches an association unit which automatically associates, with a first user, a second user who has decided to share, is sharing, or has shared a predetermined experience in a predetermined service with the first user in par 017-018: “"If the player wishes to play with someone outside of the player's social network, the player may send a request to play against that person. The game networking system associated with the game may forward the request to that person. If the person declines the request, the player may not be allowed to communicate with that person. However, if the person accepts the request, a match between the two players may be generated, and a communication channel may be provided to the players to allow the players to communicate with one another. The communication channel may be any suitable channel that may allow communication (e.g., instant message communication, video communication, audio communication, etc.).
In a specific example, Player A may wish to play a game against another player and may browse players associated with the game networking system of the game. In some embodiments, Player A may browse profiles associated with available players. A profile associated with a player may include any relevant information about a player, such as content provided by a player (e.g., pictures, video, comments, etc.), a username of a player, demographic information, geographic information associated with a player, games that the player plays and/or enjoys playing, and the like. When Player A finds a suitable opponent with whom Player A wishes to communicate (e.g., Player B), Player A may request that a match be created so that Player A may play against Player B. In some embodiments, the profile page for Player B may include a button that Player A may select to initiate the request. The request may be forwarded to Player B, which may appear as a notification to Player B. If Player B declines the request, Player A may not be allowed to communicate with Player B. If Player B accepts the request, the game networking system may create a match between Player A and Player B. When a match is created, a communication channel may be provided to Player A and Player B so that the players may begin communicating with one another." The communication channel automatically associates first and second user. The second user is player A who has decided to invite player B to a match, which is sharing a predetermined experience in a predetermined service with the first user. That they are automatically associated is taught in par 016: “When a player wishes to find someone with whom to play a game, the player may browse through a list of players who are associated with the game. The list of players may include people outside of and/or within the player's social network, players who are online and/or offline, players who are publicly searchable, and the like.” These players are automatically associated because they are in a list and are within the player’s social network, but they are not matched together. Merely being in the list teaches associated under a broadest reasonable interpretation.
Saraf does not teach the association unit performing the association based on the predetermined experience and without receiving a user selection of the second user by the first user.
Miller teaches pairing a first and a second user. See abstract.
Miller teaches the association unit performing the association based on the predetermined experience and without receiving a user selection of the second user by the first user in par 038: “In some embodiments, pairing engine 160 may pair any number of users based on an experience before being paired. For example, users 110 may have both engaged in a live digital experience (e.g., Swipe Night) and selected similar decisions and answers. As another example, users 110 may each independently play a game before being paired and the score of the game determines what pairing occurs.” See also par 035-037, 41-43. Predetermined experience taught by live digital experience performed before pairing (in the past).
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the association teaching of Saraf with the matching based on a predetermined experience teaching of Miller because Miller teaches in par 006 that: “Certain embodiments provide one or more technical advantages. For example, an embodiment may allow users to interact and engage with each other before viewing profiles of users, to determine preference indications earlier in the meeting process, thereby decreasing the processing and bandwidth resources expended by users gathering and reviewing information about another user before an interaction with him or her. As another example, an embodiment may incorporate user feedback information into a machine-learning recommendation algorithm, thereby providing enhanced recommendations for users and accordingly decreasing the processing and bandwidth resources expended by the system in providing recommendations to a user” This would enable earlier matching of potential associations which would benefit people by saving them time and even surprising them with new results that improve upon selecting by looking at profiles. For these reasons one would be motivated to modify Saraf with Miller.
Per claims 2, 7, and 12, which are similar in scope, Saraf and Miller teach the limitations of claims 1, 6, and 11, above. Saraf further teaches wherein the second user is a user who has decided to use, is using, or has used predetermined content in the predetermined service together with the first user in par 051: “For example, Player A with six friends on Player A's team (e.g., the friends that are listed as being in the player's mob/gang/set/army/business/crew/etc. depending on the nature of the game) may be playing the virtual game and choose to confront Player B who has 20 friends on Player B's team. In some embodiments, a player may only have first-degree friends on the player's team. In other embodiments, a player may also have second-degree and higher degree friends on the player's team. To resolve the game event, in some embodiments the game engine may total up the weapon strength of the seven members of Player A's team and the weapon strength of the 21 members of Player B's team and decide an outcome of the confrontation based on a random variable applied to a probability distribution that favors the side with the greater total. In some embodiments, all of this may be done without any other current active participants other than Player A (e.g., Player A's friends, Player, B, and Player B's friends could all be offline or inactive). In some embodiments, the friends in a player's team may see a change in their state as part of the outcome of the game event. In some embodiments, the state (assets, condition, level) of friends beyond the first degree are taken into account.”
Per claims 4, 9, and 14, which are similar in scope, Saraf and Miller teach the limitations of claims 1, 6, and 11, above. Saraf further teaches wherein the second user is a user who has a predetermined relationship with the first user in the predetermined service in par 016: “When a player wishes to find someone with whom to play a game, the player may browse through a list of players who are associated with the game. The list of players may include people outside of and/or within the player's social network, players who are online and/or offline, players who are publicly searchable, and the like. In some embodiments, if the player wishes to play a game with someone who is within the player's social network, the player may send a request to that person. In this case, the player may be allowed to communicate with that person since that person is already within the player's social network. In some embodiments, a game networking system associated with the game may suggest people with whom the player may be interested in playing the game.”
Per claims 5, 10, and 15, which are similar in scope, Saraf and Miller teach the limitations of claims 4, 9, and 14, above. Saraf further teaches wherein the predetermined relationship is a relationship which is set by the first user and which satisfies a condition for automatically associating another user with the first user in par 018: “In a specific example, Player A may wish to play a game against another player and may browse players associated with the game networking system of the game. In some embodiments, Player A may browse profiles associated with available players. A profile associated with a player may include any relevant information about a player, such as content provided by a player (e.g., pictures, video, comments, etc.), a username of a player, demographic information, geographic information associated with a player, games that the player plays and/or enjoys playing, and the like. When Player A finds a suitable opponent with whom Player A wishes to communicate (e.g., Player B), Player A may request that a match be created so that Player A may play against Player B.”
Claim(s) 3, 8, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saraf et al., US PGPUB 20150148127 A1 (“Saraf”), in view of Miller et al., US PGPUB 20220148097 A1 (“Miller”), in further view of Kane et al., US PGPUB 20120157212 (“Kane”).
Per claims 3, 8, and 13, which are similar in scope, Saraf and Miller teach the limitations of claims 1, 6, and 11, above. Saraf further teaches wherein the automatically associating the second user with the first user is to automatically register the second user as a user whom the first user is to follow in par 065: “In some embodiments, the connections in a player's in-game social network is formed both explicitly (e.g., when users "friend" each other) and implicitly (e.g., when the system observes user behaviors and "friends" users to each other). Unless otherwise indicated, reference to a friend connection between two or more players can be interpreted to cover both explicit and implicit connections, using one or more social graphs and other factors to infer friend connections. The friend connections can be unidirectional or bidirectional. It is also not a limitation of this description that two players who are deemed "friends" for the purposes of this disclosure are not friends in real life (e.g., in disintermediated interactions or the like), but that could be the case.”
Saraf does not teach the association unit further allows mutually associating the first user and the second user to be registered as friends with each other, in a case where the first user follows the second user, as compared with a case where the first user does not follow the second user; the first user is more advantageous in terms of viewing of information related to the second user; and in a case where the first user follows the second user and the first user and the second user are not registered as friends, a specific function which is usable between users who are friends is not usable between the first user and the second user.
Kane teaches team challenges in networks of players. See abstract.
Kane teaches the association unit further allows mutually associating the first user and the second user to be registered as friends with each other, in a case where the first user follows the second user, as compared with a case where the first user does not follow the second user in par 073: “For example, if one of a player's buddies is making progress toward the completion of a team challenge, the exposure module 304 may cause a news item pertaining to the team challenge to be displayed in an in-game news feed (e.g., "Friend Feed") of the player. The news item may include a button or link related to team challenges. Upon a clicking of the button or link, the dashboard module 306 may present a user interface from which the player can indicate his willingness to help a buddy complete a challenge or from which the player can initiate a new challenge.”
Then, Kane teaches the first user is more advantageous in terms of viewing of information related to the second user in par 073: “For example, if one of a player's buddies is making progress toward the completion of a team challenge, the exposure module 304 may cause a news item pertaining to the team challenge to be displayed in an in-game news feed (e.g., "Friend Feed") of the player. The news item may include a button or link related to team challenges. Upon a clicking of the button or link, the dashboard module 306 may present a user interface from which the player can indicate his willingness to help a buddy complete a challenge or from which the player can initiate a new challenge.”
Then, Kane teaches and in a case where the first user follows the second user and the first user and the second user are not registered as friends, a specific function which is usable between users who are friends is not usable between the first user and the second user in par 086: “At operation 416, the helper-notification module 316 notifies the helpers of their selection to participate in the team challenge. For example, the helper-notification module 316 may notify the selected buddies via an email message or a posting on the player's behalf on an out-of-game social network. Thus, even selected buddies who have never accessed the social game network 120b may be notified of their selection by the player. The helper-notification module 316 may notify selected buddies who are also players of the game via one or more in-game mechanisms, such as shouts, pokergrams, friend feeds, message centers, or other mechanisms.” See also par 089: “At operation 424, the reward module 324 provides rewards to the initiator and the helpers based on the completion of the team challenge. For example, upon a completion of a team challenge, the initiator and the helpers may each receive $5,000 in virtual cash and 40 experience points. In various embodiments, the reward module 324 provides a reward only when the player takes an action to claim the reward (e.g., when the user clicks on a "Claim Reward" button).”
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the social connection association teaching of Saraf with the friends and advantages teaching of Kane because one would be motivated to incentivize players to make friendships so that the network effect of the platform was enhanced. The more players are encouraged to connect and add friends, the stronger the network effect and the more robust the subscription of the platform. For these reasons one would be motivated to modify Saraf with Kane.
Therefore, claims 1-15 are rejected under 35 USC 103.
Response to Arguments:
Interpretation 112(f)
Applicant’s argument has been considered, that because a computer or processor is recited that association unit is not a means plus function limitation. However the presence of a computer or processor does not teach the structure (algorithm) of the algorithm but merely where the unit would be found. To remove the interpretation it is suggested to rewrite to take out association unit… performing step.
35 USC 101
Applicant argues:
Under the 2019 Revised Patent Subject Matter Eligibility Guidance (84 Fed. Reg. 50-57), the subject matter eligibility analysis begins with Step 1, which determines whether the claimed subject matter falls within one of the statutory categories of invention (i.e., a process, machine, manufacture, or composition of matter). Here, the Examiner does not state whether the claims are directed to one or more statutory categories. However, because the Examiner proceeds to Step 2A, Applicant understands the Examiner to have determined that the claims satisfy Step I and are directed to at least one statutory category.
Under Step 2A, Prong 1, the analysis next considers whether the claims recite a judicial exception (i.e., an abstract idea, law of nature, or natural phenomenon).
The Office Action asserts that claims 1-15 are directed to patent-ineligible subject matter because they recite a judicial exception without significantly more. Specifically, the Office Action states that the claims are directed to certain methods of organizing human activity and, on that basis, concludes that the claims fall within the "Methods of Organizing Human Activity" grouping of abstract ideas.
However, even assuming the claims don't pass the test of Step 2A, Prong 1, Applicant submits that it passes the test of Step 2A, Prong 2 because the claimed subject matter is integrated into a practical application.
As noted in MPEP 2106.04, "[a] claim reciting a judicial exception is not
directed to the judicial exception if it also recites additional elements demonstrating that the claim as a whole integrates the exception into a practical application. One way to demonstrate such integration is when the claimed invention improves the functioning of a computer or improves another technology or technical field."
The claims are applied in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In the instant case, the Applicant's claimed subject matter is directed to
improvement in the technological operation of gaming or social network platforms. The claims, when considered as a whole, transform the alleged abstraction into a practical application by enabling automated generation of user associations based on system-detected service activity, rather than requiring manual identification of other users.
Applicant thus respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 101.
Examiner response: Though Applicant argues that there is a practical application, the elements when combined and considering the claims as a whole are apply it elements to the abstract idea of automated generation (rules based) of user associations based on service activity. Therefore the 101 rejection is maintained.
35 USC 102/3
The arguments are based on the amended limitations. As new art has been applied, search and consideration being required due to amendment, the arguments are now moot.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD W. CRANDALL whose telephone number is (313)446-6562. The examiner can normally be reached M - F, 8:00 AM - 5:00 PM.
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/RICHARD W. CRANDALL/ Primary Examiner, Art Unit 3619
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