DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
The following is a non-final, first office action on the merits, in response to application filed 5/5/2025. Claims 22-41 have been examined and are currently pending.
Priority
This application discloses and claims a continuation of Application No. 17/859404 (now Patent 12,321,954) filed 7/7/2022, which is in turn a continuation of 16/270307 (now patent 11,416,875) filed 2/7/2019, which is in turn a continuation of 12/905225 (now Patent 10,248,958) filed 10/15/2010, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application constitutes a continuation of 17/859404. Furthermore, acknowledgment is made of applicant's claim for a provisional application filed on 10/16/2009.
Response to Amendment
The amendment filed on 6/17/2026 cancelled claim 1-21. No claim was previously cancelled. New claims 22-41 are added. No Claims have been amended.
Claims 22-41 are examined and pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/5/2025 follows the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 22-41 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
The claimed invention (Claims 22-41) is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) recite(s) abstract ideas including “Certain Methods of Organizing Human Activity”, “Mental Process” which have been identified/found by the courts as abstract ideas in new 101 memos of the subject matter eligibility in here (https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility) including 2019 Revised Patent Subject Matter Eligibility Guidance. This judicial exception is not integrated into a practical application because it does not impose any meaningful limits on practicing 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 It/they is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications:
Independent claim 22 (Step 2A, Prong I): is directed to multiple abstract ideas including “Certain Methods of Organizing Human Activity”, and “Mental Process”.
Steps of
receiving,
transmitting,
receiving, by an advertisement service, a direct resource request from the gaming application based on the advertisement reference;
selecting an advertisement by querying an advertisement database using a virtual location identifier and a session identifier extracted from the advertisement reference;
transmitting the selected advertisement to the gaming application for rendering within the three-dimensional gaming environment; and
recording an impression entry in an activity log maintained by the advertisement service, wherein the activity log stores impression entries from multiple types of client applications associated with a common client identifier.
The instant claim provides content which falls within “Certain Methods of Organizing Human Activity” grouping of abstract idea because these steps mainly describe the concepts of commercial or legal interactions (advertising, marketing or sales activities or behaviors; business relations); and managing personal behavior or relationships or interactions between people (including following rules or instructions), for example, receiving,….., a direct resource request from the gaming application based on the advertisement reference ”.
In addition, claim 22, steps 1-6 mentioned above mentioned of above also falls within the abstract “Mental Processes” grouping of abstract ideas since these limitation covers performance of the limitations in the mind. For example, a human being can observe/send/receive an event/resource request, can observe/query a database/select an advertisement, can observe/record an ad entry, can observe/transmit/send a response/the selected advertisement.
Additionally, the steps of (“receiving”, “transmitting”) are insignificant extra solution activity as they simply receive/collect/send data.
Independent claim 22, Step 2A (Prong II): Accordingly, the claim recites an abstract idea(s) as pointed out above. This judicial exception(s) is/are not integrated into a practical application. In particular, the claim recites additional elements (i.e.by a virtual server, a database). Other than reciting “by a virtual server”, nothing in the claim element precludes the step from practically being performed in the mind. There is no specificity regarding any technology, just broadly, executing the programming instructions, to receive/transmit/send data over internet. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 22).
Additionally, the additional element(s) in the steps are recited at a high-level of generality such that it amounts no more than mere instructions to apply the judicial exception(s) in steps 1-6 using a generic device/computer. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
It should be noted that the limitations of the method claims are claimed as being performed by a processor/a computer recited in method claim 22 and reciting them as though they are performed by the generically recited physical computing device does not constitute an improvement to another technology or technical field. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions such as receiving/storing/retrieving data, transmitting/sending data that are well-understood, routine and conventional activities previously known to the industry.
Thus, computing devices are not an essential element to create, change, or display functionality, and are simply used as a tool to automate mental tasks. Applicants simply use a generic computer/processor/server/computing device as a tool to implement abstract ideas. The Examiner notes the instant claimed invention is in fact merely carried out by a generically recited computing platform; that is, essentially any computing system as seen in the applicant’s specification. The additional element limitations are simply a field of use that attempt to limit the abstract idea to a particular technological environment. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further the courts have found that simply limiting the use of the abstract idea to a particular environment does not add significant more.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Independent claim22 (step 2B): The additional elements (a virtual world server, a database), are recited a high level of generality. There are no additional elements to add nothing of substance to the underlying abstract idea; thus, they are not significantly more than the identified abstract idea.
These components (see Specification [0019-0021]) are merely recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer/device components recited as performing generic computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to receive/store/transmit/send/display information does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 22).
According to MPEP 2106.05 (d), elements that the Courts have recognized as well-understood, routine, conventional activity in particular fields are e.g., "Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward
information); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93” (evidence required by Berkeimer memo). Further, according to Berkheimer memo 04/19/2018, section III.A.1, “A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)”.
Applicant’s Specification, [0019-0021] indicates a general-purpose computer perform the instant steps and demonstrates the well-understood, routine, conventional nature of the information processing device (a processor/a computer) in any computing implementation. In other words, considering the description in the specification as mentioned above with respect to paras [0019-0021], the Specification demonstrates that the additional elements must be sufficiently well-known. Thus, evidence has been provided to show these additional elements are well-understood, routine, conventional activity according to Berkheimer memo. Therefore, for the above-mentioned reasons, viewed as a whole, even in combination, the above steps do not amount to significantly more/do not provide an inventive concept.
Dependent claims 23-30, merely add further details of the abstract steps/elements recited in claim 22 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 23-30 are also non-statutory subject matters.
Independent claim 31 (Step 2A, Prong I): is directed to multiple abstract ideas including “Certain Methods of Organizing Human Activity”, and “Mental Process”.
Steps of
receiving,
selecting an advertisement by querying an advertisement database using a virtual location identifier extracted from the advertisement reference.
transmitting the selected advertisement to the gaming application for rendering within the three-dimensional gaming environment.
recording a gaming impression entry in an activity log maintained by the advertisement service, wherein the activity log stores advertisement impression entries from multiple types of client applications each associated with a client identifier; and
correlating the gaming impression entry with impression entries from other client application types sharing a same client identifier.
The instant claim provides content which falls within “Certain Methods of Organizing Human Activity” grouping of abstract idea because these steps mainly describe the concepts of commercial or legal interactions (advertising, marketing or sales activities or behaviors; business relations); and managing personal behavior or relationships or interactions between people (including following rules or instructions), for example, “selecting an advertisement by querying….using a virtual location identifier extracted from the advertisement reference”. .
In addition, claim 31, steps 1-5 mentioned above mentioned of above also falls within the abstract “Mental Processes” grouping of abstract ideas since these limitation covers performance of the limitations in the mind. For example, a human being can observe/send/receive resource requests, can observe/query a database/select an advertisement, can observe/record/correlate ad entries, can observe/transmit/send a response/the selected advertisement
Additionally, the steps of (“receiving”, “transmitting”) are insignificant extra solution activity as they simply receive/collect/send data.
Independent claim 31, Step 2A (Prong II): Accordingly, the claim recites an abstract idea(s) as pointed out above. This judicial exception(s) is/are not integrated into a practical application. In particular, the claim recites additional elements (i.e., an image server, a database). Other than reciting “at an image server”, nothing in the claim element precludes the step from practically being performed in the mind. There is no specificity regarding any technology, just broadly, executing the programming instructions, receiving/transmit/send data over internet, to select/record/correlate data. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 31).
Additionally, the additional element(s) in the steps is/are recited at a high-level of generality such that it amounts no more than mere instructions to apply the judicial exception(s) in steps 1-5 using a generic device/computer. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
It should be noted that the limitations of the method claims are claimed as being performed by a processor/a computer recited in method claim 31 and reciting them as though they are performed by the generically recited physical computing device does not constitute an improvement to another technology or technical field. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions such as receiving/storing/retrieving data, transmitting/sending data that are well-understood, routine and conventional activities previously known to the industry.
Thus, computing devices are not an essential element to create, change, or display functionality, and are simply used as a tool to automate mental tasks. Applicants simply use a generic computer/processor/server/computing device as a tool to implement abstract ideas. The Examiner notes the instant claimed invention is in fact merely carried out by a generically recited computing platform; that is, essentially any computing system as seen in the applicant’s specification. The additional element limitations are simply a field of use that attempt to limit the abstract idea to a particular technological environment. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further the courts have found that simply limiting the use of the abstract idea to a particular environment does not add significantly more.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Independent claim 31(step 2B): The additional element (an image server, a database), are recited a high level of generality. There are no additional elements to add nothing of substance to the underlying abstract idea; thus, they are not significantly more than the identified abstract idea.
These components (see Specification [0019-0021]), are merely recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer/device components recited as performing generic computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to receive/store/transmit/send/display information does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 31).
According to MPEP 2106.05 (d), elements that the Courts have recognized as well-understood, routine, conventional activity in particular fields are e.g., "Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward
information); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93” (evidence required by Berkeimer memo). Further, according to Berkheimer memo 04/19/2018, section III.A.1, “A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)”.
Applicant’s Specification, [0019-0021] indicates a general-purpose computer perform the instant steps and demonstrates the well-understood, routine, conventional nature of the information processing device (a processor/a computer) in any computing implementation. In other words, considering the description in the specification as mentioned above with respect to paras [0019-0021], the Specification demonstrates that the additional elements must be sufficiently well-known. Thus, evidence has been provided to show these additional elements are well-understood, routine, conventional activity according to Berkheimer memo. Therefore, for the above-mentioned reasons, viewed as a whole, even in combination, the above steps do not amount to significantly more/do not provide an inventive concept.
Dependent claims 32-37, are merely add further details of the abstract steps/elements recited in claim 31 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 32-37 are also non-statutory subject matter.
Independent claim 38: Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, independent system claim 38 is also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claim 31.
Further, the components (i.e. a processor, a memory, an image server) described in independent claims 38, add nothing of substance to the underlying abstract idea. Similarly, as it relates to the computer system claim, the limitations appear to be performed by a generic computing system/device. These components are merely recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to receive/retrieve/transmit/send/display information over communication network/internet does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 31).
Dependent claims 39-41 merely add further details of the abstract steps/elements recited in claim 38 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 39-41 are also non-statutory subject matter.
Viewed as a whole, the claims (22-41) do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Thus, the claims do NOT recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Thus, the claimed invention does not provide 'significantly more' than the abstract idea and is non-statutory subject matter.
Prior Art Rejection
Independent claims 22, 31, 38, recites a combination of limitations that has Not been found as define over prior art of record (the combination of Baszucki et al. (US 2010/0205035), Amidon et al. (US 2014/0039992), Khoo et al. (US 2007/0038718), Altberg et al. (US 2008/0263460), Van Datta et al. (US 2021/0004863), Van Datta et al. (US 2013/0232001), Khambete et al. (US 2009/0298480), Vaidyanath et al. (US 2010/0082440), Amidon et al. (WO2009029559A1),
which was directed towards the entirety of the claimed subject matter and was the best reference known to one of ordinary skill in the art to address the instant claims,
and
NPL1--System and method to enable selective advertising on avatar dreams within virtual worlds
IPCOM000184375D, 2009-Jun-22
NPL2--B. Knutsson, Honghui Lu, Wei Xu and B. Hopkins, "Peer-to-peer support for massively multiplayer games," IEEE INFOCOM 2004, Hong Kong, 2004, pp. 107, doi: 10.1109/INFCOM.2004.1354485.
NPL3--P. Fergus, D. Llewellyn-Jones, M. Merabti and A. El Rhalibi, "Bridging the Gap between Networked Appliances and Virtual Worlds," 21st International Conference on Advanced Information Networking and Applications Workshops (AINAW'07), Niagara Falls, ON, Canada, 2007, pp. 935-940, doi: 10.1109/AINAW.2007.114.
NPL4--A. El Saddik, A. S. M. M. Rahman and M. A. Hossain, "Suitability of Searching and Representing Multimedia Learning Resources in a 3-D Virtual Gaming Environment," in IEEE Transactions on Instrumentation and Measurement, vol. 57, no. 9, pp. 1830-1839, Sept. 2008, doi: 10.1109/TIM.2008.919867
All fail to teach all the recited claimed features.
However, independent claims 22, 31, 38 and their dependency are rejected under Alice 101 rejection as above.
Allowable Subject Matter
As to the prior art rejections, in interpreting the claims, considering the specification, upon further search and consideration, and for the reasons presented by claims, the Examiner finds claim 22-41 is allowable subject to outstanding Alice 101 rejections.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with, and pending remedy to outstanding issues cited above. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kusumoto et al. (US 2005/0216346, teaches consumer-selected advertising and branding in interactive media),
Davies et al. (US 2008/0228903, teaches serving Ads for web application),
Graham, Jr., William, (US 2011/0131503, teaches browser app, hyperlink, providing advertising from user behavior),
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN M LI whose telephone number is (571)270-5489. The examiner can normally be reached on Mon-Thurs, 8:30am-5pm. Fax is 571-270-6489.
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, Hajime Rojas, can be reached on 571-270-5491. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUN M LI/Primary Examiner, Art Unit 3681
Prosecution Insights