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 .
Response to Amendment
This action is in response to the amendments filed on 3/25/2026 wherein the examiner acknowledges that claims 1, 5, 9 & 19 have been amended, no additional claims have been added and claims 4, 6-7, 11-12 & 14-18 have been canceled. Consequently, claims 1-3, 5, 8-10, 13 & 19 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 5 states “wherein the computer-readable instructions, when executed by the processor, further cause the backend server to send, from the backend server, API calls to the third-party server to receive the information regarding the plurality of songs”, however, the claim is considered as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.
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 1-3, 5, 8-10, 13 & 19 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.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S.___(2014).
Claims 1-3, 5, 8-10, 13 & 19 are directed to a gaming system and as such, the claims are directed to statutory subject matter under Step 1 of the Alice flowchart as directed to a judicial exception (i.e. an abstract idea).
Addressing the claims under Step 2A, the claims are held to be directed to concepts similar to those found to be abstract, either as outlined in the 2014 lEG/July 2015 Update to Subject matter eligibility, or, as compared to certain decisions rendered by the courts. The claims describe the steps of determine a winner based on votes received. The addition of the limitations that narrow the idea merely aide in the description of the abstract idea and therefore do not render the claims any less abstract.
This concept is considered a method of organizing human activity by providing users with votes to determine a winner. Organizing human activity is used to describe concepts relating to interpersonal and intrapersonal activities, such as managing transactions between people and activities (i.e. presenting users with choice and determine winner based on voting), advertising, marketing, pricing, resource management, and sales activities or behaviors (see July 2015 Update: Section III (B)). Several precedential cases have found concepts relating to advertising, marketing, pricing, and sales activities or behaviors abstract. One such example is the use of advertising as an exchange or currency (Ultramercial v. Hulu 772 F.3d 709, 112 U.S.P.Q.2d 1750 (Fed. Cir. 2014)). Additional precedential courts have found abstract examples of organizing human activity to include “collecting, tabulating and verifying votes” as fundamental social or administrative process that existed long before computer (Alice Corp. v. CLS Bank International 2014).
Finally, the concept of identifying and transmitting information to users further represents ‘an idea itself’ (see July 2015 Update: Section III (C)) inasmuch as it is related to processes of identifying, comparing, processing, and presenting data. Several precedential cases have found concepts relating to processes of identifying, comparing, processing, and presenting data to be mere ideas in themselves. One example includes selecting/identifying displayed data, manipulating the data through encoding and decoding processes, and generating new outputs/displays (Recognicorp, LLC, v. Nintendo Co., Ltd., Nintendo of America, Inc., No. 2:12-cv-01873-RAJ (2017)). The courts have addressed other computerized processes for of identifying, comparing, processing, and presenting data including data collecting and comparing known information (Classen Immunotherapies Inc. v. Biogen IDEC 659 F.3d 1057(Fed. Cir. 2011)), collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group, LLC v. Alstom 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016))] extracting, organizing, storing and transmitting data (Content Extraction and Transmission LLC v. Wells Fargo Bank, National Ass'n. 776 F.3d 1343 (Fed. Cir. 2014)) and obtaining and comparing intangible data (Cybersource Corp v. Retail Decisions, Inc. 654 F.3d 1366, 99 U.S.P.Q.2d 1690 (Fed. Cir. 2011)) (see July 2015 Update: Section III (C)). As noted above, the courts have found that automation of manual process does not render a claim patentable.
Therefore, while it is understood that the claims in the current application are not verbatim recitations of the guidelines or case law, the detailed analysis provided above shows how the current claim limitations at issue closely parallel the concepts provided by the guidelines and the precedential case law, and are therefore considered to be directed to an abstract idea (Step 2A: YES).
Step 2A, Prong Two: Claims 1-3, 5, 8-10, 13 & 19 does not contain additional elements that integrate the abstract idea exception into a practical application because the additional elements are generic hardware to apply the abstract idea exception; MPEP § 2106.05(f). (2) generally link the judicial exception to a particular technological environment; MPEP § 2106.05(h); (3) are insignificant extra solution activity; MPEP § 2106.05(g). The additional elements are limited to generic computer components. The additional elements are: “non-transitory memory device comprises computer-readable instructions”, generic device for data receiving and transmitting (i.e. servers), and generic “computing devices”.
Therefore, the claim as a whole, looking at the additional elements individually and in combination, are no more than mere instructions to apply the exception using generic computer/computer components and is not a practical application; See MPEP §2106.05(f). The additional elements do not integrate the abstract idea exception into a practical application because they do not impose any meaningful limits on the abstract idea exception. Accordingly, all the Claims are directed to an abstract idea.
Under Step 2B, the examiner acknowledges the additional limitations (i.e. an online interfaces, interactions with server, and various forms of software for presenting voting); however, the additional elements do not integrate the abstract idea exception into a practical application.
Under Step 2B, no element or combination of elements is sufficient to ensure the claim as a whole amounts to significantly more that the abstract idea itself. For example, the computer components generically claimed to enable the management of the data by performing the basic functions of: (i) receiving, processing, and storing data, and (ii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized these functions to be well-understood, routine, and conventional functions when claimed in a merely generic manner. Particularly, In re TLI Communications LLC (Fed Cir, 2016) held that adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible. As such, the recitation of the computer limitations in Claims 1-3, 5, 8-10, 13 & 19 amounts to mere instructions to implement the abstract idea on a computer.
These limitations however are used for data gathering and presentation and as such merely represents insignificant pre and post solution activity. Even assuming arguendo that the claims are not insignificant pre and post solution activities or mental activities, each of the functions performed by the machinery are well-understood, routine, and conventional (i.e., receiving and processing data, and receiving or transmitting data over a network, e.g., using the Internet to gather data (see July 2015 Update: Section IV)).
Additionally, these limitations (an online interfaces, interactions with server, and various forms of software for presenting items for voting), are merely generic recitations of computers and networks performing basic functions and the claims amount to nothing more than implementing the abstract idea on a computer. The limitations taken as a whole amount to nothing more than implementing the concept identifying and transmitting information to users to vote on and determine a winner based on votes with routine, conventional activity specified at a high level of generality in a particular technological environment. When viewed either as individual limitations or as an ordered combination, the claims as a whole do not add significantly more to the abstract idea of identifying and transmitting information to users.
Ultimately, the claimed machine(s) function solely as an obvious mechanism to achieve the claimed result, failing to impart a meaningful limit on the claim scope [see SiRF Tech., Inc. v. ITC (Fed. Cir. 2010)]. The claims at issue here do not rise to overriding the routine and conventional sequence of events ordinarily performed by the computer, nor do they set forth with any specificity the interactions of the machine itself. Conversely, the claims are only specific in how the computer is used to facilitate the abstract idea itself using routine and conventional operations of the generic machinery, and are silent as to any detail or property that would transform the otherwise generic machinery into a specialized or special purpose machine. Even when considered as an ordered combination, the computer components of applicant's method add nothing that is not already present when they are considered individually. Viewed as a whole, the claims simply convey the idea itself facilitated by generic computing components.
Thus, under Step 2B, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The claims provide minimal technical structure or components for further consideration either individually or as ordered combinations with the independent claims. As such, additional recited limitations in the dependent claims only refine the identified abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
Response to Arguments
Applicant’s amendments filed on 3/25/2026, with respect to 35 USC 102(a)(1) rejection have been fully considered and are persuasive. The rejection of 3/4/2026 has been withdrawn.
The claims are indicated as allowable because the prior art of record fails to disclose or suggest all of the claimed limitations, either individually or in combination. Specifically, no references or combination of references teaches the claimed invention in its entirety. However, notwithstanding the above, the claims remain rejected under 35 USC 101. The claims as currently present, do not sufficiently demonstrate that the invention amounts to significantly more than an abstract idea. As such, the claims are not directed to patent-eligible subject matter. Consequently, claims 1-3, 5, 8-10, 13 & 19 remain rejected.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIT PANDYA whose telephone number is (571)272-2823. The examiner can normally be reached M-F 9:30-6:30PM.
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, Peter Vasat can be reached at 571-270-7625. 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.
/SUNIT PANDYA/ Primary Examiner, Art Unit 3715
Prosecution Insights