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 Status
After the amendments filed 12/15/2025, claims 1-8, 10-15 and 17-20 remain pending, of which, 19 and 20 are currently withdrawn.
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 1-8, 10-15 and 17-20 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 claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Guidelines (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a system and/or process, which is are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Independent claim 1 recites the following, with the abstract ideas highlighted in bold, including an indication as to the abstract idea grouping(s) to which the indicated limitations belong to, according to the 2019 Revised Patent Subject Matter Guidelines. Independent claim 15 and 19, having substantially similar features, was also analyzed and to which the following conclusion is also applicable:
1. An electronic gaming machine (EGM) comprising:
a processor circuit; and
a memory device which stores a plurality of instructions, which when executed by the processor circuit, cause the processor circuit to:
cause a display device to display a plurality of game symbols arranged in a symbol selection zone of the display (Certain Methods of Organizing Human Activity);
cause the display device to display a plurality of value symbols that are assignable to a game symbol of the plurality of game symbols based on an input from a user that moves one of the plurality of value symbols to be on a selected game symbol of the plurality of game symbols (Certain Methods of Organizing Human Activity);
cause the display device to display a plurality of symbol display positions with less than all of the plurality of game symbols (Certain Methods of Organizing Human Activity); and
responsive to one of the plurality of symbol display positions comprising the selected game symbol, cause the display device to display an award value to be credited to the user (Certain Methods of Organizing Human Activity),
wherein the processor circuit is further caused to cause the display device to display a value symbol that is assignable to a game symbol of the plurality of game symbols based on a selection input from a user that moves the value symbol to be on one of the plurality of game symbols to identify the selected game symbol of the plurality of game symbols, and wherein a quantity of symbol display positions are provided in the symbol selection zone and vary based on a type of game being played, and wherein the selection input from the user comprises a graphical user input that is actuated to cause ones of the plurality of value symbols to be dragged and dropped onto ones of the plurality of game symbols in the symbol selection zone (Certain Methods of Organizing Human Activity),
wherein a first game comprises a first quantity of symbol display positions, a second game comprises a second quality of symbol display positions that is different from the first quantity of symbol display positions (Certain Methods of Organizing Human Activity),
wherein a payout of the first game is different than a payout of the second game based on a difference between the first quality and the second quantity (Certain Methods of Organizing Human Activity); and
wherein the EGM is caused to automatically determine the identity of a current player based on an external signal.
The limitations in claim 1 (and similarly claim 15) recite an abstract idea included in the groupings of Certain Methods of Organizing Human Activity, connected to technology only through application thereof using generic computing elements (e.g., a display device, a processor circuit, a memory device, etc.) and/or insignificant extra-solution activity. According to the 2019 Revised Patent Subject Matter Guidelines:
Certain Methods of Organizing Human Activity includes at least:
Fundamental Economic Principles or Practices (including hedging (i.e., wagering), insurance, mitigating risk);
Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); and/or
Managing Personal Behavior or Relationships or Interactions Between People (e.g. social activities, teaching, and following rules or instructions). The interaction encompasses both activity of a single person (for example a person following a set of instructions) and activity that involves multiple people (such as a commercial or legal interaction). Thus, some interactions between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within this grouping.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Wagering, wherein in light of applicant’s specification, some limitations identified above may also be interpreted as placement of a wager during a wagering game (See ¶14, ¶23, player’s wager and awards are an amount of currency and wagers are placed by a player via selection of game symbols by assigning value symbols). Wagering is a fundamental economic principle as related to the abstract idea of hedging and is, by definition, is also a form of contract formation (for example by placement of a wager a player is entering into a contract with a game operator, whereby the game operator agrees to provide the player with a chance at winning a game in exchange for the placement of the wager). Wagering is a form of hedging, which is an abstract idea included in the grouping of Fundamental Economic Principles or Practices. These limitations are interpreted as at least Fundamental Economic Principles or Practices insomuch as the claim limitations are directed to performing the Fundamental Economic Principles or Practices while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims.
B. Formation of a gambling contract (i.e., by a player placing a wager the player is entering into a contract with a game operator), which is an abstract idea included in the grouping of Commercial or Legal Interactions. These limitations are interpreted as at least Commercial or Legal Interactions insomuch as the claim limitations are directed to performing the Commercial or Legal Interactions while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims; and/or
C. Following rules and/or instructions, such as including the functions related to the playing of a game, which is an abstract idea included in the grouping of Managing Personal Behavior or Relationships or Interactions Between People. These sets of rules are interpreted as at least certain methods of organized human activity insomuch as the claim limitations are directed to performing or following the set of rules or instructions concerning a game while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity, as set forth in the claims.
Regarding dependent claims 2-8, 10-14 and 17-18:
Each claim is dependent either directly or indirectly from the independent claim identified above and includes all the limitations of said independent claim. Therefore, each dependent claim recites the same abstract idea as identified above. Each of the dependent claim further describes additional aspects of the abstract idea, i.e., additional aspects to the Certain Methods of Organizing Human Activity. For example, some dependent claims merely provide additional rules to be followed, fundamental economic principles to be performed and/or further commercial or legal interactions and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101.
Step 2A-2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
-Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Claims 1-8, 10-15, 17-18 and 21 clearly do not improve the functioning of a computer, as they only incorporate generic computing elements, do not effect a particular treatment, and do not transform or reduce a particular article to a different state or thing. Similarly, there is no improvement to a technical field. In addition, the claims do not apply the judicial exception with, or by use of a particular machine. The claims do not apply or use the judicial exception in a meaningful way. The claimed invention does not suggest improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05 (a)).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (MPEP 2106.05 (h)). The claimed computer components are recited at a level of generality and are merely invoked as tool to perform the abstract idea. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
For the reasons as discussed above, the claim limitations are not integrated to a practical application.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of “display device, a processor circuit, a memory device”, etc. used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility. These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
In addition to the abstract ideas indicated above, the claims include additional elements, such as:
I. “wherein the EGM is caused to automatically determine the identity of a current player based on an external signal.”.
As claimed, additional element I is viewed as an incidental activity to the primary process or product and is merely a nominal or tangential addition to the claim. Therefore, this limitation is considered a form of insignificant extra-solution activity and thus does not integrate the judicial exception into a practical application (See MPEP 2106.05(g)).
Further, the claims would require structure that is beyond generic, such as structure that can be interpreted analogous to a general-purpose structure and general-purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims. See Alice Corp. v. CLS Bank International, 134 S. Ct. at 2358-59. The elements of a computer memory, a processor, and display are well known conventional devices used to electronically implement a game as evidence by US 2003/0050111. US 2003/0050111 discloses that a conventional gaming machine comprises a controller with a memory, display and a processor to control the overall operation of the gaming machine (¶2). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The dependent claims do not add “significantly more” for at least the same reasons as directed to their respective independent claims, at least based on the position, as discussed above, that each of the dependent claims merely provide additional limitations to further expand the abstract idea of the independent claims, without adding anything which would establish eligibility under 35 U.S.C. 101.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
Response to Arguments
Applicant’s arguments, see Remarks, filed 12/15/2025, with respect to the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the instant claims are analogous to the claims found allowable in other related cases (See Remarks, pgs. 8-12). The Examiner notes that, despite applicant’s assertion otherwise, none of the cited cases were prosecuted by the examiner prosecuting this case. Further, none of these cases are precedential and that the merits of the cases are not analogous nor do the decisions made in those cases carry any weight of precedence in this prosecution. Therefore, applicant’s arguments with respect to those cases are not found to be persuasive.
Applicant argues that “The Office Action further asserts that "the claims are not directed to significantly more because they are not analogous to Claims 1-2 of Example 37 of the 2019 PEG. In the instant claims, the claims recite steps for managing a wagering game in which the EGM is used to display a game outcome amount which is indicative of a commonplace business method that is implemented on a computer. It follows that the claims are not similar to the concepts that were eligible in Core Wireless and Example 37 but recite additional elements that amount to mere instructions to invoke a computer as a tool, insignificant extra solution activity, and/ or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(/)-(h))."” (See Remarks, pg. 11). Applicant’s argument is moot, as this quoted assertion is not from any Office Action which has been written by this examiner as it relates to the instant application.
Applicant argues that the pending claims are not directed to Certain Methods of Organizing Human Activity (See Remarks, pg. 14). The examiner must respectfully disagree. Applicant’s specification makes it clear that the applicant’s invention is drawn to a wagering game, including placement of a wager by a player via input which assigns a value symbol to a game symbol (See Specification ¶14, ¶23, “the player's wager, and any awards are displayed as an amount of monetary credits or currency in certain of the embodiments described below” and “a wager may be increased corresponding to a given selection of game symbols 212”). As discussed in the rejection above, a wagering game and the rules by which it is played (i.e., method of playing) is a form of managing interactions between people. Further, wagering is a fundamental economic principle as related to the abstract idea of hedging and is, by definition, is also a form of contract formation (for example by placement of a wager a player is entering into a contract with a game operator, whereby the game operator agrees to provide the player with a chance at winning a game in exchange for the placement of the wager). Managing interactions between people, fundamental economic principles and contract formation are among the list of “Certain Methods of Organizing Human Activity”. For these reasons, the claims are drawn to an abstract idea, without anything more significant to establish eligibility under 35 U.S.C. 101.
Applicant argues that the recitation of a generic computing components, which are part of a generic electronic gaming device, takes the claims out of the capability of being drawn to an abstract idea (See Remarks, pg. 14). The US Supreme Court and the CAFC have ruled over and over again that the mere recitation of generic computer components will not make the claims eligible without “significantly more.” Yes, Applicant does recite generic computer components performing certain steps. But the point of the rejection is that the steps could be performed by a person using pen and paper. Mere recitation of generic computer components will not rescue the claims.
Applicant appears to argue that the instant claims are similar to various example provided in the 2019 Revised Patent Subject Matter Guidelines, and therefore, should also be eligible (See Remarks, pgs. 15-17). This argument is not found persuasive because applicant has failed to provide any nexus between the provided example and the instant claims. The examples provided were found eligible for various reasons, none of which are relevant to the instant claims.
Applicant appears to argue that the claimed invention integrates the abstract idea into a “practical application” (See Remarks, pg. 17). While in a sense, there is a practical application (as there is with all utility patents), there is no “practical application” within the meaning the courts have used the term in conjunction with §101. The courts have made it plain that in order to be considered a “practical application” in the §101 sense, software patents much improve the functioning of a computer as a computer. In short, there must be a technological solution to a technological problem. Applicant has not provided any indication as to what the alleged technological problem or the alleged solution to any problem the instant claims address.
Applicant argues that claim 1 was amended to include the limitation of claim 21, which applicant alleges were not rejected under section 101 (See Remarks, pg. 17). Claim 21 was not rejected in the most recent Office Action because claim 21 (which was added via amendment in the amended claims filed 09/27/2024), was cancelled in the amended claims submitted 03/14/2025, therefore, the Office Actions which followed (See Non-Final Rejection of 03/24/2025, Final Rejection of 07/23/2025, and Final Rejection of 10/15/2025) did not provide rejections for cancelled claim 21. Further, prior to cancellation depended claim 21 was rejected under 35 U.S.C. 101 as being dependent either directly or indirectly from independent claim 1, and included all the limitations of said independent claim and merely provided additional rules to be followed, fundamental economic principles to be performed and/or further commercial or legal interactions and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101 (See Final Rejection, 01/15/2025).
Applicant argues that “moving value symbols, using the display, is directly analogous to the example recitation of automatically moving icons” (See Remarks, pgs. 18-19). The examiner must respectfully disagree. The claims of Example 37 recite a specific manner of automatically displaying icons to the user based on usage, which provides a specific improvement over prior systems, resulting in an improved user interface for electronic devices. The instant claims do not include any such automated system, but rather a system which specifically utilizes player input to cause placement of a wager, without any additional elements which are “significantly more” than the abstract idea to establish eligibility under 35 U.S.C. 101.
Applicant appears to argue that the dependent claims were ignored (See Remarks, pgs. 19-20). The examiner must respectfully disagree. Initially, the examiner notes that applicant’s assertion that the previous office action stated: “similar reasoning is applied to claims 2-20” (See Remarks, pg. 19), is inaccurate as the length of the Office Action is not the standard by which the validity of rejections are determined. In the instant case, the examiner has performed the analysis as provided in the 2019 Revised Patent Subject Matter Guidelines. All dependent claims have been analyzed, but they all merely apply more abstract ideas to the independent claims, each of which have been found to be drawn to an abstract idea without any additional elements which provide “significantly more” than the abstract idea. Adding additional abstract ideas will not bring another abstract idea into patent eligibility. Thus, the dependent claims do not cure the deficiencies of the independent claim.
Applicant argues that “The Office Action goes on to state that "[s]imilar reasoning is applied to Claims 2-20."” (See Remarks, pg. 19). Applicant’s argument is moot, as this quoted assertion is not from any Office Action which has been written by this examiner as it relates to the instant application.
Applicant argues that the instant claims are “rooted in improvements to computer technology” (See Remarks, pgs. 19-20). The examiner must respectfully disagree. In order for an abstract idea to be an improvement, there must be a technical explanation as to how to implement the invention in the specification and the claim itself reflects the improvement in technology. In the instant application, the examiner has found no technical explanation in the specification regarding any improvement, nor do the claims reflect any improvement in technology. Further, applicant has failed to provide any indication as to what any alleged improvement is.
Applicant argues that the limitation “wherein the EGM is caused to automatically determine the identity of a current player based on an external signal” provides “significantly more” than the abstract idea (See Remarks, pg. 20). The examiner must respectfully disagree. As currently claimed the step of automatically identifying a current player based on an external signal is an additional element which is viewed as an incidental activity to the primary process or product and is merely a nominal or tangential addition to the claim. Therefore, this limitation is considered a form of insignificant extra-solution activity and thus does not integrate the judicial exception into a practical application (See MPEP 2106.05(g)).
Applicant argues that Applicant argues that the limitation “wherein the game system automatically provides the secondary game upon the occurrence of a triggering event” provides “significantly more” than the abstract idea (See Remarks, pg. 20). The examiner must respectfully disagree. This limitation is part of the abstract idea indicated in the rejection. To be eligible the claims must include additional elements (i.e., elements in addition to the abstract idea) which integrate the abstract idea into a practical application of the exception. The additional elements found in the instant claims, as discussed above, include limitations which are forms of insignificant extra-solution activity (i.e., displaying and/or transmitting data), well- understood, routine, and conventional functions (i.e., receiving an input) and insignificant application of the abstract idea (i.e., activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim).
Further, as discussed above, the instant claims include additional structural elements which can be interpreted analogous to a general-purpose structure and general-purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims.
Applicant argues that the, in light of the Ex parte Desjardins release, the instant claims should be eligible under 35 U.S.C. 101 (See Remarks, pgs. 20-21). The examiner must respectfully disagree. The examiner has found no technical explanation in the specification regarding any improvement, nor do the claims reflect any improvement in technology. Further, applicant has failed to provide any indication as to what any alleged improvement is. Therefore, in light of the Ex parte Desjardins release and a current analysis of the claims by the examiner, the claims are found to be drawn to an abstract idea, without any additional elements which are “significantly more” than the abstract idea to establish eligibility under 35 U.S.C. 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON PINHEIRO whose telephone number is (571)270-1350. The examiner can normally be reached M-F 8:00A-4:30P ET.
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/Jason Pinheiro/ Examiner, Art Unit 3715
/DMITRY SUHOL/ Supervisory Patent Examiner, Art Unit 3715