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 05/06/2026, claims 1-7, 9-15 and 17-20 remain pending, of which 1, 9, 17, and 20 were amended.
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 1-7, 9-15 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 Eligibility Guidance
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 claims 9 and 17, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
1. A method of operating a gaming machine, the gaming machine including a gaming cabinet and game-logic circuitry secured within a locked box inside the gaming cabinet, the game-logic circuitry including a central processing unit and a main memory, the memory storing programming for a random number generator (RNG), the method comprising the operations of:
executing an authentication program on the gaming machine to authenticate the programming;
in response to the authentication program successfully authenticating the program:
displaying, under control of the game-logic circuitry, on an electronic display device, an array of symbol positions including a subset of activatable enhancement positions, the activatable enhancement positions being fixedly associated with respective enhancement types, the activatable enhancement positions remaining fixed at their respective symbol positions in the array, the enhancement types including at least three different types of enhancements;
randomly, as determined by the RNG, selecting a subset of the activatable enhancement positions less than all of the activatable enhancement positions, the selected subset of activatable enhancement positions being a subset of activated enhancement positions (Mental Processes), and writing into the main memory an enhancement-state data record indicative of (i) the activated enhancement positions and (ii) the respective enhancement type associated with each activated enhancement position;
directing the electronic display device to display, at each of the activated enhancement positions, a respective indicator distinguishing the activated enhancement position from the remaining symbol positions of the array, the displaying of the indicator comprising an animation including at least one of applying a border, pattern, color change, background change, or watermark;
spinning and stopping a plurality of symbol-bearing reels to land symbols on the reels in the symbol positions of the array, the spinning of the reels being animated by depicting symbol-bearing strips moving across the array, and the indicators identifying the activated enhancement positions remaining displayed at the activated enhancement positions during the spinning of the reels and until the reels have stopped (Mental Processes); and
in response to at least one symbol of a predetermined combination of the landed symbols landing in at least one of the activated enhancement positions, calculating, by game-logic circuitry, a final value for the predetermined combination, the calculating including (i) reading from the enhancement-state data record in the main memory the enhancement type associated with the at least one of the activated enhancement positions in which the at least one symbol landed, and (ii) applying that enhancement type to enhance an initial value associated with the predetermined combination to produce the final value (Mental Processes and/or Mathematical Concepts).
The limitations in claim 1 (as well as claim(s) 9 and 17) recite an abstract idea included in the groupings of Mental Processes and/or Mathematical Concepts, connected to technology only through application thereof using generic computing elements (e.g., a value input device, a credit meter, an electronic display device, a player input device, main memory, a processor, etc.) and/or insignificant extra-solution activity. According to the 2019 Revised Patent Subject Matter Guidelines:
Mental Processes include concepts performed in the human mind (including an observation, evaluation, judgement, opinion); and
Mathematical Concepts include mathematical relationships, mathematical formulas or equations, mathematical calculations.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Concepts performed in the human mind (e.g., “randomly… selecting a subset of the activatable enhancement positions less than all of the activatable enhancement positions…”, tracking and writing state records, evaluating landed symbol conditions against game rules, and looking up parameters), which fall under the grouping of Mental Processes. These limitations are interpreted as at least Mental Processes insomuch as the claim limitations are directed to selecting game states, tracking parameters, and evaluating game rules, concepts that can be performed in the human mind or using pen and paper, 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
B. Mathematical calculations (i.e., “calculating…a final value based on an initial value associated with the predetermined combination, the calculating including (i) reading from the enhancement-state data record in the main memory…, and (ii) applying that enhancement type to enhance an initial value… to produce the final value”), which falls under the grouping of Mathematical Concepts. These limitations are interpreted as at least Mathematical Concepts insomuch as the claim limitations are directed to performing mathematical calculations to determine game payout outcomes 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 2-7,10-15 and 18-20:
Each claim is dependent either directly or indirectly from an independent claim. Therefore, each dependent claim recites the same abstract ideas identified above. Each of the dependent claim further describes additional aspects of the abstract idea, i.e., additional rule-based aspects to the Mathematical Concepts and/or Mental Processes (e.g., specifying enhancement types or array geometries, etc.). For example, some dependent claims merely provide additional Mathematical Concepts and/or Mental Processes to be performed 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).
In addition to the abstract ideas indicated above, the claims include additional elements, such as:
1. executing an authentication program on the gaming machine to authenticate the programming;
2. in response to the authentication program successfully authenticating the program;
3. displaying, under control of the game-logic circuitry, on an electronic display device, an array of symbol positions including a subset of activatable enhancement positions…;
4. writing into the main memory an enhancement-state data record…;
5. directing the electronic display device to display, at each of the activated enhancement positions, a respective indicator distinguishing the activated enhancement position from the remaining symbol positions of the array…; and
6. spinning and stopping a plurality of symbol-bearing reels to land symbols on the reels in the symbol positions of the array, the spinning of the reels being animated by depicting symbol-bearing strips moving across the array.
As claimed, additional elements 1 and 2 are viewed as preliminary extra-solution activity or activity which represent nominal or tangential additions to the claim. Therefore, theses limitations are considered a form of insignificant extra-solution activity and thus do not integrate the judicial exception into a practical application (See MPEP 2106.05(g)).
Further, additional elements 3, 5, and 6 are viewed as mere displaying or presentation of data, which is a form of insignificant extra-solution activity and thus do not integrate the judicial exception into a practical application (See MPEP 2106.05(d) and 2106.05(g)). Maintaining indicators displayed on an electronic screen during an animated reel spin describes user-experience game mechanics (i.e., visual presentation of abstract game features to a player) rather than a specific technical solution or technical improvement to the operation of computer display hardware or computer graphic processors, or the like.
Additionally, element 4 recites standard computer data manipulation and storage operations inherent to any software application executing on a central processing unit and memory. Storing intermediate data parameters in a system memory and retrieving them to perform a rule calculation does not improve the function of the computer system or memory architecture itself (See MPEP 2106.05(a)). Rather, it merely uses generic memory as a tool to execute the underlying abstract rules and mathematical logic (See MPEP 2106.05(f)).
Claims 1-7, 9-15 and 17-20 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 “a gaming machine, a value input device, a credit meter, an electronic display device, a player input device, game logic circuitry”, 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.
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 value input device, a credit meter, an electronic display device, a player input device, a central processing unit, and a main memory are well known conventional devices used to electronically implement a game as evidence by US 2004/0204228, which discloses that a conventional gaming machine comprises a controller with a memory, display, RNG, a value input device and a credit meter and a processor to control the overall operation of the gaming machine (¶58). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
Evaluating the claims as an ordered combination, arranging generic computer steps (i.e., authenticating software, selecting a game state via RNG, recording parameters in main memory, displaying graphical indicators, animating reels spins, retrieving memory parameters, and calculating enhanced awards) into their natural, chronological sequence of game play executing does not provide an inventive concept (BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, 827 F.3d 1341 (Fed. Cir. 2016); SAP America, Inc, v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018)). Executing routine software operations in their expected logical order fails to transform an abstract game concept into patent-eligible subject matter.
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 filed 05/06/2026 have been fully considered but they are not persuasive.
Applicant argues that under Step 2A, Prong 1, the amended claims do not recite a judicial exception because the claims recite operations that are inseparable from machine state and machine input/output (e.g., writing/reading from memory, displaying indicators during reel spins, etc.) (See Remarks, pg. 13). The examiner must respectfully agree. Reciting computer-specific terminology (e.g., reading/writing data into main memory, rendering and displaying graphics, etc.) does not alter the underlying abstract nature of claims. According to the 2019 Revised Patent Subject Matter Guidelines evaluating whther a limitation recites a Mental Process focuses on the underlying conceptual operation (i.e., selecting game states, tracking parameters, and evaluating game rules conditions). Translating a mental step or logical algorithm into standard computer memory read/write operations does not remove the claim from the scope of Mental Processes or Mathematical Concepts. Furthermore, maintaining visual indicators on an electronic display during an animated reel spin merely presents the current state of the abstract game variables to a player, which does not transform underlying abstract game logic into a non-abstract process under Step 2A, Prong 1. Additionally, identifying specific limitations that recite Mental Processes and Mathematical Concepts establishes that the claim recites a judicial exception under Step 2A, Prong 1. Evaluating the interaction of the additional generic elements (i.e., main memory, CPU, display, etc.) with the exception as a whole is properly conducted under Step 2A, Prong 2 and Step 2B).
Applicant argues that under Step 2A, Prong 2, the claims integrate any abstract idea into a practical application based on the specific manner in which the claims’ structured memory states, position based displays, reel animations, and value calculations go beyond generally linking the exception to a technological environment (See Remarks, pg. 14). The examiner must respectfully disagree. Structuring software logic to interact with generic computer hardware (i.e., CPU, main memory, display, etc.) is a sequential gameplay loop that merely links the execution of the abstract rules to a generic technological environment (See MPEP 2106.05(h)). Without specific improvements to the underlying computer hardware or display technology itself, organizing software data flow in generic hardware fails to integrate the judicial exception into a practical application.
Applicant argues that under Step 2A, Prong 2, maintaining indicator displays during reel spins is structural and central to the closed gameplay loop rather than “mere displaying of data” or “insignificant extra-solution activity” (See Remarks, pg. 14). The examiner must respectfully disagree. While indicator persistence may be integral to the rules and visual presentation of the wagering game, an element’s significance to game mechanics or player anticipation does not equate to technical integration into a practical application under 35 U.S.C. 101. Presenting game status overlays during gameplay animations remains directed to the visual presentation of data, which does integrate the judicial exception into a practical application.
Applicant argues that under Step 2B, the amended claims recite an ordered combination that, when considered as a whole, is not well-understood, routine, or conventional under BASCOM (See Remarks, pgs. 15-16). The examiner must respectfully disagree. Under Step 2B, an inventive concept requires more than merely sequencing generic computer activities into their natural, logical order. The ordered combination recited in the claims represents the standard, expected execution flow of an electronic gaming machine. Arranging conventional computer operations into their ordinary chronological sequence of software execution fails to transform an abstract game concept into patent-eligible subject matter (BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, 827 F.3d 1341 (Fed. Cir. 2016); SAP America, Inc, v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018)).
Applicant argues that under Step 2B, the Office Action failed to provide factual evidence under Berkheimer showing that the specific ordered combination of writing an enhancement-state record, maintaining indicators during spins, and reading back the record for position-keyed calculations was well-understood, routine, and conventional in the art (See Remarks, pgs. 16-17). The examiner must respectfully disagree. The prior art evidence of record (U.S. 2004/0204228) establishes that the recited hardware components (i.e., controller, memory, CPU, RNG, display, etc.) are generic computer components performing their well-known, standard functions. When claim elements consist of generic computer hardware performing standard functions, combining those elements to execute generic software logic does not create a genuine factual dispute regarding non-conventionality under Berkheimer. An ordered combination that merely executes routine software operations fails to supply an inventive concept.
Applicant argues that under the August 4, 2024 Deputy Commissioner for Patents Memorandum, the Office must evaluate claims as a whole and give meaningful weight to claims that recite a “particular solution to a problem or a particular way to achieve a desired outcome” rather that reading the claims at too high a level of generality, and thus the instant claims define a specific technological implementation of producing a final wagering game outcome rather than an abstract idea (See Remarks, pg. 17). The examiner must respectfully disagree. The Office has evaluated the claims as a whole in full accordance with the August 4, 20205 Memorandum and MPEP 2106. The problem addressed by the instant claims is a game-design and user-experience problem, not a technical problem in computer hardware, memory architecture, or graphics processing. Providing a specific set of game rules and visual display sequences addresses game play mechanics rather than a technical solution to technical problem, and thus fails to impart subject matter 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
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