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 10/09/2025, claims 1-7, 9-15 and 17-20 remain pending, of which 1, 9 and 17 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 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, activating a subset of the activatable enhancement positions to activate their respective enhancements, the subset of activated enhancement positions being less than all of the activatable enhancement positions, positions (Mental Processes), wherein the activated enhancement positions within the array are distinguished from the remaining symbol positions by display of and animation of a respective indicator, the animation comprising 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; 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 based on stored game rules and the activated enhancement type retrieved from memory, a final value based on an initial value associated with the predetermined combination, wherein the initial value is enhanced by the activated enhancement of the position in which the at least one symbol landed (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 gaming machine, a value input device, a credit meter, an electronic display device, a player input device, game logic circuitry, 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., “activating a subset of the activatable enhancement positions to activate their respective enhancements…”), which is an abstract idea included in the grouping of Mental Processes. These limitations are interpreted as at least Mental Processes insomuch as the claim limitations are directed to performing the concepts in the human mind, 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, by game-logic circuitry based on stored game rules and the activated enhancement type retrieved from memory, a final value based on an initial value associated with the predetermined combination”), which is an abstract idea included in the grouping of Mathematical Concepts. These limitations are interpreted as at least Mathematical Concepts insomuch as the claim limitations are directed to performing the calculations 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 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 Mathematical Concepts and/or Mental Processes. 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)
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.
In addition to the abstract ideas indicated above, the claims include additional elements, such as:
I. “executing an authentication program on the gaming machine to authenticate the programming”;
II. “in response to the authentication program successfully authenticating the program”;
III. “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”;
IV. “the activated enhancement positions within the array are distinguished from the remaining symbol positions by display of and animation of a respective indicator, the animation comprising at least one of applying a border, pattern, color change, background change, or watermark”; and
V. “spinning and stopping a plurality of symbol-bearing reels to land symbols on the reels in the symbol positions of the array”.
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, additional elements II, III and IV are viewed as mere displaying of data, which is 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 gaming machine, a value input device, a credit meter, an electronic display device, a player input device, game logic circuitry 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).
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 10/09/2025 have been fully considered but they are not persuasive.
Applicant argues that the steps of “executing an authentication program” and “in response to the authentication program authentication the programming…” cannot be practically performed in the human mind (See Remarks, pg.8). Applicant’s argument is moot as these elements are not indicated as being part of the overall abstract idea, but rather, these elements are incidental activities to the primary process or product and are 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 the claimed calculation is “not merely “doing math”, it is a CPU retrieving data from memory” – a specific hardware address- (See Remarks, pg. 9). The examiner must respectfully disagree. Initially, examiner notes that nowhere in the current claims are there any limitations which include a CPU retrieving data from a specific hardware address. Rather, the instant claims recite: “calculating, by game-logic circuitry based on stored game rules and the activated enhancement type retrieved from memory…”, which provides no specificity regarding how the rules are stored (e.g., they could be written on a piece of paper) or how the activated enhancement types are retrieved from “memory” (e.g., they could be retrieved from a human’s mind). Further, the US Supreme Court and the CAFC have ruled over and over again that the mere recitation of generic computer components (i.e., memory, CPU, etc.) 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 argues that the instant claims are analogous to the examples provided in the MPEP, (i.e., Examples 37 and 40) (See Remarks, pg. 9). The examiner must respectfully disagree. Examples 37 and 40 provide specific improvements over prior systems, resulting in an improved systems for electronic devices. Applicant’s claimed invention provides no such improvement. Specifically, applicant’s claimed invention is drawn to mental processes and calculations, which use generic computing components to implements the abstract ideas. Therefore, unlike Example 37, applicant’s invention does not provide any improvement to the GUI, but rather uses generic computing components to display graphics in a generic manner, without any additional elements which amount to “significantly more”.
Applicant concedes that “authenticating software before execution is conventional and often required step for regulated game machines” (See Remarks, pg. 10-11
). Applicant then appears to argue that in the instant claims the step of authenticating the software prior to execution is not conventional. The examiner respectfully disagrees. As applicant acknowledged, authenticating software prior to execution of gaming software is a conventional step, therefore, it is considered insignificant extra-solution activity and thus does not integrate the judicial exception into a practical application (See MPEP 2106.05(g)).
Applicant’s arguments that the “closed loop-authentication-RNG activation-integrate animations-rules based calculations” is a concrete machine processes, and the Office has provided “no evidence that this ordered combination is well understood, routine and conventional” (See Remarks, pg. 11). Applicant’s argument is not persuasive because it fails to indicate any limitations, which are actually claimed (e.g., “closed loop-authentication-RNG activation-integrate animations-rules based calculations” are limitations which are found in the instant claims), which applicant believes requires evidence of being “well understood, routine and conventional”.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason Pinheiro/ Examiner, Art Unit 3715
/DMITRY SUHOL/ Supervisory Patent Examiner, Art Unit 3715