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 11/20/2025, claims 1-8, 10-15 and 17-20 remain pending.
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 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 11 and 17, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
1. A computer system comprising a processor and non-transitory memory, the non-transitory memory storing program code which, when executed, causes the processor to perform operations, the operations comprising:
providing, in an electronic gaming machine (EGM) associated with a display, a skill- based interaction mechanism to account for skill-based interactions in an architecture that otherwise only permits RNG (random number generator)-based functionality by:
initiating a play of a game of the EGM (Certain Methods of Organizing Human Activity);
generating, via an RNG associated with the EGM, at least one random number (Certain Methods of Organizing Human Activity);
based at least in part on the at least one random number, accessing a look-up table stored in the at least one memory to determine a first outcome of the game (Certain Methods of Organizing Human Activity and/or Mental Processes);
in response to the first outcome matching at least one predetermined condition stored in the at least one memory, initiating, via the skill-based interaction mechanism, superimposition of multiple objects animated as part of a win celebration animation on underlying game image elements corresponding to the first outcome of the game on the display of the EGM (Certain Methods of Organizing Human Activity);
receiving indications, via the at least one input device associated with the EGM, of interaction with at least some of the multiple objects by a user (Certain Methods of Organizing Human Activity); and
responsive to the indications of interaction, determining, via the skill-based interaction mechanism, a supplemental outcome to be provided to the user, wherein a value of supplemental outcome is provided to the user in addition to the first outcome and is determined based, at least in part, on a number of and a respective characteristic of the objects interacted with by the user (Certain Methods of Organizing Human Activity and/or Mental Processes).
The limitations in claim 1 (as well as claim(s) 11 and 17) recite an abstract idea included in the groupings of Certain Methods of Organizing Human Activity and/or Mental Processes, connected to technology only through application thereof using generic computing elements (e.g., at least one input device, a display, a processor and non-transitory memory, an RNG, 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
Certain Methods of Organizing Human Activity include:
1. Fundamental Economic Principles or Practices (including hedging (i.e., wagering), insurance, mitigating risk);
2. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
3. 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. 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.
B. Concepts performed in the human mind (e.g., “determining, via the skill-based interaction mechanism, a supplemental outcome to be provided to the user, wherein a value of supplemental outcome is provided to the user in addition to the first outcome and is determined based, at least in part, on a number of and a respective characteristic of the objects interacted with by the user”), 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.
Regarding dependent claims 2-8, 10, 12-15 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 Mental Processes and/or Certain Methods of Organizing Human activity. For example, some dependent claims merely provide additional Mental Processes and/or Fundamental Economic Principles and/or Commercial or Legal Interactions 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 1-20 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 “one or more processors, memory, an electronic gaming device, a display, an RNG”, 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 one or more processors, memory, an electronic gaming device, a display, an RNG are well known conventional devices used to electronically implement a game as evidence by U.S. 2004/0204228, which discloses that a conventional gaming machine comprises components such as one or more processors, memory, an electronic gaming device, a display and an RNG 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 see Remarks, filed 11/20/2025, with respect to the rejections under 35 U.S.C. 101, have been fully considered but they are not persuasive.
Applicant argues that the instant claims provide an improvement to computer game technology similar to the claims found allowable in Core Wireless Licensing SARLv LG Electronics (See Remarks, pg. 9). The examiner must respectfully disagree. The instant claims are not like those in Core Wireless. In that case, there was a technical problem having to do with the size of the display screen. The screen was too small to allow efficient use. The claims in Core Wireless provided specific improvements to the UI that solved this technical problem. Applicant’s claimed invention does not address any technical problems with EMG displays, nor do the claims provide any specific improvements to the UI design.
Applicant argues that the instant claims provide improvements to computing systems by providing a way to account for skill-based interactions in an architecture that otherwise only permits RNG-based functionality (See Remarks, pg. 10). The examiner must respectfully disagree. 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 (i.e., Processor, memory, communication interface, etc.). The limitation of providing in an EGM a skill-based interaction mechanism is not an additional element, but rather, is part of the abstract idea, and thus, does not provide integration of the abstract idea into a practical application, nor do any of the other additional claim elements noted in the rejection provide “significantly more” than the abstract idea.
Applicant argues that the claims are directed to a new capability of a machine (See Remarks, pg. 10). The examiner must respectfully disagree. The instant claims are directed to providing a skill-based game in an EGM, which otherwise only permits RNG based functionality. Therefore, the claims are drawn to 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.
Applicant argues that the recitation of generic devices (e.g., a touchscreen display), which is part of a generic computer, takes the claims out of the capability of a human (See Remarks, pg. 11). 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 a touchscreen display will not rescue the claims. Further, applicant appears to argue that the elements of an RNG, a display, a user interface, etc. are not “generic computing elements” (See Remarks, pg. 11). The examiner must respectfully disagree. Applicant’s specification makes it clear that the elements of an RNG (See Specification, ¶5, ¶42), a display (See Specification, ¶4, ¶40), a user interface (See Specification, ¶27, 25) represent well-understood, routine, conventional elements that do not add significantly more to the claims.
Applicant argues that since there is no art rejection, the claims must be eligible under 35 U.S.C. 101 (See Remarks, pg. 12). The Courts have ruled that 35 U.S.C. 101 stands on its own. Thus, novelty and non-obviousness have no bearing on eligibility under 35 U.S.C. 101. While the instant claims may be drawn to a novel abstract idea, they are still drawn an abstract idea without including additional elements that are sufficient to amount to significantly more than the judicial exception. Therefore, applicant’s argument is not found to be persuasive and the 101 rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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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