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 05/26/2026, claims 1-5, 8-13, 15-17 and 19 remain pending, of which, 1, 8 and 15 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 1-5, 8-13, 15-17 and 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. 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 8 and 15, 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 method comprising the operations of:
presenting, by a presentation assembly, a plurality of symbol-bearing reels, an array, and a winning streak indicator indicating a number of consecutive winning spins (Certain Methods of Organizing Human Activity), the presentation assembly being coupled to game-logic circuitry comprising a high speed continuously cycling random number generator and a memory, the game-logic circuitry being securely housed within a locked box inside a gaming cabinet of the gaming machine;
prior to executing a wagering game, executing an authentication program to authenticate at least random number generator programming and game-outcome logic, wherein the authentication program generates a live authentication code from contents of the memory and compares the live authentication code to a trusted code stored in the memory. and wherein, in response to a match, the wagering game is permitted to execute;
conducting, by the game-logic circuitry, a series of spins of the plurality of reels, each spin including displaying, on the presentation assembly, spinning and stopping the plurality of reels to land symbols from a plurality of symbols in the array according to one or more outputs of the random number generator, the landed symbols indicating a winning spin when the landed symbols define at least one winning outcome according to a pay table, the landed symbols indicating a losing spin when the landed symbols do not define at least one winning outcome according to the pay table (Certain Methods of Organizing Human Activity);
maintaining, in the memory of the gaming machine, a winning streak data record indicative of the number of consecutive winning spins (Mental Processes);
updating, by the game-logic circuitry, the winning streak data record after each spin in the series, the winning streak data record being advanced after the winning spin and being reset after the losing spin (Mental Processes);
causing, by the game-logic circuitry and based on the updated winning streak data record, the presentation assembly to animate an update of the winning streak indicator after each spin in the series; and
in response to detecting, by the game-logic circuitry based on the winning streak data record stored in the memory, a losing spin in the series of spins occurring subsequent to the series of spins resulting in a number of consecutive winning spins tracked by the winning streak indicator of at least a threshold number (Mental Processes and/or Certain Methods of Organizing Human Activity):
determining, by the game-logic circuitry, a number of free spins as a function of the number of consecutive winning spins (Mental Processes and/or Certain Methods of Organizing Human Activity); and
conducting, by the game-logic circuitry, a free-spin series comprising the determined number of free spins, wherein each free spin lands symbols according to one or more outputs of the random number generator and is conducted without receiving an additional wager (Certain Methods of Organizing Human Activity).
The limitations in claim 1 (as well as claim(s) 8 and 15) recite an abstract idea included in the groupings of Methods of Organizing Human Activity and/or Mental Processes, connected to technology only through application thereof using generic computing elements (e.g., a presentation assembly coupled to game-logic circuitry comprising a high speed continuously cycling random number generator, a memory, 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 wagering game (for example defining winning and losing outcomes based on a pay-table), 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., “detecting, by the game-logic circuitry, a losing spin in the series of spins occurring subsequent to the series of spins resulting in a number of consecutive winning spins tracked by the winning streak indicator of at least a threshold number”), 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 2-5, 9-13, 16-17 and 19:
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 functions related to the playing of a wagering game and/or mental steps to be performed. For example, some dependent claims merely provide additional game related functions and/or mental processes and/or 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 1-5, 8-13, 15-17 and 19 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 presentation assembly coupled to game-logic circuitry comprising a high speed continuously cycling random number generator, a memory”, 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 the following additional element, which as claimed, is viewed as steps and/or instructions to invoke a computer as a tool to implement the abstract idea, perform extra solution activity of the abstract idea, and/or provide a technological environment to perform the abstract idea (see MPEP 2106.05(f)-(h)), which is a form of insignificant extra-solution activity and thus do not integrate the judicial exception into a practical application:
“prior to executing a wagering game, executing an authentication program to authenticate at least random number generator programming and game-outcome logic, wherein the authentication program generates a live authentication code from contents of the memory and compares the live authentication code to a trusted code stored in the memory. and wherein, in response to a match, the wagering game is permitted to execute”.
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 presentation assembly coupled to game-logic circuitry and a 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 elements such as a presentation assembly coupled to game-logic circuitry and a memory which are utilized to control the overall operation of the gaming machine (¶58). Furthermore, the element of a high speed continuously cycling random number generator is a well-known conventional device used to electronically implement a game, as evidence by US 5,016,879, which discloses that a conventional gaming machine comprises elements such as a high speed continuously cycling random number generator which is utilized to control the overall operation of the gaming machine (6:23-44). 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 05/26/2026, with respect to the rejections under 35 U.S.C. 112 have been fully considered and are persuasive. The rejections under 35 U.S.C. 112 have been withdrawn.
Applicant’s arguments, see Remarks, filed 05/26/2026, with respect to the rejections under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the current claims do not fall within the grouping of Methods of Organizing Human Activity or Mental Processes. Specifically, applicant argues that the amended claims “recite no human actor performing any operations of the method or system” (See Remarks, pg. 13). The examiner must respectfully disagree. Under MPEP 2106.04(a), performing an abstract concept on a computer or reciting generic hardware execution does not alter the underlying abstract nature of the limitations. The instant claims recite rules for playing a wagering game, specifically, evaluating spin outcomes against a pay-table, maintaining a win-streak count, comparing that count to a threshold, and awarding free spins based on the win streak. Rules for playing a game fall squarely within Certain Methods of Organizing Human Activity (i.e., managing game rules and play mechanics) and Mental Processes (i.e., calculating a streak count and comparing numerical values against a threshold). Reciting that these steps are performed by generic computing components does not take the underlying game rules out of the judicial exception categories.
Applicant argues that, as amended, the claims recite “detecting, by the game-logic circuitry based on the winning streak data recorded stored in the memory…” which is a machine-state read of a persistent in-memory data structure, and thus, are not an observation or evaluation performable in the human mind (See Remarks, pg. 13). The examiner must respectfully disagree. Under MPEP 2106.04(a)(2)(II)(C), evaluating data stored in a memory structure to determine whether a numerical threshold has been met is an operation that conceptually corresponds to evaluating stored numbers or tracking tally records, which can be performed in the human mind or on paper. Merely specifying that the numerical record being checked is “stored in the memory” of a computer simply links the generic data retrieval function to generic memory architecture. It does not transform the underlying logical condition check (i.e., determining whether consecutive wins have reached a threshold number) into a non-abstract technical process.
Applicant argues that the presentation, spin, and animation steps require specialized physical display mechanisms that cannot be abstract (See Remarks, pgs. 13-14). The examiner must respectfully disagree. Under MPEP 2106.05(g), displaying, visual presentation, or animating the status or updates of an underlying game state (e.g., showing spun reels or updating a win streak indicator) constitutes standard display of data and extra-solution visual output. Utilizing a generic presentation assembly driven by an RNG to display game progress merely invokes conventional hardware as a tool to convey game play visuals to a player. The requirement to display game graphics or animate game state updates on a display screen does not negate the fact that the underlying game rules and outcome logic being presented constitute a judicial exception under Step 2A, Prong One.
Applicant argues that the instant claims recite a particular machine and thus integrate any abstract ideas into a practical application. Specifically, applicant argues that housing the game-logic circuitry int a “locked box inside a gaming cabinet” is a physical security machine architecture specific to regulated electronic gaming machines that distinguish the claimed machine from a general purpose computer (See Remarks, pg. 14). The examiner must respectfully disagree. Under MPEP 2106.05(b) and MPEP 2106.05(g), placing standard processing hardware inside a physical enclosure or cabinet represents conventional structural packaging and physical extra-solution housing. Merely reciting a physical cabinet and security box surrounds the abstract game rules with conventional structural elements, but it does not functionally modify, improve, or impose meaningful technical constraints on the execution of the game logic itself. Enclosing generic computer hardware inside a locked box or cabinet does not transform an abstract method of organizing human activity or a mental process into a patent-eligible practical application.
Applicant argues that executing an authentication program prior to executing a wagering game (i.e., generating a live code from memory and matching it against a trusted code to gate execution) is a specific runtime code-match check that provides a particular machine architecture beyond generic computing (See Remarks, pg. 14). The examiner must respectfully disagree. Under MPEP 2106.05(f), executing a boot-time integrity check (e.g., generating a live authentication code and comparing it to a stored trusted code) is a standard computer security and data-verification routine that acts as generic extra-solution activity. Gating software execution based on a standard hash or signature match simply verifies program integrity prior to run-time, it does not provide a technical improvement to the functioning of the computer, the presentation assembly, or the underlying game processing hardware. Adding routine security verification steps prior to execution an abstract game idea does not amount to integration into a practical application.
Applicant argues that a high-speed continuously cycling random number generator is structurally and functionally and structurally distinct from a general-purpose computer because it continuously cycles in the background using an unpredictable seeding process that cannot be carried out manually or timed by a player (See Remarks, pgs. 14-15). The examiner must respectfully disagree. In the field of electronic gaming, invoking a pseudo-random number generator that continuously cycles in the background is the invocation of a standard, well-known functional tool used to generate unpredictable outcomes for gaming applications. Under MPEP 2106.05(f), using a cycling RNG to determine reel stops merely applies generic computer automation to generate random game results. Broadly reciting the continuous operation of a standard RNG does not provide a technological improvement to computer functionality or transform the abstract game rules into patent eligible subject matter.
Applicant argues that under Step 2B, the reference the examiner provided to show that elements were well-understood, routine, and conventional (U.S. 2004/0204228) discloses an “on-demand” invoked by a CPU upon a spin request, whereas, the claims recite a “high speed continuously cycling” RNG., which is structurally and functionally different from the cited RNG, thus the cited reference fails to provide that a continuously cycling RNG is conventional (See Remarks, pg. 16). The examiner has addressed this by updating the factual record to include U.S. 5,016,879. As set forth in the updated rejection above, the ‘879 patent provides express evidentiary supports that a high speed continuously cycling RNG is a well-known, conventional device used to control the overall operation of a gaming machine. Because the updated record demonstrates that continuous background cycling of an RNG is a well-understood, routine, and conventional computing mechanism in the art, its recitation merley applies a standard functional tool and does not provide an inventive concept (See MPEP 2106.05(d)).
Applicant argues that the specific ordered combination of elements provides an inventive concept under Step 2B (See Remarks, pg. 16). The examiner must respectfully disagree. Under MPEP 2106.05(d), combining well-understood, conventional, and routine hardware elements (e.g., a locked box inside a cabinet), standard software integrity gating (e.g., boot authentication code matching), generic outcome generation (e.g., a cycling RNG), and generic display mechanics (e.g., animating updates on a presentation assembly) to execute an abstract game scheme (e.g., win streak tracking and free spin awards) amounts to nothing more than sequencing standard EGM features in their ordinary, expected operational order. Arranging routine physical hardware, standard boot security routines, and generic outcome generators to execute a set of abstract game rules does not alter the underlying functioning of the computer system or produce a technical effect beyond the sum of its conventional parts. Considered as a whole, the ordered combination fails to recite “significantly more” that the abstract idea itself.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Jason Pinheiro/Examiner, Art Unit 3715
/JUSTIN L MYHR/Primary Examiner, Art Unit 3715
Prosecution Insights