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 01/29/2026, claims 1-5, 8-13, 15-17 and 19 remain pending, of which, 1, 8 and 15 were amended.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 8 and 15 (as well as any claim which depends from claim 1, 8 or 15) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation “transforming, by the game-logic circuitry, the updated winning streak data record into animation control signals for the presentation assembly” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 and 8 (as well as any claim which depends from claim 1 or 8) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The limitation “presenting, by a presentation assembly coupled to game-logic circuitry comprising a high speed continuously cycling random number generator, a plurality of symbol-bearing reels, an array, a memory, and a winning streak indicator indicating a number of consecutive winning spins” is unclear as to what is being presented as “a memory”. For the purposes of examination, the limitation of “a memory” will be interpreted as being coupled to the presentation assembly and game-logic circuitry, rather than being presented.
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 coupled to game-logic circuitry comprising a high speed continuously cycling random number generator, a plurality of symbol-bearing reels, an array, a memory, and a winning streak indicator indicating a number of consecutive winning spins (Certain Methods of Organizing Human Activity);
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 an outcome determined, at least in part, by 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);
transforming. by the game-logic circuitry, the updated winning streak data record into animation control signals for the presentation assembly; and
animating on the presentation assembly based on the animation control signals, an update of the winning streak indicator after each spin in the series; and
in response to 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 (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 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 elements, which as claimed, 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)):
“presenting, by a presentation assembly coupled to game-logic circuitry comprising a high speed continuously cycling random number generator, a plurality of symbol-bearing reels, an array, a memory, and a winning streak indicator indicating a number of consecutive winning spins”; and
“animating on the presentation assembly based on the animation control signals, an update of the winning streak indicator after each spin in the series”.
In addition to the abstract ideas indicated above, the claims include the following additional elements, which as claimed, are 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”;
“transforming. by the game-logic circuitry, the updated winning streak data record into animation control signals for the presentation assembly”.
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 comprising a high speed continuously cycling random number generator 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 comprising a high speed continuously cycling random number generator and a memory which are utilized 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 01/29/2026, respect to the rejection under 35 U.S.C. 101, have been fully considered but they are not persuasive.
Applicant's arguments are substantially directed to newly added limitations. The examiner respectfully submits that the updated rejection, as set forth above, addresses applicant’s arguments. Accordingly, the Applicant is directed to the rejection of the claims above for a detailed response to Applicant's arguments as to the eligibility of the instant claims.
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.
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
/DMITRY SUHOL/ Supervisory Patent Examiner, Art Unit 3715