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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 2nd, 2026 has been entered.
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 1-4, and 7-21 are rejected under 35 U.S.C. 101 because the claimed invention as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As summarized in MPEP § 2106, subject matter eligibility is determined based on a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant application includes claims concerning a system and gaming device (i.e., a machine) in claims 1-4, 7-12, 19-21 and a method (i.e., a process) in claims 13-18.
In Prong 1 of Step 2A, it must be determined whether the claimed invention recites an Abstract Idea, Law of Nature or a Natural Phenomenon.
In particular exemplary presented claim 1 includes the following underlined claim elements:
1. A game controller for an Electronic Gaming Machine (EGM) comprising:
a processor circuit;
a random number generator; and
a memory comprising machine-readable instructions that, when executed by the processor circuit, cause the processor circuit to control a Graphical User Interface (GUI) of the EGM to:
receive a wager for a wagering game from a gaming device in communication with the processor circuit, the wagering game comprising:
a plurality of game symbol positions; and
a plurality of paylines, each payline associated with a subset of game symbol positions and a bonus award value;
displaying, at a display device of the gaming device, the bonus award values for the plurality of paylines;
after the display of the bonus award values, receive from the gaming device a selection of a first payline of the plurality of paylines;
determine a plurality of game symbols for the plurality of game symbol positions;
transmit an instruction to the gaming device to display the plurality of game symbol positions;
determine, for each payline, whether the game symbols at the subset of game symbol positions associated with the payline indicate a winning game result;
determine, for each winning game result, a base award value associated with the winning game result;
cause the random number generator to determine whether the first payline is associated with a winning game result;
transmit, for each winning game result, an instruction to the gaming device to cause the game device to:
award, for each winning game result, a first game award comprising the base award value associated with the winning game result at the gaming device; and
award, for the winning game result associated with the first payline, a second game award comprising a total award value based on the base award value associated with the winning game result and the bonus award value associated with the payline associated with the winning game result at the gaming device.
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes including concepts performable by the human mind including observation, evaluation and judgement because the claims are directed to series of steps for presenting and resolving a wagering game as well as Certain Methods of Organizing Human Activity including commercial or legal interactions involving agreements in the form of contracts, legal obligations business relations and managing personal behavior or relationships including interactions between people including social activities and following rules or instructions because the claims set forth the interactions involving one or more parties in the context of a game interface
As the exemplary claim recites an Abstract Idea, Law of Nature or a Natural Phenomenon it is further considered under Prong 2 of Step 2A to determine if the claim recites additional elements that would integrate the judicial exception into a practical application. Wherein the practical applications are set forth by MPEP §2106.05(a-c,e) are broadly directed to: the improvement in technology, use of a particular machine and applying or using the judicial exception in a meaningful way beyond generally linking the use thereof to a technology environment. Limitations that explicitly do not support the integration of the judicial exception in to a practical application are defined by MPEP 2106.05(f-h) and include merely using a computer to implement the abstract idea, insignificant extra solution activity, and generally linking the use of the judicial exception to a particular technology environment or field of use.
With respect to the above the claimed invention is not integrated into a practical application because it does not meet the criteria of MPEP §2106.05(a-c,e) and although it is performed on a processor circuit, a memory, a display device, and a gaming device it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonably include other devices such as generic computers, smart phones, game consoles, and the like. Accordingly, the claims limitations are not indicative of the integration of the identified judicial exception into a practical application, and the consideration of patent eligibility continues to step 2B.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional element(s) or combination of elements in the claim(s) other than the abstract idea(s) per se including a processor circuit, a memory, a display device, and a gaming device amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structures that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry per the applicant’s description (Applicant’s specification Paragraphs [0028], [0048], [0067]-[0073]). Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Accordingly, as presented the claimed invention when considered, as a whole, amounts to the mere instructions to implement an abstract idea [i.e. software or equivalent process steps] on a generic computer [i.e. controller or processor] without causing the improvement of the generic computer or another technology field.
The applicant’s specification is further noted as supporting the above rejection wherein neither the abstract idea nor the associated generic computer structure as claimed are disclosed as improving another technological field, improvements to the function of the computer itself, or meaningfully linking the use of an abstract idea to a particular technological environment (Applicant’s specification Paragraphs [0028], [0048], [0067]-[0073]). In particular the applicant’s specification only contains computing elements which are conventional and generally widely known in the field of the invention described, and accordingly their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art per the requirements of 37 CFR 1.71. Were these elements of the applicant’s invention to be presented in the future as non-conventional and non-generic involvement of a computing structure, such would stand at odds with the disclosure of the applicant's invention as found in their specification as originally filed.
“[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301). In this case, the claims recite a generic computer implementation of the covered abstract idea.
The remaining presented claims 2-4, and 7-21 incorporate substantially similar abstract concepts as noted with respect to the exemplary claim 1, while the additional elements recited by the additional claims including one or more of a processor circuit, a memory, an input device, a display device, and a gaming device as respectively presented that when considered both individually and as a whole in the respective combinations of the additional claims are not sufficient to support patent eligibility under prong 2 of step 2A or step 2B for the reasons set forth above with respect to the exemplary claim 1 and further present substantially similar abstract concepts as noted with reflection to exemplary claim 1 above and therefore are similarly directed to or otherwise include abstract ideas.
Therefore, the listed claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed January 2nd, 2026 have been fully considered but they are not persuasive.
Commencing on page 12 of the Applicant’s response, the Applicant presents that the claimed invention is not directed to the identified enumerated groupings of abstract ideas but instead is directed to inter alia a specialized game controller of an EGM that performed a detailed set of operations that taken as a whole, describe a game mechanic for a bonus game at the EGM.
Responsive to the preceding and as previously noted, the claimed invention as a whole, considering all claim elements both individually and in combination, concerns the court enumerated abstract ideas of Mental Processes including concepts performable by the human mind including observation, evaluation and judgement because the claims are directed to series of steps for presenting and resolving a wagering game as well as Certain Methods of Organizing Human Activity including commercial or legal interactions involving agreements in the form of contracts, legal obligations business relations and managing personal behavior or relationships including interactions between people including social activities and following rules or instructions because the claims set forth the interactions involving one or more parties in the context of a game interface.
The recited game controller including a processor circuit is not defined in the claimed invention sufficiently to exclude the mere implementation of an abstract idea on a computer such that the computer(processor circuit) is utilized merely as a tool to implement the abstract idea as per MPEP 2106.05(f).
Continuing on page 12, the Applicant presents that the claimed invention as amended to include a “game controller” for an “EGM” that control[s] a Graphical User Interface (GUI)’ is analogous to the claimed invention as addressed by the court in Core Wireless Licensing v. LG Elecs. Inc. 880 F.3d 1356, 125 U.S.P.Q.2d 1436 (Fed Cir. 2018) (finding claims directed to an improved user interface for electronic devices to be patent eligible) and as such supports eligibility under prong 2a of the Alice/Mayo test.
In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., the court identified improvements over conventional user interface to increase the efficiency of using mobile devices can be sufficient to define patent eligible subject matter. The Applicant's arguments, do not identify the proposed corresponding improvement to technology that is reflected in the claimed invention and would mirror the improvements over conventional user interface to increase the efficiency of using mobile devices identified in Core Wireless. The mere inclusion of an interface and the selective display of information associated therewith is not sufficient to define patent eligible subject matter as proposed and would further stand at odds with additional guidance provided by Apple v. Ameranth 842 F.3d 1229, 120 U.S.P.Q.2d 1844 (Fed. Cir. 2016).
Further continuing on page 12, the Applicant presents that the claimed invention is analogous to claims 1 and 2 of example 37 of the October 2019 Update of the Patent Examination Guidelines which are proposed as supporting the patent eligibility of an invention involving receiving, via a GUI, a user selection and as proposed would support the eligibility of the claimed invention under step 2b of the Alice/Mayo test.
Similar to the court’s decision in Core Wireless Licensing v. LG Elecs. Inc. referenced herein above, the Applicant cited example relied upon the optimization of an interface in order to support patent eligibility and does not support the patent eligibility based on the mere inclusion of GUI as proposed. Additionally, the court’s decision in Apple v. Ameranth 842 F.3d 1229, 120 U.S.P.Q.2d 1844 (Fed. Cir. 2016) and Konami Gaming Inc. v. High 5 Games, LLC Case No. 2:14-cv-01483, 2018 WL 1020120 at *19(D.Nev. 2018), aff’d Appeal No. 2018-1723 (Fed. Cir. 2019)(Fed. Cir. R. 36) separately reaffirm that the mere inclusion of an interface and the selective display of information associated therewith is not sufficient to define patent eligible subject matter as proposed.
Continuing on pages 13-18 of the Applicant’s response the Applicant presents that the rejection of claims 1-4 and 7-20 is a violation of Administrative Procedures Act (APA) because the claims to specifically recite features that were previously found to be subject matter eligible, under the same regulatory standard (i.e., the 2019 Subject Matter Eligibility Guidelines) when presented in other US Patents owned by Applicant’s direct competitors.
Responsive to the preceding, the examination of applications is performed on a case-by-case basis consistent with applicable law and standards as reflected by published office guidance and judicial rulings as applicable. Barring specific circumstances,(e.g. a precedential court decision involving the same), the prosecution history of other non-related applications is not a consideration during the examination of a specific application for at least the reason that the examination of each application reflects the presentation of respectively materially different fact patterns including specification, claims, definitions, and/or evidence. Additionally, consistent with MPEP 1701, office personnel are not to express opinion on validity, patentability, expiration date, or enforceability of patent wherein such refusal should not be considered discourteous or an expression of opinion as to validity, patentability or enforceability. The particular Applicant connected to an application is a consideration utilized in the determinations of prior art applicability and double patenting concerns, but is not a factor in the determination of subject matter eligibility as proposed.
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E MOSSER whose telephone number is (571)272-4451. The examiner can normally be reached M-F 6:45-3:45.
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, David Lewis can be reached at 571-272-7673. 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.
ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715