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 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:
initiate execution of an electronic wagering game on the EGM;
receive an electronic message indicating a wager for the electronic wagering game from a gaming device in communication with the processor circuit, the electronic 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;
display, 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 an electronic message indicating 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 electronic 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 electronic 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 including the determination and presentation of a game outcome.
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 June 16th, 2026 have been fully considered but they are not persuasive.
Commencing on page 10 of the Applicant’s response, the Applicant presents that the claimed invention should be considered under the streamlined Eligibility Analysis because the recitations of an Electronic Gaming Machine(EGM) and Graphical User Interface (GUI) ensure that the claims do not seek to “tie up” any recited judicial exception.
Responsive to the preceding MPEP §2106.06 notes that the result of the Streamlined Analysis will always be consistent with the outcome of the full analysis and as such is not a means of avoiding a finding of ineligibility that would occur if a claim were to undergo the full eligibility analysis. Reflecting the preceding consideration of a streamline analysis would not support patent eligibility based on the outcome of the full analysis of the claimed invention at this time.
Responsive to the applicant’s remarks on the subject of preemption, while preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016). In keeping with this, MPEP 2106.04.I & 2106.07(b) notes that questions of preemption are resolved by the Alice/Mayo two-part framework including considering if there is an improvement to computer related technology in step 2A, and if the elements when considered in individually and in combination under step 2B are more than the non-conventional and non-generic arrangement of known conventional elements. As discussed in at least the rejection above the claimed invention does not at present meet the requirements under steps 2A or 2B.
Continuing on page 12 of the above dated remarks, the Applicant presents that the claimed invention does not fall under the enumerated grouping of abstract ideas of Mental Processes or Certain Methods of Organizing Human Activity.
The claimed invention 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 including the determination and presentation of a game outcome.
It is additionally noted that that the Federal Circuit has determined analogous gaming invention describing a new set of rules for conducting a wagering game to be a "fundamental economic practice" In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016).
Further continuing on pages 12-13 of the above dated remarks, the Applicant presents that the decision in McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016) supports the patent eligibility of the claimed invention.
Response to the applicant’s remarks of this section directed to McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., it is noted that court relied upon a similar manner as was discussed in Enfish, LLC v. Microsoft Corp., insomuch as the court looked for “an improvement in computer-related technology”. Wherein an "improvement in computer-related technology" is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of "rules" (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer. In McRO the court found that the claims were directed to an improvement in computer-related technology (allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that previously could only be produced by human animators), and thus did not recite a concept similar to previously identified abstract ideas. While the claims of the instant invention define a set of rules for game play, these rules do not improve the functionality of the computer by allowing computer performance of a function not previously performable by a computer in a manner similar to McRO. Proposed improvements to game play rules or even improvements to the algorithms themselves that do not result in an improvement of the hardware which they are practiced on are not sufficient to improve the functionality of the computer but instead result in the mere operation or practice of these rules and algorithms on a computer in a manner specifically caution against in Alice, “[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). Accordingly, the decision in McRO does not support the presence of patent eligible subject matter in the claimed invention as proposed.
Continuing on pages 14-15 of the above dated remarks, the Applicant presents that the claimed invention when considered as a whole under Prong Two integrates any recited abstract idea into a practical application by not risking preemption and addressing the technical problem through many different and unique prize mechanics may be provided that can heighten the excitement for the player, add depth of experience, and increase winnings.
As previously noted above with respect to the applicant remarks as presented on page 10, concerning the subject of preemption, while preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016). In keeping with this, MPEP 2106.04.I & 2106.07(b) notes that questions of preemption are resolved by the Alice/Mayo two-part framework including considering if there is an improvement to computer related technology in step 2A, and if the elements when considered in individually and in combination under step 2B are more than the non-conventional and non-generic arrangement of known conventional elements. As discussed in at least the rejection above the claimed invention does not at present meet the requirements under steps 2A or 2B.
Responsive to the Applicant’s proposed technical improvement involving many different and unique prize mechanics may be provided that can heighten the excitement for the player, add depth of experience, and increase winnings, these proposed improvements do not meet the criteria for technical improvements as defined by MPEP 2106.05(a) because they do not enhance the functional capabilities of the underlying computer or technology and instead utilize the underlying the computer merely as a tool to implement the recited abstract idea consistent with MPEP 2106.05(f). Additionally, the Applicant’s argument is not persuasive because the features Applicant identifies as the inventive concept are part of the abstract idea itself; as such, these features cannot constitute the “inventive concept.” See Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.”); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”).
Concluding on page 15 of the above dated remarks, the Applicant presents that the claimed invention when considered as a whole under Prong Two supports the presence of significantly more than the Abstract idea based on similar considerations in BASCOM Global Internet Services v. AT&TMobility LLC, 827 F .3d 1341 (Fed. Cir. 2016).
In BASCOM Global Internet Services v. AT&TMobility LLC, the court agreed that the additional elements were generic computer, network, and Internet components that did not amount to significantly more when considered individually, but explained that the district court erred by failing to recognize that when combined, an inventive concept may be found in the non-conventional and non-generic arrangement of the additional elements. Specifically, when considered as an ordered combination the court identified the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user as representing a non-conventional and non-generic arrangement of the additional elements wherein such merged the benefits of remote based filtering tools and personal based filtering tools to create a unique beneficial arrangement that was not separately available with either of these known arrangements for filter tools previously. With relation to the preceding the presented arguments do not identify how the claimed invention when considered as an ordered combination provides significantly more than a conventional or generic arrangement of known hardware executing algorithm or how such provide for a unique beneficial arrangement that was not separately available with the claimed elements previously and in a manner that would separate the claimed invention from the specific arrangement as cautioned against in Alice, “[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 view of the preceding the rejection of claims is respectfully maintained as presented herein above.
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.
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.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715
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