DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
Examiner acknowledges receipt of amendment/arguments filed 12/31/2025. The arguments set forth are addressed herein below. Claims 1-20 remain pending, no Claims have been newly added, and no Claims have been currently canceled. Currently, Claims 1, 8, and 15-16 have been amended. No new matter appears to have 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-20 is/are directed towards a statutory category they are directed to either a process, machine, manufacture, or composition of matter (Step 1, Yes).
Claim 15 recites, in part, the limitations of […]; and […]: determine, based on receiving a wager, a base game paytable and a winning base game outcome; determine a loss insertion opportunity configured to override the base game paytable, wherein determining the loss insertion opportunity comprises comparing, […], a randomly generated value against a preconfigured true percentage threshold; bypass, based on the loss insertion opportunity, the winning base game outcome; insert, into the base game paytable, a losing base game outcome; select the losing base game outcome from a plurality of losing outcome presentations; and display the losing base game outcome […]. These limitations, individually and in combination, describe or set forth the abstract idea in claim 15 (also substantially encompassed by independent claims 1 and 8). The Examiner notes that the specific limitations that describe or set forth the abstract idea in Step 2A Prong 1 can be identified either individually or in combination (see p. 54 of 2019 Revised Patent Subject Matter Eligibility Guidance).
Under the broadest reasonable interpretation, the claims recite limitations that can be practically performed in the human mind or by a human using pen and paper. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Thus, the claims recite a mental process.
The claims also recite limitations that are considered a fundamental economic principle or practice (e.g., relating to commerce and economy), commercial interactions, business relations, managing personal behavior or relationships or interactions between people. The Examiner notes that certain activity between a person and a computer may fall within the certain methods of organizing human activity grouping (see p. 5 of the October 2019 Update: Subject Matter Eligibility).
Therefore, the claims fall under the following enumerated groupings of abstract ideas: mental processes (e.g., concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)), and/or certain methods of organizing human activity (e.g., fundamental economic principles or practices (including hedging, insurance, mitigating risk), commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)) (Step 2A, Prong 1, Yes).
Claim 15 recites the additional element(s) of “An electronic casino gaming apparatus comprising: one or more processors; and memory storing processor executable instructions that, when executed by the one or more processors, cause the electronic casino gaming apparatus to: […]; […], by a random number generator of the electronic casino gaming apparatus, […]; […]; […]; […] and […] on a game display of the electronic casino gaming apparatus. These additional element(s) are recited at a high level of generality, and under the broadest reasonable interpretation are generic processor(s) and/or generic computer component(s) that perform generic computer functions. The generic processor and/or generic computer component limitation(s) are no more than mere instructions to apply the exception using a generic computer component. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional elements amount to adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computers and/or generic computer components does not integrate the judicial exception or amount to significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. Using a computer to generate data, compute a result, and return the result to a user amounts to electronic data query and retrieval—some of the most basic functions of a computer. “[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application or add significantly more. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (Step 2A Prong 2, No).
Additionally, the specification makes it clear that the apparatus for determining a base game paytable and a base game outcome, determine a loss insertion opportunity configured to override the base game paytable, and bypass the base game outcome can be implemented on a generic computer.
[0020] The gaming network 50 also couples to the internet 70, which in turn is coupled to a number of computers, such as the personal computer 72 illustrated in FIG. 1. The personal computer 72 may be used much like the kiosk 14, described above, to manage player tracking or other data kept on the gaming network 50. More likely, though, is that the personal computer 72 is used to play actual games in communication with the gaming network 50. Player data related to games and other functions performed on the personal computer 72 may be tracked as if the player were playing on an EGM 10.
As such, the gaming device, for implementing the abstract idea, may require no more than generic, conventional, and well-known computer devices such as a general purpose computer (as evidenced in Para. 20).
In Step 2B, the additional element(s) also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong 2. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. However, unless an Examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B (see 2019 Revised Patent Subject Matter Eligibility Guidance). Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application or amount to significantly more because they do not impose any meaningful limits on practicing the abstract idea (Step 2B, No).
Furthermore, a processor, memory, random number generator, an electronic casino gaming apparatus/machine, as provided in claims 1, 8, and 15, can relate to components having features that are generic, conventional, and well-known in the art of slot machines that represent extra-solution activity.
For example, Chamberlain et al. (2004/0087360 A1) discloses a gaming device 10 is a slot machine having the controls, displays and features of a conventional slot machine, wherein the player operates the gaming device while standing or sitting, the gaming device includes a coin slot 12 for accepting coins or tokens and a ticket/bill acceptor 100 for accepting bills or paper currency, such that, the ticket/bill acceptor 100 also accepts tickets 108, and the gaming device 10 also includes a ticket/receipt printer 106 (shown in phantom) mounted, in one embodiment, inside the gaming device 10, which issues tickets 108 through an aperture 110 or any suitable secure ticket feeder (See Para. 47, Para. 49, and Fig. 1 of Chamberlain).
Thus, Claim 15 is rejected as shown above. Additionally, Claims 1-14 and 16-20 also recite limitations that are similar to the abstract ideas identified with respect to Claim 15 above (i.e., certain methods of organizing human activities and/or mental processes). Claims 1-14 and 16-20 do not recite any additional elements other than those recited in Claim 15. Therefore, for the same reasons set forth with respect to Claim 15, Claims 1-14 and 16-20 also do not integrate the judicial exception into a practical application or amount to significantly more.
Prior Art
The Examiner notes that after a thorough search on the claims as currently amended, the claims currently overcome prior art. The closest prior art found to date are the following:
Shai-Hee (US 2009/0221354 A1) discloses the concept of replacing the displayed symbol array in the reel display portion with a further symbol array from the resultant reel configuration.
Response to Arguments
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Regarding the rejections under 35 USC 101, Applicant states: “The Office Action asserts, "under the broadest reasonable interpretation, the claims recite[] limitations that can be practically performed in the human mind or by a human using pen and paper." Office Action, p. 3.
"Claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations." See SRI Int 'l, Inc. V. Cisco Systems, Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019). In the Memorandum dated August 4, 2025 (the "Deputy Commissioner Memorandum"), Deputy Commissioner Kim cautioned Technology Centers 2100, 2600, and
3600 to not "expand this grouping in a manner that encompasses claim limitations that cannot practically be performed in the human mind. the Deputy Commissioner Memorandum, p. 2. Examiners are further reminded to "distinguish claims that recite an exception (which require
further eligibility analysis) from claims that merely involve an exception (which are eligible and do not require further eligibility analysis)." Id. p. 3.
Applicant submits the claims, as amended, cannot practically be performed in the human mind. For example, the step of "determining a loss insertion opportunity configured to override the base game paytable, wherein determining the loss insertion opportunity comprises comparing, by a random number generator of the electronic casino gaming machine, a randomly generated value against a preconfigured true percentage threshold," cannot practically be performed in the human mind. Nor can the steps of, "inserting, into the base game paytable, a
losing base game outcome; selecting the losing base game outcome from a plurality of losing outcome presentations; and displaying the losing base game outcome on a game display of the electronic casino gaming machine."”
In response, the Examiner respectfully disagrees. The limitations outlined above, that exclude the additional elements, are limitations that can be practically performed in the human mind, and are considered certain methods of organizing human activity. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The additional elements identified above, including the random number generator, are being used as tools, in their ordinary capacity, to perform the abstract idea. The advance lies entirely in the realm of the abstract idea. Additionally, the claims are similar to those found in Savvy Dog v. Pennsylvania Coin (Fed. Cir. 2024).
Additionally, the August 4th Memo also states, “This memorandum is not intended to announce any new USPTO practice or procedure and is meant to be consistent with existing USPTO guidance.” Thus, the rejection of the claims, as outlined above, is believed to be consistent with existing USPTO guidance. Furthermore, a human game operator could practically determine, based on receiving a wager, a base game paytable and a winning base game outcome; determine a loss insertion opportunity configured to override the base game paytable, wherein determining the loss insertion opportunity comprises comparing a randomly generated value against a preconfigured true percentage threshold; bypass, based on the loss insertion opportunity, the winning base game outcome; insert, into the base game paytable, a losing base game outcome; select the losing base game outcome from a plurality of losing outcome presentations; and display the losing base game outcome, as determining a game outcome including inserting a loss, random number generation, and presenting a game outcome exists outside the use of a processor.
Regarding the rejections under 35 USC 101, Applicant states: “Applicant submits that the amended claims recite a specific technical implementation for
controlling payback percentage that is tied to particular machine components and operations. The specification further explains that "[i]f the RNG value is greater than or equal to the True % value, the value in the output buffer 540 is set to TRUE from an output register or address location 530. If the RNG value is less than the True % value, the value in the output buffer 540 is set to FALSE from an output resister or address location 535." As-Filed Specification, page 24, Lines 17-20. The random number generator is not a generic computer component but rather a specific technical component that performs a particular function in the gaming machine architecture. The comparison against a "preconfigured true percentage threshold" represents a specific technical mechanism for controlling game outcomes.
Claim 1 as amended also requires "selecting the losing base game outcome from a plurality of losing outcome presentations" and "displaying the losing base game outcome on a game display of the electronic casino gaming machine." These limitations impose meaningful limits on the claims by requiring specific technical operations on specific gaming machine components, thereby integrating any alleged abstract idea into a practical application.”
In response, the Examiner respectfully disagrees. The claimed invention, including providing the use of an RNG, selecting the losing base game outcome from a plurality of losing outcome presentations, and displaying the losing base game outcome, does not provide improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a). The abstract idea, including, providing a loss insertion opportunity configured to override the base game paytable (as claimed in claims 1, 8, and 15) is not a technical solution to a technical problem (e.g. something specific to improvements to the functioning of a computer etc.), but rather provides a casino with a means to control a payback percentage in order to attract players and entice more gambling. Managing a game outcome, including receiving a wager, determining a base game paytable and a winning base game outcome and determining a loss insertion opportunity pertains to managing personal behavior including following rules or instructions pertaining to organizing human activity and/or a mental process. The Applicant’s disclosure (¶ 6 of the publication) does provide support for user engagement, wherein, creating more flexibility in generating payback percentages at certain times or locations, e.g., so as to attract or entice players to continue playing; however, such disclosure does not relate to the actual improvement of the technology, but rather a means for allowing continued gameplay from a player. The claims at issue lack integration into a practical application. Applicant’s claimed abstract idea lacks or fails to suggest improvements to the functioning of a computer or to any other technology or technical field. The Examiner contends that the claims do not provide an improvement to the technology in which it is generically applied.
Regarding the rejections under 35 USC 101, Applicant states: “Applicant submits that the combination of limitations in the amended claims represents a
specific technical solution to the problem of controlling payback percentage without modifying base game paytables. The specification explains that "one issue with conventional gaming devices and gaming systems is that they provide a limited number of paytables that are often difficult to generate while attempting to keep the character of a game intact." As-Filed Specification, page 17, lines 3-9. The specification further explains that "[t]he means for controlling the payback percentage of games is not included in the base game paytable. Rather, it is a mechanism that is independent of the base game paytable." As-Filed Specification, page 17, lines 8-14.
Additionally, the specification notes that "this payback percent controlling means
simplifies math calculation, ensures more consistent delivery of awards, provides precise control of payback% and provides differentiated experiences for varying wager sizes, player rankings and time/date of visit." As-Filed Specification, page 23, lines 20-25. The ordered combination of the claimed elements provides a specific technical improvement to electronic casino gaming machines that amounts to significantly more than any alleged abstract idea.”
In response, the Examiner respectfully disagrees. The claimed invention, including providing the use of an RNG, selecting the losing base game outcome from a plurality of losing outcome presentations, and displaying the losing base game outcome, does not provide improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a). The abstract idea, including, providing a loss insertion opportunity configured to override the base game paytable (as claimed in claims 1, 8, and 15) is not a technical solution to a technical problem (e.g. something specific to improvements to the functioning of a computer etc.), but rather provides a casino with a means to control a payback percentage in order to attract players and entice more gambling. Managing a game outcome, including receiving a wager, determining a base game paytable and a winning base game outcome and determining a loss insertion opportunity pertains to managing personal behavior including following rules or instructions pertaining to organizing human activity and/or a mental process. The Applicant’s disclosure (¶ 6 of the publication) does provide support for user engagement, wherein, creating more flexibility in generating payback percentages at certain times or locations, e.g., so as to attract or entice players to continue playing; however, such disclosure does not relate to the actual improvement of the technology, but rather a means for allowing continued gameplay from a player. Applicant’s response recites, “this payback percent controlling means simplifies math calculation, ensures more consistent delivery of awards, provides precise control of payback% and provides differentiated experiences for varying wager sizes, player rankings and time/date of visit.” However, this recitation appears to be referring to abstract ideas including organizing human activity and/or a mental process rather than a specific technological improvement. The claims at issue lack integration into a practical application. Applicant’s claimed abstract idea lacks or fails to suggest improvements to the functioning of a computer or to any other technology or technical field. The Examiner contends that the claims do not provide an improvement to the technology in which it is generically applied.
Furthermore, a response to the remainder of Applicant’s remarks can be found in at least the Office Actions dated 11/07/2024, 04/02/2025, and 10/01/2025.
At least based on the above, the 101 rejection of claims 1-20 are herein 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.
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/CHASE E LEICHLITER/Primary Examiner, Art Unit 3715