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 .
Response to Arguments
Applicant's arguments filed January 5, 2026 have been fully considered but they are not persuasive.
Applicant argues that the August 4, 2025 memorandum of patent eligibility provides that “an improvement is not ‘abstract’ if it describes a ‘specific manner’ in which the invention achieves a technical result, even if it utilizes a judicial exception.” and asserts that the memorandum “explicitly cautions against ‘simplifying the claim’ to a high-level abstract concept while ignoring the specific technical limitations recited in the claim.” Examiner notes that the phrase “simplifying the claim” and “specific manner” which Applicant provided in quotes does not appear in this memorandum. Perhaps Applicant intended to cite another memorandum. Without any underlying rule or guidance this argument is faulty and not persuasive.
Applicant claims that the amended claims integrate the abstract idea into a practical application because the game only populates vacant coordinate positions and notes that this saves computer resources. Examiner disagree and notes that the specification does not support this finding. The choice to populate vacant coordinate positions is gameplay rules and not a technical issue.
Applicant claims that the amended claims integrate the abstract idea into a practical application because the recited authentication of persistent data structure and notes that failure to do so would be fatal to the operation of the machine. Examiner disagrees and notes that these additional elements are not transformative and are routine operational steps. Authenticating a persistent data structure before checking a bank balance prior to a transfer would not have rendered the claims in Alice patent eligible. These terms are an add on unconnected to the abstract gameplay that is claimed.
Applicant claims that the amended claims integrate the abstract idea into a practical application because the claims recite icons and these icons are like those recited in Example 37. Examiner disagrees and notes that the mere presence of icons does not obviate patent eligibility. Example 37 concerned rearranging icons for a user interface, these claims rearrange icons for gameplay.
Applicant argues that novelty and non-obviousness are relevant to eligibility analysis. Examiner disagrees and notes that novelty and non-obviousness are not relevant to patent eligibility and Applicant has not provided any rule or guidance that would insist that it does.
Claim Rejections - 35 USC § 112
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 1-7, 9-15 and 17-20 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. Claims 1-3, 9-10 and 3-18 recite the limitation “persistent data structure”, however this limitation does not have any precedent in the original disclosure and this appears to be new matter.
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 1-7, 9-15 and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception. The claims will be analyzed with respect to the Subject Matter Eligibility Test at MPEP§2106.
Subject Matter Eligibility – Step 1 (see MPEP§2106.03)
The claims recite one of the four statutory categories of subject matter.
Subject Matter Eligibility – Step 2A Prong 1 (see MPEP§2106.04(a-c))
The claims recite abstract ideas in the following categories;
Methods of organizing human activity such as fundamental economic principles or practices (including hedging, insurance, mitigating risk) see specifically ii. rules for conducting a wagering game, In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); (MPEP§2106.04(a)(2)II) (hereinafter “MOHA”).
The abstract ideas have been noted in the claims below.
Regarding claim 1, a base game and a bonus game (these being games containing abstract game rules), the method comprising the operations of: conducting the base game (see above) including: defining a coordinate-mapped display array and a plurality of collection registers (these being abstract game rules that define the abstract elements of play): presenting a plurality of symbol-bearing base reels in the coordinate-mapped display array (this being abstract rules regarding the game elements and the rules regarding what a player is presented, e.g. a face up or face down card); identifying a trigger condition (this being abstract game rules regarding progress conditions/events for a game); and responsive to the trigger condition, initiating a bonus game (this being abstract game rules regarding progress conditions/events for a game), the bonus game including: transitioning to a stateful iteration mode that repeats for a plurality of iterations until a termination condition is met (this being abstract game rules regarding progress conditions/events for a game), each iteration comprising: identifying only vacant coordinate positions within the coordinate-mapped display array (this being abstract game rules regarding progress conditions/events for a game); selectively executing a reel-spin only for the identified vacant coordinate positions while maintaining a static state for non-vacant coordinate positions (this being abstract game rules regarding progress conditions/events for a game); and updating the game to reflect landed symbols in the collection registers (this being abstract game rules regarding progress conditions/events for a game); and evaluating the symbols in the collection registers to determine a bonus award (this being abstract game rules regarding progress conditions/events for a game).
Regarding claim 2, the method of claim 1, wherein conducting the base game includes an animating operation comprising increasing a size of the persistent element or a volume of items therein (this being abstract game rules regarding progress conditions/events for a game).
Regarding claim 3, the method of claim 1, wherein defining a prize board and the selectively executing the reel-spin graphics routine includes populating the coordinate mapped display array with an upgrade symbol (this being abstract game rules regarding progress conditions/events for a game), the method further including the operation of upgrading one or more prizes on the prize board (this being abstract game rules regarding progress conditions/events for a game).
Regarding claim 4, the method of claim 1, wherein the termination condition of the stateful iteration mode includes determining that at least one of the collection registers has been filled (this being abstract game rules regarding progress conditions/events for a game).
Regarding claim 5, the method of claim 1, wherein the coordinate-mapped display array defines a bonus array, and wherein the reel-spin graphics routine is associated with respective individual positions of the bonus array (this being abstract game rules regarding progress conditions/events for a game).
Regarding claim 6, the method of claim 1, wherein the reel spin graphics routine is configured to simulate the motion of electromechanical reels (this being abstract game rules regarding progress conditions/events for a game).
Regarding claim 7, the method of claim 1, further comprising the operations of: receiving, via a value input device, a physical item associated with a monetary value that establishes a monetary balance; and dispensing, via a value output device, payout from the monetary balance (this being abstract game rules regarding stakes and wager accounting).
Claims 9-15 and claims 17-20 contain abstract ideas as noted above regarding claims 1-6, mutatis mutandis.
Subject Matter Eligibility – Step 2A Prong 2 (see MPEP§2106.04(d))
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements are game logic circuity, a presentation assembly, a value input device and a value output device and other generic computer hardware; insignificant extra solution activity such as collecting information, analyzing it, and displaying certain results of the collection and analysis to data; and the use of software to tailor information and provide it to the user on a generic computer. These additional elements individually and in combination provide for limitations that do not integrate the judicial exception into a practical application. These additional elements (1) add “insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g)” (MPEP§2106.04(d)I) and (2) generally link “the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).” (MPEP§2106.04(d)I).
These additional elements individually and in combination are not limitations that provide for “improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);” (MPEP§2106.04(d)I) apply or use the “judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);” (MPEP§2106.04(d)I) implement the “judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);” (MPEP§2106.04(d)I) effect “a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c);” (MPEP§2106.04(d)I) or apply or use “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, as discussed in MPEP § 2106.05(e).” (MPEP§2106.04(d)I). As such the claims as a whole do not integrate the judicial exception into a practical application.
Subject Matter Eligibility – Step 2B (see MPEP§2106.05)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are well-understood, routine and conventional generic computer hardware and insignificant extra solution activity (see MPEP§2106.05). The claimed additional elements with citations indicating their well-understood, routine and conventional nature are provided below.
The use of a display, value in and value out systems is well-understood, routine and conventional as noted by U.S. Pub. 2008/0254854 at para. 24.
Authentication programs in gaming being well-understood, routine and conventional as noted by U.S. Pub. 2010/0311505 at para. 3.
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 PETER J IANNUZZI whose telephone number is (571)272-5793. The examiner can normally be reached M-F 9:30AM-5:30PM EST.
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, Kang Hu can be reached at 571-270-1344. 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.
/PETER J IANNUZZI/ Primary Examiner, Art Unit 3715