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 1-20 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 or gaming device (i.e., a machine) in claims 1-19, and a method (i.e., a process) in claims 20.
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 system comprising:
a processor circuit; and
a memory comprising machine-readable instructions that, when executed by the processor circuit, cause the processor circuit to:
receive an indication of a wager for a draw-style wagering game by a player using a gaming device;
receive an indication of a selected movable object on a geographical image for the draw-style wagering game using the gaming device;
cause a display device of the gaming device to display a graphical user interface (GUI) comprising:
the geographical image comprising a plurality of movable objects that comprises the selected movable object; and
the selected movable object on the geographical image;
cause the display device to display a drawn set of characteristics corresponding to the plurality of movable objects;
for each characteristic of the drawn set of characteristics, determine whether the drawn set of characteristics corresponds to any of the plurality of movable objects on the geographical image;
for each characteristic of the drawn set of characteristics that corresponds to the selected movable object, automatically determining that the characteristic of the drawn set of characteristics is a hit and display a hit indicator at the selected movable object corresponding to the characteristic of the drawn set of characteristics;
based on a number of hits, automatically generating a game result for the draw-style wagering game; and
in response to the game result being a winning game result, automatically providing an award the player of the draw-style wagering game.
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes including observation, evaluation, and judgement because the claims are directed to series of steps for tracking game state and determining the occurrence of winning events therein as well as Certain Methods of Organizing Human Activity including managing personal behavior 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 game 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 network connected 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 game 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 [0063], [0071], [0074]-[0075], [0082], [0099]). 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 [0063], [0071], [0074]-[0075], [0082], [0099]). 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 2-20 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, a display device, an input device, and a game 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 October 21st, 2025 have been fully considered but they are not persuasive.
Commencing on pages 7 through 13 of the above date Applicant remarks, the Applicant presents various argument against the rejection of claims 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 without significantly more, based on the following specific points:
That the invention of claim 1 is grossly oversimplified because the recited computer hardware elements including a processor, memory, and a gaming device would prevent it from being reasonably characterized as a Mental Process and that all of the hardware elements have been read out of claim in order to support the presented analysis (Applicant Remarks Pages 8-9);
That the recitation of the hardware elements (a processor, memory, and a gaming device) would support the presence of a particular machine and avoid any risk of preemption (Applicant Remarks Pages 8-9);
That the claim recites additional hardware features of “a display device” and the use thereof to display information including a graphic user interface (GUI) represent specific hardware features would further demonstrate that the claimed invention is directed a practical application of any recited abstract idea (Applicant Remarks Page 9);
That the analysis of claim 1 is conclusory and deficient on its face (Applicant Remarks Page 9);
That the claimed invention is analogous to Example 37 of the USPTO Subject matter Eligibility Examples because both concern the influencing how movable objects are displayed (Applicant Remarks Pages 9-10);
That the rejection fails to present show independent analysis of the remaining claims 2-20 and as such the rejection of remaining claims is proposed as be facially deficient and is asserted as being in violation of the Administrative Procedures Act based thereon (Applicant Remarks Pages 10 & 12);
That the characterization of the abstract idea as directed to Mental Process or a Mental Process is inaccurate because the claimed invention is directed to a technological improvement to a computer implemented wagering games, involving a solution to real-world problem in the gaming industry as described in Paragraph [0001] of the applicant’s specification and embodied in the manipulation of data, control of a display/meters not performable by a human mind (Applicant Remarks Page 10);
That the amended inclusion of the claims to perform certain actions “automatically” would preclude the interpretation that the performance of the recited operations was a mental process or human activity because as best understood the applicant proposes that this term clarifies that the steps are a machine-implemented technical process (Applicant Remarks Pages 10-11);
That when considered under step 2B of the Alice/Mayo test, the claimed invention provides significantly more than a mere abstract idea because the claimed invention provides a non-conventional technical solution to enhance a wagering game experience and improve player retention that is proposed to meet the requirements of MPEP 2106.05(b);
That the claimed invention is rooted in improvements in technology and as such is analogous to considerations addressed by the court in Enfish LLC v. Microsoft Corp. 822 F.3d 1327, 118 U.S.P.Q.2d 1684 (Fed. Cir. 2016) (Applicant Remarks Page 12); and
That the reasons for allowance in issued US Patent No. 12,300,061 supports the patent eligibility of the claimed invention based on the interpretation of claims respective presented therein (Applicant Remarks Pages 12-13).
Responsive to the preceding, the following is respectfully noted in corresponding order and enumeration to the Applicant arguments identified herein above:
i.a) The inclusion of a computer in the performance of a mental process does not exclude an abstract idea from falling under this enumerated grouping of abstract ideas (See MPEP 2106.04(a)(2) Sub III.C). Additionally, the implementation of an abstract idea on a computer wherein the same is utilized merely as a tool is not sufficient to support patent eligibility based solely thereon (See MPEP 2106.05(f)). The rejection considers all claim elements both individually and in combination and, while the additional non-abstract elements and the abstract elements of the claims are respectively identified, these elements have not been read out of the claim nor does their presence in the claim preclude the claimed invention from falling under the identified enumerated grouping of abstract idea;
ii.a) The claimed elements do not meet the requirements for establishing a particular machine as set forth under MPEP 2106.05(b), because the recited computing elements including a processor circuit, a memory, a display device, and a game device, are not linked to a specific device/machine and would reasonably include other network connected devices such as generic computers, smart phones, game consoles, and the like as noted in the rejection presented herein above, and as further illustrated by at least paragraph [0082] of the applicant’s specification as filed.
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.
iii.a) The inclusion of a display device similarly does not support the inclusion of a particular machine as set forth under MPEP 2106.05(b) for the same reasons presented in section (ii.a) above, while the content displayed on the display is not a physical embodied element of the claimed invention;
iv.a) The rejection of claim 1 appropriately considers the claimed invention as a whole, considering all claim elements both individually and in combination according to the applicable standards set forth by MPEP 2106 and the Alice/Mayo test described therein;
v.a) The instant claimed invention does not reflect an analogous improvement in the functioning of a computer as demonstrated in cited example 37, and that would meet the requirements as set forth by MPEP 2106.05(a) because it does not improve the functioning of a computer or any other technology;
vi.a) The rejection of record considers each of the presented claims 1-20, as a whole, considering all claim elements both individually and in combination, prior to concluding each of claim 1-20 is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more and explicitly notes such with “The remaining presented claims 2-20 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, a display device, an input device, and a game 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.”
While the rejection of claims 2-20 is not provided in the expanded illustrative format of claim 1, this expanded format is not required and as such does not support the Applicant’s position that the rejection is facially deficient or in violation of the Administrative Procedures Act as so asserted;
vii.a) Paragraph [0001] of the applicant’s specification notes that, “Players of different types of wagering games may be resistant to playing other types of wagering games for a number of reasons, including familiarity, loyalty, habit, and other reasons. For example, a player who primarily plays draw-style wagering games may be resistant to playing slot games, and vice versa. There is a need for different types of games to attract a wider variety of players of different wagering games.”. Providing different types game to attract players of different types of wagering games is not a technical problem because it does not concern particular to the underlying technology employed but instead speaks to the broader business concerns of sales activities and/or behaviors and business relations that fall under the enumerated abstract idea of Certain Methods of Organizing Human Activity. Based on the preceding, it is respectfully unclear what technical problem the applicant believes is identified by this portion of the specification and by extension how the claimed invention would resolve the proposed technical problem. Additionally, as noted under section (i.a) above, the inclusion of a computer in the performance of a mental process does not exclude an abstract idea from falling under this enumerated grouping of abstract ideas (See MPEP 2106.04(a)(2) Sub III.C);
viii.a) Any process performed by a computer would qualify as a machine implemented “automatic” process however the involvement of a computer wherein the same is utilized merely as a tool to implement the abstract ideas is not sufficient to support patent eligibility as set forth by MPEP 2106.05(f). “[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);
ix.a) In view of the reasons set forth in the rejection of claims above and sections (ii.a), (iii.a), & (vii.a) of this response to arguments, the claimed invention does meet the requirements for establishing the use of particular machine as defined by MPEP 2106.05(b), an unconventional technical solution to a technical problem, and would not support the presence of significantly more than a mere abstract idea based thereon as proposed;
x.a) Responsive to the Applicant’s remarks concerning Enfish, LLC v.
Microsoft Corp. , it is noted that it is explicitly presented on page 12 of the decision “In this case, however, the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity…Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table” (emphasis added). Accordingly, the enhanced functionality that is referenced in Enfish is fairly understood to describe the functionality of the computer itself and a specific improvement to the way computers operate but would specifically not support other tasks for which a computer is used in its ordinary capacity. In the instant application the plain focus of the claim is on an improved algorithm and rules for determining and presenting a game state for which a computer is utilized in its ordinary capacity to enact and accordingly the claimed invention does not meet the eligibility criteria as discussed in Enfish, LLC v. Microsoft Corp. as presented.
xi.a) It is generally prohibited for office personal to express any opinion either directly or indirectly concerning the validity, patentability, expiration date, or enforceability of patent (See MPEP §1701). Accordingly matters concerning the prosecution history of US Patent No. 12,300,061 are not appropriate for consideration and/or address during the examination of the instant application as proposed.
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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