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 .
Terminal Disclaimer
The terminal disclaimer filed on May 12th, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application No. 18/087,528 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 1-2, 5-13, 16-19, and 21-23 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 game controller or an electronic gaming machine(EGM) (i.e., a machine) in claims 1-2, 5-13, 16-18, and 21-22, and a method (i.e., a process) in claims 18-19 and 23.
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 random number generator;
a processor circuit; and
a memory comprising machine-readable instructions that, when executed by the processor circuit, cause the processor circuit to:
generate, based on a first random number generated by the random number generator, a first game result for a wagering game at the EGM the first game result comprising a bonus game feature trigger event;
based on the bonus game feature trigger event, store a first bonus game feature in a collection of available bonus game features associated with the wagering game;
control a Graphical User Interface (GUI) of the EGM to display, at a display device of the EGM, the collection of available bonus game features comprising the first bonus game feature
generate, based on a second random number generated by the random number generator, a second game result for the wagering game, the second game result comprising a bonus game trigger event;
based on the bonus game feature trigger event, control the GUI to initiate a bonus game at the EGM;
apply the first bonus game feature to the bonus game;
generate a bonus game result for the bonus game;
based on the bonus game result, cause the EGM to award a bonus game award;
based on application of the first bonus game feature to the bonus game, control the GUI to remove the first bonus game feature from the collection of available bonus games features;
based on removal of the first bonus game feature from the collection of available bonus game features, determine whether the collection of available bonus game features comprises a minimum plural number of available bonus game features; and
based on a determination that the collection of available bonus game features does not comprise the minimum plural number of available bonus game features, store a second bonus game feature in the collection of available bonus game features and control the GUI to display the collection of available bonus game features comprising the second bonus game feature.
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 evaluating and resolving the state of a game 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 game rules/instructions 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/Electronic Gaming Machine(EGM) 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/Electronic Gaming Machine(EGM) 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 [0018], [0038], [0040], [0043]-[0044], [0052],[0081], [0083]). 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 [0018], [0038], [0040], [0042]-[0044], [0052], [0081], [0083]). 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, 5-13, 16-19, and 21-23 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 gaming device, a processor circuit, a memory, a display device, an input 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 February 4th, 2026 have been fully considered but they are not persuasive.
Commencing on pages 8-16 of the Applicant’s remarks, the Applicant presents that the pending claimed invention should be considered as directed to patent eligible subject matter for the following reasons:
i) That the claimed invention is not directed to a mental process or a method of organizing human activity and is instead directed to a specialized game controller of an Electronic Gaming Machine (EGM) that providing an improved Graphical User Interface (GUI) that is proposed as being analogous to an improved interface that was found patent eligible in Core Wireless Licensing v. LG Elecs. Inc. 880 F.3d 1356, 125 U.S.P.Q.2d 1436 (Fed Cir. 2018) (Applicant Remarks Page 10);
ii) That Example 37 claims 1 and 2 of the October Update of the USPTO 2019 Examination guidelines support the patent eligibility of user interfaces incorporating a Graphical User Interface (GUI) under step 2B of the Alice/Mayo test (Applicant Remarks Page 11); and
iii) That the rejection of claims 1, 2, 5-13, 16-19, and 21-23 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 (Applicant Remarks Pages 11-16).
-Responsive to the applicant arguments summarized above, the following is respectfully noted in respective order:
i.a) The claimed invention as presented and the definition of elements in the Applicant’s specification do not support the characterization of a game controller and an Electronic Gaming Machine (EGM) sufficient to limit the same to a particular machine as defined by MPEP 2106.05(b) because they do not limit the same to a particular structural arrangement and instead describe the underlying components based on the intended use of the same. 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/GUI 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).
ii.a) Claims 1 and 2 of Example 37 of the October Update of the USPTO 2019 Examination guidelines involve improvements/optimization of user interfaces similar to considerations addressed in Apple v. Ameranth but do not support eligibility based on the inclusion of a Graphical User Interface (GUI) alone and accordingly do not support the eligibility of the claimed invention as proposed.
iii.a) 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
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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