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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 22nd, 2026 has been entered.
Information Disclosure Statement
The information disclosure statement entered July 22, 2026 has been considered. A copy of the cited statement(s) including the notation indicating its respective consideration is attached for the Applicant's records.
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. 18/087,458 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, 4-14, and 16-20 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 1-2, 4-14, 16-18, and a method (i.e., a process) in claims 19-20.
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 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, the first game result comprising a bonus game trigger event;
based on the bonus game trigger event, control a Graphical User Interface (GUI) of the EGM to initiate, at a display device of the EGM a bonus game;
determine whether a plurality of available bonus game features maintained in a bonus game feature area of the GUI having a maximum number of feature positions for bounded GUI feature state control comprises a minimum number of available bonus game features;
based on a determination that the plurality of available bonus game features does not comprise the minimum number of available bonus game features, add a sufficient number of bonus game features to the plurality of available bonus game features such that the plurality of available bonus game features comprises the minimum number of available bonus game features and control the GUI to display the plurality of available bonus game features comprising the sufficient number of bonus game features;
based on a determination that adding another bonus game feature to the plurality of available bonus game features would exceed the maximum number of feature positions, controlling the GUI to display a discard request and, responsive to a discard selection, replacing, in the bonus game feature area, a discarded bonus game feature with the added bonus game feature, wherein the maximum number of feature positions, display of the discard request, and replacement of the discarded bonus game feature implement the bounded GUI feature state control by limiting the bonus game feature area to the maximum number of feature positions while maintaining the plurality of available bonus game features in a selectable GUI state;
receive, via the GUI, a user selection of a subset of bonus game features from a plurality of available bonus game features;
based on the user selection of the subset of bonus game features, control the GUI to apply the subset of bonus game feature to the bonus game; and
generate, based on a second random number generated by the random number generator a bonus game result for the bonus game;
control the GUI to display an indication of the bonus game result; and
based on the bonus game result, cause the EGM to award a bonus game award.
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 an Electronic Gaming Machine (EGM), a display device, a processor circuit and a memory 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 an Electronic Gaming Machine (EGM), a display device, a processor circuit and a memory 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], [0043]-[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, 4-14, and 16-20 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 an Electronic Gaming Machine (EGM), a game controller, a display 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 July 22nd, 2026 have been fully considered but they are not persuasive.
Commencing on pages 9-12 of the Applicant’s remarks, the Applicant presents that the pending claimed invention as amended should be considered as directed to patent eligible subject matter because it integrates the recited abstract idea into practical application through the use of particular machine encompassing an Electronic Gaming Machine (EGM). Additionally, the Applicant proposes that the claimed invention when considered as a whole improves the functioning of a computer by addressing the technological problem of implementing a bonus feature selection architecture across game states in a manner that provides additional player interaction and enjoyment. The Applicant proposes that the claimed invention would not fall under the enumerated grouping of Mental Process because the claimed method is practiced on an EGM involving random number generation and game outcome determination.
Responsive to the Applicant arguments as summarized above the preceding, 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 utilization of the same. Insomuch as the proposed technical problem involves the implementation of a game using a computer merely as a tool such would not support the integration of the abstract idea into a practical application (see MPEP 2106.05(f)). Insomuch as the proposed improvement may be understood to be embodied in the game rules themselves, these features 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.”). Consistent with the preceding, the courts have similarly noted that claims directed to providing a game with use of a computer is not sufficient to support patent eligibility (See In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016) & Planet Bingo, LLC v VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)).
The enumerated grouping of Mental Processes include mental processes performed on a computer as described in MPEP 2106.04(a)(2) Sub III.C and according the proposal that the claimed invention is excluded from this grouping because it is claimed as being performed on a computer alone is respectfully non-persuasive. The generation and presentation of random game outcomes is not a computer specific process and is reflected in both the card games as well as bingo games before the advent of computer technology.
Continuing on pages 12-13 of the Applicant’s remarks, the Applicant presents that the pending claimed invention should be considered as patentable over the applied prior art of Hoffman because the claims as amended now incorporate an accumulation limit and discard/replacement feature as particularly claimed that is not present in the prior art of Hoffman.
Responsive to the preceding, the Applicant presented amendment and argument reflecting the same are reasonably persuasive in overcoming the previously applied prior art of Hoffman and accordingly this rejection has been withdrawn.
In view of the preceding, the rejection of claims is respectfully maintained as presented herein above.
Conclusion
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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