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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/18/25 has been entered.
Claim Status
Claims 1-9, 11-17, and 19-20 are pending. Claims 12 and 20 have been amended and claims 10 and 18 are cancelled. No new claims have been added.
Response to Arguments
Applicant's arguments filed 11/18/25 have been fully considered but they are not persuasive. The Applicant’s representative asserts that the subject matter of claims 1-9, 11-17, and 19-20 are not directed to eligible subject matter (see Remarks, pg. 7-18). Specifically, the Applicant’s representative asserts the following arguments: i) Claims 1-9,. 11-17, 19, and 20 are not directed to a judicial exception (see Remarks, pg. 8-10); ii) the rejection of Claims 1-9, 11-17, 19, and 20 violate the Administrative Procedure Act (APA) (see Remarks, pg. 10-17; and iii) Claims 1-9, 11-17, and 19-20 are otherwise allowable (see Remarks, pg. 17-18). The arguments are addressed in the sections below.
With respect to first argument, the Applicant’s representative asserts that Claims 1-9, 11-17, 19, and 20 are not directed to a judicial exception (see Remarks, pg. 7-10). Specifically, the Applicant’s representative asserts that the claims are not directed to a certain method of organizing human activity but directed to “a specialized game controller of an EGM that performs a detailed set of operations that, taken as a whole, describe a game mechanic for a bonus game at the EGM” which is eligible under Step 2A. The Examiner respectfully disagrees. The claims, as asserted in the Final Rejection (dated 9/17/25), found the claims as exemplified by independent Claim 1, as being directed to a set of operations, that, taken as a whole, describe a set of wagering game rules for a bonus wagering game which is analogous to a certain method of organizing human activity under Step 2A-prong 1 (see MPEP 2106.04(a), wherein managing a wagering game is found to be directed to a grouping of abstract ideas). For at least this reason, the Applicant’s argument is not persuasive.
Additionally, the Applicant’s representative asserts that the claims recite “a game controller” for an “EGM” that “control[s] a Graphical User Interface (GUI)” that is similar to Core Wireless Licensing that are directed to an improved user interface for electronic device (see Remarks, pg. 10). The Examiner respectfully disagrees. The recited components of “a game controller” and “GUI” of the “EGM” when viewed individually and/or as a combination of elements are not found to recite an improvement to computer functionality and/or improvements to any other technology or technical field (see MPEP 2106.05(a)). For instance, the game controller is recited as performing the steps and/or instructions of the claimed wagering bonus game which does not integrate the claim into a practical application but is analogous to concepts in Alice in which a commonplace business method (e.g., a wagering bonus game) being applied on a general purpose computer was not sufficient to show an improvement to another field of technology (see MPEP 2106.05(f)). Similarly, the claimed GUI is not found to recite an improvement to computer functionality but merely arranging transactional information on a graphical user interface in a manner that assists the player in processing the progress of the game which the courts have indicated is not sufficient to show improvement in computer-functionality (see MPEP 2106.05(a)I, vii – citing Trading Techs v. IBG LLC, 921 F.3d 1084, 1093-1094). Moreover, the addition of the components of “a game controller” and “GUI” of the “EGM” amount to use of a computer in its ordinary capacity for economic or other tasks to an abstract idea (e.g., a bonus wagering game which is analogous to a fundamental economic practice) does not integrate the claim into a practical application but mere instructions to invoke a computer as a tool to implement the abstract idea (see MPEP 2106.05(f)). Similarly, the Claims, as exemplified by independent Claim 1, are not analogous to Example 37 of the 2019 PEG as the claims are not directed to organizing icons based on an amount of use of each icon but rather are directed to determining a plurality of game awards and determining a bonus game event result which are steps for managing a wagering bonus game. For at least these reasons, the Applicant’s argument is not persuasive and the analysis under Step 2A and Step 2B have been maintained below.
With respect to the second argument, the Applicant’s representative asserts that the rejection of Claims 1-9, 11-17, 19, and 20 are in violation of the APA. Specifically, the Applicant’s representative argues that the “unfair result” between the decisions made in other US applications results in a violation of the APA because the result is due to arbitrary and capricious action (see Remarks, pg. 10-17). The Examiner respectfully disagrees. Contrary to the Applicant’s argument, the instant application has been analyzed in accordance with the 2019 PEG that is consistent with current examination practices set forth by the USPTO. The Applicant’s representative is reminded that rejections under 35 USC 101 are made on a case by case basis utilizing the two-part Alice framework. As a courtesy to the Applicant, a quick review of the cited Claims of Palmisano ‘858, Palmisano ‘814; Boese; and US Patents on pg. 16 of the Applicant’s response have been made. In each case, the Examiner found each of the claims to contain substantially different subject matter than the broadly claimed wagering bonus game in the instant application. In contrast to the cited patents, the instant application recites steps and/or instructions for managing a wagering bonus game which is analogous to a certain method of organizing human activity. For at least this reasons, the Applicant’s argument is not persuasive.
The remaining limitations of the claims are directed to a “game controller” for an “EGM” that controls a “GUI” are asserted by the Applicant’s representative as integration into a practical application and significantly more (see Remarks, pg. 16-19). The Examiner respectfully disagrees. These additional elements whether viewed individually and/or as a collection of elements failed to recite details of how a technical solution to a technical problem is accomplished and merely invoke other machinery (e.g., game controller for an EGM that control a GUI) as a tool to perform existing process (e.g., determining and displaying a bonus game outcome of a wagering game). As a result, the additional elements were found to amount to mere instructions to apply the exception (see MPEP 2106.05(f)). Alternatively, the additional elements such as “game controller” for an “EGM” to control a “GUI” to determine the bonus game event result does not integrate the claim into a practical application because similar to the court’s decision in Affinity Labs of Texas v. Direct TV, claims that merely limit the use of the abstract idea to a particular technological environment (e.g., an EGM; a game controller for an EGM, a GUI controlled by an EGM) fails to add an inventive concept to the claims (see MPEP 2106.05(h).
Moreover, the Examiner notes that this position is consistent with the Applicant’s Specification which indicates that a gaming device, which is an EGM (see Specification, 0023), includes “a processing circuit 12 that controls operations of the gaming device 100” and may be referred to simply as a “controller”, “microcontroller”, “microprocessor”, or simply a “computer” (see Specification, 0039). Furthermore, the Examiner has cited to the prior art of Vancura wherein a conventional gaming device (e.g., EGM) comprises a game controller and a display for presenting a wagering game which is well-known, routine, and conventional to one of ordinary skill in the art (see Vancura, Fig. 1, 0008, 0037-0040). For at least these reasons, the Applicant’s argument is not persuasive and the rejection under 35 USC 101 has been maintained below.
With respect to the Applicant’s argument that claims are allowable in light of In re Desjardins, the Examiner respectfully disagrees. The instant application differs from In re Desjardins in that the instant application are directed to managing a bonus wagering game as opposed to being directed to an improvement to optimize performance of a machine learning model of an artificial intelligence (AI) system. In contrast, the instant application does not recite an improvement to optimize performance of the game controller, the EGM, and/or a GUI of the EGM. Rather portions of the Specification describe a partial gamble feature in a bonus game sequence directed to hedging and mitigating risk for the operator and the player and to increase the total winning amounts (see Specification, 0014-0015). Stated differently, the Specification does not indicates to one of ordinary skill in the art a technical solution to a technical problem. At best, the claimed bonus wagering game is directed to an economic and/or business solution which the courts have indicates is not sufficient to integrate the claim into a practical application. In re Desjardins, which focused on improvement to artificial intelligence systems, is also silent as to integrating the wagering game into a conventional EGM as being indicative of integration to a practical application. It follows that the claims, as exemplified by independent Claims 1, 12, and 20, are not found to recite an inventive concept and are found to be directed to a grouping of abstract ideas without significantly more. For substantially the same reasons, dependent claims 2-11 and 13-19 are not found to be in a condition for allowance and the rejection has been maintained below.
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 1-9, 11-17, and 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a grouping of abstract ideas without significantly more. The claims, as exemplified by independent Claim 1, recites limitations directed to a grouping of abstract ideas such as:
1. (Previously Presented) A game controller for an Electronic Gaming Machine (EGM) comprising:
a processor circuit; and a memory comprising machine-readable instructions that, when executed by the processor circuit, cause the processor circuit to control a Graphical User Interface (GUI) of the EGM to:
determine a plurality of game awards for a plurality of winning slot game spins for a first bonus game; - certain method of organizing human activity and/or mental process;
display a first subset of the plurality of game awards; - certain method of organizing human activity;
initiate a set of bonus game events for a second bonus game, wherein a wager for each bonus game event of the set of bonus game events comprises a corresponding game award of the first subset of the plurality of game awards; - certain method of organizing human activity;
for each bonus game event of the set of bonus game events, independently determine a bonus game event result; - certain method of organizing human activity; and
for each bonus game event result that is a winning result, award a bonus game event award based on the wager for the corresponding bonus game event. – certain method of organizing human activity;
The limitations, as underlined above, are found to be directed to a series of rules and/or instructions for managing a wagering bonus game. Furthermore, at least one of the limitations, as underlined above, recite a mental process because they recite an observation, judgment, evaluation, and/or opinion. For at least these reasons, the claims, as exemplified by independent Claim 1, are found to recite a grouping of abstract ideas under Step 2A-prong 1.
This judicial exception is not integrated into a practical application because the additional limitations such as: “a processor circuit;” and “ a memory comprising machine-readable instructions that, when executed by the processor circuit, cause the processor circuit to:” recite limitations that invoke a computer as a tool to implement the abstract idea and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f) and (h)). For at least these reasons the additional limitations do not integrate the claim into a practical application under Step 2A-prong 2.
The claims, as exemplified by independent Claim 1, do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the elements of “a processor circuit” and “a memory comprising machine-readable instructions” when viewed individually and/or as a collection of elements does not transform the abstract idea into significantly more but invoke highly generalized computer components to be invoked as a tool to implement the abstract idea and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)) and (h)). For instance, the prior art of Vancura (US 2010/0029381 A1) discloses a conventional gaming system comprises a processor circuit and a memory comprising machine-readable instructions” are conventional components known to one of ordinary skill in the gaming arts (see Vancura, Fig. 1, 0008, 0037-0040). For at least these reasons, the claims, as exemplified by independent Claim 1, do not amount to significantly more than the abstract idea under Step 2B.
Regarding independent Claims 12 and 20, the claims recite substantially the same subject matter as independent Claim 1 discussed above. However, Claims 12 and 20 are directed to the gaming device and method embodiments of substantially the same subject matter. It follows that for substantially the same reasons as discussed above, independent Claims 12 and 20 are directed to a grouping of abstract ideas without significantly more.
Regarding dependent claims 2-9, 11-17, and 19, the additional limitations have been analyzed and reviewed. The Examiner finds that each of the limitations further recite additional limitations directed to a grouping of abstract ideas (see MPEP 2106.04(a), invoke a computer as a tool to implement the abstract idea; extra solution activity, and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). For at least these reasons, claims 1-20 are found to recite an abstract idea without significantly more.
Conclusion
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/RYAN HSU/ EXAMINER, Art Unit 3715