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 .
Claim Status
After the amendments filed 06/03/2026, claims 1-20 remain pending, of which 1-2, 4-6, 8-9, 15-17, and 20 were amended.
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 is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Guidelines (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a system and/or process, which is are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Independent claim 1 recites the following, with the abstract ideas highlighted in bold, including an indication as to the abstract idea grouping(s) to which the indicated limitations belong to, according to the 2019 Revised Patent Subject Matter Guidelines. Independent claims 15 and 20, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
1. A game controller for an Electronic Gaming Machine (EGM) associated with a casino comprising:
a processor circuit; and
a memory comprising machine-readable instructions that, when executed by the processor circuit, cause the processor circuit to:
display, via a Graphical User Interface (GUI) of the EGM, a first set of offers to purchase a first set of physical items (Certain Methods of Organizing Human Activity);
provide, to the player via the EGM, a wagering game as part of a wagering game play session, wherein the wagering game comprises a plurality of in-game characters (Certain Methods of Organizing Human Activity);
determine an eligibility status of the player in a wagering game play session at the EGM as a first status, based on a number of times the player has played the wagering game a gaming device in a casino (Mental Processes and/or Certain Methods of Organizing Human Activity);
determine, based on the eligibility status, a second set of offers to purchase a second set of physical items to present to the player (Mental Processes and/or Certain Methods of Organizing Human Activity);
based on the player eligibility status of the player, update the GUI to display the second set of offers, wherein a physical item of the second set of physical items is displayed being worn by a first in-game character of the plurality of in-game characters (Certain Methods of Organizing Human Activity);
in response to acceptance of an offer to purchase the physical item by the player, transmit an instruction to physically prepare the physical item for delivery to the player (Mental Processes and/or Certain Methods of Organizing Human Activity); and
after completion of the wagering game play session, cause the physical item to be physically delivered to the player (Certain Methods of Organizing Human Activity).
The limitations in claim 1 (as well as claim(s) 15 and 20) recite an abstract idea included in the groupings of Mental Processes and/or Certain Methods of Organizing Human Activity, connected to technology only through application thereof using generic computing elements (e.g., a processor circuit, a memory, a display device, an input device, etc.) and/or insignificant extra-solution activity. According to the 2019 Revised Patent Subject Matter Guidelines:
Mental Processes include concepts performed in the human mind (including an observation, evaluation, judgement, opinion); and
Certain Methods of Organizing Human Activity include:
1. Fundamental Economic Principles or Practices (including hedging (i.e., wagering), insurance, mitigating risk);
2. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
3. Managing Personal Behavior or Relationships or Interactions Between People (e.g., social activities, teaching, and following rules or instructions). The interaction encompasses both activity of a single person (for example a person following a set of instructions) and activity that involves multiple people (such as a commercial or legal interaction). Thus, some interactions between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within this grouping.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Concepts performed in the human mind (e.g., “determine an eligibility status of the player in a wagering game play session at the EGM as a first status, based on a number of times the player has played the wagering game a gaming device in a casino”, “determine, based on the eligibility status, a second set of offers to purchase a second set of physical items to present to the player”, and “in response to acceptance of an offer to purchase the physical item by the player, transmit an instruction to physically prepare the physical item for delivery to the player”), which is an abstract idea included in the grouping of Mental Processes. These limitations are interpreted as at least Mental Processes insomuch as the claim limitations are directed to performing the concepts in the human mind (e.g., tallying a count of played games, evaluating player qualification, determining an appropriate set of promotional offers, and taking not of an order acceptance to trigger item preparation), while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims.
B. Advertising, marketing or sales activities or behaviors; (e.g., “display, via a Graphical User Interface (GUI) of the EGM, a first set of offers to purchase a first set of physical items”, “determine, based on the eligibility status, a second set of offers to purchase a second set of physical items to present to the player”, “based on the player eligibility status of the player, update the GUI to display the second set of offers, wherein a physical item of the second set of physical items is displayed being worn by a first in-game character of the plurality of in-game characters”, “in response to acceptance of an offer to purchase the physical item by the player, transmit an instruction to physically prepare the physical item for delivery to the player”, and “after completion of the wagering game play session, cause the physical item to be physically delivered to the player”), which is an abstract idea included in the grouping of Fundamental Economic Principles or Practices. These limitations are interpreted as at least Fundamental Economic Principles or Practices insomuch as the claim limitations are directed to conducting commercial/marketing transactions and presenting promotional offers (e.g., displaying purchasable merchandise on character models in an advertisement) while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims.
Regarding dependent claims 2-14 and 16-19:
Each claim is dependent either directly or indirectly from the independent claim identified above and includes all the limitations of said independent claim. Therefore, each dependent claim recites the same abstract idea as identified above. Each of the dependent claim further describes additional aspects of the abstract idea, i.e., additional aspects to the Mental Processes and/or Fundamental Economic Principles and/or Commercial or Legal Interactions. For example, some dependent claims merely provide additional Mental Processes and/or Fundamental Economic Principles and/or Commercial or Legal Interactions to be performed and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101.
Step 2A-2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
-Applying or using 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 - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Claims 1-20 clearly do not improve the functioning of a computer, as they only incorporate generic computing elements, do not effect a particular treatment, and do not transform or reduce a particular article to a different state or thing. Similarly, there is no improvement to a technical field. In addition the claims do not apply the judicial exception with, or by use of a particular machine. The claims do not apply or use the judicial exception in a meaningful way. The claimed invention does not suggest improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05 (a)).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (MPEP 2106.05 (h)). The claimed computer components are recited at a level of generality and are merely invoked as tool to perform the abstract idea. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
For the reasons as discussed above, the claim limitations are not integrated to a practical application.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of “a processor circuit, a memory, a display device, an input device”, etc. used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility. These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
Further, the claims would require structure that is beyond generic, such as structure that can be interpreted analogous to a general purpose structure and general purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims. See Alice Corp. v. CLS Bank International, 134 S. Ct. at 2358-59. The elements of a processor circuit, a memory, a display device, an input device are well known conventional devices used to electronically implement a game as evidence by U.S. 2004/0204228, which discloses that a conventional gaming machine comprises a processor circuit, a memory, a display device, an input device to control the overall operation of the gaming machine (¶58). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The dependent claims do not add “significantly more” for at least the same reasons as directed to their respective independent claims, at least based on the position, as discussed above, that each of the dependent claims merely provide additional limitations to further expand the abstract idea of the independent claims, without adding anything which would establish eligibility under 35 U.S.C. 101.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
Response to Arguments
Applicant’s arguments, see Remarks, filed 06/03/2026, with respect to the rejection(s) under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the claims are note directed to an abstract idea under Step 2A, Prong 1 because the claims include steps that cannot be performed as mental processes and do not fall into the enumerated abstract idea groupings (See Remarks, pgs. 11-12). The examiner must respectfully disagree. The claimed subject matte recites limitations that fall squarely into the groupings of Mental Processes and Certain Methods of Organizing Human Activity under Step 2A, Prong 1 of the 2019 Revised Patent Subject Matter Guidelines. Specifically, determining the eligibility status of a player based on a count of plays, determining a second set of offers based on that status, and determining an acceptance of an offer are mental processes insomuch as they represent basic concepts and logical evaluations that can be performed in the human mind or with pen and paper. Furthermore, the remaining steps (e.g., displaying purchase offers, providing commercial marketing for physical merchandise, establishing player incentive rules, and instructing preparation and delivery of purchased goods), are well established functions related to commercial interactions and business rules encompassed by the grouping of Certain Methods of Organizing Human Activity.
Applicant argues that the claims integrate any abstract idea into a practical application under Step 2A, Prong 2 by reciting specific operations of an EGM (e.g., displaying a first set of offers, providing a wagering game, determining an eligibility status of the player, determining a second set of offers, and based on the legibility status, display the second set of offers) (See Remarks, pgs. 12-14). The examiner must respectfully disagree. The newly added limitations applicant cited merely recite the non-functional, visual presentation of commercial information. Altering a graphical user interface to display a purchasable physical item “being work by a first in-game character” represents an aesthetic choice in presenting merchandise advertising. Merely changing the visual layout, graphical theme, or content displayed on a conventional screen does not improve the operational function of the display device or the computer system itself. Furthermore, limiting the presentation of commercial offers to an EGM environment in a casino constitutes a field-of-use limitation that does not make a claim eligible, without “significantly more” (See MPEP 2106.05(h)).
Applicant argues that the claims solve a “unique technical problem of increasing player enjoyment and engagement within the field of gaming devices”, and thus the claims are eligible (See Remarks, pg. 14). The examiner must respectfully disagree. Increasing customer enjoyment and engagement, is a behavioral, psychological, and commercial objective, not a technological problem (See MPEP 2106.04(d)(1)). The specification fails to identify any technical defect in the physical functioning, processing architecture, or data transmission of existing gaming controllers that the claimed invention technically solves. Rather, it describes a commercial and promotional scheme to entice players to player longer and purchase goods. Because the claimed hardware components (e.g., processor circuit, memory, GUI, EGM) are claimed at a high level of generality and perform only well-understood, routine, and conventional operations, the claims fail to provide an inventive concept under Step 2B.
Applicant’s arguments, see Remarks, filed 06/03/2026, with respect to the rejection under 35 U.S.C. 103 have been fully considered and are persuasive. The 35 U.S.C. 103 rejection has been withdrawn.
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 JASON PINHEIRO whose telephone number is (571)270-1350. The examiner can normally be reached M-F 8:00A-4:30P ET.
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/Jason Pinheiro/Examiner, Art Unit 3715
/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715
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