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 06/08/2026, claim 24 was cancelled, therefore, claims 1-4, 8-12, 16-19 and 21-23, and 25 remain pending, of which 1, 8 and 16 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 therefore, subject to the conditions and requirements of this title.
Claims 1-4, 8-12, 16-19 and 21-23, and 25 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 Guidelines
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Guidelines, the claims are directed to a system and/or process, which are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Guidelines
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Independent claims 1, 8, and 16 recite 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:
1. A gaming device, comprising:
a player interface;
a memory storing instructions;
a display system comprising one or more display devices; and
a control system comprising one or more processors, wherein execution of the instructions causes the control system to:
present a plurality of volatility options via the player interface, wherein each volatility option comprises a first control factor and a second control factor, wherein each first control factor comprises at least one of an initial quantity of spins, a matrix height for display positions of the display system, or a quantity of matrices, wherein the second control factors uniquely specify a range of values for each volatility option, and wherein each second control factor counteracts a variance of its respective first control factor with a second control factor to maintain a same return-to-player across the volatility options, wherein each volatility option corresponds with a range of multiplier values and selection criteria (Certain methods of Organizing Human Activity);
receive, via the player interface, a volatility selection that selects a volatility option from the volatility options (Certain methods of Organizing Human Activity);
for each spin of a hold and spin game:
present, per the selected volatility option, a game outcome at the display positions of the display system (Certain methods of Organizing Human Activity);
hold each configurable symbol of the game outcome at its respective display position of the display system (Certain methods of Organizing Human Activity); and
replace each non-configurable symbol of the game outcome with a replacement symbol (Certain methods of Organizing Human Activity);
select, for each replacement symbol that is a configurable symbol, a value from the range of multiplier values specified by the selected volatility option (Certain methods of Organizing Human Activity and/or Mental Processes); and
assign the selected value to the respective configurable symbol (Certain methods of Organizing Human Activity and/or Mental Processes); and
present, via the display system, an award for the respective configurable symbol that is based on a sum of values presented by the configurable symbols (Certain methods of Organizing Human Activity).
8. A method of a gaming device, the method comprising:
establishing a credit balance in response to a credit input of the gaming device receiving a physical item representing a credit value (Certain Methods of Organizing Human Activity);
funding a wager amount from the established credit balance in response to initiating play of a base game based on input received via a player interface of the gaming device (Certain Methods of Organizing Human Activity);
receiving, via the player interface of the gaming device, a volatility selection that selects a volatility option from a plurality of volatility options that each uniquely specify a first control factor and a second control factor of a hold and spin game, wherein each volatility option uniquely specifies at least one of an initial quantity of spins, a matrix height for display positions of a display, or a quantity of matrices as the first control factor (Certain Methods of Organizing Human Activity); and
conducting, via a control system of the gaming device, a hold and spin game per the first control factor and the second control factor specified by the volatility selection, wherein a second control factor variance of the second control factor counteracts a variance of the first control factor to maintain a same return-to-player across the plurality of volatility options despite each volatility option uniquely specifying the first control factor, wherein each volatility option specifies a range of multiplier values as the second control factor, wherein each volatility option further specifies selection criteria comprising a weighted table that defines a probability of selecting each multiplier value from the range of multiplier values, and wherein the weighted table is configured such that an expected value derived from the weighted table, when combined with an expected quantity of configurable symbols collected during the hold and spin game, maintains the same return-to-player across the plurality of volatility options (Certain Methods of Organizing Human Activity), and wherein conducting the hold and spin game comprises for each spin of the hold and spin game:
holding configurable symbols of a game outcome at display positions of the display (Certain Methods of Organizing Human Activity);
providing the game outcome with replacement symbols that replace symbols at display positions of the display that do not present a configurable symbol (Certain Methods of Organizing Human Activity);
for each replacement symbol that is a configurable symbol, assigning a multiplier value from the range of multiplier values to the respective configurable symbol, wherein the multiplier value is selected according to the weighted table of the selected volatility option (Certain Methods of Organizing Human Activity);
presenting an award for the respective configurable symbol based on values presented by the configurable symbols multiplied by the multiplier value assigned to the respective configurable symbol (Certain Methods of Organizing Human Activity); and
dispensing a payout of the credit balance via a credit output of the gaming device (Certain Methods of Organizing Human Activity).
16. A non-transitory computer readable storage medium comprising instructions that, in response to being executed, cause a gaming server to:
establish a credit balance in response to a credit input receiving a physical item representing a credit value (Certain Methods of Organizing Human Activity);
fund a wager amount from the established credit balance in response to initiating play of a base game based on input received via a player interface of a gaming device (Certain Methods of Organizing Human Activity);
receive, from the gaming device, a volatility selection of a volatility option from a plurality of volatility options, wherein each volatility option comprises a first control factor and a second control factor, wherein each first control factor uniquely specifies at least one of an initial quantity of spins, a matrix height for display positions of the gaming device, or a quantity of matrices as the first control factor, wherein each volatility option specifies a landing percentage for configurable symbols as the second control factor, and wherein each second control factor counteracts a variance of its respective first control factor with a second control factor variance to maintain a same return-to-player across the volatility options despite each volatility option uniquely specifying the first control factor, wherein the landing percentage is adjusted inversely to an expected value of configurable symbols such that an expected quantity of configurable symbols collected during the hold and spin game, when combined with the expected value of the configurable symbols, maintains the same return-to-player across the volatility options (Certain Methods of Organizing Human Activity and/or Mathematical Concepts);
for each spin of a hold and spin game,
select, for each non-configurable symbol of a game outcome, replacement symbols based on the landing percentage for configurable symbols specified by the second control factor of the selected volatility option (Certain Methods of Organizing Human Activity); and
cause the gaming device to replace each non-configurable symbol of the game outcome with its selected replacement symbol; cause the gaming device to present a game result for the hold and spin game that is based on values presented by the configurable symbols (Certain Methods of Organizing Human Activity); and
dispense a payout of the credit balance via a credit output of the gaming device (Certain Methods of Organizing Human Activity).
The limitations in claims 1, 8, and 16 recite an abstract idea included in the groupings of Certain methods of Organizing Human Activity and/or Mental Processes and/or Mathematical Concepts, connected to technology only through application thereof using generic computing elements (e.g., a player interface, a memory, a display system, a control system, a credit input, a credit output, 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; and/or
Mathematical Concepts include mathematical relationships, mathematical formulas or equations, mathematical calculations.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Wagering (claims 8 and 16) (e.g., “fund a wager amount from the established credit balance in response to initiating play of a base game based on input received via a player interface of a gaming device”), which is a form of hedging, 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 performing the Fundamental Economic Principles or Practices 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. Formation of a gambling contract (claims 8 and 16) (i.e., by a player placing a wager the player entering into a contract with a game operator), which is an abstract idea included in the grouping of Commercial or Legal Interactions. These limitations are interpreted as at least Commercial or Legal Interactions insomuch as the claim limitations are directed to performing the Commercial or Legal Interactions 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;
C. Following rules and/or instructions, such as including the functions related to the playing of a wagering game, which is an abstract idea included in the grouping of Managing Personal Behavior or Relationships or Interactions Between People. These sets of rules are interpreted as at least certain methods of organized human activity insomuch as the claim limitations are directed to performing or following the set of rules or instructions concerning a game 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; and/or
D. Concepts performed in the human mind (e.g., “assign the selected value to the respective configurable symbol”, “assigning a multiplier value from the range of multiplier values to the respective configurable symbol”, “select, for each non-configurable symbol of a game outcome, replacement symbols based on the landing percentage for configurable symbols specified by the second control factor of the selected volatility option”), 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, 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; and/or
E. Mathematical relationships (e.g., wherein the landing percentage is adjusted inversely to an expected value of configurable symbols such that an expected quantity of configurable symbols collected during the hold and spin game, when combined with the expected value of the configurable symbols, maintains the same return-to-player across the volatility options). which is an abstract idea included in the grouping of Mathematical Concepts. These limitations are interpreted as at least Mathematical Concepts insomuch as the claim limitations are directed to performing the mathematical concepts, 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 2-4, 9-12, 17-19, 21-23, and 25:
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 Certain Methods of Organizing Human Activity. For example, some dependent claims merely provide additional Fundamental Economic Principles and/or Commercial or Legal Interactions and/or Managing 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 Guidelines
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 Guidelines
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 player interface, a memory, a display system, a control system”, 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 player interface, a memory, a display system, a control system are well known conventional devices used to electronically implement a game as evidence by 2004/0204228, which discloses that a conventional gaming machine comprises a player interface, a memory, a display system, a control system to control the overall operation of the gaming machine (¶2). 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 06/08/2026, with respect to the rejection(s) under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that claim 1 is no longer directed to “wagering, a fundamental economic practice, a commercial or legal interaction, or any other method of organizing human activity” because claim 1 has been amended to remove recitations directed to the physical credit handling, wagers, credit balances, credit inputs and outputs, and dispensing of payouts (See Remarks, pgs. 9-10). The examiner must respectfully disagree. Removing financial and wagering terms does not make a game non-abstract. Under Federal Circuit precedent (See In re Smith), the underlying rules of a game are themselves abstract methods of organizing human activity regardless of whether money is wagered or exchanged. Therefore, while claim 1 may no longer include limitations directed to Fundamental Economic Principles or Practices (i.e., wagering), claim 1 is still directed to Managing Personal Behavior or Relationships or Interactions Between People (i.e., rules or instructions for conducting a game), which falls squarely within the judicial exception grouping of Certain Methods of Organizing Human Activity.
Applicant argues that claim 1 defines the display of graphical content on an electronic display and subsequent display actions according to what is initially displayed and that claim 1 does not instruct a player, recite a human actor or rules followed by a human actor, and that these operations are not performable in the human mind and do not constitute a fundamental economic practice, a commercial or legal interaction, or managing human behavior (See Remarks, pgs. 10-11). The examiner must respectfully disagree. The Federal Circuit has made it clear that the rules of a game are patent-ineligible methods of organizing human activity, and that drafting such rules as software instructions executed by generic computer components does not change their abstract nature (In re Smith, 815 f3d 816, 818-19 (Fed. Cir. 2016). The grouping of Certain Methods of Organizing Human Activity encompasses following rules or instructions, which specifically includes game rules. Furthermore, despite applicant’s contention, claim 1 incudes at least the limitation “receive, via the player interface, a volatility selection that selects a volatility option from the volatility options”, which clearly is recitation of a human actor following rules of a game (i.e., selecting a volatility option for play of a hold and spin game). Merely invoking generic computer components to automate the rules of the game does not render the underlying concept non-abstract.
Applicant argues that claim 1 recites specific operations that are implemented by a “particular machine”, thus integrating the abstract idea into a practical application (See Remarks, pg. 11). The examiner must respectfully disagree. The claimed “gaming device”, “player interface”, “memory”, “control system”, and “display system” are recited in generic, purely functional terms. A generic computer or machine cannot serve as a “particular machine” simply because it is called a “gaming device”. The device is simply the general-purpose environment used to carry out the abstract game rules and mental processes.
Applicant argues that claim 8, as amended, does not recite game rules or mental processes because “No person can mentally maintain a weighted probability table, execute weighted probabilistic draws from that table for each newly landed configurable symbol across each spin of a hold and spin game, and verify that the expected value derived from the table, when combined with the expected quantity of configurable symbols, maintains a same return-to-player” (See Remarks, pg. 12). The examiner must respectfully disagree. Assigning outcomes or multipliers from a weighted probability distribution is a conventional, fundamental rule of gaming and wagering. Selecting an item from a table based on weighted odds is the organizational equivalent of drawing from a non-uniform deck of cards, spinning a while with unequal sectors, or casting a polyhedral die. These game mechanics dictate how a game is played and how awards are evaluated, which fall squarely under grouping of Certain Methods of Organizing Human Activity (i.e., following rules or instructions) (See In re Smith, MPEP 2106.04(a)(2)). Furthermore, applicant assertion that a human cannot mentally execute weighted draws or verify expected values in real time during automated spins does not overcome the rejection. As the Federal Circuit has consistently held, the fact that a computer carries out calculations faster, with greater complexity, or over larger datasets than could practically be done in the human mind does not convert an abstract idea into patent-eligible subject matter. That a computer performs the lookup and arithmetic functions of claim 8 merely reflects generic computer execution of underlying game rules.
Applicant argues that claim 16, as amended, “recites a specific mathematical relationship” (See Remarks, pg. 13). The examiner agrees with applicant’s admission that claim 16 recites a “specific mathematical relationship”. Under the 2019 Revised Patent Subject Matter Eligibility Guidelines and MPEPE 2106.04(a)(1), the grouping of Mathematical Concepts explicitly includes Mathematical relationships. The Federal Circuit has made clear that mathematical relationships, algorithms, and formulas are, in their own right, judicial exceptions, entirely separate and independent from the Mental Processes grouping. By explicitly arguing that claim 16 recites an “inverse mathematical relationship” to maintain a target payout ratio, applicant confirms that the claim recites a statutory mathematical concept under Step 2A, Prong One.
Applicant argues that claim 16 recites specific operations that are implemented by a “particular machine”, thus integrating the abstract idea into a practical application (See Remarks, pg. 14). The examiner must respectfully disagree. The claimed “gaming device”, “player interface”, “memory”, “control system”, and “display system” are recited in generic, purely functional terms. A generic computer or machine cannot serve as a “particular machine” simply because it is called a “gaming device”. The device is simply the general-purpose environment used to carry out the abstract game rules and mental processes.
Applicant argues that since there is no art rejection, the claims must be eligible under 35 U.S.C. 101 (See Remarks, pgs. 14-15). The Courts have ruled that 35 U.S.C. 101 stands on its own. Thus, novelty and non-obviousness have no bearing on eligibility under 35 U.S.C. 101. While the instant claims may be drawn to a novel abstract idea, they still recite abstract ideas without including additional elements that are sufficient to amount to significantly more than the judicial exception. Therefore, applicant’s argument is not found to be persuasive.
Applicant argues that individual components may be conventional in light of U.S. 2004/0204228 (e.g., a player interface, a memory, a display system, a control system), however, the reference fails to provide evidence that the “specific ordered combination recited in the amended claims is well-understood, routine, or conventional” because it does not disclose the claimed hold-and-spin rules, volatility options, weighted probability tables, or inverse RTP relationships (See Remarks, pg. 15). The examiner must respectfully disagree. Applicant’s argument fundamentally conflates the novelty of an abstract idea with the presence of an inventive concept under Step 2B. Under controlling Feral Circuit precedent, a judicial exception cannot serve as the inventive concept to rescue itself from patent ineligibility. The features applicant highlights as missing from U.S. 2004/0204228 (e.g., hold-and-spin rules, volatility options, weighted probability tables, or inverse RTP relationships), are the very judicial exceptions (i.e., game rules, mental steps, mathematical concepts) identified under Step 2A, Prong One. The absence of these game rules, mathematical concepts, and mental processes in hold-and-spin rules, volatility options, weighted probability tables, or inverse RTP relationships is an inquiry directed to novelty under 35 U.S.C. 102/103, not subject matter edibility under 35 U.S.C. 101. The evaluation under Berkheimer requires factual evidence that the additional elements (i.e., elements which are not part of the judicial exception) and their arrangement constitute well-understood, routine, and conventional activity in the relevant field. When the abstract ideas are parsed from the instant claims the only additional elements recited are standard computing components, as established by U.S. 2004/0204228 and as admitted by applicant (See Remarks, pg. 15). Therefore, because the additional elements, both individually and as an ordered combination consist entirely of well-understood, routine, and conventional computing components executing the judicial exception, the claims fail to recite “significantly more” under Step 2B.
Conclusion
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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