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 11/06/2025, claims 1-4, 8-12, 16-19 and 21-25 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 therefor, subject to the conditions and requirements of this title.
Claims 1-4, 8-12, 16-19 and 21-25 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 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 8 and 16, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
1. A gaming device, comprising:
a player interface;
a credit input;
a credit output;
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:
establish a credit balance in response to the 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 the player interface (Certain methods of Organizing Human Activity);
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 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);
present 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); and
dispense a payout of the credit balance via the credit output (Certain methods of Organizing Human Activity).
The limitations in claim 1 (as well as claim(s) 8 and 16) recite an abstract idea included in the groupings of Certain methods of Organizing Human Activity and/or Mental Processes, 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.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Wagering (e.g., “each second control factor counteracts its respective first control factor to maintain a same return-to-player across the volatility options”), which is a form of hedging, which is an abstract idea included in the grouping of Fundamental Economic Principles or Practices. In light of applicant’s specification, the limitation of “return-to-player” is clearly indicative of wagering activity present in the claimed gaming device (See Specification ¶4, “The wagering game is designed to return a certain percentage of the amount wagered back to the player (i.e., return-to-player) over the course of many plays or instances of the game”). 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 (i.e., by a player placing a wager the player is 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”), 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.
Regarding dependent claims 2-4, 9-12, 17-19 and 21-25:
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 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 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 11/06/2025, with respect to the rejection(s) under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant notes that calls were placed for a scheduled interview November 3rd at 3pm EST and 3:12pm EST and that the examiner did not answer either call or return applicant’s calls (See Remarks, pg. 9). Initially, the examiner notes that it is incorrect that applicant’s calls were not returned. The examiner, upon returning to work on November 4th (at 6:40am EST), emailed applicant, replying to a chain of emails which applicant and the examiner had used to schedule the interview. As the examiner noted in the email to applicant sent November 4th, there may have been some confusion as the interview was scheduled for November 4th at 3pm EST, (applicant’s first “Alternative suggested interview date and time” as indicated on applicant’s Automated Interview Request form), as the examiner was not available on November 3rd. The examiner also suggested holding the interview at the originally agreed time (November 4th at 3pm EST), however, applicant elected to forgo the interview at that time and chose to file a response without holding the interview. Applicant is always welcome to contact the examiner in the future to schedule another interview if applicant wishes to do so.
Applicant argues that the claims are directed to “technical solutions to technical problems” (See Remarks, pgs. 11-15). The examiner must respectfully disagree. In order for an abstract idea to be an improvement, there must be a technical explanation as to how to implement the invention in the specification and the claim itself reflects the improvement in technology. Applicant provided citations from the specification, which applicant alleges teach the technical problems and the corresponding technical solutions (See Remarks, pg. 11 referencing ¶25-26). While ¶25 does mention “solving various technical problems associated with gaming machines that provide games with player selectable volatility options”, the examiner has found no indication, in the specification, as to what those technical problems are or how applicant’s claimed invention may solve any technical problems. Applicant provides alleged improvements in the remarks (See Remarks, pg. 15, e.g., providing a consistent return to player regardless of a selected volatility option), however, providing a consistent return to player regardless of a selected volatility option is not a technical problem. The claimed invention does not solve a problem that arises due to technology. Applicant may have an improved abstract idea that provides a consistent return to player regardless of a selected volatility option. But the abstract idea does not solve a technical problem. And a new abstract idea, regardless of how great it is, is still an abstract idea. Abstract ideas are not patent-eligible without “significantly more.” In this case, Applicant has merely implemented an abstract idea using a generic computer. This is not considered to be “significantly more” than the abstract idea since the Supreme Court’s Alice decision was handed down.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason Pinheiro/ Examiner, Art Unit 3715
/DMITRY SUHOL/ Supervisory Patent Examiner, Art Unit 3715