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
Claims 1 and 11 have been amended.
Claims 1 -20 are pending.
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.
This subject matter eligibility analysis follows the latest guidance for Patent Subject Matter Eligibility Guidance.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Claims 1 – 10 are drawn to a method.
Claims 11 – 20 are drawn to a gaming machine.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter.
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Claims 1-10 are exemplary because they require substantially the same operative limitations of the remaining claims (reproduced below.) Examiner has underlined the claim limitations which recite the abstract idea, discussed in detail in the paragraphs that follow.
A method of operating a gaming machine, the gaming machine including a gaming cabinet and game-logic circuitry secured within a locked box inside the gaming cabinet, the game-logic circuitry including memory storing programming for a random number generator that cycles continuously in the background between games and during game play at a speed that cannot be timed by the player and a wagering game. the method comprising the operations of:
prior to executing the wagering game, executing an authentication program on the gaming machine to authenticate the programming:
conducting, by the game-logic circuitry operating in an authenticated state, a game including:
presenting by a presentation assembly, a plurality of symbol-bearing reels, an array, and a plurality of persistent elements, each persistent element having a predetermined associated game feature and an associated accumulation symbol type:
spinning and stopping the plurality of reels to land symbols from the reels in the array to produce a first outcome; and
in response to the landed symbols of the first outcome including a first accumulation symbol of a first accumulation symbol type and while operating in the authenticated state:
animating an addition of the first accumulation symbol to its associated persistent element: and
randomly determining whether or not to award the predetermined first game feature associated with the persistent element associated with the first accumulation symbol using an output generated by the random number generator; and
in response to awarding the first game feature, implementing the first game
feature via the game-logic circuitry, wherein the implementing of the first game feature comprises applying changes associated with the first game feature to game conditions currently in effect to a first set of bonus spins and removing the changes associated with the first game feature upon completion of the first set of bonus spins; and
during the first set of bonus spins, spinning and stopping the plurality of reels to land symbols from the reels in the array to produce a second outcome; and
in response to the landed symbols of the second outcome including a second accumulation symbol of a second accumulation symbol type different from the first accumulation symbol type and while operating in the authenticated state: animating an addition of the second accumulation symbol to its associated persistent element; and
randomly determining whether or not to award the predetermined second game feature associated with the persistent element associated with the second accumulation symbol using an output generated by the random number generator; and
in response to awarding the second game feature, implementing the second game feature via the game-logic circuitry, wherein the implementing of the second game feature comprises applying changes associated with the second game feature to game conditions still in effect from the application of the first game feature to a second set of bonus spins and removing the changes associated with the second game feature upon completion of the second set of bonus spins;
transforming, by the game-logic circuitry, a determination of any awarded game features into a first defined set of prize field control signals configured for the presentation assembly;
transmitting the first defined set of prize field control signals to the presentation assembly to cause the presentation assembly to apply the any awarded game features to the prize field; and
transforming, by the game-logic circuitry, a selection of the one or more prizes into a second defined set of prize award control signals configured for the presentation assembly and transmitting the second defined set of prize award control signals to the presentation assembly to cause the presentation assembly to indicate the awarding of the one or more prizes.
The claims recite italicized limitations that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG, namely, Certain Methods of Organizing Human Activity
More specifically, under this grouping, the italicized limitations represent fundamental economic principles or practices, and managing interactions between people. For example, the italicized limitations are directed towards the wagering upon gaming outcomes and receiving a payout based upon the outcomes of a primary and secondary game by mean of outcome determined by positions on reels. This represents a fundamental economic practice, namely, exchanging consideration based on odds and outcomes This also falls upon under the grouping of managing interactions between people, i.e., rules for gaming.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations as follow, (emphasis added): gaming machines, input devices, game logic circuitry, and RNG that continuously cycles, game devices/assemblies and output devices
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea. Therefore, since the additional limitations, individually or in combination, are indistinguishable from a computer used as a tool to perform the abstract idea, the analysis continues to Step 2B, below.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional and routine computer implementation and mere instructions for implementing the abstract idea on generic computing devices.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract idea. Applicant has claimed computer input/output devices, circuitry, gaming devices/assemblies themselves and RNG that continuously cycles. However, all of these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
As the Alice court cautioned, citing Flook, patent eligibility cannot depend simply on the draftsman’s art. Here, amending the claims with generic computing elements does not (in this Examiner’s opinion), confer eligibility.
Regarding the Berkheimer decision, US 2010/0029381 establishes that these additional elements are generic:
[0038] The many conventional details for operating a casino game machine 10 are well understood in the industry, including receiving money, accepting wagers, delivering payoffs, operating a casino game machine, etc. In particular, a conventional money reception device(s) 40 such as a bill acceptor, ticket acceptor, or coin slot may be utilized. Too, such conventional wager device(s) 50 such as push-buttons or a touch-screen may be utilized to initiate play. Typically, players may have special player inputs (either physical 60 and/or on-touch-screen 130) that denote a max bet, spin of the reels, a bonus bet, etc. Likewise a conventional payout device(s) 70 such as a ticket dispenser, bill dispenser, coin dispenser, etc. or any suitable payout device or devices are possible. The casino base game 20 may communicate over a network card 80 with other casino game machines, computer systems, etc. over a bus 82.
Regarding the Berkheimer decision, Berman US 2007/0232382 establishes that these additional elements are generic:
[0060] Chance-based gaming systems such as slot machines, in which the present invention is applicable, are governed by random numbers and processors. Electronic reels are used to display the result of the digital reels, which are actually stored in computer memory and "spun" by a random number generator (RNG). RNGs are well known in the art, and may be implemented using hardware, software operable in connection with the processor 502, or some combination of hardware and software. In accordance with generally known technology in the field of slot machines, the processor 502 associated with the slot machine, under appropriate program instruction, can simulate the vertical rotation of multiple reels. Generally, the RNG continuously cycles through numbers, even when the machine is not being played. The slot machine selects, for example, three random numbers. The numbers chosen at the moment the play is initiated are typically the numbers used to determine the final outcome, i.e., the outcome is settled the moment the reels are spun. The resulting random numbers are generally divided by a fixed number. This fixed number is often thirty-two, but for slot machines with large progressive jackpots it may be even greater. After dividing, the remainders will be retained. For example, if the divisor was one-hundred twenty-eight, the machine would have three remainders ranging from zero to one-hundred twenty-seven. The remainders may be considered as stops on virtual reels. If the divisor was one-hundred twenty-eight, then the virtual reels would each have one-hundred twenty-eight stops with each stop being equally likely. Each stop on the virtual reel may be mapped to a stop on an actual reel or displayed reel image. These reel images may then be displayed on the display 520. The present invention is operable using any known RNG, and may be integrally programmed as part of the processor 502 operation, or alternatively may be a separate RNG controller 540. RNGs are well known in the art, and any type of RNG may be implemented for the standard mode of play and/or the bonus mode of play in accordance with the invention.
Regarding the Berkheimer decision, Gura et al US 2012/0108346 establishes that these additional elements are generic:
[0056] FIG. 4 is a flow diagram illustrating various methods 411, according to example embodiments of the invention. In a basic implementation, a signal is received within a wagering game machine that enables memory clear operations to begin, such that instructions to clear the memory can be executed if all other conditions are satisfied (e.g., the source of the signal is authenticated, etc.). Once the instructions to clear the memory are executed, the same OS that includes the memory clear instructions may be initialized to restart the prior wagering game, or to begin a new wagering game. Authentication mechanisms are well-known to those of ordinary skill in the art.
Therefore, these elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they merely recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit has said in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Specification
The amendment filed 12/2/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
“transforming, by the game-logic circuitry, a determination of any awarded game features into a first defined set of prize field control signals configured for the presentation assembly;
transmitting the first defined set of prize field control signals to the presentation assembly to cause the presentation assembly to apply the any awarded game features to the prize field; and
transforming, by the game-logic circuitry, a selection of the one or more prizes into a second defined set of prize award control signals configured for the presentation assembly and transmitting the second defined set of prize award control signals to the presentation assembly to cause the presentation assembly to indicate the awarding of the one or more prizes.”
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 – 20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The Applicant has amended the claims to introduce the claim limitations of
“transforming, by the game-logic circuitry, a determination of any awarded game features into a first defined set of prize field control signals configured for the presentation assembly;
transmitting the first defined set of prize field control signals to the presentation assembly to cause the presentation assembly to apply the any awarded game features to the prize field; and
transforming, by the game-logic circuitry, a selection of the one or more prizes into a second defined set of prize award control signals configured for the presentation assembly and transmitting the second defined set of prize award control signals to the presentation assembly to cause the presentation assembly to indicate the awarding of the one or more prizes.”
The Examiner has reviewed the specification in light of these new amendments and cannot find adequate support for these amendments in the originally filed specification. The specification fails to describe “a first set of prize field control signals” that are configured for the presentation assembly or the transmitting of the “first defined set of prize field control signals to the presentation assembly that causes the presentation assembly to award game features to the prize field. The Specification further fails to disclose the usage or definition of the term “prize field”. This raises the question as to how exactly game features are awarded to the prize field. The specification further fails to disclose a “second defined set of prize award control signals”. The Examiner notes that a “a first defined set of prize award control signals” are not even claimed or defined in the specification and yet the claims reference a “second defined set of prize award control signals”. The Examiner notes that the claims or the specification as originally filed, fail to describe in any way the transmitting of these signals to presentation assembly.
Claims 1 – 10 and 11 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The Applicant has amended the claims to recite the limitations of “a first set of prize field control signals”, a second defined prize award control signals”. The specification fails to define these terms. Therefore it is not clear what these control signals represent. Are these control signals issued by the user, the processor and/or do these control signals represent some value such as a variable that is used by the presentation assembly to convey information to the user. The claims further recite the limitation of “the prize field”, however, the claims and/or specification fail to describe or define what a prize field actually comprises. Is this merely a variable of some sort or is this an element that is displayed upon a display such as reels etc. The metes and bounds of these claims cannot be accurately determined as the amendments are not fully supported by the specification as originally filed.
Claim 1 and 11 recites the limitation "the prize field" in page 5 line 13 and page 9, lines 23 and 24. There is insufficient antecedent basis for this limitation in the claim.
Response to Arguments
Regarding the rejection of the claims under 35 U.S.C. 101, the Applicant argues essentially that the claims define a specific technological process and not an abstract idea under Step 2A Prong One. The Applicant further states the various amendments that recite limitations of a secure machine architecture, machine implemented security, operating while in a secure state, internal data processing and hardware control and states that:
“This defines a specific machine control process involving secure operation (authenticated state),
internal data generation (specific RNG type/use untimeable by humans), data transformation
(internal machine determinations translated into defined control signals configured for specific
hardware), and hardware command execution (transmitting those signals to actively cause
changes in the physical presentation assembly). This intricate sequence of internal machine
operations and hardware control is technological in nature, cannot practically be performed in
the human mind, and is distinct from the abstract grouping of "organizing human activity,"
consistent with the Memo's reminder to avoid overextending abstract idea categories. The
claims define a specific way of operating the machine's components, not abstract rules for
human behavior. (Remarks page 12)
The Examiner respectfully disagrees and notes that under Step 2A Prong One the claims are clearly directed to Certain Methods of Organizing human activity. The claims are clearly directed towards a wagering game that enables a player to wager upon game outcomes receive payouts based upon the satisfaction of that wager, which is a fundamental economic practice. The claims are further directed towards the management of interactions between players such as the following of gaming/wagering rules.
Applicant further argues “The Amended Claims Integrate Any Alleged Abstract Idea into a Practical Application by Reciting Specific Technological Improvements Amounting to Significantly More (Step 2A, Prong Two and Step 2B)”
This specific protocol-involving signal generation, transmission, and hardware control integrated with secure operation and the unique game logic-constitutes the "particular solution" and unconventional technical configuration that improves the technology of secure, dynamic feature presentation on regulated gaming machines. This goes beyond merely automating rules or using generic components in a conventional way.
The Examiner respectfully disagrees and notes that beyond the mere allegation that an “improvement to the technology of secure, dynamic feature presentation on regulated gaming machines” the Applicant fails to specifically point out how the generically claimed gaming hardware of the claims is actually improved. The Applicant is merely utilizing conventional computing hardware and/or gaming machines comprising conventional additional elements such as RNG, authentication protocols etc to carry out the abstract idea or gaming rules.
Applicant further states:
This specific technical operation provides improvements to the gaming machine technology itself, consistent with the Memo's focus on technological improvements:
Improvement to Security and Integrity: The explicit requirement for authentication prior to execution and operation in an authenticated state provides a specific technical improvement related to the secure and reliable operation required for regulated gaming machines.
The Examiner respectfully disagrees and notes that the utilization of authentication in a gaming machine is generic and conventional as is evidenced by Gura above and further the mere linking of authentication to the gaming environment is not indicative of an improvement to the computer or game machine itself.
Applicant states: Improvement to Computer Functionality / Machine Control and Output: The newly amended limitations explicitly reciting the transformation of game state determinations into defined control signals and the transmission of these signals to cause specific actions by the presentation assembly define an improved technical method for the machine to translate complex internal states (feature awards, subsequent feature triggers/stacking) into precise, dynamic hardware outputs (visual animations, application of game rules during bonus spins, indication of awards). This enhances the machine's functional ability to communicate information via its physical interface, constituting 28 technical improvement to its output system and the user interface, analogous to the eligible improved GUI in USPTO Example 37.
The Examiner respectfully disagrees and notes that what the Applicant is reciting conventional and generic functions of a generic computer or game machine such as taking inputs such as player inputs, processing the inputs and determining outputs such as outputting game states by means of a generic display interface.
Applicant states: Improvement to Efficiency/Resource Management (Rebuttal): The Office Action dismisses efficiency benefits as merely marketing. Applicant respectfully disagrees. The logic described in the specification, such as managing potentially multiple concurrently active features triggered by different symbol types during bonus spins, and potentially optimizing RNG usage as discussed previously, directly impacts the computational steps performed by the secured game-logie circuitry. Reducing the processing load or enabling more complex, layered features without overburdening this specific, regulated hardware is & tangible technical improvement to that specialized machine's operation. It improves the functioning of this specialized computer for its intended purpose (MPEP $2106.05(a)).
The Examiner respectfully disagrees and notes that the Applicant fails to provide any substantive evidence other than the allegation, how the claimed limitations reduce processing load or enable more complex layered features without overburdening the hardware. The Examiner is not persuaded.
Regarding the Applicant’s remarks directed towards Debrander and Berkheimer, the Examiner points to the above rejection addressing the newly amended claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROSS A WILLIAMS whose telephone number is (571)272-5911. The examiner can normally be reached Mon-Fri 8am - 4pm.
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, Kang Hu can be reached at (571)270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RAW/ Examiner, Art Unit 3715
/KANG HU/ Supervisory Patent Examiner, Art Unit 3715
Prosecution Insights