DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 23rd, 2025 has been entered.
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 as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As summarized in MPEP § 2106, subject matter eligibility is determined based on a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant application includes claims concerning an electronic gaming device/system (i.e., a machine) in claims 1-16, and a method of electronic gaming (i.e., a process) in claims 17-20.
In Prong 1 of Step 2A, it must be determined whether the claimed invention recites an Abstract Idea, Law of Nature or a Natural Phenomenon.
In particular exemplary presented claim 1 includes the following underlined claim elements:
1. An electronic gaming device comprising:
a display device;
an input device operable to receive a player input;
a memory device for storing instructions; and
a processor in communication with the display device, the input device, and the memory device, wherein the instructions, when executed by the processor, cause the processor to:
display a base game outcome of a base game on the display device, the base game outcome comprising a plurality of displayed symbols included on a plurality of reels;
determine that the plurality of displayed symbols includes a trigger symbol;
in response to the display of the trigger symbol, display a feature game comprising a plurality of user selectable pick icons and a plurality of collection areas, wherein each of the plurality of user selectable pick icons corresponds to one of the plurality of collection areas;
prior to receiving a selection of a pick icon from the input device, perform a first lookup operation in a first lookup table stored in the memory device using an output from a random number generator (RNG) to determine a number of award icons to be selected
store, in the memory device, a second lookup table corresponding to a low output and a third lookup table corresponding to a high output;
determine a sequence of lookup operations for accessing the second lookup table and the third lookup table:
prior to receiving the selection of the pick icon from the input device, perform the sequence of lookup operation in the second lookup table and the third lookup table to determine an award value of each of a plurality of award icons;
prior to receiving a selection of a pick icon from the input device, assign each of the plurality of award icons to one of the plurality of collection areas:
receive by the input device the selection of a pick icon of the plurality of user selectable pick icons;
based on the received selection, transform one of the plurality of collection areas into an activated collection area; and
display the plurality of award icons based upon the number of award icons, each of the plurality of award icons including the award value; and
award each award value included on the plurality of award icons assigned to the activated collection area.
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes including observation, evaluation, and judgement because the claims are directed to series of steps for evaluating determining a game state responsive to user interaction and as well as Certain Methods of Organizing Human Activity including managing personal behavior including interactions between people including social activities and following rules or instructions because the claims set forth the interactions involving one or more parties in the context of a game interface.
As the exemplary claim recites an Abstract Idea, Law of Nature or a Natural Phenomenon it is further considered under Prong 2 of Step 2A to determine if the claim recites additional elements that would integrate the judicial exception into a practical application. Wherein the practical applications are set forth by MPEP §2106.05(a-c,e) are broadly directed to: the improvement in technology, use of a particular machine and applying or using the judicial exception in a meaningful way beyond generally linking the use thereof to a technology environment. Limitations that explicitly do not support the integration of the judicial exception in to a practical application are defined by MPEP 2106.05(f-h) and include merely using a computer to implement the abstract idea, insignificant extra solution activity, and generally linking the use of the judicial exception to a particular technology environment or field of use.
With respect to the above the claimed invention is not integrated into a practical application because it does not meet the criteria of MPEP §2106.05(a-c,e) and although it is performed on a display device, an input device, a memory device(memory), and a processor it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonably include other devices such as generic computers, smart phones, tablets, laptops, game consoles and the like. Accordingly, the claims limitations are not indicative of the integration of the identified judicial exception into a practical application, and the consideration of patent eligibility continues to step 2B.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional element(s) or combination of elements in the claim(s) other than the abstract idea(s) per se including a display device, an input device, a memory device/memory, and a processor amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structures that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry per the applicant’s description (Applicant’s specification Paragraphs [0027], [0033], [0046]-[0047], [0057], [0062], [0069]). Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Accordingly, as presented the claimed invention when considered as a whole amounts to the mere instructions to implement an abstract idea [i.e. software or equivalent process steps] on a generic computer [i.e. controller or processor] without causing the improvement of the generic computer or another technology field.
The applicant’s specification is further noted as supporting the above rejection wherein neither the abstract idea nor the associated generic computer structure as claimed are disclosed as improving another technological field, improvements to the function of the computer itself, or meaningfully linking the use of an abstract idea to a particular technological environment (Applicant’s specification Paragraphs [0027], [0033], [0046]-[0047], [0057], [0062], [0069]). In particular the applicant’s specification only contains computing elements which are conventional and generally widely known in the field of the invention described, and accordingly their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art per the requirements of 37 CFR 1.71. Were these elements of the applicant’s invention to be presented in the future as non-conventional and non-generic involvement of a computing structure, such would stand at odds with the disclosure of the applicant's invention as found in their specification as originally filed.
“[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301). In this case, the claims recite a generic computer implementation of the covered abstract idea.
The remaining presented claims 2-20 incorporate substantially similar abstract concepts as noted with respect to the exemplary claim 1, while the additional elements recited by the additional claims including one or more of a computer readable storage medium, a computer, a server system, and a gaming device as respectively presented that when considered both individually and as a whole in the respective combinations of the additional claims are not sufficient to support patent eligibility under prong 2 of step 2A or step 2B for the reasons set forth above with respect to the exemplary claim 1 and further present substantially similar abstract concepts as noted with reflection to exemplary claim 1 above and therefore are similarly directed to or otherwise include abstract ideas.
Therefore, the listed claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed December 9th, 2025 have been fully considered but they are not persuasive.
Commencing on pages 12 through 17, the Applicant presents various arguments against the rejection of claims under 35 USC 101 including:
i) that the claimed invention does not fall under the enumerated groupings of abstract ideas including Mental Processes and Certain Methods of Organizing Human Activity because the claim recites computer implemented steps including storing and accessing information stored in tables in memory in near real-time, updating of a visual display and the use of RNG lookup operations that cannot be practically performed by the human mind (Applicant Remarks Pages 12-14);
ii) that the claimed invention reflects a patent eligible practical application through the incorporation of an improvement to another technology as defined by MPEP 2106.04(d)(1) and embodied in an invention that may provide an improved award probability, by providing interactive selectable game elements as described in specification paragraphs [0025], [0026], and reflect a technical improvement of introducing randomness without introducing computational lag through the use of lookup tables as described in specification paragraphs [0025], [0053], and [0112] (Applicant Remarks Page 15);
iii) that the claimed invention is analogous to claim 1 of example 42 of the 2019 Patent Eligibility Guidance directed to standardizing non-standardized information for use in a standardized database and automatically distributing the same is proposed as being analogous to the use of a lookup table in the claimed invention (Applicant Remarks Pages 15-16); and
iv) that the claims satisfy step 2B of the Alice/Mayo test because the rejection has not established that the claimed subject matter is well-understood, routine or conventional (Applicant Remarks Page 17).
Responsive to the Applicant arguments as summarized above the following is noted in respectively corresponding order and heading:
i.a) The courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer (See MPEP 2106.04(a)(2)(III)(c)). While the Applicant’s remarks propose that the steps recite computer specific activity and operations that would not fall under a Mental process because they cannot be performed by the human mind, it is respectfully noted that any implementational of an abstract idea on a computer would entail the described computer specific activity in the performance on the abstract idea by the computer. Alternatively stated, the corresponding steps performed by the machine to practice an abstract idea would not, in-of-itself exclude an abstract idea from falling under this category because if it did then all abstract ideas once practiced on a computer would become patent eligible and this is not the standard set forth by cited MPEP section provided herein above. The Applicant’s proposition that the claimed invention requires a near real-time execution beyond human capability is respectfully non-persuasive because it does not reflect the presented claim limitations and is not explicitly described by the instant specification as being an incorporated property of the disclosed invention. Additionally, the grouping of certain methods of organizing human activity does not preclude the involvement of a computer as a tool to implement the abstract idea (See MPEP 2106.05(f)) and as previously noted “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301) according the involvement of a computer does not in of itself preclude the claimed invention from falling under the enumerated groupings of abstract idea as proposed.
ii.a) the Applicant’s arguments and cited portions of the Applicant’s specification (Paragraphs [0025], [0026], [0053], and [0112]) do not reasonably support the proposition that the reduction of computational load through the use of lookup tables is an improvement in technology as defined by MPEP 2106.05(a) and MPEP 2106.04(d)(1) because the Applicant’s specification does not identify such as an improvement but only references this feature in a conclusory manner inferring that the implementation of the same was well within the understanding of one of ordinary skill in the art per the drafting requirements of 37 CFR 1.71.
iii.a) The claimed invention is not analogous to claim 1 of example 42 of the 2019 Patent Eligibility Guidance, (directed to standardizing non-standardized information for use in a standardized database and automatically distributing the same), as proposed, for at least the reason that the claimed invention does not recite the claim features as addressed in example 42 and instead concerns determining and awarding award values based game events incorporating a user selection. Accordingly, example 42 of the 2019 Patent Eligibility Guidance does not support the proposed subject matter eligibility of the claimed invention as proposed.
iv.a) The clamed invention does not support the presence of significantly more under step 2B of the Alice/Mayo test for the reasons noted in the rejection above and additionally because consistent with the decision in Berkheimer v. HP, Inc, and April 19th 2018 USPTO memo concerning the same, the rejection of claims cites the disclosure of the instant application and the requirements thereof as set forth by 37 CFR 1.71 in support of the determination that the non-abstract portion of the claimed invention are well understood, routine, or conventional. The absence of a prior art based rejection does not support the presence of significantly more under step 2b of the Alice/Mayo test, because the “‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”).
In view of the preceding the rejection of claims as presented herein above, is respectfully maintained
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E MOSSER whose telephone number is (571)272-4451. The examiner can normally be reached M-F 6:45-3:45.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715