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 .
Response to Arguments
Applicant's arguments filed January 9, 2026 have been fully considered but they are not persuasive.
Applicant argues that the “fallback” process of providing for more generic gaming elements to be installed when tailored assets are not found suitable is not an abstract mental process. Examiner disagrees and notes that as noted below the claims still recite abstract mental processes as noted in the rejection below. Using a generic or best substitute when a better option isn’t available is a mental process that could be performed by a human mind and would be something that an individual would commonly do in many everyday situations, e.g. telling someone picking up pizza that if an anchovy and garlic slice isn’t available, then cheese will do.
Applicant argues that the use of the “fallback” process improves the functioning of electronic gaming devices. Examiner disagrees and notes that there is no technical improvement and trying to patent a process where, in the event the best option isn’t available, then a generic option will do, speaks to many aspects of daily life and does not have a foundation in the practical applications that have been noted in the MPEP.
Applicant argues that the under Step 2B the presence of novelty and non-obviousness renders the claims patent eligible. Examiner disagrees and notes that the test for patent eligibility is distinct from novelty and non-obviousness. The claims remain rejected.
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 1-8 and 11-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception. The claims will be analyzed with respect to the Subject Matter Eligibility Test at MPEP§2106.
Subject Matter Eligibility – Step 1 (see MPEP§2106.03)
The claims recite one of the four statutory categories of subject matter.
Subject Matter Eligibility – Step 2A Prong 1 (see MPEP§2106.04(a-c))
The claims recite Mental Process (see MPEP§2106.04(a)(2)III). The claims in particular recite steps that amount to choosing which software and digital assets to send to a machine based on the machine configuration. This type of mental process is something that a technician would perform during the normal course of software upgrades and updates. The abstract ideas have been noted in the claims below.
Regarding claim 1, a gaming device comprising:
Identify at least the cabinet type and the display device orientation of the one or more hardware capabilities of the gaming device (mental process of identifying a gaming machine according to cabinet and display orientation);
determine using least the cabinet type and the display device orientation of the one or more hardware capabilities of the gaming device, whether at lease a set of tailored assets of the plurality of tailored assets can be identified, the set of tailored assets being tailored for the one or more hardware capabilities of the gaming device (mental process of identification of the presence of items to move that are associated with a certain machine);
transfer a set of tailored, when it is determined that the set of tailored assets cannot be identified, one or more common assets of the plurality of common assets from the chip to the one or more storage devices of the gaming device (mental process of selection and execution of items to move, in this instance the selection of default or generic items to move when tailored assets are not found);
configure, according to the transferred one or more common assets, at least display data, game logic and one or more paytables of a game for the gaming device (mental process of determining the configuration that is to be made according to the transferred assets).
Regarding claim 2, the gaming device of claim 1, wherein the game build configuration is stored in non-volatile memory of the one or more storage devices (mental process of where things are stored).
Regarding claim 3, the gaming device of claim 1, wherein execution of the instructions causes the controller to determine that the game build configuration is supported by the gaming device prior to executing the game (mental process of determining).
Regarding claim 4, the gaming device of claim 1, wherein execution of the instructions causes the controller to:
receive selections that specify the game build configuration (mental process of receiving instructions/information); and;
store the game build configuration in non-volatile memory of the one or more storage devices (mental process of placing information/programming a machine).
Regarding claim 5, the gaming device of claim 1, wherein; the transferred one or more common assets includes artwork specific to the orientation of the display device (mental process of sending the information associated with a hardware configuration to that configuration, e.g. filling your car up with the right type of fuel).
Regarding claim 6, the gaming device of claim 1, wherein determining whether at least the set of tailored assets can be identified includes attempting to transfer a tailored asset of the set of tailored assets from a first directory specific to a hardware capability specified by the game build configuration (mental process of moving elements fitting a certain configuration in an attempt to determine suitability of the elements to the configuration commonly known as trial and error); and transfer the one or more common assets includes transferring a common asset as a surrogate for the tailored asset from a default directory if the attempt to transfer the tailored asset from the first directory failed (mental process of falling back to a default when trial and error proves that no better option exists).
Regarding claim 7, the gaming device of claim 1, wherein determining whether at least the set of tailored assets can be identified includes attempting to transfer a first asset from a storage location specified by the game build configuration (mental process of moving elements fitting a certain configuration); and transferring the one or more common assets includes transferring the first asset from a storage location of common assets if the attempt to transfer the first asset from the storage location specified by the game build configuration failed (mental process of falling back to a default when trial and error proves that no better option exists).
Regarding claims 8 and 11-21, these claims contain abstract elements as noted above regarding claim 1-7 mutatis mutandis.
Subject Matter Eligibility – Step 2A Prong 2 (see MPEP§2106.04(d))
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements are a display device (hardware), storage devices (hardware), build configurations (insignificant extra-solution activity), storage readers (hardware), a controller (hardware), execution of a game (insignificant extra-solution activity), presentation of a UI (insignificant extra-solution activity) and generic computer hardware; insignificant extra solution activity such as collecting information, analyzing it, and displaying certain results of the collection and analysis to data; and the use of software to tailor information and provide it to the user on a generic computer. These additional elements individually and in combination provide for limitations that do not integrate the judicial exception into a practical application. These additional elements (1) add “insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g)” (MPEP§2106.04(d)I) and (2) generally link “the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).” (MPEP§2106.04(d)I).
These additional elements individually and in combination are not limitations that provide for “improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);” (MPEP§2106.04(d)I) apply or use the “judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);” (MPEP§2106.04(d)I) implement the “judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);” (MPEP§2106.04(d)I) effect “a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c);” (MPEP§2106.04(d)I) or apply or use “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, as discussed in MPEP § 2106.05(e).” (MPEP§2106.04(d)I). As such the claims as a whole do not integrate the judicial exception into a practical application.
Subject Matter Eligibility – Step 2B (see MPEP§2106.05)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are well-understood, routine and conventional generic computer hardware and insignificant extra solution activity (see MPEP§2106.05). The claimed additional elements with citations indicating their well-understood, routine and conventional nature are provided below.
The claimed display is well-understood routine and conventional as noted at U.S. Pub. 2008/0254854.
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 PETER J IANNUZZI whose telephone number is (571)272-5793. The examiner can normally be reached M-F 9:30AM-5:30PM EST.
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.
/PETER J IANNUZZI/ Primary Examiner, Art Unit 3715