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 .
DETAILED ACTION
Response to Arguments
Applicant's arguments filed 3/5/2026 have been fully considered.
Applicant’s 101 arguments of improved GUI via selective display of hidden progressive, citing Core Wireless, remain unpersuasive. The “without displaying” limitation and period-of-exclusivity mechanics are functional game-design choices, not technological improvements to computer or interface functionality. The rejection is maintained and updated below.
The 102(a)(1) rejection over Baerlocher (US 2008/0076515 A1) is withdrawn in view of the amendments. Please review new rejection below.
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 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 the abstract idea of certain methods of organizing human activity. 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
More specifically, regarding Step 1, of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a machine, process, and/or an article of manufacturer, which are statutory categories of invention.
Step 2a – Prong 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.
The claims are directed to the abstract idea of certain methods of organizing human activity, specifically, rules for managing a wagering game, including funding, associating, incrementing, and conditionally providing progressive jackpot awards with player-specific exclusivity and hidden components.
Claim 1: A gaming system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: communicate data that results in a display, by a display device, of a first progressive award without displaying any second, hidden progressive awards, wherein responsive to an occurrence of a progressive award exclusivity event associated with a first player and a period of exclusivity, exclusively associate a second, hidden progressive award with the first player during a period of exclusivity triggered by a progressive award exclusivity event occurring in association with the first player, and responsive to an occurrence of a progressive award increment event associated with the first player during the period of exclusivity, increase a value of the second, hidden progressive award, responsive to an occurrence of when a progressive award triggering event occurs in association with the first player during the period of exclusivity, communicate data that results in a display of cause the first progressive award and at least a portion of the second, hidden progressive award to be being provided to the first player, and responsive to an occurrence of when the progressive award triggering event occurs in association with a second, different player during the period of exclusivity, communicate data that results in a display of cause the first progressive award to be being provided to the second, different player.
Independent Claims 12 and 17 recite substantially similar subject matter (player-tracking-status-based exclusivity periods, modification of displayed vs. hidden award values, and conditional provision).
The limitations are directed to an abstract idea as it comprises new or modified rules for conducting a gambling game (trigger exclusivity, build a hidden personal progressive, pay the shared + hidden amount only if the exclusive player triggers, otherwise protect the hidden amount). This is functionally identical to rules for bonus awards, side pots, or insurance features in gambling—a fundamental economic practice long prevalent in gaming. See In re Smith, 815 F.3d 816 (Fed. Cir. 2016); In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018); Beteiro, LLC v. DraftKings Inc., 86 F.4th 1146 (Fed. Cir. 2023); Miller v. IGT, 2024 WL 3887131 (Fed. Cir. Aug. 21, 2024).
Step 2a – Prong 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)
The additional elements do not integrate the abstract idea into a practical application. The claims recite only generic computer components (processor, memory device, display device) performing their routine functions (storing instructions, communicating data for display, incrementing values, conditionally providing awards).
The “improved graphical user interface” argument (citing Core Wireless Licensing) is not persuasive. The selective/non-display of the hidden progressive award is merely the conventional output of applying the abstract game rules—it does not improve the functioning of the computer, solve a technical problem in GUI technology, or provide any unconventional interface functionality (e.g., no specific navigation, icon arrangement, or user-interaction improvement independent of the game rules). Unlike Core Wireless, the display limitations here are dictated by the game-design choices of “hidden” and “exclusivity,” not by any technological improvement. See MPEP 2106.05(a); USPTO Eligibility Example 46 (gaming examples that merely automate conventional game rules on generic displays remain ineligible). The “hidden” aspect and “period of exclusivity” remain purely functional game-design choices.
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.
There is no inventive concept - no element or combination of elements that is significantly more than the abstract idea itself. All components and functions were notoriously conventional in the gaming industry long before the filing date: Player-specific progressives (Moody, US 6,565,434 B1 or Acres, US 6,375,188 B1) Mystery/hidden bonus pools (Olsen, US 6,146,273 or Baerlocher, US 2008/0076515) Session-based or time-limited bonus eligibility (ubiquitous in player-tracking systems by the early 2000s) Even if the exact combination was arguably novel or non-obvious, novelty in the abstract game rule does not supply an inventive concept (see Synopsys V. Mentor Graphics, 839 F.3d 1138 (Fed. Cir. 2016); SAP America V. InvestPic, 898 F.3d 1161 (Fed. Cir. 2018)).
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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8-9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 does not further limit the first player; instead, it is making it broader by changing the first player into a group of players. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Breckner (US 2007/0191088 A1).
Claim 1. Breckner discloses a gaming system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
communicate data that results in a display, by a display device, of a first progressive award (e.g. group progressive award, $1050), [0210] without displaying any second, hidden progressive awards wherein a second, hidden progressive award is exclusively associated with a first player during a period of exclusivity triggered by a progressive award exclusivity event occurring in association with the first player (Player tracking card insertion triggers exclusive association, wherein a personal progressive award which is associated with the specific player via the player tracking card and moves with the player while carded (period of exclusivity), and a value of the second, hidden progressive award is increased when a progressive award increment event associated with the first player occurs during the period of exclusivity (personal increment = 1% (or other rate) of only that player’s wagers during the carded session), [0208]-[0212],
when a progressive award triggering event occurs in association with the first player during the period of exclusivity, communicate data that results in a display of the first progressive award and at least a portion of the second, hidden progressive award being provided to the first player (Winner receives group amount + full personal increment (e.g., Player A: group $1050 + personal $3 = $1053 total), [0210]-[0212], and
when the progressive award triggering event occurs in association with a second, different player during the period of exclusivity, communicate data that results in a display of the first progressive award being provided to the second, different player (Only the group amount goes to the second player; the first player’s hidden personal increment award remains protected and is not awarded to the second player) [0210]-[0212].
Claim 2. Breckner discloses the gaming system of Claim 1, wherein the memory device stores a plurality of further instructions that, when executed by the processor when the progressive award triggering event occurs in association with the first player during the period of exclusivity, cause the processor to communicate data that results in a display of the first progressive award and the second, hidden progressive award being provided to the first player (e.g., Player A: group $1050 + personal $3 = $1053 total), [0210]-[0212].
Claim 3. Breckner discloses the gaming system of Claim 1, wherein the portion of the second, hidden progressive award is based on at least one of a value of the first progressive award and the value of the second, hidden progressive award (e.g. the personal incremental award is a percentage of the player’s wager into the progressive award), [0208]-[0210].
Claim 4. Breckner discloses the gaming system of Claim 1, wherein the period of exclusivity associated with the occurrence of the progressive award exclusivity event concludes responsive to the occurrence of the progressive award triggering event in association with the first player (i.e. the personal progressive resets upon the associated player winning any progressive award), [0212].
Claim 5. Breckner discloses the gaming system of Claim 1, wherein the period of exclusivity associated with the occurrence of the progressive award exclusivity event concludes following at least one of an amount of time, a quantity of games played by the first player, a quantity of games played by any player, an amount won by the first player, an amount won by any player and a termination of a gaming session by the first player (i.e. period ends on card-out or winnings), [0209]-[0212].
Claim 6. Breckner discloses the gaming system of Claim 1, wherein the progressive award exclusivity event randomly occurs in association with the first player [0154], [0160], [0170].
Claim 7. Breckner discloses the gaming system of Claim 1, wherein the memory device stores a plurality of further instructions that, when executed by the processor, cause the processor to communicate data that results in a display of an enablement of the first player to purchase the occurrence of the progressive award exclusivity event (i.e. side -bet or buy-in embodiments allow players to purchase the occurrence of the progressive award exclusivity event), [0177].
Claim 8. Breckner discloses the gaming system of Claim 1, wherein the first player comprises a group of players (i.e. plurality of players can play as a team or group), [0114].
Claim 9. Breckner discloses the gaming system of Claim 8, wherein the memory device stores a plurality of further instructions that, when executed by the processor when the progressive award triggering event occurs in association with any player of the group of players during the period of exclusivity, cause the processor to communicate data that results in a display of the first progressive award and the portion of the second, hidden progressive award being provided to that player of the group of players (i.e. plurality of players can play as a team or group), [0114].
Claim 10. Breckner discloses the gaming system of Claim 1, wherein the memory device stores a plurality of further instructions that, when executed by the processor during the period of exclusivity associated with the occurrence of the progressive award exclusivity event, cause the processor to communicate data that results in a display to the second player of information associated with at least one of the first player, the second, hidden progressive award and the period of exclusivity (i.e. informing other players that the first player is the winner), [0211]-[0212].
Claim 11. Breckner discloses the gaming system of Claim 1, wherein the memory device stores a plurality of further instructions that, when executed by the processor when the progressive award increment event associated with the second, different player occurs during the period of exclusivity, cause the processor to cause an increase of the value of the second, hidden progressive award [0208]-[0212].
Claim 12-16. Breckner discloses a gaming system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: maintain a displayed progressive award, when a progressive award exclusivity event associated with a first player of a first player tracking status occurs, communicate data that results in a display, by a display device, of an exclusive association of: the displayed progressive award with the first player for a first period of exclusivity, wherein during the first period of exclusivity, a portion of a hidden progressive award is available to be provided to the first player and no other players, and responsive to an occurrence of a progressive award increment event associated with the first player during the first period of exclusivity, a value of the hidden progressive award is increased, and when the progressive award exclusivity event associated with a second, different player of a second, different player tracking status occurs, communicate data that results in a display, by the display device, of an exclusively association of the displayed progressive award with the second, different player for a second period of exclusivity, wherein during the second period of exclusivity, the portion of the hidden progressive award is unavailable to be provided to any player as similarly discussed above.
Claim 17-20. Breckner discloses a gaming system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: maintain a displayed progressive award and a hidden progressive award, communicate data that results in a display, by a display device, of the displayed progressive award without displaying the hidden progressive award, when a progressive award exclusivity event associated with a first player occurs, communicate data that results in a display, by the display device and for a period of exclusivity, of a modification of a value of the displayed progressive award with a value of the hidden progressive award, wherein the value of the hidden progressive award increases with each occurrence of a progressive award increment event associated with the first player during the period of exclusivity, when a progressive award triggering event occurs in association with the first player during the period of exclusivity, communicate data that results in a display, by the display device, of the modified value of the displayed progressive award being provided to the first player, and when the progressive award triggering event occurs in association with a second, different player during the period of exclusivity, communicate data that results in a display, by the display device, of cause the value of the displayed progressive award being provided to the second, different player as similarly discussed above.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached USPTO form PTO-892.
Filing of New or Amended Claims
The examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See Wertheim, 541 F.2d at 263, 191 USPQ at 97 (“[T]he PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.”). However, when filing an amendment an applicant should show support in the original disclosure for new or amended claims. See MPEP § 714.02 and § 2163.06 (“Applicant should specifically point out the support for any amendments made to the disclosure.”). Please see MPEP 2163 (II) 3. (b)
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SENG H LIM whose telephone number is (571)270-3301. The examiner can normally be reached Monday-Friday (9-5).
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, David L. Lewis can be reached at (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Seng H Lim/Primary Examiner, Art Unit 3715