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
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/12/2026 has been entered.
Response to Amendment
3. Applicant has cured Claims 1 and 14. Thus, the objections to the claims is withdrawn.
4. Applicant has amended the independent claims to recite a display device and that the game of chance affects an in-game asset of the skills-based game based on the result of the session of the game of chance. However, Examiner does not recognize these changes as providing a persuasive argument and a recitation of a practical application of the abstract wagering recited in the claims. Thus, the rejection under 35 USC § 101 is maintained.
5. Applicant argues and Examiner agrees that Washington does not disclose the result of a session (Remarks 7 filed 3/12/2026).
6. Applicant argues and Examiner disagrees that Meyerhofer’s award of a skill enhancer whenever a wager is executed regardless of the chance-based outcome of the wager teaches away from “the result of the session of the game of chance affects an in-game asset of the skills-based game based on the result of the session of the game of chance. A "prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .... ", In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). Likewise The courts will not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). As recited in the claim, as long as there is a result of the game of chance the affect will be an in-game asset of the skills-based game. According to Meyerhofer, there is a result of the session of a game of chance affects an award of an in-game skill enhancer (asset). Meyerhofer does not teach away because his use of the word “regardless” provides one or more alternatives and he does not criticize, discredit, or otherwise discourage the solution claimed, nor is there any language teaching away from awarding the skill enhancer as a result of the session of the game of chance. Thus, the rejection of the claims based on the combination of Washington and Meyerhofer is maintained.
Claim Rejections - 35 USC § 101
7. 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.
8. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
9. Step 1
Claims 1-7 are directed to a method meeting the requirements for Step 1.
Claims 8-20 are directed to an apparatus/system meeting the requirements for Step 1.
10. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 8 and 15), the following italicized steps recite an abstract idea of the abstract rules for playing a game of chance within another abstract idea of the abstract rules for playing a skill-based game and abstract wagering which are certain methods of organizing human activity:
Claim 1
1. A method for conducting an electronic game, the method comprising:
executing, on a gaming system, a skills-based electronic game;
displaying, on a display device, on the gaming system, a game of chance while executing the skills- based electronic game;
conducting, on the gaming system, a session of the game of chance within execution of the skills-based game;
determining, by the gaming system, a result of the session of the game of chance based on a certified random number generator infrastructure; and
displaying, by the gaming system, on the gaming device, an indication of the determined result of the session of the game of chance in the skills-based game, wherein the result of the session of the game of chance affects an in-game asset of the skills-based game based on the result of the session of the game of chance.
Claim 8
8. A gaming system comprising:
a display device;
a processor coupled to the display device; and
a memory coupled with and readable by the processor and storing therein a set of instructions which, when executed by the processor, causes the processor to:
execute a skills-based electronic game;
display, on the display device, a game of chance while executing the skills-based electronic game;
conduct a session of the game of chance within execution of the skills-based game;
receive a random number from a decentralized random number generator of a certified random number generator infrastructure;
determine a result of the session of the game of chance based on the received random number; and
display, on the display device, an indication of the determined result of the session of the game of chance in the skills-based game, wherein the result of the session of the game of chance affects an in-game asset of the skills-based game based on the result of the session of the game of chance.
Claim 15
15. A non-transitory, computer-readable medium comprising a set of instructions stored therein which, when executed by a processor, causes the processor to:
execute a skills-based electronic game;
display, on a display device, a game of chance while executing the skills-based electronic game;
conduct a session of the game of chance within execution of the skills-based game;
determine a result of the session of the game of chance based on random number received from a decentralized random number generator of a certified random number generator infrastructure in real time during the session of the game of chance; and
display, on a display device, an indication of the determined result of the session of the game of chance in the skills-based game, wherein the result of the session of the game of chance affects an in-game asset of the skills-based game based on the result of the session of the game of chance.
This gaming system is similar to the gaming system in Savvy Dog Sys. v. Pa. Coin, LLC, 2023-1073 (Fed. Cir. Mar. 21, 2024) which describes an electronic gaming method and system with a preview screen, specifically for a game called "Tic-Tac-Fruit". The Federal Circuit held that the claims directed to a skill-based element by allowing players to preview game setups before playing, was directed to an abstract idea. Also, the Court found similar implementations of claims directed towards the rules for playing a game in In re Smith, 815 F.3d 816, 818-19 (Fed. Cir. 2016) concluding that the claimed “method of conducting a wagering game” was directed to an abstract idea” and In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). There, the patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of "rules for playing games", which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011.
Here, each claim, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitations according to the rules for playing a skill game, a game or chance, and wagering (See Claims 11, 18, and 19) which are certain methods of organizing human activity.
As explained in the MPEP and the October 2019 Update, in situations like this where a series of steps recite judicial exceptions, examiners should combine all recited judicial exceptions and treat the claim as containing a single abstract idea for purposes of further eligibility. See MPEP 2106.04 and 2106.05(II). Thus, for purposes of further discussion, the abstract ideas are collectively viewed as a single abstract idea of wagering which is a certain manner of conducting human activity.
11. Step 2A Prong II
The abstract idea is not integrated into a practical application. According to 2019 PEG, a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
Here, a processor, memory, plurality of instructions, and display are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. Applicant’s Specification does not disclose that the processor, memory, set of instructions or display are directed to a technological solution to a technological problem that “overcome some sort of technical difficulty.” citing ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 768 (Fed. Cir. 2019).
Similar to the disclosure in Savvy Dog, here, Applicant’s specification never suggests that the processor is improved from a technical perspective, or that it would operate differently than it otherwise could but instead “the disclosed processor is merely a means for setting up and playing the game where the game processor generates an electronic game display on a game terminal” (see ChargePoint, 920 F.3d at 768). The “[t]he gaming system 115 can comprise, for example, a game console, personal computer, or other computing device executing a video game or other skills-based game. Generally speaking, and as known in the art, the gaming host 105 can monitor and manage execution of the skills-based game on the gaming system 115 and provide services related to play of the skills-based game such as remote play between any number of players.” ([0019]). See also, “[t]he present disclosure contemplates a variety of different personal gaming devices . . . (c) one or more personal gaming devices, such as desktop computers, laptop computers, tablet computers or computing devices, personal digital assistants, mobile phones, and other mobile computing devices.” ([0051]). Memory devices include “[n]on-limiting examples of memory 210 include Random Access Memory (RAM), Read Only Memory (ROM), flash memory, Electronically-Erasable Programmable ROM (EEPROM), Dynamic RAM (DRAM), etc. ([0034]). And “[p]rogram code embodied on a computer readable signal medium may be transmitted using any appropriate medium, including but not limited to wireless, wireline, optical fiber cable, RF, etc., or any suitable combination of the foregoing.” ([0064]). The program code where “[c]omputer program code for carrying out operations for aspects of the present disclosure may be written in any combination of one or more programming languages, including an object oriented programming language such as Java, Scala, Smalltalk, Eiffel, JADE, Emerald, C++, C#, VB.NET, Python or the like, conventional procedural programming languages, such as the "C" programming language, Visual Basic, Fortran 2003, Perl, COBOL 2002, PHP, ABAP, dynamic programming languages such as Python, Ruby and Groovy, or other programming languages.” ([0065]).
Consequently, these devices and programming are viewed as nothing more than an
attempt to generally link the use of the judicial exception to the technological environment of a computer or as a means to automate the steps. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Applicant has amended the claims with a display for displaying the game and indication of game results which is extra-solution activity. Accordingly, each claim, as a whole, does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. Thus, Claim 1, and similarly Claims 8 and 15, lack the eligibility requirements of Step 2 Prong II.
12. Step 2B
According to the 2019 PEG, in addition to the considerations discussed in Step 2A, an additional consideration indicative of an inventive concept (aka “significantly more”) is the addition of a specific limitation other than what is well-understood, routine, conventional activity in the field (MPEP 2106.05(d)). Conversely, an additional consideration not indicative of an inventive concept is simply appending well-understood, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
The extra-solution display for displaying was identified as extra-solution activity. However, in Electric Power, the collecting and displaying of information was held to be extra-solution activity.
Thus, Claim 1, and similarly Claims 8 and 15, do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. Thus, Claims 1, 8 and 15 are ineligible.
13. Dependent Claims
Claims 2-3, 5-7 inherit the same abstract idea as Claim 1.
Claims 9-13 inherit the same abstract idea as Claim 8.
Claims 16-20 inherit the same abstract idea as Claim 15.
In Reference to Claims 2-3, 5-7, 9-13, and 16-20
Claims 2, 5-7, 10, 12-13, and 16-17 recite more abstract rules for playing a game. Claims 3 and 9 recite known instrumentalities (e.g., random number generator) in games. Claims 11, 18, and 19 are additional abstract wagering. Claim 20 is extra-solution non-functional descriptive matter labelling the game of chance as a casino game. Thus, none of the claims supply a practical application or inventive concept sufficient to transform the nature of the claim into a patent-eligible application.
Claim Rejections - 35 USC § 103
14. 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.
15. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
16. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
17. Claim(s) 1, 3, 5-13, 15-16,and 18-20 is/are rejected under 35 U.S.C. 102(a1, a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. Pat. Pub. No. 2016/0171827 to Washington in view of U.S. Pat. Pub. No. 2019/0236904 to Meyerhofer.
In Reference to Claims 1, 3, 8, 9, 15, 16, and 20
Washington discloses a casino gaming machine system, method, and non-transitory
computer-readable medium (Fig.15, non-functional descriptive material of “casino” Abstr.
[0020]), comprising:
a display (Fig. 4 426)
a processor (Fig. 4 400, processor 402 [0880-0882]);
a memory readable by the processor and soring a set of instructions, which when executed (memory 404 [0880, 0889], computer program stored in memory [0809]) and machine-readable storage media [1031]), causing the processor to:
execute a skills-based electronic game (Fig. 15 1510 [0210], see also Fig. 18 1812, see also alternate order of steps to be played in any order practical, illustration of steps in drawing does not imply that the illustrate process is exclusive of other variations [0186]);
displaying and conduct a game of chance while executing the skills-based electronic game (Fig. 15 1512, [0214], see also Fig. 18 1812 where ”[i]n some embodiments, the outcome of the RNG-based game of chance is determined after the wager-based triggering event has occurred} [0135]);
determine a result of the {non-wager} session of the game of chance based on a random number received {receive a random number from a decentralized random number of a certified random number generator infrastructure in real time during the session of the game of chance}; (Fig. 14 1514 [0214] and Fig. 18 1820, Applicant discloses a game host 130 where “[t]he gambling host 130 can comprise any number of servers and/or other computing devices as may be used to support operation of a casino or other gaming venue. Among other things, the gambling host 130 can provide or be part of a distributed, certified random number generator infrastructure as known in the art.” ([0020]) which is an admission. See also if yes to 1514, retrieve predetermined RNG-based outcome for the identified NPC [0221]. See also system grabs RNG outcomes in real-time gameplay [1098]);
displaying an indication of the determined result of the {non-wagering} session of the game of chance in the skills-based game (calculate and display updated information relating to payout/credits/distributions [0221]), wherein the result of the non-wagering session of the game of chance affects {comprises a result in} the skills-based game of chance (depending on the identified NPC, the wager based-game slot reels spin in response to the successful NPC hit/destruction [0223]).
However, Washington is not explicit as to a result of a session and the result of the session of the game of changce affects an in-game asset of the skills-based game. One of skill in the art would be aware of the teachings of Meyerhofer.
According to Meyerhofer, in a game of chance “a player is awarded a skill enhancer in the form of an upgrade to the player's virtual vehicle or a power up to the virtual vehicle whenever a wager is executed regardless of the chance-based outcome of the wager.” [0293]. In this way, wagering in the game of chance results in or affects the execution of the skills-based game because now the player has increased his in-game assets.
One of skill in the art would readily appreciate the advantages of modifying the game of chance of Washington with the ability to increase skill game assets to further advance in the skill game portion. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
In Reference to Claims 5-7 and 10
Washington discloses a skill-based game comprising a character controlled by a player and displaying the game of chance is performed in response to the character entering a virtual casino and wherein presenting the game of chance is performed based on a result in the skills-based electronic game. Examiner construes entering a “virtual casino” as non-functional descriptive material as a casino or any other virtual object displayed has no relationship to the display or controls of the game. Washington discloses that a player controlling a character is able to enter another room and interacts with NPCs triggering spins of a slot machine type game where a “player’s character” transitions from one room to another [0318] and “[r]eturning to the present hybrid arcade/wager-based game example, as soon as the player enters the new room (e.g., to survey the situation again), rail movement stops and zombies are beginning to swarm towards him. Zombies are coming from a hallway to the right. Confronted by another wave of zombies, the player continues to blast through the hoard of the undead. Each zombie kill initiates a respective, wagered spin of the virtual slot reel, wherein each spin has a respectively independent outcome.” [0318]). The result in the skill-based game can include the player character moving from room to room triggering Zombies is a result in the skill game.
In Reference to Claim 11
Washington also discloses wherein conducting the session of the game of chance comprises receiving a wager on the game of chance (wager-based game of chance [0247, 0257, 0290]).
In Reference to Claims 12 and 13
Washington discloses loot piles which are in-game assets ([0545, see also 0302, 0328, 0463]) which are tallied winnings ([0323]) which are applied as wagers.
In Reference to Claim 18
Washington discloses wherein the session of the game of chance comprises a wagering session (steps may occur simultaneously [0051], where “e.g., execution of wager-based slot reel spin may take place concurrently with or simultaneously with the player's continued and active participation in the arcade-style portion of the game.” ([0096]).
In Reference to Claim 19
See rejection of Claims 1, 11, 12, 14, 15, and 18.
18. Claims 2 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Washington, Meyerhofer further in view of U.S. Pat. No. 2010/0016056 to Thomas.
Washington discloses the invention substantially as claimed to include the presentation of a game of chance and of setting game options from an options menu ([0441], [0812, 0813]). However, Washington does not disclose provided the game of chance as an option in a tutorial which explains the game and of receiving an input selecting the option. One of skill in the art would be aware of the visually presenting wagering game options of Thomas.
According to Thomas, wagering games can be configured with an entertainment layer having a plurality of features and a player input device in communication with the entertainment layer to receive player selections (Abstr.). “[t]he method further includes conducting a gaming layer including the at least one wagering game and providing a gaming machine including a display and a player input device. The gaming machine is in communication with the entertainment layer and the gaming layer. The display is adapted to present information provided to the gaming machine from the entertainment layer and the gaming layer. The method further includes conducting at least one feature of the entertainment layer during the period of eligibility. The entertainment layer is operable in response to at least one input from the player input device. ([0008]). The entertainment layer 230, 250, 290 “may be provided with any number of non-gaming options, such as, for example, video games, arcade games, internet browsing, stories, e-books, articles, tutorials, television, videos, non-wager-accepting wagering games, etc. The entertainment layer 230, 250, 290 may also be provided with a free-roaming adventure in which prizes associated with the gaming layer 220, 240, 280 are revealed based on the interactivity with the entertainment layer 230, 250, 290 by a user.” ([0101]). Thomas invents this because “there is a continuing need for gaming machine manufacturers to continuously develop new games and improved gaming enhancements that will attract frequent play through enhanced entertainment value to the player.” ([0003]).
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
Here, it would require only routine skill in the art to modify the skill game and the game of chance within of Washington with the game and entertainment layers of Thomas let players choose a game of chance as an option as well as helpful tutorials to achieve the predictable result of continuously develop new games and improved gaming enhancements that will attract frequent play through enhanced entertainment value to the player. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
Conclusion
19. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
21. 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.
22. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/Primary Examiner, Art Unit 3715
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