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 Amendment
Applicant amended the independent claims. However, absent an explanation from Applicant, Examiner does not recognize how the changes provide a practical application of the abstract wagering recited in the claims. Thus, the rejection under 35 USC § 101 is maintained.
3. Applicant amended the independent claims to recite a result of a session of a game of chance affects points determining a skill level of a player and a wager for a game of chance is made using a portion of the points overcoming the art of record. Thus, the rejection of the claims under 35 USC § 102/103 are withdrawn.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
6. 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.
7. 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 points determining a player skill level of the skills-based game based on the result of the session of the game of chance and wherein a wager in the game of chance is made using a portion of the points determining the player skill-level of the skills-based game.
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 points determining a player skill level of the skills-based game based on the result of the session of the game of chance and wherein a wager in the game of chance is made using a portion of the points determining the player skill-level of the skills-based game.
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 points determining a player skill level of the skills-based game based on the result of the session of the game of chance and wherein a wager in the game of chance is made using a portion of the points determining the player skill-level of the skills-based game.
8. 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.
9. 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.
10. 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)).
12. 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).
13. 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]).
14. 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).
15. 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.
16. 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.
17. 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.
18. Dependent Claims
Claims 2-3, 5-7 and 21-22 inherit the same abstract idea as Claim 1.
Claims 9-13 and 23 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 16-23
Claims 2, 5-7, 10, 12-13, 16-17, and 21-23 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 § 112
19. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
20. Claims 16 and 17 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. Claim 15 has been amended to recite placing a wager yet Claim 16 and Claim 17 which depend from Claim 15 recite that the session is a non-wagering session. It just doesn’t add-up that a wager must be placed for a game in Claim 15 and at the same time the session can be a non-wagering session. To advance prosecution, wagering game session in Claims 16 and 17 is a wagering game session. Appropriate attention is required.
Conclusion
21. THIS ACTION IS MADE FINAL. 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 extension fee 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.
22. 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.
23. 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.
24. If attempts to reach the examiner by telephone are unsuccessful, Kang Hu can be reached on (571) 270-1344. 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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