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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/6/26 has been entered.
Claim Status
Claims 1-20 are pending. Claims 1-4, 11, 14, and 20 have been amended. No new claims have been added. The Examiner notes that the submitted Claims, dated 2/6/26, does not provide the proper markings and indications to reflect the amendments made to the claims. In particular, the submitted Claims do not conform with the requirements under 37 CFR 1.121 because they omits to reflect the deletion of limitations of the prior considered Claims, dated 9/4/25, which included the limitations “selected from a plurality of symbols types;”, “select a first predefined type and a second predefined type of the plurality of symbol types”, and recited by independent Claims 1, 11, and 20. Moreover, the amendments to limitation “modify the identified one or more positions that include the second symbol to replace the at least one second symbol and deletions made to the previously submitted claim limitation on 9/4/25 which recited “modify the one or more reels by overlaying each instance of of the first predesignated type, wherein at least one subsequent spin is generated based on the modified one or more reels.” However, in an effort to clarify the prosecution record and expedite prosecution the submitted claims have been reviewed in the action below.
Response to Arguments
Applicant's arguments filed 8/19/25 have been fully considered but they are not persuasive. The Applicant’s representative presents arguments to address the rejections under 35 USC 101 and 35 USC 102. The arguments are addressed in the sections below.
Response to arguments under 35 USC 101
The Applicant’s representative traverses the rejection of Claims 1-20 under 35 USC 101 because i) the claims are not directed to an abstract idea under Step 2A (see Remarks, pg. 9-12) and ii) the claims are directed to “significantly more” than the abstract idea that satisfy Step 2B (see Remarks, pg. 12-13).
With respect to arguments under Step 2A, the Applicant’s representative argues that the claims are a) not directed to a grouping of abstract ideas under Step 2A-prong 1 (see Remarks, pg. 9-10) and b) are integrated into a practical application under Step 2A-prong 2 (see Remarks, pg. 10-12). The Examiner respectfully disagrees for the reasons provided below.
With respect to the Step 2A-prong 1, the Applicant’s representative asserts that the claim limitations are not directed to a certain method of organizing human activity because they do not recite “any fundamental economic practices” because they recite electronic devices and computer-implemented steps that inherently must be performed by a computer (see Remarks, pg. 9-10). The Examiner respectfully disagrees. Certain methods of organizing human activity include concepts relating to fundamental economic principles or practices, commercial or legal inter actions, or managing interactions between people (including social activities, teaching, and following rules or instructions). In the instance application, the claim recites limitations for managing a symbol game including rules and/or instructions for a first period of a base game, counting the number of wild symbols that appear during the period which are associated with the game rule to modify one or more symbols including the second symbol when the total number of wild symbols counted of the first period satisfies the threshold for a subsequent spin (e.g., the game interface including a game matrix including a plurality of columns each having a plurality of symbol positions…associated with the one or more reels”, “generating, during a first period of a base game, one or more game outcome…in each of the plurality of columns associated with one of the one or more reels,” “in response to a wild symbol being displayed as one of the plurality of symbols displayed…increment a counter configured to count a total number of wild symbols displayed within any of the symbol positions of the game matrix over the first period,” “in response to the total number of wild symbols counted over the first period satisfying a threshold…identify one or more positions that include the one or more reels that are predesignated as modifiable to identify one or more positions of the one or more reels that include the second symbol,” and “modify the identified one or more positions that include the second symbol with the at least one first symbol, wherein at least one subsequent spin is generated based on the modified one or more reels”). It follows that the claims are found to recite limitations directed to a grouping of abstract ideas such as managing a base symbol game including rules and/or instructions which is analogous to at least one of the sub-groupings held by the courts to be directed to a certain method of organizing human activity under Step 2A-prong 1.
With respect to the arguments under Step 2A-prong 2, the Applicant’s representative argues that the even if the claims recite an enumerated judicial exceptions, they integrate the claim into a practical application under Step 2A-prong 2. The Applicant’s representative argues that the claims recite “an improvement in a variability of randomly generated display produced using given computing resources and performance requirements”. Specifically, the Applicant’s representative asserts that Claim 1 recites a “data structure that includes one or more reels each including a plurality of symbols that are predesignated as modifiable or non-modifiable, with the plurality of symbols including at least one first symbol and at least one second symbol different from the first symbol” such that when a reel modification is triggered, “the system needs only to parse the symbols designated as modifiable when searching for the second symbol that is to be replaced by the first symbol” which “increases a variability of possible game outcomes while reducing an additional computational burden that is added” (see Remarks, pg. 12-13). The Examiner respectfully disagrees. A review of the cited portions of the Specification, indicate that the recited limitations are directed to managing game presentations of wagering games (see Specification, 0032). As noted above, managing the game presentations of wagering games which includes presenting outcomes of the game are directed to a certain method of organizing human activity. While the Specification contemplates the idea of a solution to provide a “technical effect” to increase variability for game presentation to users, increase variability for awards, improved computational speed, and conserving resources being used during a gaming instance it claims only the idea of a solution or outcome (e.g., storing one or more reels…the at least one first symbol being different from the at least one second symbol”) but fails to disclose or recite details of how a solution to a problem associated with a technical problem or a technical solution is accomplished. For instance, the Specification fails to provide any particular detail, algorithm, and/or technical solution as to how the computing resources and performance requirements of the system are improved. In the instant application, the limitations are found to merely to recite a desired result that invokes computers or other machinery merely as a tool to perform existing processes such as storing, displaying, transmitting, and processing instructions for managing the base game. As to improvement to “increase in variability of possible game outcomes”, at best, this is directed to the abstract idea itself (e.g., increased outcomes of the game) or to a commonplace business method applied on a general purpose computer as opposed to “reducing additional computational burden that is added” (see Remarks, pg. 12). Stated differently, the Applicant’s argument is not persuasive because either viewed individually and/or as a whole, the steps and/or instructions for managing the base game are not directed to an improvement to the computer functionality but mere instructions to invoke the system to apply the exception by implementing rules for counting a number of wild symbols, triggering a game rule to replace second symbols with a first symbol when a threshold is reached. For at least these reasons, the Applicant’s argument is not persuasive and the rejection under Step 2A has been maintained below.
With respect to Step 2B, the Applicant’s representative argues that limitations as exemplified by Claim 1 amount to significantly more because they are not well-known, routine, and/or conventional (see Remarks, pg. 12-13). In particular, the Applicant’s representative recites each of the steps and instructions recited in Claim 1 as not being well-known, routine, and conventional as to the claim reciting significantly more than the abstract idea. The Examiner respectfully disagrees. As noted in Final Rejection, the additional elements such as “an electronic gaming system”, “at least one memory device”, “at least one processor” and “a display device” when viewed individually and/or as a combination of elements are highly generalized computer components that have been invoked merely as a tool to implement the abstract idea, perform insignificant extra solution activity, and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). Moreover, the prior art of Vancura discloses that these are conventional components of electronic gaming systems known to one of ordinary skill in the electronic gaming arts (see Vancura, Fig. 1, 0008, 0037-0040). The remaining limitations were construed as being directed to rules and/or instructions for managing the base game which is part of the abstract idea and does not amount to significantly more than the abstract idea. For at least these reasons, the Applicant’s argument is not persuasive and the rejection under 35 USC 101 has been maintained below.
Response to arguments under 35 USC 102
A review of the Applicant’s arguments with respect to the prior art of Louie have been reviewed and is persuasive. It follows that the prior art of Louie has been overcome and the rejection is withdrawn.
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 grouping of abstract ideas without significantly more. The claims, as exemplified by independent claim 1, recites limitations directed to a grouping of abstract ideas as indicated below:
1. An electronic gaming system comprising at least one memory device with instructions stored thereon, and at least one processor in communication with the at least one memory device, the memory device storing one or more reels each including a plurality of symbols, wherein one or more of the plurality of symbols are predesignated as being modifiable and one or more of the plurality of symbols are predesignated as being non-modifiable, the plurality of symbols including at least one first symbol and at least one second symbol, the at least one first symbol being different from the at least one second symbol, wherein the instructions, when executed by the at least one processor, cause the at least one processor to:
cause to be displayed a game interface on a display device, the game interface including a game matrix including a plurality of columns each having a plurality of symbol positions, each symbol position for displaying a symbol, each of the plurality of columns associated with one of the one or more reels;
generate, during a first period of a base game, one or more game outcomes by, for each of the one or more game outcomes, randomly determining some of the plurality of symbols to display in each of the plurality of columns from a corresponding reel of the one or more reels -certain method of organizing human activity;
in response to a wild symbol being displayed as one of the plurality of symbols displayed for one of the one or more game outcomes generated during the first period, increment a counter configured to count a total number of wild symbols displayed within any of the symbol positions of the game matrix over the first period; - certain method of organizing human activity; and
in response to the total number of wild symbols counted over the first period satisfying a threshold, parse the one or more of the plurality of symbols of the one or more reels that are predesignated as modifiable to identify one or more positions of the one or more reels that include the second symbol; and -certain method of organizing human activity;
modify the identified one or more positions that include the second symbol to replace the at least one second symbol with the at least one first symbol, wherein at least one subsequent spin is generated based on the modified one or more reels. -certain method of organizing human activity.
The limitations, as exemplified by independent Claim 1, as underlined above, each recite limitations directed to rules and/or instructions for managing a base symbol game which is analogous to a certain method of organizing human activity. For at least this reason, the claims, as exemplified by independent claim 1 are found to recite a grouping of abstract ideas under Step 2A-prong 1.
This judicial exception is not integrated into a practical application because the additional limitations such as: “An electronic gaming system comprising at least one memory device with instructions stored thereon, and at least one processor in communication with the at least one memory device, the memory device storing one or more reels each including a plurality of symbols, wherein one or more of the plurality of symbols are predesignated as being modifiable and one or more of the plurality of symbols are predesignated as being non-modifiable, the plurality of symbols including at least one first symbol and at least one second symbol, the at least one first symbol being different from the at least one second symbol, wherein the instructions, when executed by the at least one processor, cause the at least one processor to:” and “cause to be displayed a game interface on a display device, the game interface including a game matrix including a plurality of columns each having a plurality of symbol positions, each symbol position for displaying a symbol, each of the plurality of columns associated with one of the one or more reels;” recite a set of instructions to invoke a computer as a tool to implement the abstract idea, perform insignificant extra solution activity, and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). For at least these reasons, the claims, as exemplified by independent claim 1, do not integrate the claim into a practical application under Step 2A-prong 2.
The claims, as exemplified by independent claim 1, do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements such as: “An electronic gaming system”, “at least one memory device”, “at least one processor”, and “a display device” when viewed individually and/or as a combination of elements amount to highly generalized computer components to be invoked as a tool to implement the abstract idea, perform insignificant extra solution activity, and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). For instance, Vancura discloses a conventional electronic gaming system comprises at least one memory device, at least one processor, and a display device that is known to one of ordinary skill in the gaming arts (see Vancura, Fig. 1, 0008, 0037-0040). For at least these reasons, the claims, as exemplified by independent Claim 1 are found to recite an abstract idea without significantly more under Step 2B.
Regarding independent claims 11 and 20, the claims are directed to substantially the same subject matter but differ in that the recite the embodiments directed to a gaming system and non-transitory computer-readable medium, respectively. It follows that these differences do not recite additional limitations that amount to significantly more. For at least the reasons discussed above, the independent claims 11 and 20 are found to recite an abstract idea without significantly more for substantially the same reasons.
Regarding dependent claims 2-10 and 12-19, the limitations of the claims have been reviewed and analyzed and were found to recite additional limitations directed to a grouping of abstract ideas (see MPEP 2106.04(a)), invoke a computer as a tool to implement the abstract idea, recite insignificant extra solution activity, and/or provide a technological environment in which to perform the abstract idea (see MPEP 210.605(f)-(h)). For at least these reasons, claims 1-20 are found to recite an abstract idea without significantly more.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitations such as: “wherein one or more of the plurality of symbols are predesignated as being modifiable and one or more of the plurality of symbols are predesignated as being non-modifiable” and “parse the one or more of the plurality of symbols of the one or more reels that are predesignated as modifiable to identify one or more positions of the one or more reels that include the second symbol” which are not adequately described to indicate that the inventor had possession of the claimed invention. Although, the Specification discloses that a condition if a wild symbol is displayed in response to a spin, a counter that tracks a number of displayed wild symbols over a predetermined period of time, and a second predesignated symbol is converted to the first symbol (see Specification, 0031), it does not disclose or teach the memory device storing “one or more reels including a plurality of symbols, wherein one or more of the plurality of symbols are predesignated as being modifiable and wherein one or more plurality of symbols are designated as being non-modifiable”. For instance, paragraphs [0089-0097] as cited by the Applicant’s representative, discloses counting a number of wild symbols over a predetermined period of spins, comparing the number to a threshold, and transforming the wild symbol (e.g., a gold buffalo) into another symbol (e.g., an ordinary buffalo symbol) and discloses one instance in which “a second predesignated symbol is converted to the first symbol” it is silent as to disclose how the memory device predesignates symbols as modifiable and non-modifiable. Furthermore, a review of the Specification does not indicate or disclose how the inventor intended to achieve the claimed function to “parse the one or more of the plurality of symbols of the one or more reels that are predesignated as modifiable to identify one or more positions of the one or more reels that include the second symbol”. For instance, paragraphs [0089-0097] as cited by the Applicant’s representative, discloses counting a number of wild symbols over a predetermined period of spins, comparing the number to a threshold, and transforming the wild symbol (e.g., a gold buffalo) into another symbol (e.g., an ordinary buffalo symbol) but is silent as to how the plurality of symbols are predesignated as being modifiable and one or more of the plurality of symbols are designated as being non-modifiable. Similarly, the cited portions fail to disclose or teach how to parse the one or more of the plurality of symbols of the one or more reels that are predesignated as modifiable to identify one or more positions of the one or more reels that include the second symbol. For at least these reasons the indicated limitations are found to recite NEW MATTER.
Conclusion
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/RYAN HSU/EXAMINER, Art Unit 3715
Prosecution Insights