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 .
Claim Rejections - 35 USC § 112
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.
Claims 1-20 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 1 recites the limitation "communicating game results to each of the multiple electronic gaming machines that have been determined according to the wheel stop position". There is insufficient antecedent basis for this limitation in the claim because there is no prior recitations or basis for gaming machines to have been already determined. Prior to this limitation, the claim recites the receiving of multiple user picks from multiple gaming machines and the determination of a wheel stop position for the spinning reel, however, neither of these limitations, nor any earlier limitations appear to provide a basis “…gaming machines that are determined according to the wheel stop position”.
Claim 1 also recites, after the above-identified limitations, “…, a winner between the first opponent and the second opponent, a loser between the first opponent and the second opponent, an order of the first opponent and the second opponent, and a respective one of the multiple user picks.” – which is unclear if the claim is intended to communicate (1) game results, (2) a winner between the first opponent and the second opponent, (3) a loser between the first opponent and the second opponent, (4) an order of the first opponent and the second opponent, and (5) a respective one of the multiple user picks – or – if the claim is intended to recite communicating of game results…, the game results including limitations (2) through (5) identified above. Moreover, it appears unclear how simply “according to the wheel stop position’ there is some determination made of a winner, a loser, and an order, or what defines a winner, a loser, and an order in relationship to the selection of multiple picks and a stop position on the wheel.
Claims 15 & 18 recite substantially the same as discussed above with respect to claim 1 and are therefore rejected for the same reasons.
Claim 5 recites “wherein the processor changes a probability of selecting the first opponent for the wheel layout in response to the multiple user picks” which appears unclear how if a wheel layout has already been selected and is displayed on the main screen and multiple picks from users have been received, how the probability of selecting the first opponent for the wheel layout is changed, or in what respect is it changed. Notably appears as if a limitation is missing to provide clarity to convey the intended invention.
Claims 11-13 similarly to claim 1 reference ‘winner’, ‘loser’ and ‘order’ which appears unclear for the same reasons discussed above with respect to claim 1 as to defines a winner, a loser, and an order.
Claim 14 recites “…that the game results will be the first opponent” which is unclear as combined with the limitations of claim 1, from which claim 14 depends, whether the game results of “will be the first opponent” refers to the winner, the loser, selection first in an order, etc.
Claim 17 recites substantially the same limitation as claim 5 and is therefore rejected for at least the same reasons.
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 they are directed to non-statutory subject matter.
The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The claims are directed to machines (e.g. gaming systems). Though the claims fall within one of the four subject matter categories, claims may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. Representative independent claim1 recites the following (with emphasis added):
1. A system comprising: a non-transitory storage medium that stores instructions; and a processor that executes the instructions to: select a wheel layout including multiple first segments corresponding to a first opponent of a group of opponents and multiple second segments corresponding to a second opponent of the group of opponents; display a spinning wheel with the wheel layout on a main screen; receive multiple user picks from multiple electronic gaming machines; determine a wheel stop position for the spinning wheel; and communicate game results to each of the multiple electronic gaming machines that are determined according to the wheel stop position, a winner between the first opponent and the second opponent, a loser between the first opponent and the second opponent, an order of the first opponent and the second opponent, and a respective one of the multiple user picks.
Claim 1 is representative of other independent claims 15 & 18, as such claim 1 and it’s dependent claims are discussed herein and the same applies to claims 15-20.
The underlined portions of independent claim 1 generally encompass an abstract idea. The abstract idea, in this case, may be summarized as certain methods of organizing human activity. Dependent claims 2-14 further define aspects of the abstract idea such as specificity of game mechanics (e.g. wheel layouts), game mathematics (e.g. probabilities), and other rules pertaining to playing of a game. The dependent claims merely provide additional abstract idea recitations.
The claimed abstract idea may be viewed, for example, as:
a fundamental economic practice (e.g., rules for conducting a [wagering] game) as discussed in Alice Corp. v. CLS Bank, In re Smith (Fed. Cir. 2016) (cert. denied), and In re Marco Guldenaar (Fed. Cir. 2018);
a method of managing a game, similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC (Fed. Cir. 2014) (non-precedential);
the abstract idea of creating and applying a template of positions of one or more game contents, similar to that of GREE, INC. v. SUPERCELL OY (Fed. Cir. 2020) (non-precedential);
the abstract idea of associating game objects and moving one or more of the objects, similar to that of GREE, INC. v. SUPERCELL OY (Fed. Cir. 2021) (non-precedential); and/or
a method of organizing human activities (e.g., allowing a human player to play the game according to rules of the game) as discussed in Bilski v. Kappos and Alice Corp. v. CLS Bank.
In Smith and Marco Guldenaar, the court found that gaming activities, similar to the features claimed here are fundamental economic practices, which are in turn abstract ideas recognized in several court decisions including Alice and Bilski. Those gaming activities involved directing the use of gaming components such as cards and dice, similar to as claimed here. In Planet Bingo, the court found that a method of managing a game of bingo was an abstract idea. In addition, the instant claims set forth player-based game interaction steps. These steps are similar to the abstract ideas discussed in Bilski and Alice because they involve directing humans on how to conduct certain fundamental interactions. Thus, the abstract idea underlined above resembles a number of abstract ideas types as defined by the courts.
Under prong 1, the claimed invention encompasses an abstract idea in the form of certain methods of organizing human activity. The “rules for the game” are instructions to follow to conduct said rules for the game including the use of game elements (e.g. a wheel with a wheel layout, etc.) to facilitate play of a game. These rules could be carried out using pen and paper. The functionality may be viewed as organizing human activity because it sets out various rules to be applied for one or more players.
Under prong 2, the rejected claims do not integrate the abstract idea into a practical application because they add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. While certain physical elements (i.e., elements that are not an abstract idea) may be present in the rejected claims, such features do not effect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (only generic computer components), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any 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(a)-(c), (e)-(h).
Therefore, the rejected claims are directed to the judicially recognized exception of an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than: generic computing means including processors, memory, display devices, communication of data, and the like to conduct the functionality as claimed. Such features are merely amount to an instruction to apply the abstract idea on generic, functional, and conventional computer components well-known in the art.
The specification details the hardware configuration of the invention (e.g. disclosure related to the hardware configurations as illustrated figures 1 to 2B), all of which generically outlines these additional elements as nothing more than conventional computing components well established in the art pertaining to casino games. As such, the claims are rejected because they do not include something substantially more than the judicial exception. Similarly a generically reciting that data or gameplay is displayed (e.g. via a GUI) provides nothing of significance as generic computing elements utilized to automate or conduct a game previously performed non-electronically is well established to provide such automation via rendering images or graphical user interfaces that provide the visual aspects necessary to perform said automation. As such, display of images or the like, such as by rendering or use of graphical user interfaces are equated to conventional computing elements or processes.
The claimed elements taken as a whole perform the same functions when taken individually. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014).
Additionally, Applicant may benefit from reviewing a recent CAFC decision in Saavy Dog Systems, LLC v. Pennsylvania Coin, LLC (CAFC 2024). The decision, while nonprecedential, relates to many issues set forth in Applicant case regarding game rules being abstract even when implemented on a gaming machine, where to become patent-eligible, the claimed invention must “overcome some sort of technical difficulty” and present “a technological solution to a technological problem”. Notably, the conventional displaying of the game (e.g. causing data to result in a display of something related to the gameplay) does not satisfy this requirement.
Conclusion
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/MILAP SHAH/Primary Examiner, Art Unit 3715
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