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 .
Response to Amendment
Examiner acknowledges Request for Continued Examination and receipt of amendments/arguments 1/15/26. The arguments set forth are addressed herein below. Claims 1-21 are pending and Claims 1, 11, and 20 are currently amended.
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
The claim(s) recite(s) “A system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: cause a display, by a display device, of a first progressive award, and responsive to an occurrence of an award auction triggering event: enable a plurality of bids to be placed on the first progressive award during an auction bidding sequence, wherein a portion of at least one of the plurality of bids funds a second progressive award, and responsive to one of the plurality of bids determined to be a winning bid, take, independent of any occurrence of any progressive award triggering event, the first progressive award offline by causing the first progressive award to be provided, independent of any probability-based determination to a player associated with the winning bid” (Claim 1); “A system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: cause a display, by a display device, of a first progressive award, and responsive to an occurrence of an award auction triggering event: enable a plurality of bids to be placed on the first progressive award during an auction bidding sequence, responsive to one of the plurality of bids determined to be a winning bid: take, independent of any occurrence of any progressive award triggering event, the first progressive award offline by causing the first progressive award to be provided, independent of any probability-based determination, to a player associated with the winning bid, and cause a first portion of at least a first bid of the plurality of bids not determined to be the winning bid to fund a second progressive award, and responsive to none of the plurality of bids determined to be the winning bid, cause a second portion of at least the first bid to fund the second progressive award” (Claim 11); and “A system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: cause a display, by a display device, of a progressive award, responsive to a first occurrence of a progressive award triggering event prior to an occurrence of an award auction triggering event, cause the first progressive award to be provided to a player associated with the first occurrence of the progressive award triggering event, and responsive to an occurrence of the award auction triggering event prior to any occurrence of the progressive award triggering event and one of a plurality of bids placed on the first progressive award during an auction bidding sequence determined to be a winning bid: take, independent of any occurrence of any progressive award triggering event, the first progressive award offline by causing the first progressive award to be provided, independent of any probability-based determination, to a player associated with the winning bid, wherein during the auction bidding sequence, no progressive award triggering event can occur in association with the first progressive award, allocate a first portion of at least one of the plurality of bids to a second progressive award, and responsive to a second occurrence of the progressive award triggering event, cause the second progressive award to be provided to a player associated with the second occurrence of the progressive award triggering event” (Claim 20). Each of the above underlined portions are related to an abstract idea of Certain Methods of Organizing Human Activity particularly fundamental economic principles or practices (including hedging, insurance, mitigating risk) and/or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions for funding and/or managing progressive awards using auction bidding sequences). Managing a first progressive award, wherein a plurality of bids are placed thereto during an auction bidding sequence; taking, independent of any progressive award triggering event, the first progressive award offline by cause the first progressive award to be provided, independent of any probability-based determination, to a player placing the winning bid is provided the first progressive and a portion of bids fund a second progressive award (including variations of how bids fund the second pressive award) pertain to fundamental economic principles or practices and/or following rules or instructions pertaining to organizing human activity.
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (particularly the technological environment of a gaming device and/or gaming system) (MPEP 2106.05 (h)). The claimed limitations of “cause a display, by a display device, of a first progressive award” (claim 1); “cause a display, by a display device, of a first progressive award” (Claim 11); and “cause a display, by a display device, or a progressive award” (Claim 20) are recited at a low level of generality (e.g. as a general means of displaying a progressive award) and amounts to mere pre solution displaying of progressive awards which is a form of insignificant extra-solution activity.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of a “system”, “processor”, “memory device”, and/or “display device”) are recited at a level of generality and are merely invoked as tool to perform the used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility (the use of a computing device and/or generic components is merely illustrating the environment in which the abstract idea is practiced). These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. Taking the physical elements individually and in combination, the computer-based components perform purely generic computer-based functions that are silent in regards to clearly indicating how a computer aids the system to which a computer performs/implements the system. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer, ’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
Furthermore, the applicant discloses (US 2025/0029448) the “The at least one processor 1010 is any suitable processing device or set of processing devices, such as a microprocessor, a microcontroller-based platform, a suitable integrated circuit, or one or more application-specific integrated circuits (ASICs), configured to execute software enabling various configuration and reconfiguration tasks” (¶ 123); “The master gaming controller 1012 also includes at least one memory device 1016, which includes: (1) volatile memory (e.g., RAM 1009, which can include non-volatile RAM, magnetic RAM, ferroelectric RAM, and any other suitable forms); (2) non-volatile memory 1019 (e.g., disk memory, FLASH memory, EPROMs, EEPROMs, memristor-based non-volatile solid-state memory, etc.); (3) unalterable memory (e.g., EPROMs 1008); (4) read-only memory; and/or (5) a secondary memory storage device 1015, such as a non-volatile memory device, configured to store gaming software related information (the gaming software related information and the memory may be used to store various audio files and games not currently being used and invoked in a configuration or reconfiguration). Any other suitable magnetic, optical, and/or semiconductor memory may operate in conjunction with the EGM of the present disclosure. In certain embodiments, the at least one memory device 1016 resides within the housing of the EGM (described below), while in other embodiments at least one component of the at least one memory device 1016 resides outside of the housing of the EGM. In these embodiments, any combination of one or more computer readable media may be utilized. The computer readable media may be a computer readable signal medium or a computer readable storage medium. A computer readable storage medium may be, for example, but not limited to, an electronic, magnetic, optical, electromagnetic, or semiconductor system, apparatus, or device, or any suitable combination of the foregoing. More specific examples (a non-exhaustive list) of the computer readable storage medium would include the following: a portable computer diskette, a hard disk, a random access memory (RAM), a read-only memory (ROM), an erasable programmable read-only memory (EPROM or Flash memory), an appropriate optical fiber with a repeater, a portable compact disc read-only memory (CD-ROM), an optical storage device, a magnetic storage device, or any suitable combination of the foregoing. In the context of this document, a computer readable storage medium may be any tangible medium that can contain, or store a program for use by or in connection with an instruction execution system, apparatus, or device” (¶ 124); and “In various embodiments, the display devices include, without limitation: a monitor, a television display, a plasma display, a liquid crystal display (LCD), a display based on light emitting diodes (LEDs), a display based on a plurality of organic light-emitting diodes (OLEDs), a display based on polymer light-emitting diodes (PLEDs), a display based on a plurality of surface-conduction electron-emitters (SEDs), a display including a projected and/or reflected image, or any other suitable electronic device or display mechanism. In certain embodiments, as described above, the display device includes a touch-screen with an associated touch-screen controller. The display devices may be of any suitable sizes, shapes, and configurations” (¶ 137). Such disclosure suggests that components required by the claims are no more than generic components operating in their ordinary capacity.
It is settled law that adding physical elements to an abstract idea will not amount to an “inventive concept" if the physical elements are well-known, routine and conventional elements and they perform their well-known, routine and conventional functions. TLI Communications LLC v. AV Automotive, L.L.C. (Fed Cir 2016):
Turning to the second step in our analysis, we find that the claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294). We agree with the district court that the claims’ recitation of a “telephone unit,” a “server”, an “image analysis unit,” and a “control unit” fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability. (Emphasis added by Examiner.)
On the question of preemption, the Federal Circuit has stated in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of DNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
Nor do the dependent claims 2-10, 12-19, and 21 add “significantly more” since they merely add to the claimed concepts relating to fundamental economic principles or practices and/or managing personal behavior or relationships or interactions between people including following rules or instructions (particularly, game rules or instructions) under the grouping of Certain Methods of Organizing Human Activity. The dependent claims failing to place the claimed invention into a practical applicant or additional generic components of the dependent claims failing to amount to “significantly more” for the same reasons noted above.
Consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claim are not patent-eligible under 35 USC §101.
Response to Arguments
Applicant's arguments filed 1/15/26 have been fully considered but they are not persuasive.
The applicant argues that:
“At the onset, Applicant respectfully submits that it is improper for the Office to acknowledge that Applicant's disclosure provides support for certain time-saving and operational- efficiency benefits of the alternative retirement of a progressive award in compliance with gaming regulations (see pages 10 and 11 of Office Action) and then disregard these acknowledged benefits as not relating "to the actual improvement of the technology". Since, in accordance with MPEP §2106, a claimed invention may be subject-matter eligible when such recites an improvement which does not improve the functionality of a computing device per se, but instead represents and improvement to other fields, even when such is rooted in or utilizes computer technology, the claimed systems which realize these acknowledged benefits represent an improvement in technology and therefore patent-eligible.
Applicant respectfully submits that the claimed systems, as amended, operate to take the progressive awards offline independent of any occurrence of any progressive award triggering event and in doing so, represent a technical improvement to the operation of the system not previously realized. That is, rather than simply providing "an alternative to awarding a user a
progressive award" or providing "another way of awarding progressives awards to the user" as stated by the Office (see pages 10 and 11 of Office Action), the claimed systems operate to enable the retirement of a progressive award specifically without awarding a user that progressive award in association with a probability-based determination. Such a configuration enables for the efficient and on-demand removal of certain offerings associated with an active progressive award without forcing the occurrence of any non-probability based progressive award triggering event and while adhering to applicable regulations pertaining to timing restrictions on when a progressive award may and may not be retired or otherwise made unavailable to be won. Put differently, the selective employment of an auction bidding sequence which enables a progressive award to be taken offline independent of any occurrence of any progressive award triggering event and provided to a user independent of any probability-based determination represents a technical improvement that increases efficiencies in the retirement of progressive awards while saving gaming establishment operators time in managing various aspects of a gaming establishment floor.”
The examiner respectfully disagrees. The reiterates that the claimed invention does not provide improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a). Providing an alternative means of retiring progressive awards via an auction bidding sequence (providing the progressive award(s), independent of any probability-based determination, to the player associated with the winning bid such that the progressive award as a result and independent of any occurrence of any progressive award triggering event, is taken offline (e.g. not available)) versus the standard way of taking progressive award offline via a progressive triggering event that awards the progressive to the player via a probability-based determination is not a technical solution to a technical problem e.g. something specific to improvements to the functioning of a computer etc. or specific to a technical problem, but rather provides an alternative to awarding a user a progressive award. Managing a first progressive award, wherein a plurality of bids are placed thereto during an auction bidding sequence; taking, independent of any progressive award triggering event, the first progressive award offline by cause the first progressive award to be provided, independent of any probability-based determination, to a player placing the winning bid is provided the first progressive and a portion of bids fund a second progressive award (including variations of how bids fund the second pressive award) pertain to fundamental economic principles or practices and/or following rules or instructions pertaining to organizing human activity. The applicant’s disclosure (¶ 15-19, 40) does provide support for the benefits to the gaming establishment by providing an alternative means to retire progressive awards (take offline) as opposed to the standard triggering event that conforms to the gaming regulations required that progressive awards be awarded to a user and/or be maintained until such time, wherein operation time of progressive awards can be reduced and efficiency in timely retiring progressive awards can be improved; however, such disclosure does not relate to the actual improvement of the technology or technical field, but rather a means for managing or awarding/retiring(offline) progressive awards e.g. provides another way of awarding and/or taking offline progressive awards to the user. The claims at issue lack integration into a practical application. Applicant’s claimed abstract idea lacks or fails to suggest improvements to the functioning of a computer or to any other technology or technical field. The examiner contends that the claims do not provide an improvement to the technology in which it is generically applied.
At least based on the above, the 101 rejection of claims 1-21 has been clarified to reflect the claimed amendments and are herein maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAMAR HARPER whose telephone number is (571)272-6177. The examiner can normally be reached 7:30am to 5:30pm.
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/TRAMAR HARPER/Primary Examiner, Art Unit 3715