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 Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 15, 2026 has been entered.
The Examiner acknowledges that claims 1, 10, & 12 were amended, no claims were canceled, and no new claims were added. Therefore, claims 1-20 are currently pending and examined herein.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/222,764 [amended claims filed January 15, 2026]. Although the claims at issue are not identical, they are not patentably distinct from each other because the as seen in the limitation-by-limitation comparison of claim 1 of the present application to claim 1 of the copending application below, the claims recite substantial overlap such that crux of the inventions set forth in each application is substantially the same. Claim 1 of the present application, as exemplary, includes responsively to an award auction triggering event associated with a progressive award, enabling a plurality of bids to be placed on the progressive award, responsively to one of those bids being a winning bid, and retiring the progress by way of taking the progressive offline, which appears equally set forth in claim 1 of the copending application. For sake of brevity, claim 1 is detailed below, however, the same applies to claims 2-20. Accordingly, the Examiner positions that a terminal disclaimer is warranted.
Claim 1 of 18/222,783 as of January 15, 2026
Claim 1 of 18/222,764 as of January 15, 2026
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, and
responsive to an occurrence of an operator initiated award auction triggering event:
enable a plurality of bids to be placed on the progressive award during an auction bidding sequence, and
responsive to one of the plurality of bids determined to be a winning bid: cause the progressive award to be provided to a player associated with the winning bid, and retire the progressive award such that the retired progressive award is taken offline in accordance with any applicable regulations directed to the retirement of progressive awards.
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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/222,750 [amended claims filed March 16, 2026]. Although the claims at issue are not identical, they are not patentably distinct from each other because the as seen in the limitation-by-limitation comparison of claim 1 of the present application to claim 1 of the copending application below, the claims recite substantial overlap such that crux of the inventions set forth in each application is substantially the same. Claim 1 of the present application, as exemplary, includes responsively to an award auction triggering event associated with a progressive award, enabling a plurality of bids to be placed on the progressive award, responsively to one of those bids being a winning bid, and retiring the progress by way of taking the progressive offline, which appears equally set forth in claim 1 of the copending application. For sake of brevity, claim 1 is detailed below, however, the same applies to claims 2-20. Accordingly, the Examiner positions that a terminal disclaimer is warranted.
Claim 1 of 18/222,783 as of January 15, 2026
Claim 1 of 18/222,750 as of March 16, 2026
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, and
responsive to an occurrence of an operator initiated award auction triggering event:
enable a plurality of bids to be placed on the progressive award during an auction bidding sequence, and
responsive to one of the plurality of bids determined to be a winning bid: cause the progressive award to be provided to a player associated with the winning bid, and retire the progressive award such that the retired progressive award is taken offline in accordance with any applicable regulations directed to the retirement of progressive awards.
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, and
responsive to an occurrence of an award auction triggering event:
enable a plurality of bids to be placed on the progressive award during an auction bidding sequence, 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 progressive award offline by causing the progressive award to be provided, independent of any probability-based determination, to a player associated with the winning bid, and
retain a portion of each of the plurality of bids not determined to be the winning bid.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 articles of manufacturer (e.g. a non-transitory computer readable medium), processes (e.g. information processing method), and machines (e.g. an information process system). 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.
Independent Claims 1 recites:
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 progressive award, and responsive to an occurrence of an operator initiated award auction triggering event: enable a plurality of bids to be placed on the progressive award during an auction bidding sequence, and responsive to one of the plurality of bids determined to be a winning bid: cause the progressive award to be provided to a player associated with the winning bid, and retire the progressive award such that the retired progressive award is taken offline in accordance with any applicable regulations directed to retirement of progressive awards.
Independent Claims 10 recites:
10. 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 device to display a progressive award associated with an average expected duration of availability based on a probability of an occurrence of a progressive award triggering event, and responsive to an occurrence of an award auction triggering event, independent of the average expected duration of availability associated with the progressive award and following a determination of a winning bid in an auction bidding sequence, enable an operator to make an input to retire the progressive award, wherein following ga retirement of the progressive award, the progressive award is taken offline in accordance with any applicable regulations directed to the retirement of progressive awards.
Independent claim 12 recites a method of operating a system that comprises the functionality as underlined above with respect to claim 1.
Accordingly, the discussion below is applicable to each of independent claims 1, 10, & 12.
The underlined portions of the claims 1 & 10 generally encompass the abstract idea. The abstract idea may be summarized methods of organizing human activity.
As per claims 1 & 12, a interactions between humans can perform the abstract idea as underlined above, such as a first human (an operator) presenting a progressive award and performing an occurrence of an operator initiated award auction triggering event, such that responsively, one or more second human bid in an auction format (auctioning and bidding being well established social activity between humans) to become a winning bidder, which in turn causes retirement of the progressive award upon being provided to the one or more second humans associated with the winning bid, such retirement following rules (e.g. regulations) pertaining to taking progressive awards offline.
Similarly, as per claim 10, a first human (an operator) can display a progressive award and perform an occurrence award auction triggering event, such that responsively to a winning bid in an auction bidding sequence, the first human can perform input to retire the progressive award following rules (e.g. regulations) pertaining to taking progressive awards offline.
Dependent claims 2-9, 11, & 13-20 further define additional parameters that can equally be performed, where applicable, by the one more humans detailed above. For instance, certain dependent claims are directed to durations associated with the auctioning and/or retiring of the progressive award processes.
The claimed abstract idea may also be viewed, for example, as:
a fundamental economic practice (e.g., rules associated with 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.
The claimed invention resembles a number of abstract ideas types as defined by the courts, such as a fundamental economic practice, methods of managing a game, and/or methods of organizing human activity. In Smith and Marco Guldenaar, the court found that certain gaming activities are fundamental economic practices or methods of organized human activity, which are in turn abstract ideas recognized in several court decisions including Alice and Bilski. 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 with rules for score management. 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.
Under prong 1, the claimed invention encompasses an abstract idea in the form of certain methods of organizing human activity. The abstract idea pertaining to game management functionality of the present claims may be viewed as organizing human activity because it sets out various rules to be applied for one or more players, including game performance and score management.
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).
Notably, displaying images (e.g. causing a display device to display an image) as recited provides only routine use of a generic computing interface, i.e., it is well established that a generic computer includes a display that displays images or a graphical user interface capable of displaying rendered information, whereby the computer is capable of being interacted with. Accordingly, as claimed, there is no improvement to the functioning of the generic computing components as a result of reciting the abstract idea as being carried out by a generic computer that is able to display information. The courts have repeatedly held that for a claimed invention to be patent-eligible, the claimed invention must “overcome some sort of technical difficulty” and present a “technical solution to a technical problem”. Conventional displaying of a game on a display device does not satisfy this requirement.
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 storage mediums, information processing or game apparatuses, game systems, computers, means for display images, 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 claims lack any specificity to impart any special technical features, improvements, or advances that lead to any reasonable interpretation that these additional elements are not merely conventional.
The specification details the hardware configuration of the invention (paragraphs 0035-0091 & figures 1-3), which generically outlines these additional elements as conventional computing components. As such, the claims do not include something substantially more than the judicial exception. Similarly generically reciting that game rules include displaying steps for displaying on a display device 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 on graphical user interface that provides the visual aspects necessary to perform said automation. As such, displaying on a display device, causing data to result in displayed images, rendering images, the use of graphical user interfaces, and the like are equated to conventional computing.
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).
Response to Arguments
Applicant's arguments filed October 6, 2025 have been fully considered but they are not persuasive.
Applicant argues that the present claims, while discussing exemplary claim 1, are patent-eligible under 35 U.S.C. 101 because “the system represents an operational improvement that enables gaming establishment operators the freedom to reconfigure a gaming establishment floor by taking a progressive award offline without otherwise having to wait for the occurrence of any progressive award triggering events”. While such specificity appears novel, as prosecution has made clear there are no prior art rejections, the Examiner must respectfully position that the claims remain patent in-eligible for at least the same reasons set forth in the previous office actions. The amended language merely specifies the field of use for the abstract idea, but fails to integrate the abstract idea into a practical application.
The claimed invention, as amended, for similar reasons previously set forth in prosecution of the instant application, does not appear to provide improvements to the functioning of the computer or system itself nor is there any improvement to another technology or technical field. Rather, the claimed invention provides additional contextual language pertaining to field of use for an alternative means of awarding and retiring progressive awards, which does not appear to be a technical solution to a technical problem, but rather a novel approach to managing progressive awards. The courts have repeatedly indicated that novelty however, does not equate to eligibility under 35 U.S.C. 101.
In this case, while the specification discusses some benefits of taking progressive awards offline through auctioning/bidding, the claims themselves fail to set forth a practical application of the judicial exception in such a way as to show that the claims include the improvement to the computer or system itself or to another technology or technical field. Currently, for example claim 1, very generically recites a system having a processor and a memory device that stores instructions, the instructions being the abstract idea and the system being the computer being used as a tool to perform the abstract process. Applicant is directed to MPEP 2106 that provide examples of meaningful limitations that integrate the abstract idea into a practical application while avoiding insignificant extra-solution activity, mere instructions, field of use, and similar limitations that do not aid in overcome the 35 U.S.C. 101 rejection.
Lastly, it is noted that the double patenting rejection is newly presented. After a review of co-pending application 18/222,750 and 18/222,764 based on the most recent amendments in these applications, the Examiner positions the claims of each application have sufficient overlap in scope to warrant a standing of non-obviousness type double patenting.
Conclusion
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/MILAP SHAH/Primary Examiner, Art Unit 3715
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