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 § 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 judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1-20 recite an abstract idea of (performing a mental process). The claim limitations are not indicative of integration into a practical application and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter
More specifically, regarding Step 1, of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are drawn to at least one of the four statutory categories of invention (i.e. process, machine, manufacture, or composition).
Step 2a1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Claims 1-9 recite, a system comprising:
an interface; a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
receive, via the interface and from a slot machine interface board associated with an electronic gaming machine, data captured in association with a regulatory review event occurring at the electronic gaming machine,
determine, based on the received data and electronic gaming machine configuration data associated with the electronic gaming machine, if an operation of the electronic gaming machine is defective,
and responsive to the determination being that the operation of the electronic gaming machine is defective, communicate data that results in a modification of the operation of the electronic gaming machine.
Claims 10-11 recite, a system comprising:
an interface; a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
receive, via the interface and from a slot machine interface board associated with an electronic gaming machine, data captured in association with a play of a game determined based on gaming software being executed by a processor of the electronic gaming machine,
determine, based on the received data and electronic gaming machine configuration data associated with the electronic gaming machine, if the gaming software is defective, and
responsive to the determination being that the gaming software is defective, communicate data that results in at least a modification of the gaming software being executed by the processor of the electronic gaming machine.
Claims 12-20 recite, a method of operating a system, the method comprising:
receiving, via an interface and from a slot machine interface board associated with an electronic gaming machine, data captured in association with a regulatory review event occurring at the electronic gaming machine,
determining, by a processor and based on the received data and electronic gaming machine configuration data associated with the electronic gaming machine, if an operation of the electronic gaming machine is defective, and
responsive to the determination being that the operation of the electronic gaming machine is defective, communicating data that results in a modification of the operation of the electronic gaming machine.
The underlined limitations recite an abstract idea of performing a mental process. The step of making a determination of if an operation of an electronic gaming machine is defective based on received configuration data is a mental process.
Step 2a2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration of whether the claim recites additional elements that are indicative of integration into a practical application.
An additional element or combination of additional elements that are indicative of integrating the abstract idea into a practical application include:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
-Applying or using the judicial exception in some other 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(e) and Vanda Memo
Additional element or combination of additional elements that are not indicative of integration of the abstract idea into a practical application include:
-Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Claims 1-20 do not apply a judicial exception to effect a particular treatment, and do not transform or reduce a particular article to a different state or thing.
Claims 1-20 are not directed to an improvement to a function of a computer. There is no improvement to a technical field. In addition, the claims do not apply the judicial exception with, or by use of a particular machine. The claims do not apply or use the judicial exception in a meaningful way.
The additional elements of : receiving, via the interface and from a slot machine interface board associated with an electronic gaming machine, data captured in association with a regulatory review event occurring at the electronic gaming machine, and communicating data that results in a modification of the operation of the electronic gaming machine amounts to receiving data and transmitting data, which is a form of insignificant extra-solution activity.
In addition, the system comprising the interface, processor memory, and the electronic gaming machine are generic devices used to implement the abstract idea electronically.
For the reasons discussed above, the additional elements identified above considered alone and in combination fail to integrate the abstract idea into a practical application.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole is analyzed to determine whether any additional element, or combination of additional elements, is sufficient to ensure that the claims amount to significantly more than the exception.
Claims 1-20 recite the additional elements of
receiving, via the interface and from a slot machine interface board associated with an electronic gaming machine, data captured in association with a regulatory review event occurring at the electronic gaming machine, and
communicating data that results in a modification of the operation of the electronic gaming machine amounts to receiving data and transmitting data, which is a form of insignificant extra-solution activity.
The steps of communicating, transmitting data over a network is well known, routine and conventional. MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here).
The claim limitations individually and as a whole do not amount to amount to significantly more than an abstract idea.
Dependent claims further recite an abstract idea of performing a mental process. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified abstract idea. Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For example, there is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons discussed above with respect to the conclusion that the additional elements do not integrate the abstract idea into a practical application. The dependent clams merely include limitations that further define the abstract idea and thus don’t make the abstract idea any less abstract. The claim limitations individually and as a whole do not amount to amount to significantly more than an abstract idea.
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. 18/231,639 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 5-14, 16-18, 20 are rejected under 35 U.S.C. 102a1 as being anticipated by Buchholz (US 2008/0318669).
Claim 1. Buchholz discloses a system (Approval entity 218 in Fig. 2, paragraphs 30. In addition, content manager 224 can perform audits similar to the approval entity, paragraph 27.) comprising:
an interface; a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to (approval entity can be a computer which inherently comprises an interface, processor and memory device; paragraph 38.),
receive, via the interface and from a slot machine interface board associated with an electronic gaming machine, data captured in association with a regulatory review event occurring at the electronic gaming machine (receive wagering game content from gaming machine associated with regulatory review or associated with a list to be authenticated; paragraphs 77-78),
determine, based on the received data and electronic gaming machine configuration data associated with the electronic gaming machine, if an operation of the electronic gaming machine is defective (Audit unit which is part of the approval entity, determines if the authentication information, content, and transaction information is correct or incorrect/defective, paragraphs 78-87, Figs. 3, 9), and
responsive to the determination being that the operation of the electronic gaming machine is defective, communicate data that results in a modification of the operation of the electronic gaming machine (The audit response unit 432 stops using wagering game content associated with the audit failure. In one embodiment, the audit response unit 432 deletes or otherwise disables the wagering game content associated with the audit failure; paragraph 95. Therefore, the information to stop using the wagering content is communicated to the wagering game machine when auditing a wagering game in order to disable the wagering game content; paragraphs 30, 38, 41, 79).
Claim 2. Buchholz discloses the system of claim 1, wherein the data that results in the modification of the operation of the electronic gaming machine is communicated, via the interface, to the slot machine interface board associated with the electronic gaming machine (transmitting and receiving unit 434 in Fig. 4)
Claim 5. Buchholz discloses the system of claim 1, wherein the modification of the operation of the electronic gaming machine comprises disabling the electronic gaming machine (stop using wagering game content, step 1014 in Fig. 10).
Claim 6. Buchholz discloses the system of claim 1, wherein the modification of the operation of the electronic gaming machine comprises disabling a feature of the electronic gaming machine (stop using wagering game content, step 1014 in Fig. 10).
Claim 7. Buchholz discloses the system of claim 1, wherein the modification of the operation of the electronic gaming machine comprises reconfiguring the electronic gaming machine (reconfigure the gaming machine to stop using wagering game content, step 1014 in Fig. 10).
Claim 9. Buchholz discloses the system of claim 1, wherein the regulatory review event comprises a play of a game occurring at the electronic gaming machine (transaction history associated with the wagering content is reviewed; paragraphs 82-84, 91-94).
Claim 10. See rejection for claim 1 and 9 above.
Claim 11. See rejections for claim 6-7 above.
Claim 12-14, 16-18, 20. See rejection for claims 1-2, 5-9 above.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 8, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Buchholz (US 2008/0318669).
Claims 8, 19. Buchholz discloses the claimed he system of claims 1, 12 as discussed above but fails to teach that the memory device stores a plurality of further instructions that, when executed by the processor, cause the processor to determine if the operation of the electronic gaming machine is defective based on an input received via an input device. Nevertheless, such modification would have been obvious to one of ordinary skilled int eh art. Buchholz discloses that the wagering game content that is reviewed can include program code, audio content, video content, and/or other data used for conducting all or part of a wagering game or bonus game (paragraph 36). The wagering game content can also include executable game code, game math, game art, configuration data (e.g., data enumerating win percentages, denominations, paylines, etc.), operating system code (e.g., peripheral device drivers, patches, libraries, etc.), advertisements, etc. (paragraph 36). Buchholz also discloses that transaction history associated with the wagering content is reviewed (paragraphs 82-84, 91-94). Game transaction history requires game input from an input device by a player. Therefore, it is implied or would have been obvious that the processor determines if the operation is defective based on an input received via an input device since Buchholz discloses that the determination if the gaming machine is defective is based on various wagering game content and transaction history.
Response to Arguments
Applicant's arguments filed 12/15/25 have been fully considered but they are not persuasive.
35 USC 101
Applicant argues that the claims recite additional elements including at least “receive, via [an] interface and from a slot machine interface board associated with an electronic gaming machine, data captured in association with a regulatory review event occurring at the electronic gaming machine, and responsive to the determination being that the operation of the electronic gaming machine is defective, communicate data that results in a modification of the operation of the electronic gaming machine." Such elements are not generic, conventional, or well-known in accordance with MPEP 2106.05(d); MPEP 2106.07(a); Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018). In this case, the Office has not provided a factual determination as required to support a conclusion that these additional elements (or combination of additional elements) are well-understood, routine, conventional activity.
However, the steps of, “receive, via [an] interface and from a slot machine interface board associated with an electronic gaming machine, data captured in association with a regulatory review event occurring at the electronic gaming machine, and responsive to the determination being that the operation of the electronic gaming machine is defective, communicate data that results in a modification of the operation of the electronic gaming machine” amounts to receiving data and transmitting data, which is a form of insignificant extra-solution activity.
In addition, the steps of communicating, transmitting data over a network is well known, routine and conventional. MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here).
Applicant argues that the claims do not qualify as extra solution activity because they impose meaningful limits on the claims by altering a flow of operation of the claimed system in that the determination of if an operation of an electronic gaming machine is defective is based on the data received via the interface and from a slot machine interface board. However, the claim limitations do no impose meaningful limits since they are data received, or used perform the mental process, and data outputted after performing the mental process.
Double Patenting
No specific arguments have been made. The rejection is maintained.
Prior Art
Applicant argues that Buchholz fails to teach determining based on the received data and electronic gaming machine configuration data associated with the electronic gaming machine, if an operation of the electronic gaming machine is defective. More specifically, Applicant argues that Buchholz receives transaction history from the wagering game machine and makes determination related to the authenticity and approval of wagering content and whether a wagering game machine is trusted. Buchholz’s audit unit does not provide any information regarding the underlying operation of the wagering game machine itself nor any information regarding any defects int eh underlying operation of the wagering game machine itself.
It is noted that the claim does not specify the specific type of operation that is determined to be defective. Buchholz discloses a system that receives wagering game content from gaming machine associated with regulatory review or associated with a list to be authenticated (paragraphs 77-78). Audit unit which is part of the approval entity, determines if the authentication information, content, and transaction information is correct or incorrect/defective (paragraphs 78-87, Figs. 3, 9). Buchholz discloses that the operation of the gaming machine, including transaction operation and operation that relies on the content, is defective.
Applicant also argues that Buchholz fails to teach that the audit fails to cause a modification of the operation of the electronic gaming machine. However, it is noted that the claim requires the data that results in a modification to be communicated. The claim does not require a system that performs a modification or a step of modifying a machine in a particular way. Buchholz discloses the audit response unit 432 stops using wagering game content associated with the audit failure. In one embodiment, the audit response unit 432 deletes or otherwise disables the wagering game content associated with the audit failure (paragraph 95). Therefore, the information to stop using the wagering content is communicated to the wagering game machine when auditing a wagering game in order to disable the wagering game content (paragraphs 30, 38, 41, 79). In addition, a modification to a game content in which a gaming machine operates with is a modification of the operation of the electronic gaming machine.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jasson H Yoo whose telephone number is (571)272-5563. The examiner can normally be reached M-F 9am-5pm.
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/JASSON H YOO/ Primary Examiner, Art Unit 3715