DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/24/2025 has been entered.
Status of Claims
Claims 1, 8, 9 and 15 are previously presented.
Claims 1 – 20 are pending.
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.
This subject matter eligibility analysis follows the latest guidance for Patent Subject Matter Eligibility Guidance.
Claims 1 – 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Claims 1 – 7 are drawn to a method.
Claims 8 -20 are drawn to an apparatus and CRM.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter.
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Claims 15 - 20 are exemplary because they require substantially the same operative limitations of the remaining claims 1 – 14 (reproduced below.) Examiner has underlined the claim limitations which recite the abstract idea, discussed in detail in the paragraphs that follow.
15. (Currently Amended) An apparatus comprising:
one or more processors; and
memory storing processor-executable instructions that, when executed by the one or more processors, cause the apparatus to:
determine, based on a play initiation request received from a user device, a player account associated with the user device;
execute, based on the play initiation request from the user device associated with the player account, a game instance of a virtual pull-tab game;
based on executing the game instance of the virtual pull-tab game, determine a result of the game instance;
generate a machine-readable optical code associated with the result of the game instance;
cause a standalone ticket printer that is physically separate from an electronic gaming device to output the machine-readable optical code;
cause activation of an image capture function on the user device configured to capture an image of the machine-readable optical code;
receive, from the user device, image data associated with the machine-readable optical code;
determine, based on the image data, player account information; and
outputting, on the user device, the player account information.
The claims recite italicized limitations that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG, namely, Certain Methods of Organizing Human Activity and Mental processes.
More specifically, under this grouping, the italicized limitations represent managing interactions between people. For example, the italicized limitations are directed towards rules for gaming wherein a pull tab game is execute based upon a player initiation request, results are determined and the generation of an optical code, capturing an image of the code and determine and outputting player account information based upon the image. This falls under the grouping of managing interactions between people, i.e., rules for executing a game.). This also falls under concepts performed in the human mind (including an observation, evaluation, judgment, opinion), wherein a user determines account information based upon visually analyzing an image on paper to make a judgment regarding a player account.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations as follow, (emphasis added): processors, memory, user device, electronic gaming devices, printer and displays.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea. Therefore, since the additional limitations, individually or in combination, are indistinguishable from a computer used as a tool to perform the abstract idea, the analysis continues to Step 2B, below.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional and routine computer implementation and mere instructions for implementing the abstract idea on generic computing devices.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract idea. Applicant has claimed computing hardware such as processors, memory, user device, electronic gaming devices, printer and displays. However, all of these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
As the Alice court cautioned, citing Flook, patent eligibility cannot depend simply on the draftsman’s art. Here, amending the claims with generic computing elements does not (in this Examiner’s opinion), confer eligibility.
Regarding the Berkheimer decision, Applicant’s specification establishes that these additional elements are generic:
[0033] In the present embodiment of the invention, device 24 comprises an iPodTM, which is made by Apple Inc. Any suitable computing device may be so used. In Fig. 3 device 24 is being held in a player's left hand 26. A forefinger 28 on the player's right hand 30 is shown in motion in the direction of an arrow 29 on a touch screen 31, which has a display 32 thereon, on device 24. As is known in the art, touch screens can be implemented in a variety of ways, each of which changes a state that the device is monitoring….
[0052] Turning now to Fig. 13, indicated generally at 62 is another embodiment of the invention, which, like the previously described embodiment, is also implemented in a mobile computing device. Also like device 24, Apple Inc. manufactures device 62, which is sold under the iPadTM brand. Device 62, however, is larger in size than the approximately 4.4 x 2.3 x .3 inches of device 24. Device 62 is approximately 9.5 x 7.3 x .4 inches in size. Although implemented on mobile devices in the present embodiment, the present invention may also be implemented in devices in which only some or even none are mobile.
[0053]Device 62 includes a screen 64 upon which a game-display home screen 65 is shown, namely the Mystic Sevens game. Device 64 also includes a built-in camera having a lens 66 and a home button 68 for controlling various aspects of the device. Additional controls, not visible, control volume, screen rotation, power, etc.
[0094] In the present embodiment, the terminals are substantially identical to device 62 described above. A person affiliated with venue 142 or with a charity that benefits from the gaming conducted there operates a cashier terminal 150. Of course, any person, regardless of affiliation, could operate the cashier terminal. A ticket printer 152, which communicates in a known manner with cashier terminal 150, may be used in some embodiments to purchase credits and redeem credits and awards as will be shortly described.
Therefore, these elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they merely recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit has said 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 cffDNA 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.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 - 20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Gagner et al (US 2011/0207531) in view of Mullins (US 2005/0096130) in view of Anderson et al (US 2013/0130778)
As per claim 1, Gagner discloses:
determining, based on a play initiation request received from a user device, a player account associated with the user device; (Gagner discloses a player utilizing a mobile device that displays a barcode, wherein the wagering game machine (WGM) scans the barcode to determine a request to play a particular game and utilizing the barcode to associate a player account with the game session) (Gagner 0111 – 0116)
executing, based on the play initiation request from the user device associated with the player account, a game instance of a … game; (Gagner discloses the execution of a gaming instance in response to the scanning of the barcode representing a play request) (Gagner 0116)
based on executing the game instance of the … game, determining a result of the game instance; (Gagner discloses the determination of a result of the game instance, wherein a barcode is displayed that represents the players current game progress or the players (Gagner 0114) or the players winnings from the game (Gagner 0069))
generating a machine-readable optical code associated with the result of the game instance; (Gagner discloses the WGM generating and outputting of an optical code as a result of the game (winnings or game progress) that the user scans with the mobile device) (Gagner 0069, 0112)
causing a standalone ticket printer to output the machine-readable optical code; (Gagner discloses a WGM having a ticket printer that prints a machine readable barcode that the user captures with a capture device. The Examiner is interpreting the printer of Gagner as “standalone” in that Gagner does not specifically state that the WGM comprises a printer, but merely that the WGM utilizes a ticket based payout scheme that may print a ticket. Further the specification of the Applicant does not specifically define or describe the makeup or details of a ‘standalone printer”. At most, applicant’s specification paragraph 00145 and Fig 34 of the Applicant’s drawings disclose a printer #152 beside an iPad (Gagner 0069, 0112). Gagner discloses a printer that can reasonably be viewed as a standalone printer in that it is operating or capable of operating independently of other software or hardware.)
causing activation of an image capture function on the user device configured to capture an image of the machine-readable optical code; (Gagner discloses the WGM generating and outputting of an optical code as a result of the game (winnings or game progress) that the user scans with the mobile device) (Gagner 0069, 0112)
receiving, from the user device, image data associated with the machine-readable optical code; (Gagner discloses the mobile device after scanning the barcode, sending a request comprising barcode image data to a server to request winnings to be deposited) (Gagner Fig 1, 2, 0052 – 0055)
determining, based on the image data, player account information; and outputting, on the user device, the player account information.(Gagner discloses the determination and outputting of player account information on the mobile device) (Gagner 0057 – 0058)
Gagner fails to disclose that the game is a “pull-tab” type game or that the standalone printer is “…physically separate from an electronic gaming device…”
However in a similar field of endeavor, Mullins discloses a wagering game focused on allowing players of many different types of games to compete with one another wherein Mullins discloses specifically “Almost any game can be used in the gaming method and system. It is generally preferred that the games be games of skill and/or chance such as playing card games, high/low card games, twenty-one card games, poker card games, dice games, slot machine casino style games, lottery, pull tab, keno, bingo type games or any other suitable game (i.e. having table fixed jackpots and/or progressive jackpots). All games included within the gaming system utilize at least one progressive jackpot as a prize but may also provide smaller win amounts like table jackpots or a one game jackpot or a one-machine jackpot. The games may be played in whole or in part electronically.” (Mullins 0031, Abstract)
It would be obvious to one of ordinary skill in the art, at the time of filing, to modify Gagner in view of Mullins to utilize a known technique to improve similar devices in the same way by utilizing a wagering game that comprises a pull-tab type game. This would be beneficial to the game establishment, as the game system can appeal to a wide range of game preferences of many different players, thus potentially enhancing the profitability of the game establishment hosting the game.
However, in a similar field of endeavor, Anderson teaches a game machine that comprises components such as a separate ticket printer (Anderson 0029). Anderson further teaches “The various components of the wagering game machine 1100 can be connected directly to, or contained within, the housing 1112. Alternatively, some of the wagering game machine's components can be located outside of the housing 1112, while being communicatively coupled with the wagering game machine 1100 using any suitable wired or wireless communication technology.” (Anderson 0149).
It would be obvious to one of ordinary skill in the art, at the time of filing, to modify Gagner in view of Anderson to utilize a known technique to improve similar devices in the same way to utilize a game machine that connect to a printer that is physically separate from the game machine. This would be beneficial to the gaming establishment as it would potentially reduce the costs to manufacturing the gaming machines it would potentially reduce the complexity of the game machine and also reduce the footprint of the gaming machine.
As per claim 2, based on receiving the image data associated with the machine-readable optical code, awarding funds to the player account associated with the user device. (Gagner discloses the awarding of funds to a player account on the 39110 0057, 0058)
As per claim 3, further comprising permitting a player to cash out credits by one or more of: electronic funds transfer, outputting currency, or printing a ticket. (Gagner discloses a player cashing out by funds transfer) (Gagner 0057, 0058, 0059)
As per claim 4, wherein outputting the machine-readable optical code comprises causing the user device to display the machine-readable optical code. (Gagner discloses the mobile device displaying the barcode) (Gagner 0112)
As per claim 5, wherein the user device comprises one or more of: a smartphone, a tablet, computer, or a laptop. (Gagner discloses the user device is a smart phone) (Gagner 0052, #107)
As per claim 6, herein the machine-readable optical code comprises one or more of: a barcode, a QR code. (Gagner disclose a barcode) (Gagner 0054).
As per claim 7, wherein outputting the game instance of the virtual pull-tab game comprises outputting the virtual pull-tab game on one or more of: the user device or an electronic gaming device. (Combination of Gagner and Mullins as applied to claim 1, Gagner 0098, Mullins 0031)
Independent claim(s) 8 and 15 is/are made obvious by the combination of Gagner, Mullins and Anderson based on the same analysis set forth for claim(s) 1, which are similar in claim scope.
Dependent claim(s) 9 – 14 is/are made obvious by the combination of Gagner, Mullins and Anderson based on the same analysis set forth for claim(s) 2 – 7 respectively, which are similar in claim scope.
Dependent claim(s) 16 – 20 is/are made obvious by the combination of Gagner, Mullins and Anderson based on the same analysis set forth for claim(s) 2 – 6 respectively, which are similar in claim scope.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 – 20 (Remarks (I)(A)(i)) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Please see above rejection addressing the newly amended claims.
Applicant's arguments (Remarks (I)(A)(ii)) filed 11/24/2025 have been fully considered but they are not persuasive.
Regarding the rejection of the claims as obvious over Gagner in view of Mullins the Applicant duplicates the same arguments previously presented in Applicant’s Remarks dated 8/13/2025 and 4/7/2025. The Examiner, in the Final Office action dated 8/28/2025, has fully responded to these arguments. The Examiner herein copies the Examiner’s previous response below:
Applicant further argues with respect to the rejection of the claims under 35 U.S.C. 103 over Gagner in view of Mullins, that essentially the Examiner has not provided sufficient motivation to modify Gagner in view of Mullins.
Applicant states:
Here, the Office Action asserts "it would have been obvious...to modify Gagner in view of Mullins to 'utilize a known technique to improve similar devices in the same way by utilizing a wagering game that comprises a pull-tab type game."' Office Action, p. 4. (Internal quotations added).
Applicant submits this motivation is insufficient. The vague allegation does not include a "rational underpinning" and is nothing more than a "mere conclusory statement." There is no indication as to why a person skilled in the art would combine the references, much less how the references would be combined. For example, incorporating Mullins into Gagner would modify the principle of operations of Gagner which relies on a mobile device, which is not taught by Mullins.
However, the Examiner respectfully disagrees and states that the Examiner has indeed provided sufficient motivation to modify Gagner in view of Mullins. The Examiner notes that in the Applicant’s Remarks, the Applicant has quoted only a portion of stated reasons as to why the it would be obvious to modify the game system of Gagner in view of Mullins to provide a pull-tab game for a user to play. The Examiner notes the following from the previous office action, “It would be obvious to one of ordinary skill in the art, at the time of filing, to modify Gagner in view of Mullins to utilize a known technique to improve similar devices in the same way by utilizing a wagering game that comprises a pull-tab type game. This would be beneficial to the game establishment, as the game system can appeal to a wide range of game preferences of many different players, thus potentially enhancing the profitability of the game establishment hosting the game. As can be clearly seen the Examiner has provided a clear motivation to combine as highlighted by the bolded, underlined portions of the above quoted rejection. Further the Applicant has not provided any persuasive evidence or reasoning as to how the mere incorporation of a different type of wagering game such as a pull-tab game of Mullins would render the principle functions of Gagner inoperable. Thus, the Examiner maintains the rejection. (Non-Final Office Action dated 8/28/2025 and 4/24/2025)
Conclusion
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/RAW/ Examiner, Art Unit 3715
12/26/2025
/KANG HU/ Supervisory Patent Examiner, Art Unit 3715