DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
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 filed 5/18/2026 have been fully considered but they are not persuasive.
Regarding the rejection of the claim under 35 U.S.C. 101, the Applicant states in Remarks (I)(A)(1))(a)
“The claims are distinguishable from In re Smith, where the claims were directed to rules for playing a wagering game involving multiple participants and their interactions. In contrast, claim 1 recites technical operations performed by computing systems, including "generating a machine-readable optical code associated with the result of the game instance," "causing a standalone ticket printer that is physically separate from an electronic gaming device to output the machine-readable optical code," and "causing activation of an image capture function on the user device configured to capture an image of the machine-readable optical code." These limitations describe automated technical processes executed by hardware components rather than rules governing how people interact with one another during gameplay.”
“The claimed subject matter operates independently of human social interaction. Claim 1 recites "outputting, on the user device, the player account information," which describes a technical display operation rather than coordination between individuals…..”
The Examiner notes that the claims encompass user making a play initiation request by means of a user device, executing a virtual pull tab game for a user, generating a game outcome as a result, capturing from the user device an image of an optical code and outputting to the user device player account information. This clearly involves user interaction by means of the user device to effect the rules for operating the pull tab game to generate a game outcome, which encompasses managing user interactions of at least one person.
Remarks (I)(A)(1))(b): the Applicant essentially argues that the claims are not directed towards a mental process.
Applicant states in part :
“… The generation of such machine-readable optical codes cannot practically be performed in the human mind, as it requires computational encoding of data into a specific machine-interpretable format…”
“…This automated processing of image data through recognition software to extract encoded information and interface with account systems cannot be performed mentally….”
“…the claims involve specific network communication protocols and security measures that are technological in nature.”
…” The automated tracking and modification of account balances based on processed image data represents computational operations that cannot be replicated mentally.”
…” Here, the claimed generation of machine-readable optical codes, activation of image-capture functionality, receipt of image data, and determination of account information from that image data likewise require machine operations and coordinated device functionality, not mental observation or judgment.”
The Examiner respectfully disagrees and notes from the claims that barring the use of generic, conventional elements such as the identified processors, memory, user device, electronic gaming devices, printer and displays. The claimed subject matter encompasses a judicial exception that can be performed by a human using a mental process and manual means. For instance a human may make a play initiation request to another person or a dealer, the dealer provides or executes a pull tab game using pen and paper or some other manual means such as a pull tab ticket, the result is determined based upon the pull tab ticket, a human can further generate a machine readable optical code, which may be a series of number, letters, etc., print the code out on using pen and paper. A human can further look at the ticket, decipher what the code represents by observing it (i.e. image capturing) and determine player account information (i.e. winnings, award balance, etc.) based upon that code and present that that information to a user via pen and paper. Thus as can be clearly seen, the claim steps do indeed have a mental analog despite the assertions of the Applicant.
Remarks (I)(B): Applicant submits the claims integrate the alleged judicial exception into a practical application (Prong Two of Step 2A)
Applicant states in part “The Office Action has alleged that the additional elements in claims 1-20 do not integrate the exception into a practical application because they amount to an instruction to "apply" the judicial exception using a computer as a tool. Office Action, page 5. Applicant respectfully submits that this characterization fails to account for the specific technical solution recited in the claims.”
“The claimed subject matter provides a specific technical solution that improves upon conventional gaming systems by requiring coordinated interaction between physically distinct hardware components, namely, a standalone ticket printer separate from the gaming device, a user device equipped with image capture functionality, and machine-readable optical codes. The specification explains that "[i]n addition to applying credits to a game, a QR code can be used to scan a player's card for player tracking purposes. This is necessary here, because these devices do not have card readers, and it may be desirable not to add them." As-Filed Specification, paragraph [00147]. This particular hardware arrangement enables secure linking of game results to player accounts through optical code capture and processing, representing a concrete technological improvement rather than the mere implementation of abstract gaming concepts on generic computing equipment.
The Examiner respectfully disagrees and notes that the identified additional elements as claimed and as supported by the specification are utilized for their well-known and conventional functionality, such as a printer outputting a printed image, a camera capturing or scanning an image or code etc. The Examiner fails to see how the mere coordination of interactions by physically separate gaming components provides a specific improvements to the functioning of a computer, or to any other technology or technical field. The Applicant asserts that this enables secure linking of game results to player accounts by capturing codes and processing them, however the Applicant has not provided a specific way that game security has been improved such as a detailing a specific computer architecture etc. clearly showing in what way (ex. game security, communication protocol security etc.) is improved. The Examiner is not persuaded.
Remarks (I)(C): C. The present claims recite additional elements that amount to significantly more than any alleged judicial exception (Step 2B).
The Applicant states on pages 17 – 20 that essentially that the ordered combination of elements (see Remarks page 19) provide significantly more than the abstract idea and that this “specific technical architecture integrates any alleged abstract idea into a practical application.” The Applicant further argues at length that essentially the fact that the elements are physically separate from one another or that the operations involve physically distinct hardware components equates the operation of these components not being routine or conventional and thus represent a specific technical improvement. The Examiner is not persuaded by this line of reasoning and fails to see how the mere separation of components physically equates to operations being not routine or conventional and yield a specific technical improvements to the function of the computer or technology. Rather it appears that the this is similar to the mere generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h).
The Examiner maintains the rejection.
Rejections under 35 U.S.C. § 103
Regarding the rejections of the claims the Applicant argues essentially that the mode of operation of the claims at issue are different that the mode of operation of the Gagner. Specifically that the operation of Gagner require the user taking a picture of the barcode versus the Applicants system wherein the Applicant alleges that there is essentially no user interaction and that the steps “requires the system to actively trigger the camera function on the user device. “ The Examiner respectfully disagrees and notes that the steps of the Applicants claims do not preclude a user from initiating the triggering of the camera function on the user device. Thus, the Applicants arguments are not persuasive.
The Applicant further argues that the motivation to combine is not supported. The Applicant states “Merely substituting a pull-tab game type from Mullins into Gagner's system provides no technical improvement to Gagner's barcode-based account management system as recited by claim 1…. The Office Action has not articulated how incorporating a pull-tab game type would address any deficiency in Gagner's primary technical disclosure. The combination represents a mere substitution of game type without any technical nexus to the claimed optical code generation, image capture activation, and account information determination features.”
The Examiner respectfully does notes that the motivation to combine does not need to be a “technical improvement” to support a proper motivation to combine. The motivation to combine can be one that enhances the entertainment value of the wagering system. The examiner notes the previous examiner arguments on this matter. “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. 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.”
The Applicant further states:
Applicant further respectfully submits that Anderson does not teach "a standalone ticket printer that is physically separate from an electronic gaming device" as recited by claim 1. While Anderson discloses that components of a wagering game machine can be located outside the housing, Anderson does not specifically teach a standalone ticket printer that is physically separate from an electronic gaming device and outputs machine-readable optical codes associated with game results.
Anderson teaches that "[t]he 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, paragraph [0149]. This is a general teaching about component placement options, not a specific teaching of a standalone ticket printer outputting machine-readable optical codes associated with game results.
The Examiner respectfully disagrees and notes that Anderson specifically discloses a teaching that a game device or game machine may have a ticket printer that is physically separate from the game device or game machine. The Examiner provides the explicit teaching of this hereinbelow, “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).” Thus as can be clearly seen from Anderson, Anderson expressly teaches embodiments of a game device wherein certain components such as a printer may be integrated within a single housing or outside (i.e. physically separate) from a game device. The Examiner maintains the rejection.
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.
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/RAW/ Examiner, Art Unit 3715
7/29/2026
/KANG HU/ Supervisory Patent Examiner, Art Unit 3715
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