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 as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As summarized in MPEP § 2106, subject matter eligibility is determined based on a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant application includes claims concerning a thin gaming device (i.e., a machine) in claims 1-9, a method (i.e., a process) in claims 10-18 and at least one computer readable medium (i.e. a manufacture) in claim 19-20.
In Prong 1 of Step 2A, it must be determined whether the claimed invention recites an Abstract Idea, Law of Nature or a Natural Phenomenon.
In particular exemplary presented claim 1 includes the following underlined claim elements:
A thin gaming device comprising:
a display;
at least one storage medium;
an overlay server configured to parse one or more configuration files stored in the at least one storage medium and generate, based on the one or more configuration files, overlay data, the overlay data associated with one or more overlays for a game, the overlay server further being configured to transmit a message including an overlay address; and
a rendered game overlay module configured to navigate to the overlay address and render the overlay data generated by the overlay server based on the overlay address, the rendered game overlay module further configured to cause to be displayed, on top of a game presentation on the display, the rendering of the overlay data.
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes including observation, evaluation, and judgement because the claims are directed to series of steps for portraying information in a graphical representation based on image data and/or configuration files using a computer (See MPEP §2106.04(a)(2) Sub. III.c)
As the exemplary claim recites an Abstract Idea, Law of Nature or a Natural Phenomenon it is further considered under Prong 2 of Step 2A to determine if the claim recites additional elements that would integrate the judicial exception into a practical application. Wherein the practical applications are set forth by MPEP §2106.05(a-c,e) are broadly directed to: the improvement in technology, use of a particular machine and applying or using the judicial exception in a meaningful way beyond generally linking the use thereof to a technology environment. Limitations that explicitly do not support the integration of the judicial exception in to a practical application are defined by MPEP 2106.05(f-h) and include merely using a computer to implement the abstract idea, insignificant extra solution activity, and generally linking the use of the judicial exception to a particular technology environment or field of use.
With respect to the above the claimed invention is not integrated into a practical application because it does not meet the criteria of MPEP §2106.05(a-c,e) and although it is performed on a display, storage medium(s), and an overlay server it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonably include other network devices such as generic computers, smart phones, tablets, laptops game consoles, and the like. Accordingly, the claims limitations are not indicative of the integration of the identified judicial exception into a practical application, and the consideration of patent eligibility continues to step 2B.
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(s) per se including a display, storage medium(s), and an overlay server amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structures that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry per the applicant’s description (Applicant’s specification Paragraphs [0003]-[005], [0032], [0034], [0036], [0039], [0044]-[0061], [0061], [0083], [0120], [0124]). 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.
Accordingly, as presented the claimed invention when considered as a whole amounts to the mere instructions to implement an abstract idea [i.e. software or equivalent process steps] on a generic computer [i.e. controller or processor] without causing the improvement of the generic computer or another technology field.
The applicant’s specification is further noted as supporting the above rejection wherein neither the abstract idea nor the associated generic computer structure as claimed are disclosed as improving another technological field, improvements to the function of the computer itself, or meaningfully linking the use of an abstract idea to a particular technological environment (Applicant’s specification Paragraphs [0003]-[005], [0032], [0034], [0036], [0039], [0044]-[0061], [0061], [0083], [0120], [0124]). In particular the applicant’s specification only contains computing elements which are conventional and generally widely known in the field of the invention described, and accordingly their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art per the requirements of 37 CFR 1.71. Were these elements of the applicant’s invention to be presented in the future as non-conventional and non-generic involvement of a computing structure, such would stand at odds with the disclosure of the applicant's invention as found in their specification as originally filed.
“[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301). In this case, the claims recite a generic computer implementation of the covered abstract idea.
The remaining presented claims 2-20 incorporate substantially similar abstract concepts as noted with respect to the exemplary claim 1, while the additional elements recited by the additional claims including one or more of a display, storage medium(s), and an overlay server as respectively presented that when considered both individually and as a whole in the respective combinations of the additional claims are not sufficient to support patent eligibility under prong 2 of step 2A or step 2B for the reasons set forth above with respect to the exemplary claim 1 and further present substantially similar abstract concepts as noted with reflection to exemplary claim 1 above and therefore are similarly directed to or otherwise include abstract ideas.
Therefore, the listed claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nelson et al (US 2020/0242895) in view of Jalkanen et al (US 2013/0013992
Claim 1: The combination of Nelson & Jalkanen teaches a thin gaming device (Nelson Paragraphs [0067]-[0068]) comprising:
a display (Nelson Figures 4b-4C; Elm 2116; Paragraph [0089]);
at least one storage medium (Nelson Paragraphs [0075]-[0076]);
an overlay server (-wherein the server in the thing client arrangement is understood as being responsible for the graphics processing including the overlaying as described by the reference- Nelson Paragraphs [0013] [0067], [0138])
configured to parse one or more configuration files stored in the at least one storage medium and generate, based on the one or more configuration files, overlay data, the overlay data associated with one or more overlays for a game (Nelson Paragraphs [0013], [017], [0020], [0032], [0138]), the overlay server further being configured to transmit a message including an overlay address (Jalkanen Abstract; Paragraphs [0021]-[0028]) and
a rendered game overlay module (Nelson Paragraph [0138]), configured to navigate to the overlay address and render the overlay data generated by the overlay server based on the overlay address (Jalkanen Abstract; Paragraphs [0021]-[0028]), the rendered game overlay module further configured to cause to be displayed, on top of a game presentation on the display, the rendering of the overlay data(Nelson Figure 2E; Paragraphs [0013], [017], [0020], [0032], [0138]).
Nelson teaches the invention incorporating the inclusion of overlays in the context of a game as cited herein above. While the prior art of Nelson does not explicitly describe the transmission of overlays through the use of an associated overlay address, Jalkanen teaches that this was a known feature in the transmission of overlays in an analogous invention (Jalkanen Abstract; Paragraphs [0021]-[0028]). It would have been obvious to one of ordinary skill before the earliest effective filing date of the claimed invention, to have incorporated the use of overlay addresses as taught by Jalkanen in the invention of Nelson, to provide the predictable and expected result of allowing the use of third-party content without the need to change the underlying game code in Nelson as taught by Jalkanen (Jalkanen Paragraph [0021]).
Claim 2: The combination of Nelson & Jalkanen teaches the thin gaming device of Claim 1, further comprising a platform module, wherein the overlay server is configured to receive game information from the platform module, parse the game information, and send an update message to the rendered game overlay module instructing the rendered game overlay module to update the rendered overlay data based on the parsed game information (-Describing the updating of the game state based on game information- Nelson Figures-2A- 2E; Paragraphs [0043]- [0059]).
Claim 3: The combination of Nelson & Jalkanen teaches the thin gaming device of Claim 1, wherein the configuration file comprises styling data related to at least one of a location, timing, color and design of the overlay data (-Describing the position and values of the presented overlays- Nelson Figures-2A- 2E; Paragraphs [0043]- [0059]).
Claim 4: The combination of Nelson & Jalkanen teaches the thin gaming device of Claim 3, wherein the styling data comprises a time delay before updating the rendered overlay data (-Understood as equivalent to only determining game results at certain time intervals- Nelson Paragraphs [0025], [0028]-[0029]).
Claim 5: The combination of Nelson & Jalkanen teaches the thin gaming device of Claim 1, wherein the overlay data is associated with at least one game outcome (Nelson Paragraphs [0025], [0028]-[0029], [0042]).
Claim 6: The combination of Nelson & Jalkanen teaches the thin gaming device of Claim 5, wherein the at least one game outcome comprises a bingo outcome, a lottery outcome, an RNG outcome, or a historical horse racing (HHR) outcome (Nelson Paragraphs [0120], [0122]).
Claim 7: The combination of Nelson & Jalkanen teaches the thin gaming device of Claim 5, wherein the at least one game outcome is a bingo outcome, and the one or more overlays comprise one or more of a blank bingo card, a dispensed bingo card, a non-pattern daubed bingo card, and a pattern daubed bingo card associated with the bingo game outcome (-Understood as equivalent to the described presentation of a bingo cards and the marking or flagging of locations- Nelson Paragraph [0122]).
Claim 8: The combination of Nelson & Jalkanen teaches the thin gaming device of Claim 1, wherein the rendered game overlay module is further configured to update a location of the one or more overlays on the display based on a player input (Nelson Paragraphs [0041], [0043]).
Claim 9: The combination of Nelson & Jalkanen teaches the thin gaming device of Claim 1, wherein the overlay server comprises a web server and the rendered game overlay module runs a web browser (Nelson Paragraphs [0033], [0071], [0138]).
Claim 10: The combination of Nelson & Jalkanen teaches a method implemented by a thin gaming device (Nelson Paragraphs [0067]-[0068]) comprising a display (Nelson Figures 4b-4C; Elm 2116; Paragraph [0089]), at least one storage medium (Nelson Paragraphs [0075]-[0076]), an overlay server (-wherein the server in the thing client arrangement is understood as being responsible for the graphics processing including the overlaying as described by the reference- Nelson Paragraphs [0013] [0067], [0138]), and a rendered game overlay module (Nelson Paragraph [0138]), the method for displaying an overlay on the thin gaming device, the method comprising:
the overlay server parsing one or more configuration files stored in the at least one storage medium and generating overlay data based on the one or more configuration files, the overlay data associated with one or more overlays for a game (Nelson Paragraphs [0013], [017], [0020], [0032], [0138]) the overlay server transmitting a message including an overlay address (Jalkanen Abstract; Paragraphs [0021]-[0028]);
the rendered game overlay module navigating to the overlay address and rendering the overlay data generated by the overlay server based on the overlay address (Jalkanen Abstract; Paragraphs [0021]-[0028]), the rendered game overlay module causing to be displayed, on top of a game presentation on the display, the rendering of the overlay data (Nelson Figure 2E; Paragraphs [0013], [017], [0020], [0032], [0138]).
Nelson teaches the invention incorporating the inclusion of overlays in the context of a game as cited herein above. While the prior art of Nelson does not explicitly describe the transmission of overlays through the use of an associated overlay address, Jalkanen teaches that this was a known feature in the transmission of overlays in an analogous invention (Jalkanen Abstract; Paragraphs [0021]-[0028]). It would have been obvious to one of ordinary skill before the earliest effective filing date of the claimed invention, to have incorporated the use of overlay addresses as taught by Jalkanen in the invention of Nelson, to provide the predictable and expected result of allowing the use of third-party content without the need to change the underlying game code in Nelson as taught by Jalkanen (Jalkanen Paragraph [0021]).
Claim 11: The combination of Nelson & Jalkanen teaches the method of Claim 10, wherein the thin gaming device further comprises a platform module, the method further comprising the overlay server receiving game information from the platform module, parsing the game information, and transmitting an update message to the rendered game overlay module instructing the rendered game overlay module to update the rendered overlay data based on the parsed game information (-Describing the updating of the game state based on game information- Nelson Figures-2A- 2E; Paragraphs [0043]- [0059]).
Claim 12: The combination of Nelson & Jalkanen teaches the method of Claim 10, wherein the configuration file comprises styling data related to at least one of a location, timing, color and design of the overlay data (-Describing the position and values of the presented overlays- Nelson Figures-2A- 2E; Paragraphs [0043]- [0059]).
Claim 13: The combination of Nelson & Jalkanen teaches the method of Claim 12, wherein the styling data comprises a time delay before updating the rendered overlay data (-Understood as equivalent to only determining game results at certain time intervals- Nelson Paragraphs [0025], [0028]-[0029]).
Claim 14: The combination of Nelson & Jalkanen teaches the method of Claim 10, wherein the overlay data is associated with at least one game outcome (Nelson Paragraphs [0025], [0028]-[0029], [0042]).
Claim 15: The combination of Nelson & Jalkanen teaches the method of Claim 14, wherein the at least one game outcome comprises a bingo outcome, a lottery outcome, an RNG outcome, or a historical horse racing (HHR) outcome (Nelson Paragraphs [0120], [0122]).
Claim 16: The combination of Nelson & Jalkanen teaches the method of Claim 14, wherein the at least one game outcome is a bingo outcome, and the one or more overlays comprise one or more of a blank bingo card, a dispensed bingo card, a non-pattern daubed bingo card, and a pattern daubed bingo card associated with the bingo game outcome (-Understood as equivalent to the described presentation of a bingo cards and the marking or flagging of locations- Nelson Paragraph [0122]).
Claim 17: The combination of Nelson & Jalkanen teaches the method of Claim 10, wherein the rendered game overlay module is further configured to update a location of the one or more overlays on the display based on a player input (Nelson Paragraphs [0041], [0043]).
Claim 18: The combination of Nelson & Jalkanen teaches the method of Claim 10, wherein the overlay server comprises a web server and the rendered game overlay module runs a web browser (Nelson Paragraphs [0033], [0071], [0138]).
Claim 19: The combination of Nelson & Jalkanen teaches at least one non-transitory computer-readable storage media having computer-executable instructions embodied thereon (Nelson Paragraphs [0075]-[0076]), wherein when executed by at least one processor of a thin gaming device (Nelson Paragraphs [0067]-[0068]), the computer-executable instructions cause the at least one processor to:
parse one or more configuration files and generate, based on the one or more configuration files, overlay data, the overlay data associated with one or more overlays for a game (Nelson Paragraphs [0013], [017], [0020], [0032], [0138]);
transmit a message including the overlay address (Jalkanen Abstract; Paragraphs [0021]-[0028]);
navigate to the overlay address (Jalkanen Abstract; Paragraphs [0021]-[0028]);
and
render the overlay data and cause to be displayed, on top of a game presentation on the display, the rendering of the overlay data (Nelson Figure 2E; Paragraphs [0013], [017], [0020], [0032], [0138]).
Nelson teaches the invention incorporating the inclusion of overlays in the context of a game as cited herein above. While the prior art of Nelson does not explicitly describe the transmission of overlays through the use of an associated overlay address, Jalkanen teaches that this was a known feature in the transmission of overlays in an analogous invention (Jalkanen Abstract; Paragraphs [0021]-[0028]). It would have been obvious to one of ordinary skill before the earliest effective filing date of the claimed invention, to have incorporated the use of overlay addresses as taught by Jalkanen in the invention of Nelson, to provide the predictable and expected result of allowing the use of third-party content without the need to change the underlying game code in Nelson as taught by Jalkanen (Jalkanen Paragraph [0021]).
Claim 20: The combination of Nelson & Jalkanen teaches the non-transitory computer-readable media of Claim 19, wherein the computer-executable instructions further cause the at least one processor to receive game information, parse the game information, and update the rendered overlay data based on the parsed game information (-Describing the updating of the game state based on game information- Nelson Figures-2A- 2E; Paragraphs [0043]- [0059]).
Response to Arguments
Applicant's arguments filed August 27th, 2025 have been fully considered but they are not persuasive.
Commencing on pages 6-7 of the Applicant’s above dated remarks the Applicant presents that the previously applied prior art of Nelson fails to anticipate the claimed invention as amended. Additionally, the Applicant proposes that the central server of Nelson is not a server of the thin gaming device as recited in claim 1 but instead acts as a centralized server separate from the gaming device in Nelson.
Responsive to the applicant presented amendments and an updated search reflecting the same, the discovered prior art of Jalkanen is now applied in combination with Nelson to teach the claimed invention as amended. Applicant proposal that the central server of Nelson is not equivalent to the a server of the thin gaming device as recited in claim 1 is respectfully non-persuasive because the applicant’s arguments do not explicitly identify any characteristics that would render the claimed server client arrangement distinct from the client server arrange of the applied prior art.
Continuing on pages 7 through 9 of the Applicant’s above dated remarks the applicant proposes that the claimed invention meets the subject matter eligibility requirements of 35 USC §101 because the recited computer operation involving the causing of a computer display device to display overlay data thereon is not capable of being performed in the human mind. Additionally, the Applicant presents that the claimed invention reflects a patent eligible practical application embodied in an improvement in technology in at least offloading graphical processes from the thin-client device such that the same require less computation ability, memory and/or storage. The Applicant additionally notes that the invention does not risk preemption.
Responsive to the preceding it is respectfully noted that the mere use of a computer does not exempt a claimed invention from falling under a mental process (See MPEP 2106.04(a)(2) Sub. III.c), while the human mind is readily capable of creating and display graphical arrangements with the benefit of a pencil and paper. Accordingly, the claimed invention is not distinct from the enumerated grouping of abstract idea as proposed.
The use of a thin client device does not meet the requirements for supporting an improvement in technology as defined by MPEP 2106.05(a) because thin/thick client computer architecture and use thereof is not a departure from conventional computing hardware configurations. The Applicant’s specification references these hardware arrangements as “As commonly used” and “the way games are played and displayed legacy games (e.g. non-thin or thick gaming devices)” in paragraph [0032] of the in the Applicant’s specification and as such would contradict the proposal that the architecture itself or the claimed invention including the architecture of thin/tick client computers would depart from the conventional computing arrangements. Additionally, the reference of Kleppen et al (US 2014/0256418) further notes that these architectures were known at the time of invention in at least paragraph [0058] and further evidences the conventionality of this arrangement.
Responsive to the Applicant’s remarks on the subject of preemption, while preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016). In keeping with this, MPEP 2106.04.I & 2106.07(b) notes that questions of preemption are resolved by the Alice/Mayo two-part framework including considering if there is an improvement to computer related technology in step 2A, and if the elements when considered in individually and in combination under step 2B are more than the non-conventional and non-generic arrangement of known conventional elements. As discussed in at least the rejection above the claimed invention does not at present meet the requirements under steps 2A or 2B.
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ROBERT E MOSSER whose telephone number is (571)272-4451. The examiner can normally be reached M-F 6:45-3:45.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/
Primary Examiner, Art Unit 3715