DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
After the amendments filed 02/10/2026, claims 1-20 remain pending, of which, 1, 14 and 17 were amended.
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. The claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Guidelines (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, 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 Eligibility Guidance
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a system and/or process, which is are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Independent claim 1 recites the following, with the abstract ideas highlighted in bold, including an indication as to the abstract idea grouping(s) to which the indicated limitations belong to, according to the 2019 Revised Patent Subject Matter Guidelines. Independent claims 14 and 17, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
1. An electronic gaming machine comprising:
a housing comprising an access door;
a security monitoring circuit supported by the housing;
a display device supported by the housing;
a processor; and
a memory device storing a plurality of instructions, which when executed by the processor cause the processor to:
cause a display, by the display device, of a triggering event for multi-function symbols (Certain Methods of Organizing Human Activity);
cause a display, by the display device, of a plurality of different multi-function symbols (Certain Methods of Organizing Human Activity);
cause a display, by the display device, for each of the plurality of different multi-function symbols of:
each of one or more activations of the multi-function symbol until the multi-function symbol is deactivated, wherein each of the activations of the multi-function symbol results in a random determination, via a random number generator, and a display, by the display device, of an indication of one of a plurality of different functions of the multi-function symbol, wherein one of the different functions comprises an addition of an extra multi-function symbol to the plurality of different multi-functions symbols (Certain Methods of Organizing Human Activity and/or Mental Processes), and
an indication of a deactivation of the multi-function symbol, wherein the deactivation is associated with an indicated one of the plurality of different functions of the multi- function symbol, wherein the one or more activations of the multi-function symbol are sequential until the deactivation of the multi-function symbol and wherein the deactivation of the multi-function symbol is prior to any activations of a next multi-function symbol of the plurality of different multi-function symbols, and wherein for two of the multi-function symbols, the deactivations for said multi-function symbols are associated with different functions of said multi-functions symbols (Certain Methods of Organizing Human Activity and/or Mental Processes);
when an opening of the access door is detected via the security monitoring circuit following an activation of a multi-function symbol:
store data associated with a state of the electronic gaming machine prior to the detection of the opening of the access door, the data comprising any activations of the plurality of different multi-function symbols, any functions associated with the activations of the plurality of different multi-function symbols, and any deactivations of the plurality of different multi-function symbols;
disable activation of any additional multi-function symbols;
following a closing of the access door detected via the security monitoring circuit:
load the stored data associated with the state of the electronic gaming machine prior to the detection of the opening of the access door; and
enable activation of additional multi-function symbols; and
after a display, by the display device, of indications of deactivations for all of the multi-function symbols, cause a display of any remaining displayed functions of the multi-function symbols resulting from the activations of the multi-function symbols that have not been previously displayed (Certain Methods of Organizing Human Activity).
The limitations in claim 1 (as well as claim(s) 14 and 17) recite an abstract idea included in the groupings of Certain Methods of Organizing Human Activity and/or Mental Processes, connected to technology only through application thereof using generic computing elements (e.g., a processor, a memory, a display, a security monitoring circuit, etc.) and/or insignificant extra-solution activity. According to the 2019 Revised Patent Subject Matter Guidelines:
Mental Processes include concepts performed in the human mind (including an observation, evaluation, judgement, opinion); and
Certain Methods of Organizing Human Activity include:
1. Fundamental Economic Principles or Practices (including hedging (i.e., wagering), insurance, mitigating risk);
2. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
3. Managing Personal Behavior or Relationships or Interactions Between People (e.g. social activities, teaching, and following rules or instructions). The interaction encompasses both activity of a single person (for example a person following a set of instructions) and activity that involves multiple people (such as a commercial or legal interaction). Thus, some interactions between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within this grouping.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. In light of the applicant' s specification, several limitations identified above are interpreted as reciting rules for playing a game, which falls squarely within the Certain Methods of Organizing Human Activities grouping. For example, the specification explains that the multi-function symbols are activated, provide functions and are de-activated according to predefined rules (See Specification ¶28). Theses limitations describe following a prescribed sequence of steps, conditions and outcomes that govern the player of a wagering-type game. The Federal Circuit has held that such game rules constitute abstract ideas. See In re Smith, 815 F.3d 816 (Fed. Cir. 2016). Accordingly, the claim limitations directed to displaying symbols, displaying symbol functions, adding extra symbols, and presenting deactivation are properly categorized as Certain Methods of Organizing Human Activities, as they merely recite the rules and instructions for conducting the game, implemented utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity, as set forth in the claims; and/or
B. Several Limitations recite evaluation, determination and conditional logic that falls within the Mental Processes abstract idea grouping. Theses include, for example, determining whether a multi-function symbol has been deactivated, determining whether all symbols have been activated and deactivated, determining which functions are associated with deactivation, etc. The Federal Circuit has held that steps involving conditional logic or information analysis constitutes mental processes, even when performed by a computer. See Electric Power Group, 830 f.3d 1350 (Fed. Cor. 2016). Accordingly, the limitations involving determinations, evaluations and sequencing logic are properly categorized as Mental Processes, as they merely recite the abstract mental steps, implemented utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity, as set forth in the claims.
Regarding dependent claims 2-13, 15-16 and 18-20:
Each claim is dependent either directly or indirectly from the independent claim identified above and includes all the limitations of said independent claim. Therefore, each dependent claim recites the same abstract idea as identified above. Each of the dependent claim further describes additional aspects of the abstract idea, i.e., additional aspects to the Certain Methods of Organizing Human Activity and/or Mental Processes. For example, some dependent claims merely provide additional Methods of Organizing Human Activity and/or Mental Processes to be performed and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101.
Step 2A-2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-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
Limitations that are not indicative of integration into a practical application:
-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 clearly do not improve the functioning of a computer, as they only incorporate generic computing elements, do not effect a particular treatment, and do not transform or reduce a particular article to a different state or thing. Similarly, 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 claimed invention does not suggest improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05 (a)).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (MPEP 2106.05 (h)). The claimed computer components are recited at a level of generality and are merely invoked as tool to perform the abstract idea. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
For the reasons as discussed above, the claim limitations are not integrated to a practical application.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of “a processor, a memory, a display”, etc. used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility. These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
In addition to the abstract ideas indicated above, the claims include additional limitations, such as:
“when an opening of the access door is detected via the security monitoring circuit following an activation of a multi-function symbol:
store data associated with a state of the electronic gaming machine prior to the detection of the opening of the access door, the data comprising any activations of the plurality of different multi-function symbols, any functions associated with the activations of the plurality of different multi-function symbols, and any deactivations of the plurality of different multi-function symbols;
disable activation of any additional multi-function symbols;
following a closing of the access door detected via the security monitoring circuit:
load the stored data associated with the state of the electronic gaming machine prior to the detection of the opening of the access door; and
enable activation of additional multi-function symbols”.
As claimed, these additional elements are viewed as steps and/or instructions to invoke a computer as a tool to implement the abstract idea, perform extra solution activity of the abstract idea, and/or provide a technological environment to perform the abstract idea (see MPEP 2106.05(f)-(h)), which is a form of insignificant extra-solution activity and thus does not integrate the judicial exception into a practical application. Further, applicant’s specification indicates that these additional elements are well-known general purpose components of a gaming system that when viewed alone and/or in combination do not amount to an inventive concept, but are merely invoked as a tool to implement the abstract idea and/or provide a technological environment to conform with regulatory and/or jurisdictional regulations to enable managing a wagering game on a gaming system, which does not provide significantly more to transform the abstract idea (See Specification, ¶145-171).
Further, the claims would require structure that is beyond generic, such as structure that can be interpreted analogous to a general purpose structure and general purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims. See Alice Corp. v. CLS Bank International, 134 S. Ct. at 2358-59. The elements of a processor, a memory, a display are well known conventional devices used to electronically implement a game as evidence by U.S. 2004/0204228 which discloses that a conventional gaming machine comprises elements such as a processor, a memory and a display to control the overall operation of the gaming machine (¶58). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The dependent claims do not add “significantly more” for at least the same reasons as directed to their respective independent claims, at least based on the position, as discussed above, that each of the dependent claims merely provide additional limitations to further expand the abstract idea of the independent claims, without adding anything which would establish eligibility under 35 U.S.C. 101.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
Response to Arguments
Applicant’s arguments, see Remarks, filed 02/10/2026, with respect to the rejection(s) of the claim(s) under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the gaming machine is not merely used as a tool to implement the abstract idea (See Remarks, pg. 11). The examiner must respectfully disagree. The claims do not recite any improvement to the function of the gaming machine itself. The alleged improvements relate solely to game play logic (i.e., the sequence of displaying, activating, deactivation and evaluating the multi-0function symbols) The Federal Circuit has repeatedly held that modifying game rules or game content does not constitute a technological improvement, even when implemented on a gaming machine. See In re Smith, 815 F.3d 816 (Fed. Cir. 2016). In the instant case, the specification confirms the processor, memory, display and security monitoring circuit are conventional components performing their ordinary functions (See Specification, ¶154-180). Accordingly, the gaming machine is merely used as a tool to implement the abstract idea.
Applicant argues that the claims do not require player input, thus the claims are not related to interactions between people (See Remarks, pg. 11-12). The examiner must respectfully disagree. Whether or not player input is required is not determinative of eligibility. The claims remain directed to rules for playing a game, which fall within the Certain Methods of Organizing Human Activity grouping. Utilizing generic computing elements as a tool to implement an abstract idea, without any additional elements that are sufficient to amount to significantly more than the judicial exception, does not render it non-abstract.
Applicant argues that like Enfish, the software claims of the instant claims are not inherently abstract (See Remarks, pg. 12). The examiner must respectfully disagree. Enfish applies only where the claims recite a specific improvement to computer functionality (e.g., a new data structure or improved memory architecture). The instant claims do not improve the claimed processor, memory, display, security circuit, or any other computer component, they merely use generic computing components to execute the abstract game logic.
Applicant argues that claims include conventional elements which integrate the abstract idea into a practical application (See Remarks, pgs. 12-13). The examiner respectfully disagrees. In order to integrate the abstract idea into a practical application the conventional elements must meaningfully limit the abstract idea. In the instant claims, the conventional elements (e.g., processor, memory, display, security circuit, etc.) only perform their ordinary, well-understood functions. They do not improve the operation of the machine and thus do not meaningfully limit the abstract idea (See MPEP 2106.05(f)-(h)).
Applicant argues that the instant claims provide an improvement to computer game technology similar to the claims found allowable in Core Wireless Licensing SARLv LG Electronics (See Remarks, pg. 13). The examiner must respectfully disagree. The instant claims are not like those in Core Wireless. In that case, there was a technical problem having to do with the size of the display screen. The screen was too small to allow efficient use. The claims in Core Wireless provided specific improvements to the UI that solved this technical problem. Applicant’s claimed invention does not address any technical problems with EMG displays, nor do the claims provide any specific improvements to the UI design.
Applicant argues that the claims cannot be considered a mental process because the random determinations via a random number generator (See Remarks, pg. 13). The examiner must respectfully disagree. The rejection is not solely based on the Mental Processes grouping. The claims are primarily directed to rules and logic for playing a game, which fall under the Certain Methods of Organizing Human Activity grouping. Further, several limitations recite evaluation, determinations and conditional logic, which fall under the Mental Processes grouping. The addition of a generic random number generator performing it’s ordinary, well-understood function is not sufficient to amount to significantly more than the judicial exception.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON PINHEIRO whose telephone number is (571)270-1350. The examiner can normally be reached M-F 8:00A-4:30P ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Jason Pinheiro/ Examiner, Art Unit 3715
/DMITRY SUHOL/ Supervisory Patent Examiner, Art Unit 3715