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 .
Information Disclosure Statement
The information disclosure statement entered March 18th, 2026 has been considered. A copy of the cited statement(s) including the notation indicating its respective consideration is attached for the Applicant's records.
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 1-7, 9-12, 14-22, 24-27, and 29-30 are additionally 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 gaming method (i.e., a process) in claims 1-7, 9-12, 14-16 and a gaming system (i.e., a machine) in claims 17-22, 24-27, 29-30.
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:
1. A gaming method comprising:
at least partially developing executable game math configuration files for a game of chance for an electronic gaming machine using an artificial intelligence game math design system based upon machine learning training including analyzing past game performance, the executable game math configuration files defining at least one of reel strip data, paytable data, hit frequency parameters, return-to-player parameters, symbol weighting data, scatter and wild symbol parameters, multiplier parameters, and bonus feature parameters;
utilizing a media encoding and transcoding router to (i) change input data type to a different media format or consolidate the input data type to a specific file type and (ii) direct the changed or consolidated input data type to a specific neural network in a transformer process and select an output with a higher probability variable, wherein the artificial general intelligence foundational model and universal translator is configured to develop its own goal-seeking and reward behavior, gather and/or create training data in real-time, institute its own guardrails and optimization networks, and learn by feeding its output back into the input mechanism to develop the executable instructions or computer readable files related to game math for a game of chance for a gaming machine; and
utilizing the at least partially developed executable game math configuration files to present and allow play of the game of chance for on the electronic gaming machine including at least one of a monetary input device configured to receive a physical item associated with a monetary value and/or cashless wagering, a user interface, at least one processor for running the at least partially developed executable game math configuration files for the game of chance, a game display, and memory in communication with the at least one processor.
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes involving concepts performable by the human mind including observation, evaluation, and judgement because they set for steps for generating instructions and related game operations based on observation and evaluation of previous game performance as well as Certain Methods of Organizing Human Activity including commercial or legal interactions involving sales activities and business relations, and managing personal behavior or relationships including following rules or instructions because the claims set forth the interactions involving one or more parties in the context of rules for game generation and presentation for play.
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 an electronic gaming machine/gaming machine including a monetary input device, a physical item, processor(s), display and memory 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 devices such as vending machines, coin operated games, automated teller machines, slot machines, 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 an electronic gaming machine/gaming machine including a monetary input device, a physical item, processor(s), display and memory 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 [0060]-[0063], [0118], [0119], [0125], [0138], [0328],[355]). 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 [0060]-[0063], [0118], [0119], [0125], [0138], [0328],[355]). 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 2-7, 9-12, 14-22, 24-27, and 29-30 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 gaming machine, a monetary input device, a physical item, processor(s), display and memory 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.
Response to Arguments
Applicant's arguments filed June 5th, 2026 have been fully considered but they are not fully persuasive.
Commencing in section II as presented on pages 1-4 of the Applicant’s above dated response the Applicant references additional issued patents and proposes that the same should be understood to support the allowability of the instant application.
Responsive to the preceding, office personnel are prohibited from expressing any opinion as to the validity or invalidity of, or the patentability or unpatentability of any claim in any U.S. patent or the expiration date of any patent, except to the extent necessary to carry out the specific considerations as set forth in MPEP 1701. Inquiries from members of the public relating to the matters not explicitly set forth by MPEP 1701 must otherwise out of necessity be refused and such refusal should not be considered discourteous or an expression of opinion as to validity, patentability or enforceability. Additionally, it is respectfully noted that as patent examination is performed on a case specific basis and as such the examination of one application does not create a precedential decision in the context of future proceedings.
Applicant assertions that Examiner Slachta is assigned to AU 3715 is respectfully, both inaccurate and irrelevant to considerations concerning the examination of the instant application.
Continuing in section III.A as presented on pages 4-5 of the Applicant’s above dated response, the Applicant presents that the claimed invention does not fall under the enumerated grouping of mental process because the claimed invention involving the use of neural network and related elements cannot be performed in the human mind as support by the court in McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016).
The claimed invention is analogous to the Artificial Neural Network addressed in claim 2 of Example 47 of the USPTO July 2024 Subject Matter Eligibility Examples in at least so much as the claimed invention broadly directed creating executable game math configuration files by collecting data, recursively processing the data, and utilizing the files on an electronic gaming machine, that mirrors the collection of training data, discretizing of training data to generate input data, training an artificial neural network, and merely applying the trained model. Notably the example notes that this arrangement falls under mental process grouping of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment, and opinion.
In McRO the court found that the claims were directed to an improvement in computer-related technology (allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that previously could only be produced by human animators), and thus did not recite a concept similar to previously identified abstract ideas. While the claims of the instant invention define a set of rules for game play, these rules do not improve the functionality of the computer by allowing computer performance of a function not previously performable by a computer in a manner similar to McRO. Proposed improvements to game play rules or even improvements to the algorithms themselves that do not result in an improvement of the hardware which they are practiced on are not sufficient to improve the functionality of the computer but instead result in the mere operation or practice of these rules and algorithms on a computer in a manner specifically caution against in Alice, “[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). Accordingly, the decision in McRO does not support the presence of patent eligible subject matter in the claimed invention as proposed.
Further continuing in section III.B as presented on page 5 of the Applicant’s above dated response, the Applicant presents that the claimed invention does not fall under the enumerated grouping of Methods of Organizing Human Activity because the claimed invention is directed to technological processes occurring in a commercial context rather than the commercial practices themselves and proposes that the court recognized this delineation in DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245, 113 U.S.P.Q.2d 1097 (Fed. Cir. 2014).
The claimed invention involves Certain Methods of Organizing Human Activity including commercial or legal interactions involving sales activities and business relations, and managing personal behavior or relationships including following rules or instructions because the claims set forth the interactions involving one or more parties in the context of rules for game generation and presentation for play. Additionally, while the claimed invention does involve the generation of math configuration files, it additionally provides for the use of the same to present and allow the play of a game of chance on a gaming machine.
Continuing in section III.C as presented on pages 5-6 of the Applicant’s above dated response, the Applicant presents that the claim recites a specific technological mechanism to provide a specific improvement in technology that is proposed as being analogous to considerations addressed in Enfish LLC v. Microsoft Corp. 822 F.3d 1327, 118 U.S.P.Q.2d 1684 (Fed. Cir. 2016)
Responsive to the applicant’s remarks of this section, it is noted that Enfish, LLC v. Microsoft Corp. explicitly presents on page 12 of the decision “In this case, however, the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity…Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table” (emphasis added). Accordingly, the enhanced functionality that is referenced in Enfish is fairly understood to describe the functionality of the computer itself and a specific improvement to the way computers operate but would specifically not support other tasks for which a computer is used in its ordinary capacity. In the instant application the plain focus of the claim is on an algorithm and rules for determining a game state (game math configuration files) for which a computer is utilized in its ordinary capacity to enact and accordingly the claimed invention does not meet the eligibility criteria as discussed in Enfish, LLC v. Microsoft Corp. as presented.
Further continuing in section IV as presented on page 6 of the Applicant’s above dated response, the Applicant presents that the claimed invention integrates any recited abstract idea into a practical application by use of a particular machine defined as including an electronic gaming machine as something different than a laptop or desktop computer per Applicant’s specification paragraph [0063] of the Application as filed.
While the Application as filed paragraph defines the electronic gaming machine as being something other than a generic computer as proposed, the rejection notes that the claimed invention is not directed to a particular machine because the recited hardware elements are not linked to a specific device/machine and would reasonably include other devices such as vending machines, coin operated games, automated teller machines, slot machines, and the like.
Additionally, it is respectfully noted that the claimed invention only relies upon the electronic gaming machine to utilize the executable game math configuration files after they have been determined by the claimed method and as such reflects concerns of insignificant extra-solution activity to the judicial exception that cannot support the presence of particular machine as proposed.
Concluding in section V as presented on page 7 of the Applicant’s above dated response, the Applicant presents that the claimed invention provides significantly more than the recited abstract idea when considered under step 2B because the claimed invention utilizes a specific technological mechanism that does not exist outside of a technological environment and because the office action has not provided a basis for treating the abstract components of the media encoding and transcoding router, the transformer process, and the probabilistic output selection as conventional.
Applicant’s argument is not persuasive because the features Applicant identifies as the inventive concept are part of the abstract idea itself; as such, these features cannot constitute the “inventive concept.” See Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.”); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”).
Responsive to the preceding comments regarding establishing the conventionality of the abstract software elements, it is noted that the decision in Berkheimer v. HP, Inc, and April 19th 2018 USPTO memo concerning the same, focus on if the Additional Elements (i.e. non-abstract portions) of the claimed invention represent well-understood, routine, and conventional activity. Relating to the preceding the rejection of record properly identifies the non-abstract portions of the claimed invention, corresponding disclosure of these element in the Applicant’s specification, and the requirements thereof as set forth by 37 CFR 1.71 to support the factual determination that that the claimed additional elements of the claimed invention represent well-understood, routine, and conventional activity at the time of invention.
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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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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.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715
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