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
Claims 1-7, 9-12, 14-22, 24-27, and 29-30 are pending.
Response to Arguments
Applicant's arguments filed 6/12/26 have been fully considered but they are not persuasive. The Applicant’s representative asserts arguments against the rejections of under 35 USC 112(a) (see Remarks, pg. 1-19) and under 35 USC 112(b) (see Remarks, pg. 19-22). The Examiner respectfully disagrees for the reasons provided in the sections below.
Response to arguments under 35 USC 112(a)
The Applicant’s representative argues that the identified limitations that failed to comply with the written description requirement such as: a) the “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 b) the recited functionality whereby “the artificial intelligence quality assurance game design system utilizes code review and/or computer-readable file review, to simulate player behavior and interaction with the game of change to identify bugs and/or glitches” should be withdrawn. Specifically, the Applicant’s representative asserts that the rejection should be withdrawn for the reasons set forth in “A. Four Sibling Patents Have Issued on the Same Specification Reciting Verbatim the Limitations Now Under Rejection (see Remarks, pg. 2-5); “B. The Office’s Own Claim Chart in This Prosecution Found the Present claim 1 and the ‘107 Parent Claim to be “Substantially the Same” (see Remarks, pg. 5-7); “C. The Office Has Issued the ‘864 Patent on the Same Specification Now Characterized as Inadequate” (see Remarks, pg. 7-9); “D. The Present Claims are Narrower than the Broadest Allowed Sibling, Adding Only Species-Specific Limitations Drawn from the Specification” (see Remarks, pg. 9); “E. Acknowledgement of Non-Binding Effect – The Argument is Principled Consistency (see Remarks, pg. 9-10); “F. The Office 112(a) Rejection Misapplies an Algorithm-Disclosure Standard drawn from 112(f) Case Law and Imposes a Heightened Standard for Which No Factual Predicate Has Been Established” (see Remarks, pg. 10-14); “G. The Specification Expressly Describes the Subject the Office Says is Not Described” (see Remarks, pg. 14-17) and “H. The Office Has Repeatedly Declined to Address the Family-Allowance Argument Raised by Applicant in Successive Prosecution Filings” (see Remarks, pg. 17-19). The Examiner respectfully disagrees for the reasons provided below.
With respect to sections A-E, the Applicant’s representative provides an analysis and comparison of claim 1 of the instant application and the four sibling patents (US 12,494,107; (US 12,272,207; US 12,536,864; US 12,412,447 – collectively with the ‘107 Patent, the “sibling patents”. In particular, the Applicant’s representative argues that the “media encoding and transcoding router” was found to be supported in the sibling patents and limitation is similar to the sibling patents which previously which should be found to be adequate and therefore the same Specification cannot now be found inadequate (see Remarks, pg. 2-10). The Examiner respectfully disagrees. As acknowledged by the Applicant’s representative “the allowance of related applications does not formally bind the Office in the examination of subsequent applications” (see Remarks, pg. 9). The Examiner maintains that each application must be evaluated on its own merits and meet all statutory requirements. Stated differently, the evidence of past findings in other applications does not have bearing on the merits of the instant application. In this instance, the Applicant’s representative has not provided any factual evidence and/or support to address the rejection and the cited deficiencies in the indicated portions of the Specification, as discussed in the Non-Final Rejection, dated 12/12/25 (see Non-Final Rejection, pg. 3-17 – paragraphs 10-20), which are incorporated herein. The Applicant’s representative arguments in sections A-E are found to assert a plea for consistency for treatment between the prior “sibling” patents and the instant application. However, the Applicant’s representative arguments are not persuasive because allowances of related applications does not bind the Office in examination in subsequent applications. For at least these reasons, the Applicant’s argument in sections A-E are not persuasive and the rejection has been maintained below.
With respect to section F, the Applicant’s representative asserts that the rejection imposes a heightened standard for which no factual predicate has been established. The Applicant’s representative argues that the analysis under 112(a) has been misapplied because 1) the standard under 112(f) which does not control in the non-means-plus function claims; 2) Vasudevan is materially distinguishable and does not support the rule the Office invokes; 3) the “emerging technology/complex and unpredictable” framing requires a factual finding the Office has not made; and 4) the Applicant advocates that the standard should be Ariad’s possession test. The Examiner respectfully disagrees for the reasons provided below
With respect to the arguments under section F, the Applicant’s representative argues that the Examiner requires a heightened standard that has no factual predicate (see Remarks, pg. 10-11). The Examiner respectfully disagrees. The claims as recited are directed to a gaming method and gaming system which include desktop computer, cellular phones, tablet computing devices, and/or laptops and computer programming code to identify bugs and/or glitches which indicate that the claims are directed to a computer-implemented function (see Specification, 0091, 0391, 0400). Contrary to the Applicant’s assertions, the Examiner has applied the standard set forth for computer-implemented functional claim limitations. As stated in MPEP 2161.01, “claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this may occur when the algorithm or step/procedures for performing the computer function are not explained at all or are not explained in sufficient detail. As is explicitly noted in the MPEP, simply restating the function recited in the claim is not necessarily sufficient when one of ordinary skill would not understand how the intended function to be performed. In this instance, the Examiner applies the standard of determining whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possess the claimed subject matter at the time of filing. The Examiner maintains that after a thorough analysis of the Specification, as explained in the Non-Final Rejection, the relevant portions discussing the media and encoding router does not adequately explain i) how the input data type is changed into a different media format or consolidate the input data type to a specific file type or ii) a transformer process directs the changed or consolidated input data type to a specific neural network. The relevant portions of the Non-Final Rejection are incorporated herein (see Non-Final Rejection, pg. 3-17). Moreover, the Examiner further asserts that the claimed invention is not merely a general router or generic AI QA game design system performing well-known and conventional functions but to a specialized “media and encoding router” and “AI QA game design system” that performs specialized functions which are not described in adequate detail that would indicate possession of the claimed subject matter to one of ordinary skill in the art. For instance, the Specification provides the general statement that “[t[hose skill in the art will recognize that a specialized AI QA game design system can be programmed to check a number of game features to ensure the game is glitch or bug free” and “[t]hose skill in the art will recognize that AI functionality may be limited until the specialized AI QA game design system is sufficient trained” is able to check for bugs, glitches, or issues partially or fully” (see Specification, 0391, 0400). However, as noted in MPEP 2161.01 I, the requirement for computer-implemented functional claims so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. As explained in the 112(a) rejection of the Non-Final Rejection, the Specification must disclose both the hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software to show possession of the claimed invention. In this instance, the Specification provides general statements without sufficient detail as to how the inventor intended the function to be performed by the components and/or the specialized AI QA game design system achieve the claimed function as it is not enough that one skill in the art could write a program to achieve the claimed function because the specification must explain how the inventor intended to achieve the claimed function to satisfy the written description requirement (see MPEP 2161.01 I). For instance, a review of the AI QA game design system, the Specification discloses that the AI QA game design system, when adequately trained, is able to check for bugs, glitches, or issues partially or fully but does not provide any further details as to a) an ascertainable standard or degree of “adequate training” and/or any details as to how the AI functionality of the AI QA game design system is trained. It follows that the Applicant’s representative arguments that accuse the Examiner of misapplying a heightened standard under 112(f) is not persuasive because the Examiner has applied the appropriate standard set forth for computer-implemented functions in the MPEP. For at least this reasons, the Applicant’s argument is not persuasive and the rejection has been maintained below.
The Applicant’s representative further argues that Vasudevan is distinguishable and does not establish the rule the Office invokes (see Remarks, pg. 11-12). Specifically, the Applicant’s representative argues that Figs. 38-41 and paragraphs [0424]-[0430] disclose the transformer pipeline as – input parameters, tokenization, embedding, positional encoding, sequential transformer blocks with attention and feed-forward processing, softmax, and output. However, a review of the cited portions of the Specification do not indicate how the these pipelines and/or the algorithm performs the claimed function to “identify bugs and/or glitches” in the software of the game of chance. For instance, the Specification states that Fig. 41 represents a “artificial general intelligence foundational model and universal translator, including the media encoding and transcoding router but does not provide any details as to how it achieves through “code review” or “computer-readable file review” that would perform the claimed function to “identify bugs and/or glitches” in the software of the game of chance which does not indicate to one of ordinary skill in the art of possession of the claimed invention. As stated in the section above, the Specification does not adequately describe the claimed invention for the claimed computer-implemented function to “identify bugs and glitches” because the i) interrelationship and interdependence of computer hardware and software and ii) the details of how the AI functionality is trained to perform the specialized claimed function to “identify bugs and glitches” is not adequately described in the Specification. For at least these reasons, the Applicant’s argument is not persuasive and the rejection has been maintained.
Moreover, the Applicant’s representative states that the applicable standard under Ariad possession test is satisfied because it expressly describes “in operational, not aspirational, terms, the use of code review and computer-readable file review by an AI quality-assurance game design system”. The Examiner respectfully disagrees. As explained above, the Specification does not adequately describe with sufficient detail how the inventor intended to achieve the claimed function. Rather, the Specification, after a review of the cited portions by the Applicant’s representative, does not adequately describe the associated software, neural networks, or the AGI foundational model in sufficient detail as to how the inventor intended the code review and computer-readable file review is performed or how the simulating of player behavior is conducted to perform the claimed specialized function to identify bugs and/or glitches in the software of the game of chance. Moreover, as stated above, the claimed AI functionality implemented by the AI QA game design system is not adequately described for how the specialized AI functionality is achieved by the inventor because it lacks sufficient details of how the inventor intended to achieve training the AI functionality that would be able to perform the claimed function to identify bugs, glitches or issues partially or fully (see Specification, 0391, 0400). For at least these reasons, the Applicant’s arguments as to a misapplied standard under 112(a) are not persuasive and the claims are not found to show possession of the claimed invention under 112(a) under the applied standard for computer-implemented functional limitations recited in the instant application.
With respect to section G, the Applicant’s representative argues that the Specification expressly describes the claimed functions such as “code review and/or computer-readable file review, to simulate player behavior and interaction” because it is drawn essentially verbatim from the Specification. Specifically, the Applicant’s representative argues that the supporting paragraphs cited in the “RCE response” describes the operational scope and structure of the QA system and discloses the algorithms (see Remarks, pg. 14-17). The Examiner respectfully disagrees. In the “Response to Arguments” of the Non-Final Rejection dated 12/12/25, the Examiner provides a details, which is incorporated herein (see Non-Final Rejection, 12/12/25, paragraphs 10-17), with respect to the disclosure of “code review” and “computer-readable file review” performed by the AI QA game design system is not adequately described in the Specification that would indicate to one of ordinary skill in the art to show possession at the time of filing the instant application. While it is acknowledged that “code review and/or computer-readable file review, to simulate player behavior and interaction” is drawn verbatim from the Specification (see Specification, 0390), as explained in the Non-Final rejection, the claimed computer-implemented functionality is not adequately described because the disclose does not adequately describe the interrelationship between the AI QA game design system and the associated algorithms to “identify bugs and/or glitches” using code review and automated testing. For instance, as previously discussed, the disclosure fails to adequately describe how the inventor intended to achieve the claimed AI functionality to “identify bugs and/or glitches” as there is insufficient disclosure as to how the AI functionality is adequately trained to perform the specialized function to “identify bugs and/or glitches”. Moreover, the Examiner further notes the disclosed portions disclose that the present invention can be used to test games to “identify potential bugs or issues that may affect the quality of the game” through automated testing but it fails to adequately describe details as to how the intended to achieve the claimed functionality to “at least partially developed executable instructions or computer readable files related to quality assurance elements for the game of chance identify bugs or glitches in the software associated with the game of chance. Furthermore, as noted above, a review of the cited portions of the Specification were still found to not adequately describe how the claimed functionality is achieved by the AI QA game design system because it does not provide sufficient details or how the AI QA game design system and the associated algorithm is adequately trained to identify the bugs and/or glitches and/or the particular algorithms for “the at least partially developed executable instructions or computer readable files related to quality assurance elements for the game of chance identify bugs or glitches in software associated with the game of chance”. Moreover, a review of the cited portions associated with the media encoding and transcoding router do not appear to provide adequate detail as to how the media achieves the claimed specialized function 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 change or consolidated input data type to a specific neural network in a transformer process because there is insufficient detail as to how the specialized router performs the specialized functions to “change input data type to a different media format or consolidate the input data type to a specific data type” either by the media encoding and transcoding router or the universal translator in the Specification. Similarly, a review of the cited portions fails to disclose with sufficient detail of how the specialized router is intended by the inventor to achieve the claimed functionality to “direct the changed or consolidated input data type to a specific neural network of a transformer process”. For at least these reasons, the Applicant’s argument is not persuasive and the rejection has been maintained below.
With respect to section H, the Applicant’s representative asserts that the Office has repeatedly declined to address the “Family-Allowance Argument” raised by the Applicant (see Remarks, pg. 17-19). Specifically, the Applicant’s representative argues that the 112(a) cannot be reconciled with the established record of this prosecution. The Examiner respectfully disagrees. As acknowledged by the Applicant’s representative, prior allowances do not formally bind the Office and is not a valid argument for overcoming a 112(a) rejections. For at least these reasons, the Applicant’s argument is not persuasive and the rejection has been maintained.
Response to arguments under 35 USC 112(b)
With respect to the rejections under 35 USC 112(b), the Applicant’s representative amendments and arguments have been considered and are persuasive. The rejections have been withdrawn below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7, 9-12, 14-22, 24-27, and 29-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, the claims are directed to computer-implemented functions to “at least partially developing executable instructions or computer readable files related to elements for a game of chance for a gaming machine using an artificial intelligence quality assurance design system based upon machine learning training including analyzing past performance wherein the artificial intelligence quality assurance game design system utilizes code review and/or computer-readable file review, to simulate player behavior and interaction with the game of chance to identify bugs and/or glitches”, “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 “wherein the at least partially developed executable instructions or computer readable files related to quality assurance elements for the game of chance identify bugs or glitches in software associated with the game of chance” are not adequately described to show possession of the claimed subject matter. Specifically, the Specification does not support the scope of the genus claimed to develop executable instructions or computer related files to elements for a game of chance to identify bugs and glitches related to quality assurance elements of the game of chance by code review and/or computer-readable file review because it merely provides a generic statements that specify the desired result by “using an artificial intelligence quality assurance design system”. Moreover, the subject matter claimed an artificial intelligence quality assurance design system is not adequately supported it does not adequately describe the interrelationship between the hardware and software in sufficient detail that would demonstrate to one of ordinary skill in the art that the inventor possessed the claimed invention. As the claimed artificial intelligence quality assurance design systems is directed to an emerging technology (see In re Desjardins, hereinafter the ‘ARP Decision’, by Director Squires) indicates that AI systems are viewed as complex and unpredictable. It follows that in order to satisfy the written description requirement the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. It is not enough that one of ordinary skill in the art would know how to program the claimed invention but how the inventor intends to achieve the claimed function. A review of the Specification resulted in the determination that the Specification does not adequately describe with sufficient detail any of the individual algorithms indicated in Figs. 37-40 that would indicate the necessary steps of the artificial intelligence quality assurance design system based upon machine learning. Similarly, the Specification does not adequately describe how the inventor intends to achieve the computer-implemented function by the system to identify bugs and/or glitches. For instance, Fig. 41 is disclosed as an artificial intelligence foundational model that serves as a master algorithm including a media encoding and transcoding router for a transformer process. However, a review of the Specification fails to provide sufficient disclosure as to i) the necessary steps that are performed by the master algorithm of Fig. 41, individual AI algorithms of Figs. 38-40 or interaction between AI algorithms of Fig. 39; ii) does not provide details as to ascertainable standards and/or techniques to train the game design system, how the neural networks are trained to perform the AI implemented task, and/or any disclosure of Steps 4112(a)-(n) (e.g., Step-By-Step Process Supervision) performed by the Media Encoding and Transcoding Router during the foundational model (see Figs. 41, Specification, [0423]-[0430]).
Moreover, the computer-implemented functions of the Media encoding and Transcoding router are not adequately describe in sufficient detail. For instance, the claim recites the computer-implemented function to change input data type to a different media format or consolidate the input data type to a specific file type. Although the Specification discloses that the input into the media encoding and transcoding router may be any media formats such as binary bits, text, image, video, graphics, performance, audio, variables, or collections of these individual elements consolidated into entire files such as spreadsheets, graphics, words documents, it fails to adequately describe how the router in the transformer process changes the input data type to a different media format or consolidate the input to a specific file type. Specifically, the Specification does not adequately describe the encoding and transcoding process as to how the inventor intends to change the input data to a different specific file type. Furthermore, the Specification fails to adequately describe how to identify “bugs and glitches” in the game of chance using the master algorithm of Fig. 41 with sufficient detail that it amounts to a desired result as opposed to an adequately described algorithm and/or necessary steps to show to one of ordinary in the art that the inventor had possession of the invention. In particular, the lack of sufficiency related to the interrelationship and interdependence of the computer hardware and software (e.g., the artificial intelligence quality assurance design system and the algorithm/necessary steps that are used that would indicate that the inventor possessed the system to “identify the bugs and glitches” related to quality assurance elements and/or how the developing of executable instructions and/or computer readable files related to the game of chance is achieved that would satisfy the written description requirement. It follows that there is inadequate written description as to how the “at least partially developed executable instructions or computer readable files to present and allow play of the game of chance” recited in the claim are developed by the specialized AI QA game design system to “identify bugs or glitches in software associated with the game of chance”. For at least these reasons, claims 1-7, 9-12, 14-22, and 24-27, and 29-30 are rejected under 35 USC 112(a) for failing to satisfy the written description requirement of the claimed invention.
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.
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/RYAN HSU/ EXAMINER, Art Unit 3715
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