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 an electronic gaming machine (i.e., a machine) in claims 1-8, a non-transitory computer readable medium (i.e. a manufacture) in claim 9-14, and a method (i.e., a process) in claims 15-20.
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:
1. An electronic gaming machine comprising:
one or more displays;
one or more processors; and
one or more memory devices storing computer-executable instructions which, when executed by the one or more processors, cause the one or more processors to:
cause a base game GUI to be displayed on the one or more displays, the base game GUI including an array of symbol positions and a first collection meter indicating progress towards meeting a first feature first collection goal;
cause a first feature first mode to be activated responsive to initialization of the first collection meter and deactivated responsive to the first feature first collection goal being met;
cause a first feature first frenzy mode to be activated responsive to the first feature first collection goal being met and deactivated after being active for a first feature first predetermined cumulative time period;
cause a first feature second mode to be activated responsive to deactivation of the first feature first frenzy mode;
cause, using a random number generator (RNG), random outcomes to be obtained;
cause, for each base game play using the base game GUI, symbols to be displayed in the symbol positions, wherein:
the symbols displayed in one or more of the symbol positions for each base game play are each drawn from symbols corresponding to the random outcomes, the symbols including feature symbols and non-feature symbols,
the feature symbols at least include feature symbols of a first type,
each feature symbol of the first type includes only a first amount of corresponding trigger symbols while the first feature first mode is active,
each feature symbol of the first type includes only a second amount of corresponding trigger symbols while the first feature first frenzy mode is active, wherein the second amount is larger than the first amount,
each feature symbol of the first type includes either the first amount of corresponding trigger symbols or the second amount of corresponding trigger symbols while the first feature second mode is active, and
the first feature first collection goal is met when a first cumulative number of the trigger symbols has been displayed in the feature symbols of the first type in base game plays using the base game GUI since the first collection meter was last initialized; and
cause the base game GUI to display, while the first feature first frenzy mode is active, a first feature first frenzy mode timer configured to indicate how long until the first feature first frenzy mode deactivates.
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 evaluating and updating a game state in a graphical representation as well as Certain Methods of Organizing Human Activity including managing personal behavior including interactions between people including social activities and following rules or instructions because the claims set forth the interactions involving one or more parties in the context of the presentation of game play and game play state.
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 electronic gaming machine including display(s), processor(s); and memory device(s) 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 generic computers, smartphones, laptops, tablet devices, 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 electronic gaming machine including display(s), processor(s); and memory device(s) 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 [0068], [0086]-[0089]). 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 [0068], [0086]-[0089]). 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 electronic gaming machine including display(s), processor(s); and memory device(s), a non-transitory computer media as respectively presented in certain claims that when considered both individually and as a whole in the respective combinations of each of the additional claims are not sufficient to support patent eligibility under prong 2 of step 2A or step 2B because they each present substantially similar abstract concepts as noted with reflection to exemplary claim 1 above and accordingly for the same reasons set forth above with respect to the exemplary claim 1 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 November 21st, 2025 have been fully considered but they are not persuasive.
Commencing on page 16-18 of the Applicant’s above dated remarks the Applicant presents that the claimed invention meets the subject matter eligibility requirements of 35 U.S.C. § 101 because it provides a technical implementation of an RNG that solves a technical problem as described in Pargarph [0093] of the published application. The Applicant further presents that the absence of a prior art rejection on the instant pending claims evidences the proposed improvement in the functioning of electronic gaming machines and reflected in the controlling of one or more processors to cause using a RNG, random outcomes to be obtained and utilized to generate game outcomes. Additionally, the Applicant proposes that the claimed invention, when considered under Step 2B of the Alice/Mayo test reflects the inclusion of significantly more than the abstract idea and that the absence of a prior art rejection on the pending claims would further support that conclusion.
Responsive to the preceding, the inclusion of a random number generator (RNG) does not support patent eligibility as proposed because it encompasses the mere use of software to generate a random number on a computer wherein the computer is utilized merely as a tool to implement the abstract idea. The Applicant’s specification including cited paragraphs [0093] & [0121] of the pre-grant publication do not support the proposition that the referenced RNG is believed to be new, improves the functioning of the underlying technology, or is utilized to solve a stated problem. Additionally, it is noted that Courts have previously considered “Realigning and altering the display of symbols on simulated reels is the very essence of the generic slot game.” Konami Gaming Inc. v. High 5 Games, LLC Case No. 2:14-cv-01483, 2018 WL 1020120 at *19(D.Nev. 2018), aff’d Appeal No. 2018-1723 (Fed. Cir. 2019)(Fed. Cir. R. 36).
The interview of November 19th, 2025 (memorialized with the interview summary entered on November 24th, 2025) notes that the inclusion of a hardware number generator may support the presence of patent eligible subject matter based on the inclusion of particular machine. The Applicant presented claim amendments are not limited to a hardware embodied random number generator and as such do not support the presence of a particular machine as referenced therein.
With regards to the proposal that the absence of a prior art-based rejection supports patent eligibility of the claimed invention it is respectfully noted that, the “‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”).
In view of the preceding and consideration of the claims as amended 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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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715