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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/6/2025 has been entered. Applicant’s submission of a response on 3/6/2025 has been received and considered. In the response, Applicant amended claims 1, 8 – 10, 12, 19 and 20 and cancelled claims 5, 7, 16 and 18. Therefore, claims 1 – 4, 6, 8 – 15, 17, 19 and 20 are pending.
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 – 4, 6, 8 – 15, 17, 19 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to bingo game system without significantly more.
The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’- i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that ‘”[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claims fall into one of the four statutory categories of invention. Claims 1 – 4, 6 and 8 – 11 are directed to a gaming system and claims 12 – 15, 17, 19 and 20 are directed to a method which fall into the four statutory categories. However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, “two forms of wager-based gaming include Class II games and Claims III games, wherein Class II games includes bingo games and bingo-like games”. More particularly, representative claims 1, 10 and 12 recites the following (with emphasis):
Claim 1: A system comprising:
a processor programmed to operate in a Class II regulated bingo jurisdiction; and
a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
prior to a display of a Class II bingo game, maintain, in a database, a plurality of predefined Class II bingo cards and a plurality of predefined sets of bingo numbers, and
responsive to an occurrence of a triggering event and prior to the display of the Class II bingo game:
responsive to a receipt, from an electronic gaming machine, of data corresponding to a first state of any persistent elements currently being displayed in association with a non-regulated simulated Class III game;
select, at least partially based on the first state of any persistent elements, one of a first predefined Class II bingo card from the plurality of predefined Class II bingo cards and a first predefined set of bingo numbers from the plurality of predefined sets of bingo numbers, and
interface with the electronic gaming machine to cause the display device of the electronic gaming machine to separately display the selected one of the first predefined Class II bingo card and an indication of the first predefined set of bingo numbers, and
responsive to a receipt, from the electronic gaming machine, of data corresponding to a second, different state of any persistent elements currently being displayed in association with the non-regulated simulated Class III game;
select, at least partially based on the second, different state of any persistent elements, one of a second, different predefined Class II bingo card and a second, different predefined set of bingo numbers, and
interface with to the electronic gaming machine to cause the display device of the electronic gaming machine to separately display the selected one of the second, different predefined Class II bingo card and an indication of the second, different predefined set of bingo numbers.
Claim 10: A system comprising:
a processor programmed to operate in a Class II regulated bingo jurisdiction; and
a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
prior to a display of any regulated Class II bingo game, maintain, in a database, a plurality of predefined Class II bingo cards and a plurality of predefined sets of bingo numbers, and
responsive to an occurrence of a Class II bingo triggering event and prior to the display of any regulated Class II bingo game:
responsive to a first quantity of no persistent elements being currently displayed in association with a non-regulated simulated Class III display, interface with an electronic gaming machine to cause a display device of the electronic gaming machine to display a first predefined Class II bingo card selected from the plurality of predefined Class II bingo cards based on the first quantity for a first regulated Class II bingo game, wherein each outcome of the first regulated Class II bingo game is associated with one of: a display of an additional persistent element in association with the non-regulated simulated Class III display, and no additional display of any persistent elements in association with the non-regulated simulated Class III display,
responsive to a second quantity of one persistent element being currently displayed in association with the non-regulated simulated Class III display, interface with the electronic gaming machine to cause the display device of the electronic gaming machine to display a second, different predefined Class II bingo card selected from the plurality of predefined Class II bingo cards based on the second quantity for a second, different regulated Class II bingo game, wherein each outcome of the second, different regulated Class II bingo game is associated with at least one of: a display of an addition of another persistent element in association with the non-regulated simulated Class III display, a display of a removal of the persistent element currently displayed in association with the non-regulated simulated Class III display, a display of a modification of the persistent element currently displayed in association with the non-regulated simulated Class II display, and no displayed modification of the persistent element currently displayed in association with the non-regulated simulated Class III display, and
responsive to a third quantity of at least two persistent elements being currently displayed in association with the non-regulated simulated Class III display, interface with the electronic gaming machine to cause the display device of the electronic gaming machine to display a third, different predefined Class II bingo card selected from the plurality of predefined Class II bingo cards based on the third quantity for a third, different regulated Class II bingo game, wherein each outcome of the third, different regulated Class II bingo game is associated with at least one of: a display of an addition of another persistent element in association with the non-regulated simulated Class III display, a display of a removal of a persistent element of the at least two persistent elements currently displayed in association with the non- regulated simulated Class III display, a display of a modification of a persistent element of the at least two persistent elements currently displayed in association with the non-regulated simulated Class III display, and no displayed modification of any of the persistent elements currently displayed in association with the non- regulated simulated Class III display.
Claim 12: A method of operating a system operating in a Class II regulated bingo jurisdiction, the method comprising:
prior to a display of a Class II regulated bingo game, maintain, in a database, a plurality of predefined Class II bingo cards and a plurality of predefined sets of bingo numbers, and
responsive to an occurrence of a triggering event, prior to the display of the Class II regulated bingo game, and responsive to a receipt, from an electronic gaming machine, of data corresponding to a first state of any persistent elements currently being displayed in association with a non-regulated simulated Class III game:
selecting, at least partially based on the first state of any persistent elements, one of a first predefined Class II bingo card from the plurality of predefined Class II bingo cards and a first predefined set of bingo numbers from the plurality of predefined sets of bingo numbers, and
interfacing with a processor that is distinct from a master gaming controller of the electronic gaming machine to cause a display device of the electronic gaming machine to separately display the selected one of the first predefined Class II bingo card and an indication of the first predefined set of bingo numbers, and
responsive to the occurrence of the triggering event, prior to the display of the Class II bingo game, and responsive to a receipt, from the electronic gaming machine, of data corresponding to a second, different state of any persistent elements currently being displayed in association with the non-regulated simulated Class III game:
selecting, at least partially based on the second, different state of any persistent elements, one of a second, different predefined Class II bingo card from the plurality of predefined Class II bingo cards and a second, different predefined set of bingo numbers from the plurality of predefined sets of bingo numbers, and
interfacing with the processor to cause the display device of the electronic gaming machine to separately display the determined selected one of the second, different predefined Class II bingo card and an indication of the second, different predefined set of bingo numbers.
The bolded portions of representative claims 1, 10 and 12 generally encompass the abstract idea. Dependent claims 2 – 4, 6, 8, 9, 11, 13 – 15, 17, 19 and 20 further define the abstract idea by introducing various method of exchanging financial obligations, fundamental economic practice and method of organizing human activities and/or encompass implementation of the abstract idea (e.g., an electronic gaming machine, a processor, a memory device, a database and a display device, which is addressed further below). It is clear that the inventive concept here is playing a bingo wagering game in an electronic format. The abstract idea may be viewed, for example, as:
• a fundamental economic practice (e.g., rules for conducting a game) as discussed in Alice Corp. v. CLS Bank, In re Smith, and In re Marco Guldenaar Holding B. V., and/or
• a method of organizing human activities (e.g., allowing the human player to play the game according to rules of the game method) as discussed in Bilski v. Kappos and Alice Corp. v. CLS Bank.
The claimed abstract idea reproduced above is effectively a method of exchanging and resolving financial obligations between one or more players and an operator of the gaming machine based on probabilities created during the game (see Smith, In re Marco Guldenaar Holding B.V., and Alice). Based on the reasoning in Smith, and In re Marco Guldenaar Holding B.V., the recited steps of conducting a wagering game in the instant claims relate to the “fundamental economic practice” of wagering. The abstract idea is also similar to that of Planet Bingo, in which a method of managing a bingo game was found to be an abstract idea. Though the instant claims are not limited to bingo games, they encompass the management of an analogous wagering game.
Under prong 1, the above analysis demonstrates that the claimed invention encompasses an abstract idea in the form of mathematical concepts, mental processes, and/or certain methods of organizing human activity. Under prong 2, the instant claims do not integrate the abstract idea into a practical application because they merely provide instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea, add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. While certain physical elements (i.e., elements that are not an abstract idea) are present in the claims, such features do not effect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (except for generic gaming components), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any 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(a)-(c), (e)-(h). Therefore, the claims are directed to the judicially recognized exception of an abstract idea.
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 claims encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se: an electronic gaming machine, a processor, a memory device, a database and a display device to carry out the abstract idea. 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 (see Alice, 573 U.S. at 212).
Taking the claimed elements individually yields no difference from taking them in combination because each element simply performs its respective function as discussed above. The claims do not purport to improve the functioning of a computer itself, nor do they effect an improvement in any other technology or technical field. Instead, the additional features merely amount to an instruction to apply the abstract idea using generic, functional, and conventional components well-known in the art. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S._(2014).
Response to Arguments
Applicant's arguments filed on 3/6/2025 have been fully considered but they are not persuasive. Applicant argues that “the pending claims do not require, Applicant has not argued, and the Office does not identify any particular feature within the claims that corresponds to, “a wager, awards, gambling, or gambling event””. The Examiner respectfully disagrees.
The Applicant’s specification recites, “Two forms of wager-based gaming include Class II games and Class III games. Class II games include bingo games and bingo-like games (as well as central determination games). Class III games include any games that are not Class I games (i.e., social games played for minimal prizes or ceremonial games) or Class II games”, see [0013] of the specification.
Additionally, according to the American Gaming Association (AGA), Class I, Class II and Class III are defined as:
“Class I gaming includes social games and traditional/ceremonial games.”
“Class II gaming includes bingo and non-banked card games.”
“Class III gambling includes all other forms of gambling, including casino-style gambling.”
(See attached “AGA Gaming Regulatory Fact Sheet - Class II Gaming”)
And the National Indian Gaming Commission further states:
“Congress included the definition of Class II gaming as follows: bingo; when played in the same location as bingo - pull tabs, lotto, punch boards, tip jars, instant bingo, other games similar to bingo, and non-house banked card games authorized or not explicitly prohibited by the state in which the tribal operation is located. All other games are Class III, except for certain social or traditional forms of gaming. Class III games include, but are not limited to the following: baccarat, chemin de fer, blackjack, slot machines, and electronic or electromechanical facsimiles of any game of chance”. (See attached “What is the difference between Class II and Class III gaming”).
Therefore, the claim limitations “operate in a Class II regulated bingo jurisdiction”, “non-regulated simulated Class III game”, “select, at least partially based on the first state of any persistent elements, one of a first predefined Class II bingo card from the plurality of predefined Class II bingo cards”, “select, at least partially based on the second, different state of any persistent elements, one of a second, different predefined Class II bingo card and a second, different predefined set of bingo numbers” may not recite words, such as, “a wager, awards, gambling, or gambling event” are directed towards Class II and Class III games, which have been defined as gambling style games above.
Applicant further argues “the position of the Office that claims refer to an abstract idea that may be viewed as “rules of conducting a game” and “allowing the human player to play the game” is unsustainable” and the independent claims provides a technical solution to the particular problem regarding this technical incompatibility between the independent determinations of Class II bingo gaming and the carryover effect of persistent elements. The Examiner respectfully disagrees.
The claims are directed to an abstract idea because the following limitations in claim 1 are fundamental economic practice (e.g., rules for conducting a game) and a method of organizing human activities (e.g., allowing the human player to play the game according to rules of the game method):
operate in a Class II regulated bingo jurisdiction;
maintain a plurality of predefined Class II bingo cards and a plurality of predefined sets of bingo numbers;
responsive to an occurrence of a triggering event and prior to display of the Class II bingo game;
responsive to a receipt of data corresponding to a first state of any persistent elements currently being displayed in association with a non-regulated simulated Class III game;
select, at least partially based on the first state of any persistent elements, one of a first predefined Class II bingo card from the plurality of predefined Class II bingo cards and a first predefined set of bingo numbers from the plurality of predefined sets of bingo numbers;
display the selected one of the first predefined Class II bingo card and an indication of the first predefined set of bingo numbers;
responsive to a receipt of data corresponding to a second, different state of any persistent elements currently being displayed in association with the non-regulated simulated Class III game;
select, at least partially based on the second, different state of any persistent elements, one of a second, different predefined Class II bingo card and a second, different predefined set of bingo numbers;
display the selected one of the second, different predefined Class II bingo card and an indication of the second, different predefined set of bingo numbers.
Additionally, the claims are directed to the abstract idea similar to that of Planet Bingo, in which a method of managing a bingo game was found to be an abstract idea. Even though there is no “employment of any wager or any awards” provided in the claims, the claims are still directed to a Bingo game. The concept of a bingo game is gambling or comparable to a gambling event. In addition, the claims at issue in Planet Bingo also did not expressly require wagering activity.
Additionally, the October 2019 Update on Subject Matter Eligibility states “[c]laims can recite a mental process even if they are claimed as being performed on a computer” and “[c]laims requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (p. 8). Furthermore, the October 2019 Update states, “examiners may review the specification to determine if the underlying claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, 2) in a computer environment or 3) is merely using a computer as a tool to perform the concept” (p. 8).
The Examiner respectfully directs Applicant to claim 3 of Example 37 of the USPTO Section 101 guidelines because the instant an electronic gaming machine, a processor, a memory device, a database and a display device are recited at a high level of generality, i.e., as a generic electronic gaming machine performing a generic computer function of processing data. This generic gaming machine limitation is no more than mere instructions to apply the exception using generic computer components. The same is true for the claimed database. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea, and the claims are therefore directed to the abstract idea.
The limitations are not indicative of an inventive concept (“significantly more”), as there is no improvement to the functioning of a computer, or to any other technology to technical field.
Therefore, the claimed invention is directed to an abstract idea in gameplay incentives executed on generic and conventional computing devices. There is not any indication that the invention provides a technological solution to a technical problem. Rather, the claimed invention merely recites a technological environment in which the abstract idea is to be practiced. Therefore, the 101 rejection has been maintained.
Conclusion
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/ANKIT B DOSHI/Examiner, Art Unit 3715