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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-14) in the reply filed on 12/18/2025 is acknowledged.
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 1-14 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 the abstract idea of mental processes and/ or certain methods of organizing human activity. 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
More specifically, regarding Step 1, of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a machine, process, and/or an article of manufacturer, which are statutory categories of invention.
Step 2a – Prong 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. A system, comprising: a processor; and computer memory coupled with the processor, the computer memory comprising data stored thereon that, when executed by the processor, causes the processor to:
determine that a game event has occurred during a game of chance;
determine that the game event corresponds to a Non-Fungible Token (NFT)- earning event and that a player playing the game of chance when the game event occurred is eligible to receive a first NFT based on the occurrence of the game event, wherein the first NFT is one of multiple NFTs belonging to an NFT collection;
receive an input from the player indicating a desire to redeem the first NFT;
query a digital wallet associated with the player;
determine, based on a response to the query, that the digital wallet did not contain the first NFT prior to receiving the input from the player; and
in response to determining that the digital wallet did not contain the first NFT prior to receiving the input from the player, initiate a transaction that causes the first NFT to be stored in the digital wallet associated with the player and information describing the first NFT to be recorded to a digital ledger.
14. A method, comprising:
determining, with a processor, that a game event has occurred during a game of chance;
determining, with the processor, that the game event corresponds to a Non-Fungible Token (NFT)-earning event and that a player playing the game of chance when the game event occurred is eligible to receive a first NFT based on the occurrence of the game event, wherein the first NFT is one of multiple NFTs belonging to an NFT collection;
querying a digital wallet associated with the player;
determining, with the processor and based on a response to the query, that the digital wallet did not contain the first NFT prior to receiving the input from the player; and
in response to determining that the digital wallet did not contain the first NFT prior to receiving the input from the player, initiating a transaction that causes the first NFT to be stored in the digital wallet associated with the player and information describing the first NFT to be recorded to a digital ledger.
The claims recite an abstract idea, specifically falling under the category of "certain methods of organizing human activity." This includes fundamental economic practices (e.g., issuing and redeeming rewards/tokens based on probabilistic events) and commercial interactions (e.g., managing digital asset transactions in a gaming context). Key elements include:
Determining a game event has occurred and corresponds to an NFT-earning opportunity.
Receiving player input to redeem, querying a digital wallet to ensure the NFT is not pre-existing, and initiating a transaction to store the NFT while recording to a ledger.
Enabling additional gameplay features based on NFT collections, events, or timers.
This is analogous to traditional reward systems in gambling (e.g., earning chips or prizes based on outcomes), automated via generic technology. Precedents like In re Smith (Fed. Cir. 2016) found similar wagering game rules ineligible as abstract ideas akin to exchanging financial obligations based on probabilities. Likewise, In re Marco Guldenaar Holding B.V. (Fed. Cir. 2018) deemed dice game methods ineligible for reciting wagering rules without technological advancement. Even with NFTs and blockchain, the core is organizing gaming rewards, not a mathematical concept or mental process per se, but still abstract.
Step 2a – Prong 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 1-14 do not integrate the abstract idea into a practical application. Additional elements (e.g., processor, memory, digital wallet, ledger, transaction initiation) are recited at a high level and merely apply the abstract idea using generic computer components without improving technology or solving a particular problem in a non-abstract way. For instance:
Using blockchain ledgers for recording NFTs is conventional in digital asset management and does not reflect an improvement to blockchain functionality itself (e.g., no novel consensus mechanism or security enhancement).
Wallet queries and transactions are routine data checks and storage operations, similar to ineligible claims in USPTO Example 42, Claim 2 (generic network-based storage and updates without specific technological integration).
Features like bonus games or expiry timers add game rules but do not transform the idea into a technological solution.
Contrast this with eligible examples:
USPTO Example 42, Claim 1: Eligible due to specific format conversion enabling real-time, interoperable network updates—a clear improvement in computer networking akin to potential blockchain applications.
USPTO Example 41: Cryptographic communications eligible for integrating math into secure data transmission over channels.
McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016): Eligible for using specific rules to improve computer animation technology.
Here, no such improvement exists; the claims could be performed analogously with physical tokens or ledgers, with NFTs/blockchain as a generic tool.
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.
Even considering the claims as a whole, they do not amount to "significantly more" than the abstract idea. The elements (e.g., processor execution, wallet queries, ledger recording) are well-understood, routine, and conventional in NFT and gaming contexts, as evidenced by the cited prior art like DALMIA, which show similar integrations were known pre-filing. No unconventional ordered combination or non-generic arrangement transforms the claims, similar to ineligible gaming patents post-Alice.
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.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 5, 11, 13, 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DALMIA (US 2023/0298435 Al).
1. DALMIA discloses a system, comprising: a processor; and computer memory coupled with the processor, the computer memory comprising data stored thereon that, when executed by the processor, causes the processor to (Fig. 29, 35):
determine that a game event has occurred during a game of chance; determine that the game event corresponds to a Non-Fungible Token (NFT)-earning event and that a player playing the game of chance when the game event occurred is eligible to receive a first NFT based on the occurrence of the game event, wherein the first NFT is one of multiple NFTs belonging to an NFT collection (e.g., gameplay patterns, such as winning streaks, jackpots, or lucky combinations in a game of chance like slots at an EGM and non-fungible token (NFT) can be actioned to a player as winnings with multi-level attributes forming series/collections based on game data), [0066]-[0068], [0108], [0166], [0540], (Fig. 16A, 17);
receive an input from the player indicating a desire to redeem the first NFT; query a digital wallet associated with the player; determine, based on a response to the query, that the digital wallet did not contain the first NFT prior to receiving the input from the player; and in response to determining that the digital wallet did not contain the first NFT prior to receiving the input from the player, initiate a transaction that causes the first NFT to be stored in the digital wallet associated with the player and information describing the first NFT to be recorded to a digital ledger (e.g., associating NFTs with players gaming account data, digital wallet, wherein generation of identification data and smart contract rules ensuring unique ownership and no duplicates via blockchain verification before association and recording transactions on a blockchain and update player account/wallet upon valid redemption), [0581]-[0585], [0587].
4. DALMIA discloses the system of claim 1, wherein the digital wallet is stored in a mobile device of the player, wherein the query is transmitted from an Electronic Gaming Machine (EGM) to the mobile device, and wherein the mobile device is paired with the EGM [0062], [0223], [0246], [0574], [0581].
5. DALMIA discloses the system of claim 1, wherein the game event comprises one of the following: a 3-of-a-kind event, a 5-of-a-kind event, a jackpot event, a near-miss event, a cashing-in event, playing the game of chance for a predetermined amount of time, and a healthy player behavior event, [0067]-[0068].
11. DALMIA discloses the system of claim 1, wherein the data stored on the computer memory further causes the processor to: determine a type of NFT for which the player is eligible based on a status associated with the player; and present the first NFT according to the type of NFT for which the player is eligible based on the status associated with the player, [0067]-[0068].
13. DALMIA discloses the system of claim 1, wherein the input is received from the player via at least one of the game of chance and the digital wallet [0581]-[0585], [0587].
14. DALMIA discloses a method, comprising: determining, with a processor, that a game event has occurred during a game of chance; determining, with the processor, that the game event corresponds to a Non-Fungible Token (NFT)-earning event and that a player playing the game of chance when the game event occurred is eligible to receive a first NFT based on the occurrence of the game event, wherein the first NFT is one of multiple NFTs belonging to an NFT collection; querying a digital wallet associated with the player; determining, with the processor and based on a response to the query, that the digital wallet did not contain the first NFT prior to receiving the input from the player; and in response to determining that the digital wallet did not contain the first NFT prior to receiving the input from the player, initiating a transaction that causes the first NFT to be stored in the digital wallet associated with the player and information describing the first NFT to be recorded to a digital ledger as similarly discussed above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2-3, 6-7, 8-10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over DALMIA (US 2023/0298435 Al) as applied above and further in view of Nicely (US 2010/0016065 Al).
2-3. DALMIA discloses the system of claim 1, wherein the data stored on the computer memory further causes the processor to: determine that all NFTs in the NFT collection are stored in the digital wallet; and in response to determining that all NFTs in the NFT collection are stored in the digital wallet, enable an additional gameplay feature for the player, wherein the additional gameplay feature comprises one of the following: a bonus game, a bonus spin, a different pay table, a payout, an adjusted reel spinning speed, a bonus award, a new symbol, a new game behavior, and a new game rule; however, such concept of collecting digital items and redeeming them for additional gameplay feature is notoriously well known in the gaming art as evidenced by Nicely, Abstract, [0103], [0109]. It would have been obvious to a person of ordinary skilled in the art to modify DALMIA with Nicely and would have been motivated to do so to increase gaming entertainment value.
6-7. DALMIA discloses the system of claim 1, wherein Nicely further discloses the data stored on the computer memory further causes the processor to: determine that less than all NFTs in the NFT collection are stored in the digital wallet; identify a second NFT in the NFT collection that is not stored in the digital wallet at the time of storing the first NFT in the digital wallet; and cause a message to be displayed to the player indicating an action required to earn the second NFT; and determine that the action has occurred causing the player to be eligible to earn the second NFT; receive an additional input from the player indicating a desire to redeem the second NFT; and in response to determining that the additional input is received from the player, initiate an additional transaction that causes the second NFT to be stored in the digital wallet associated with the player and information describing the second NFT to be recorded to the digital ledger (i.e. player has to collect a predetermined number of collectors in order to redeem a trigger for a bonus sequence, wherein such information is implicitly communicated to the player), [0103], [0109]. It would have been obvious to a person of ordinary skilled in the art to modify DALMIA with Nicely and would have been motivated to do so to increase gaming entertainment value.
8. DALMIA discloses the system of claim 6, wherein the action corresponds to a non-game event, DALMIA [0067]-[0068].
9. DALMIA discloses the system of claim 6, wherein the action corresponds to an additional game event that occurs in a game other than the game of chance, DALMIA [0066].
10. DALMIA discloses the system of claim 1, wherein Nicely further discloses an additional gameplay feature is made available to the player within the game only in response to determining that all NFTs in the NFT collection are stored in the digital wallet and wherein the collection of NFTs comprises an expiry timer associated therewith that, when expired, triggers the additional gameplay feature to become unusable within the game [0103], [0109]. It would have been obvious to a person of ordinary skilled in the art to modify DALMIA with Nicely and would have been motivated to do so to increase gaming entertainment value.
12. DALMIA discloses the system of claim 1, wherein the data stored on the computer memory further causes the processor to: determine that all NFTs in the NFT collection are stored in the digital wallet; in response to determining that all NFTs in the NFT collection are stored in the digital wallet, unlock an additional NFT collection for the player to earn; update the digital wallet and cause the digital wallet to display candidate NFTs that belong to the additional NFT collection; and provide the digital wallet with an option for the player to select the option and redeem an additional gameplay feature based on collecting all NFTs in the NFT collection (i.e. player has to collect a predetermined number of collectors in order to redeem a trigger for a bonus sequence, and unlocking/winning additional awards from the bonus), [0103], [0109]. It would have been obvious to a person of ordinary skilled in the art to modify DALMIA with Nicely and would have been motivated to do so to increase gaming entertainment value.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached USPTO form PTO-892.
Filing of New or Amended Claims
The examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See Wertheim, 541 F.2d at 263, 191 USPQ at 97 (“[T]he PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.”). However, when filing an amendment an applicant should show support in the original disclosure for new or amended claims. See MPEP § 714.02 and § 2163.06 (“Applicant should specifically point out the support for any amendments made to the disclosure.”). Please see MPEP 2163 (II) 3. (b)
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SENG H LIM whose telephone number is (571)270-3301. The examiner can normally be reached Monday-Friday (9-5).
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, David L. Lewis can be reached at (571) 272-7673. 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.
/Seng H Lim/Primary Examiner, Art Unit 3715