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 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 a method (i.e., a process) in claims 1-7, a system (i.e., a machine) in claims 8-14, and a non-transitory computer readable medium (i.e. a manufacture) in claim 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. A method for operating an electronic game, the method comprising:
executing, by a processor of a first gaming system, a first electronic game on the first gaming system;
monitoring, by the processor of the first gaming system, game play information related to the execution of the first electronic game;
detecting, by the processor of the first gaming system, a termination of the first electronic game on the first gaming system;
generating, by the processor of the first gaming system, a token based on the monitored game play information related to execution of the first electronic game, the token indicating a prize redeemable in a second electronic game, wherein the prize is redeemable as an enhancement to the second electronic game; and
providing, by the processor of the first gaming system, the generated token to a player of the first electronic game.
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 game play and awarding token based thereon 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 a game interface.
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 a processor of a first gaming system, 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, smart phones, game consoles, 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 a processor of a first gaming system, 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 [0017]-[0020], [0034]-[0036]). 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 [0017]-[0020], [0034]-[0036]). 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 a processors of gaming systems, mobile device, a display device, a computer readable medium 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.
Claim Rejections - 35 USC § 103
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kiely et al (US 2003/0087691) in view of Betts et al (US 2014/0087880).
Claim 1: The combination of Kiely & Betts teaches a method for operating an electronic game, the method comprising:
executing, by a processor of a first gaming system, a first electronic game on the first gaming system (Betts Figure 2: Paragraphs [0051]-[0053]);
monitoring, by the processor of the first gaming system, game play information related to the execution of the first electronic game (Kiely Paragraphs [0010], [0022]);
detecting, by the processor of the first gaming system, a termination of the first electronic game on the first gaming system (Kiely Paragraph [0022], [0036]);
generating, by the processor of the first gaming system, a token based on the monitored game play information related to execution of the first electronic game, the token indicating a prize redeemable in a second electronic game wherein the prize is redeemable as an enhancement to the second electronic game (-wherein an additional entry is understood as an enhancement- Kiely Paragraphs [0022], [0036], [0038], [0042], [0049]-[0054]; Figures 3A-3C); and
providing, by the processor of the first gaming system, the generated token to a player of the first electronic game (-Describing the awarding of both the redeemable cashout & comp tickets- Kiely Paragraphs [0036], [0038], [0049]; Figures 3A-3C).
Kiely teaches the invention including the distribution of tokens receipts and comp awards associated with gameplay at a gaming machine as cited above. While the prior art of Kiely does not explicitly describe the inclusion of a processor on the gaming machines, Betts et al teaches that this feature was known in analogous gaming devices at the time of invention (Betts Figure 2: Paragraphs [0051]-[0053]). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have utilized a processor in a gaming device/system as taught by Betts in the gaming devices/systems of Kiely because such would have provided the expected and predictable result of utilizing known gaming device/system components with a gaming device system that would allow the gaming device/system to execute software-based games as disclosed by Betts.
Claim 2: The combination of Kiely & Betts teaches the method of claim 1, further comprising:
presenting, by a processor of a second gaming system, an indication of token acceptance in a second electronic game available on the second gaming system (Kiely Abstract; Paragraph [0008]-[0009], [0011], [0019]);
initiating, by the processor of the second gaming system, the second electronic game on the second gaming system (Kiely Abstract; Paragraphs [0045]-[0049] );
receiving, by the processor of the second gaming system, the token provided to the player of the first electronic game(Kiely Abstract; Paragraphs [0045]-[0049], [0071], [0074] );
determining, by the processor of the second gaming system, the prize indicated by the received token (-value amounts, comp and/or secondary game outcomes- Kiely Abstract; Pargarph [0009], [0053], [0071], [0074]); and
redeeming, by the processor of the second gaming system, the determined prize in the second electronic game (-wherein the tickets are redeemable for value amounts and secondary game plays- Kiely Abstract; Pargarph [0009], [0053], [0071], [0074]).
Claim 3: The combination of Kiely & Betts teaches the method of claim 1, wherein the prize redeemable in the second electronic game is determined based on an amount of time the first electronic game was played (Kiely Paragraphs [0010], [0040]).
Claim 4: The combination of Kiely & Betts teaches the method of claim 1, wherein the prize redeemable in the second electronic game is determined based on an amount of wagers made in the first electronic game (Kiely Paragraphs [0010], [0040]).
Claim 5: The combination of Kiely & Betts teaches the method of claim 1, wherein providing the generated token to the player of the first electronic game comprises printing a ticket (Kiely Figures 3A-3C).
Claim 6: The combination of Kiely & Betts teaches the method of claim 1, wherein providing the generated token to the player of the first electronic game comprises updating an electronic record associated with the player of the first electronic game (Kiely Paragraphs [0032], [0036], [0037], [0039], [0042]).
Claim 7: The combination of Kiely & Betts teaches the method of claim 1, wherein providing the generated token to the player of the first electronic game comprises transferring the token to a mobile device of the player of the first electronic game (Betts Paragraph [0077]-[0078]).
Kiely teaches the invention including the use of printed tickets/tokens as cited herein above and shown in figures 3A-3C. While Kiely is silent regarding the transfer of virtual tickets/tokens onto a player mobile device and the receiving the ticket/tokens from the player mobile device, Betts teaches that these features were known in an analogous invention (Betts Paragraph [0077]-[0078]). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have utilized a virtual ticket/token transportable on and off of a player mobile device as taught by Betts in the gaming devices/systems of Kiely because such would have provided the expected and predictable result of eliminating the required servicing and stocking associated with the use of printed tickets.
Claim 8: The combination of Kiely & Betts teaches a system comprising:
a first gaming system comprising a processor and a memory coupled with and readable by the processor and having stored therein a set of instructions which, when executed by the processor(Betts Figure 2: Paragraphs [0051]-[0053]), causes the processor to:
execute a first electronic game on the first gaming system (Betts Figure 2: Paragraphs [0051], [0053]),
monitor game play information related to the execution of the first electronic game (Kiely Paragraphs [0010], [0022]),
detect a termination of the first electronic game on the first gaming system (Kiely Paragraph [0022], [0036]),
generate a token based on the monitored game play information related to execution of the first electronic game, the token indicating a prize redeemable in a second electronic game wherein the prize is redeemable as an enhancement to the second electronic game (-wherein an additional entry is understood as an enhancement- Kiely Paragraphs [0022], [0036], [0038], [0042], [0049]-[0054]; Figures 3A-3C); and
provide the generated token to a player of the first electronic game (-Describing the awarding of both the redeemable cashout & comp tickets- Kiely Paragraphs [0036], [0038], [0049]; Figures 3A-3C); and
a second gaming system comprising a processor and a memory coupled with and readable by the processor and having stored therein a set of instructions which, when executed by the processor (Betts Figure 2: Paragraphs [0051]-[0053]), causes the processor to:
present an indication of token acceptance in a second electronic game available on the second gaming system (Kiely Abstract; Paragraph [0008]-[0009], [0011], [0019]),
initiate the second electronic game on the second gaming system (Kiely Abstract; Paragraphs [0045]-[0049] ),
receive the token provided to the player of the first electronic game (Kiely Abstract; Paragraphs [0045]-[0049], [0071], [0074] ),
determine the prize indicated by the received token (-value amounts, comp and/or secondary game outcomes- Kiely Abstract; Pargarph [0009], [0053], [0071], [0074]), and
redeem the determined prize in the second electronic game (-wherein the tickets are redeemable for value amounts and secondary game plays- Kiely Abstract; Pargarph [0009], [0053], [0071], [0074]).
Kiely teaches the invention including the distribution of tokens receipts and comp awards associated with gameplay at a gaming machine as cited above. While the prior art of Kiely does not explicitly describe the inclusion of a processor executing code stored on a computer readable memory on the gaming machines, Betts et al teaches that this feature was known in analogous gaming devices at the time of invention (Betts Figure 2: Paragraphs [0051]-[0053]). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have utilized a processor in a gaming device/system as taught by Betts in the gaming devices/systems of Kiely because such would have provided the expected and predictable result of utilizing known gaming device/system components with a gaming device system that would allow the gaming device/system to execute software-based games as disclosed by Betts.
Claim 9: The combination of Kiely & Betts teaches the system of claim 8, wherein receiving the token provided to the player of the first electronic game comprises reading a ticket (-referenced as a receipt- Kiely Abstract; Paragraphs [0037], [0071], [0074] ).
Claim 10: The combination of Kiely & Betts teaches the system of claim 8, wherein receiving the token provided to the player of the first electronic game comprises reading an electronic record associated with the player of the first electronic game (-wherein receipts are tracked and validated through computer payment host 45- Kiely Paragraphs [0032], [0036], [0037]l Element 45;).
Claim 11: The combination of Kiely & Betts teaches the system of claim 8, wherein receiving the token provided to the player of the first electronic game comprises receiving the token from a mobile device of the player of the first electronic game (Betts Paragraph [0077]-[0078]).
Kiely teaches the invention including the use of printed tickets/tokens as cited herein above and shown in figures 3A-3C. While Kiely is silent regarding the transfer of virtual tickets/tokens onto a player mobile device and the receiving the ticket/tokens from the player mobile device, Betts teaches that these features were known in an analogous invention (Betts Paragraph [0077]-[0078]). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have utilized a virtual ticket/token transportable on and off of a player mobile device as taught by Betts in the gaming devices/systems of Kiely because such would have provided the expected and predictable result of eliminating the required servicing and stocking associated with the use of printed tickets.
Claim 12: The combination of Kiely & Betts teaches the system of claim 8, wherein presenting the indication of token acceptance in the second electronic game available on the second gaming system comprises displaying, on a display device of the second gaming system, a promo code bug (- MonopolyTM - Betts Paragraphs [0021]-[0022]).
Kiely teaches the invention including the ability to accept previously issued tokens as cited above. While Kiely does not explicitly teach the use of a “promo code bug” understood in view of paragraph [0014] of the applicant’s specification to describe the presentation of a graphic or icon, Betts teaches this convention was known at the time of invention to indicate compatibility with ticket features (- MonopolyTM - Betts Paragraphs [0021]-[0022]). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have incorporated the “promo code bug” as taught by Betts in the invention of Kiely in order to provide the expected and predictable result of informing customers which machine offered special game features if they redeem their ticket/token there as taught by Betts (Betts Paragraphs [0021]-[0022]).
Claim 13: The combination of Kiely & Betts teaches the system of claim 8, wherein the determined prize in the second electronic game is based on an amount of time the first electronic game was played (Kiely Paragraphs [0010], [0040]).
Claim 14: The combination of Kiely & Betts teaches the system of claim 8, wherein the determined prize in the second electronic game is based on an amount of wagers made in the first electronic game (Kiely Paragraphs [0010], [0040]).
Claim 15: The combination of Kiely & Betts teaches a non-transitory, computer-readable medium comprising a set of instructions stored therein which when executed by a processor (Betts Figure 2: Paragraphs [0051], [0053]), causes the processor to:
execute a first electronic game on the first gaming system (Betts Figure 2: Paragraphs [0051], [0053]);
monitor game play information related to the execution of the first electronic game (Kiely Paragraphs [0010], [0022]);
detect a termination of the first electronic game on the first gaming system (Kiely Paragraph [0022], [0036]);
generate a token based on the monitored game play information related to execution of the first electronic game, the token indicating a prize redeemable in a second electronic game wherein the prize is redeemable as an enhancement to the second electronic game (-wherein an additional entry is understood as an enhancement- Kiely Paragraphs [0022], [0036], [0038], [0042], [0049]-[0054]; Figures 3A-3C); and
provide the generated token to a player of the first electronic game (-Describing the awarding of both the redeemable cashout & comp tickets- Kiely Paragraphs [0036], [0038], [0049]; Figures 3A-3C).
Claim 16: The combination of Kiely & Betts teaches the non-transitory, computer-readable medium of claim 15, wherein the instructions further cause the processor to:
present an indication of token acceptance in a second electronic game available on the second gaming system (Kiely Abstract; Paragraph [0008]-[0009], [0011], [0019]);
initiate the second electronic game on the second gaming system; receive the token provided to the player of the first electronic game (Kiely Abstract; Paragraphs [0045]-[0049] );
determine the prize indicated by the received token (-value amounts, comp and/or secondary game outcomes- Kiely Abstract; Pargarph [0009], [0053], [0071], [0074]); and
redeem the determined prize in the second electronic game (-wherein the tickets are redeemable for value amounts and secondary game plays- Kiely Abstract; Pargarph [0009], [0053], [0071], [0074]).
Kiely teaches the invention including the distribution of tokens receipts and comp awards associated with gameplay at a gaming machine as cited above. While the prior art of Kiely does not explicitly describe the inclusion of a processor executing code stored on a computer readable memory on the gaming machines, Betts et al teaches that this feature was known in analogous gaming devices at the time of invention (Betts Figure 2: Paragraphs [0051]-[0053]). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have utilized a processor in a gaming device/system as taught by Betts in the gaming devices/systems of Kiely because such would have provided the expected and predictable result of utilizing known gaming device/system components with a gaming device system that would allow the gaming device/system to execute software-based games as disclosed by Betts.
Claim 17: The combination of Kiely & Betts teaches the non-transitory, computer-readable medium of claim 16, wherein the redeemed prize in the second electronic game comprises a credit (-including alternatively a cashout ticket amount or a secondary game prize amount- Kiely Figure 3A, 3C; Paragraphs [0036], [0073]-[0074]).
Claim 18: The combination of Kiely & Betts teaches the non-transitory, computer-readable medium of claim 16, wherein the redeemed prize in the second electronic game comprises a bonus (Kiely Paragraphs [0040], [0074]).
Claim 19: The combination of Kiely & Betts teaches the non-transitory, computer-readable medium of claim 16, wherein the redeemed prize in the second electronic game comprises a session boost (-free participation or free play- Kiely Figure 3C; Paragraph [0073]).
Claim 20: The combination of Kiely & Betts teaches the non-transitory, computer-readable medium of claim 16, wherein the redeemed prize in the second electronic game comprises a discount on wagers (-free participation or free play- Kiely Figure 3C; Paragraph [0073]).
Response to Arguments
Applicant's arguments filed December 18th, 2025 have been fully considered but they are not persuasive.
Commencing on page 6 of the above dated Applicant’s response, the Applicant presents that the rejection of claims 1-20 under 35 U.S.C. §101 has been overcome based on the presented amendments.
Responsive to the preceding, the Applicant presented arguments are respectfully non-persuasive because the presented claim amendments are not sufficient to support the presence of patent eligible subject matter under 35 U.S.C. §101 for the reasons set forth in the rejection as presented herein above.
Continuing on pages 7-8 of the above dated Applicant’s response, the Applicant presents that the rejection of claims 1-20 under 35 U.S.C. §103 based on the combination of Kiely et al (US 2003/0087691) & Betts et al (US 2014/0087880) fails to teaches the claimed features including executing, by a processor of a first gaming system, a first electronic game on the first gaming system; monitoring, by the processor of the first gaming system, game play information related to the execution of the first electronic game; detecting, by the processor of the first gaming system, a termination of the first electronic game on the first gaming system; generating, by the processor of the first gaming system, a token based on the monitored game play information related to execution of the first electronic game, the token indicating a prize redeemable in a second electronic game, wherein the prize is redeemable as an enhancement to the second electronic game; and providing, by the processor of the first gaming system, the generated token to a player of the first electronic game.
Responsive to the preceding, the Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. The listing of claim elements do not address the previously presented correlation of prior art to the argued features as presented in the rejection and do not explain how the identified features are believed to distinguish from the applied prior art combination.
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, David 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.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715