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 8 to 26 (independent Claims 8 and 14, and their dependent claims) 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 drawn to a device and a system, and so are statutory classes under 101 (step 1 of the 101 analysis). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following reasons. Independent Claim 8 is representative and is reproduced below; the abstract idea is underlined and the structural limitations are not. Independent Claim 14 includes the structures of a processor, a timer, a credit meter, a user interface, a network interface, and a random number generator, but fails 101 for similar reasons to Claim 8. The dependent claims have no more structure than the independent claim and fail 101 for similar reasons.
A computational device, comprising:
a user interface comprising a user input and user output;
a processor coupled with the user interface; and
a computer-readable storage medium, coupled with the processor, comprising instructions that are executable by the processor, wherein the instructions, when executed by the processor, cause the processor to:
initiate, in a base game mode of an electronic game, a first reel spin in which a random number generator output is used to determine a position of symbols within an array of symbol areas; (process data according to the rules of the game, and present the output to the player of the game)
after the first reel spin, evaluate the position of symbols within the array of symbol areas to determine whether the first reel spin results in a predetermined outcome warranting an update to a credit meter; (process data according to the rules of the game, and present the output to the player of the game)
update the credit meter based on the evaluation of the first reel spin and based on a first expected return to player applied to the base game mode; (process data according to the rules of the game, and present the output to the player of the game)
determine that the random number generator output for the first reel spin triggers occurrence of an enhanced game mode for a fixed amount of time where the electronic game is played with a second expected return to player higher than the first expected return to player; (process data according to the rules of the game, and present the output to the player of the game)
in response to the determining that the random number generator output triggers occurrence of the enhanced game mode, initiate the (process data according to the rules of the game, and present the output to the player of the game)
initiate, in the enhanced game mode, a second reel spin in which the random number generator output is used to determine a second position of symbols within the array of symbol areas; (process data according to the rules of the game, and present the output to the player of the game)
after the second reel spin, evaluate the second position of symbols within the array of symbol areas to determine that the second reel spin results in a predetermined outcome warranting an update to the credit meter; (process data according to the rules of the game, and present the output to the player of the game)
update the credit meter based on the second reel spin results and the second expected return to player; (process data according to the rules of the game, and present the output to the player of the game)
determine, from a timer output, that the fixed amount of time has expired since the initiation of the enhanced game mode; and (process data according to the rules of the game, and present the output to the player of the game)
in response to the determining that the fixed amount of time has expired, terminate the enhanced game mode and return to the base game mode. (process data according to the rules of the game, and present the output to the player of the game)
Regarding revised step 2A, prong 1 of the 101 analysis, the claims do not cite a law of nature or a natural phenomenon. The claims do cite an abstract idea—that being the playing of the rules of a game, displaying the outcome to a presumed player of a gaming device, and updating the credit meter accordingly. First and second returns to player are only mentioned in passing. Accepting wagers or game inputs from a player of the gaming device are only cited in dependent Claims 9 and 15. Paying out a winning wager to a player is not cited. For these reasons, the claims do not so much cite a method of organizing a human activity such as accepting a wager from a player, playing the wagering game according to the rules, and settling any winning or losing wagers based on the game outcome—the claims more so cite the abstract idea of manipulating visible game indicia such as spinning reels and counters, manipulating abstract features such as random number generators and timers, and indicating the outcome to the presumed player of the gaming device. These steps could all be theoretically carried out in the human mind. Mathematical relationships, formulas or equations, or calculations are not cited. The answer to step 2A, prong 1 is thus yes.
Regarding revised step 2A, prong 2 of the 101 analysis, the claims do not recite any additional limitations that integrate the judicial exception of an abstract idea to a practical application. Independent Claims 8 and 14 cite structures such as a processor, a timer, a credit meter, a user interface, a network interface, and a random number generator. The claims do not improve the functioning of a computer (MPEP 2106.05(a)), since the game steps are generic in nature, and the game steps combined with the cited structures do not show how there is an improvement in the technology of the gaming device. The claims do not effect a particular treatment or prophylaxis of a disease or medical condition (Vanda memo). The claims do not apply the judicial exception to a particular machine (MPEP 2016.05(b)) )), since the game steps are generic in nature, and the game steps combined with the cited structures do not show how there is an improvement in the technology of the gaming device. The claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)). The claims do not go beyond generally linking the judicial exception to a particular technological environment (MPEP 2106.05(e) and Vanda memo) )), since the game steps are generic in nature, and the game steps combined with the cited structures do not show how there is an improvement in the technology of the gaming device. The claims do not cite particular input, processor, memory, or output structures or functionality. The answer to revised step 2A, prong 2 is thus no.
Regarding step 2B of the 101 analysis, the claims do not cite any additional limitations that amount to anything significantly more than the judicial exception. The claims do not cite particular input, processor, memory, or output structures or functionality. These reasons are similar to those of step 2A, prong 2 (MPEP 2106.05(a),(b),(c),(d),(e) and the Vanda memo). Independent Claims 8 and 14 cite structures such as a processor, a timer, a credit meter, a user interface, a network interface, and a random number generator; these structural limitations and the functional limitations of the claims taken together as an ordered combination do not improve the functioning of a computer, technology, or gaming device (MPEP 2106.05(a)), apply the judicial exception to a particular machine (MPEP 2016.05(b)), effect the transformation or reduction of a particular article to a different state or thing (MPEP 2016.05(c)), go beyond linking the judicial exception to a particular technological environment (MPEP 2106.05(e)), or add any specific limitations beyond what is well-understood, routine, and conventional (MPEP 2106.05(d)). The answer to step 2B is no, so the claims are not 101-eligible. The examiner has reviewed the specification and has no suggestion at this time as to how to amend the claims for 101.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 8 to 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 to 20 of copending Application No. 19/450,323 (claims, 01-15-2026) and Claims 1 to 20 of copending Application No. 19/450,360 (claims, 01-15-2026). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons. Independent Claims 1 and 14 of ‘360 are nearly verbatim to present independent Claims 8 and 14. Independent Claim 1 and dependent Claims 2 and 3 of ‘323 are nearly verbatim to present independent Claim 8, and independent Claim 13 and dependent Claims 14, 15, and 16 are nearly verbatim to present independent Claim 14. The differences would have been obvious to one of ordinary skill in the art before the effective following date of the presently claimed invention. The applicants will have to amend the claims in child cases ‘323 and ‘360 or file terminal disclaimers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 06-12-2026 have been fully considered but they are not persuasive. A withdrawal from issue was mailed on 07-02-2026. The present 101 rejection is based on updated 101 guidance, but the conclusion is the same as the 101 rejection in the previous office action (03-12-2026). Page 10 of the remarks is a recitation of the independent claims. Ex parte Berndt Berghard (PTAB, 2019) cited in the remarks (page 11) is not cited in the MPEP. The passage from the PTAB’s opinion cited on page 11 by the applicants says that Berghard’s invention had improved animations. This would be an improvement in graphics animation or generation, arguably an improvement in the technology. The examiner finds no such improvement in the applicants’ claims or specification. This office action is non-final. The examiner respectfully disagrees with the applicants as to the claims’ condition for allowance. The examine has no suggestions at this time.
Conclusion
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 MATTHEW D HOEL whose telephone number is (571)272-5961. The examiner can normally be reached M-F 8:00 A.M.-4:30 P.M..
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.
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.
/M.D.H/Examiner, Art Unit 3715
/KANG HU/Supervisory Patent Examiner, Art Unit 3715
Prosecution Insights