CTNF 18/440,145 CTNF 86210 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Applicant’s Submission of a Response Applicant’s submission of a response on 1/26/2026 has been received and considered. In the response, Applicant elected species II (claims 3, 11 and 17) and withdrawn claims 2 and 14 from consideration. Therefore, claims 1, 3 – 13 and 15 – 20 are pending. Further, Applicant amended the specification, which has been approved for entry. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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, 3 – 13 and 15 – 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1, 3 – 13, 15 – 20 are all within at least one of the four categories of invention, and have been analyzed to determine whether they are directed to any judicial exceptions. Step 2A, Prong 1 Each of claims 1, 3 – 13 and 15 – 20 recites at least one step or instruction for *****, which is grouped as a mental process and certain methods of organizing human activity under the 2019 PEG. The claimed limitations involve concepts performed in the human mind, namely observation, evaluation and judgement, which are mental processes and managing personal behavior and following rules or instructions, which are methods of organizing human activity under the 2019 PEG. Accordingly, each of Claims 1, 3 – 13 and 15 – 20 recites an abstract idea. Independent Claim 1 recites: A method for generating content for an electronic game, the method comprising: generating, by a processor of a gaming system, a first prompt describing content for the electronic game; receiving , by the processor of the gaming system, a second prompt describing additional conditions for the content for the electronic game; generating, by the processor of the gaming system, a third prompt comprising a combination of the first prompt and the second prompt ; providing , by the processor of the gaming system, the third prompt to a generative Artificial Intelligence (AI) system; receiving , by the processor of the gaming system, the content for the electronic game from the generative AI system; and applying , by the processor of the gaming system, the received content for the electronic game to the electronic game. Accordingly, as indicated above in bold, each of the above-identified claims recites an abstract idea. Further, independent claims 1, 10 and 16 and dependent Claims 3 – 9, 11 – 13, 15 and 17 – 20 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed. Step 2A, Prong 2 The above-identified abstract idea in each of independent Claims 1, 10 and 16 (and their respective dependent Claims 3 – 9, 11 – 13, 15 and 17 – 20) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in independent Claims 1, 10 and 16, either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of: a processor, electronic game, input device and memory, as recited in independent Claims 1, 10 and 16 and its dependent claims are generically recited computer elements which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, Artificial Intelligence System and the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer/computing device. For at least these reasons, the abstract idea identified above in independent Claims 1, 10 and 16 (and their respective dependent Claims 3 – 9, 11 – 13, 15 and 17 – 20) are not integrated into a practical application under 2019 PEG. Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed system merely implements the above-identified abstract idea (e.g., mental process) using rules (e.g., computer instructions) executed by a computer (e.g. a processor, electronic game, input device and memory as recited in independent claims 1, 10 and 16). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer/computing device. Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC , the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1, 10 and 16 (and their respective dependent Claims 3 – 9, 11 – 13, 15 and 17 – 20) are not integrated into a practical application under the 2019 PEG. Step 2B None of the Claims 1, 3 – 13 and 15 – 20 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons. These claims require the additional elements of: a processor, electronic game, input device and memory as recited in the independent claims. The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well-understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. Like SAP America vs InvestPic, LLC (Fed. Cir. 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process. The recitation of the above-identified additional limitations in Claims 1, 3 – 13 and 15 – 20 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. For at least the above reasons, Claims 1, 3 – 13 and 15 – 20 are directed to applying an abstract idea (e.g., mental process or certain method of organizing human activity) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish ), or (ii) providing a technical solution to a problem in a technical field (as in DDR ). In other words, none of Claims 1, 3 – 13 and 15 – 20 provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself. Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1, 10 and 16 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. As such, the above-identified additional elements, when viewed as whole, 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. Thus, claims 1, 3 – 13 and 15 – 20 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR). Therefore, none of the claims 1, 3 – 13 and 15 – 20 amounts to significantly more than the abstract idea itself. Accordingly, claims 1, 3 – 13 and 15 – 20 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas implemented on a generic computer in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claims 1, 10 and 16 are reje cted under 35 U.S.C. 102(a)(1 ) as b eing anti cipated by Ra o e t al. (US Pub. No. 2024/0424405 A1). As pe r claim 1, Rao et al. discloses a method for generating content for an electronic game ( an approach to game creation that harnesses the power of generative artificial intelligence (AI)—as embodied, for example, in Generative Pre-Trained Transformer (GPT) models—to aid in the creation of the game narrative, [0002]), the method comprising: generating, by a processor of a gaming system, a first prompt describing content for the electronic game (see [0014], [0054], [0060]); receiving, by the processor of the gaming system, a second prompt describing additional conditions for the content for the electronic game (see Fig. 1, [0012], [0014] and [0028]); generating, by the processor of the gaming system, a third prompt comprising a combination of the first prompt and the second prompt (see [0014], [0055]); providing, by the processor of the gaming system, the third prompt to a generative Artificial Intelligence (AI) system (the addition input is provided to the generative model as a revised prompt (new instance of operation), and the generative model is operated on the revised prompt to generate revised game content (new instance of operation). For example, if the game designer added a new node, the revised game content may include a new narrative state graph that includes the node, and potentially other new, automatically created nodes to connect the designer-added nodes to the original graph. The revised visual representation may again be displayed to the game designer (new instance of operation), [0055], Examples of LLMs that are readily available include GPT-3, GPT-4, BLOOM, and LLaMA; these models use the Transformer deep-learning architecture. Note, however, that generative models may also be based on other types of machine-learning architectures, [0013]); receiving, by the processor of the gaming system, the content for the electronic game from the generative AI system ( Based on the prompt, the generative model creates the game content, which includes filling in the narrative details of the game, e.g., defining the player and non-player characters, one or more plot lines, plot-relevant objects and their properties, goals and sub-goals for the player to achieve, and details of the game world in which the story is set, see [0013], [0014], [0055]); and applying, by the processor of the gaming system, the received content for the electronic game to the electronic game (see [0013], [0014]). As per claim 10, the instant claim is a system in which corresponds to the method of claim 1. Therefore, it is rejected for the reasons set forth above. As per claim 16, the instant claim is a gaming venue host system in which corresponds to the method of claim 1. Therefore, it is rejected for the reasons set forth above. Examiner’s Note Claims 3 – 9, 11 – 15 and 17 – 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the 35 USC 101 rejection above is overcome. Rao et al. discloses that the first prompt is generated based on input from a game designer (to start designing the game, a game designer (or group of game designers) provides a prompt —often text, although spoken language and other input modalities are also possible—to a generative machine-learning model (or models). The prompt may be very high-level, e.g., provide merely a general theme, idea, or goal for the game or characterize the general nature of the game, or it may include some narrative details, such as main characters, a basic storyline, etc, see [0014]). However, Rao et al. does not expressly disclose the first prompt is generated based on a set of options defined by an operator of a gaming venue in which the electronic game is installed. As described in the applicant’s specification, the “gaming venue” refers to a casino or analogous physical or virtual establishment in which the gaming system executing the electronic game is installed and operated, and the “operator” is the entity that controls or runs that venue. Rao’s game designer is involved in initial creation of the game during development, not in operating the venue where the game is later deployed for play . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Admed et al. (US Patent No. 12/339,917) teaches a method for generating user role-specific responses through large language models. Dicken et al. (US Patent No. 11,318,396) teaches an operator interface for automated game content generation. Siebel et al. (US Patent No. 12,111,859) teaches an enterprise generative artificial intelligence architecture. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANKIT B DOSHI whose telephone number is (571)270-7863. The examiner can normally be reached Mon - Fri. ~8:30 - ~5:30. 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, Dmitry Suhol can be reached at 571-272-4430. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ANKIT B DOSHI/Examiner, Art Unit 3715 Application/Control Number: 18/440,145 Page 2 Art Unit: 3715 Application/Control Number: 18/440,145 Page 3 Art Unit: 3715 Application/Control Number: 18/440,145 Page 4 Art Unit: 3715 Application/Control Number: 18/440,145 Page 5 Art Unit: 3715 Application/Control Number: 18/440,145 Page 6 Art Unit: 3715
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