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 .
Response to Amendment
Examiner acknowledges receipt of Applicant’s amendments and arguments filed 03/16/2026. The arguments set forth are addressed herein below.
Applicant’s amendments necessitated the new ground of rejection set forth herein; therefore, this action is made Final.
Applicant’s IDS submission is acknowledged and provided herewith.
Claims 1-20 are now 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 to 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. 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. Each of Claims 1 to 20 has been analyzed to determine whether it is directed to any judicial exceptions.
The examiner follows the two step-analysis, as described in MPEP 2106 (available at https://www.uspto.gov/web/offices/pac/mpep/s2106.html). The following diagram is an overview of the steps involved.
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Step 1
Step 1 of the two step-analysis considers whether the claims fall into one of the four statutory categories of invention such as a process, machine, manufacture, or composition of matter. The instant invention claims a method, a gaming system and a gaming venue host system in claims 1-20. As such, the claimed invention falls into the broad statutory categories of invention. However, claims that fall within one of the four statutory categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas.
Step 2A
Step 2A has been further divided into two prongs as shown in the following diagram.
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Under prong 1 of step 2A, the examiner considers whether the claim recites an abstract idea, law of nature or natural phenomenon. The term “abstract idea” is not interpreted as a layperson might. Instead, the term “abstract idea” is interpreted as described in legal opinions by courts.
According to MPEP 2106.04(a):
the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Here, each of Claims 1 to 20 recite steps, instructions or rules for providing a game involving managing interactions between people, namely, following rules, which is one of certain methods of organizing human activity under the 2019 PEG. Further, each of Claims 1 to 20 recite steps or instructions involving observations, judgements or evaluations, which are mental processes under the 2019 PEG. Accordingly, each of Claims 1 to 20 recites an abstract idea.
Specifically, independent Claim 1 (and its dependent Claims) recites “1. A method for generating content for an electronic game, the method comprising:
generating, by a processor (additional element) of a gaming system, a prompt describing content for the electronic casino game;
providing, by the processor (additional element) of the gaming system, the prompt to a generative Artificial Intelligence (AI) system;
receiving, by the processor (additional element) of the gaming system, the content for the electronic casino game from the generative Al system;
applying, by the processor (additional element) of the gaming system, the received content for the electronic casino game to the electronic casino game; and
recording, by the processor (additional element) of the gaming system, the generated prompt, the received content, and game information for a session of the electronic casino game to which the received content was applied in an electronic record associating the generated prompt with the received content and the game information.”
As indicated above, the underlined portions of representative Independent Claim 1, and similarly recited Independent Claims 8 and 15, generally encompass the abstract ideas, for example as, each of at least one step or instruction or rule for: (i) providing a game involving managing interactions between people, namely, following rules, which is one of certain methods of organizing human activity under the 2019 PEG; and/or (ii) an observation, judgement or evaluation, which is a mental process under the 2019 PEG. The claims generally encompass generating content for use in an electronic game using Artificial Intelligence and recording information about the content and use of the content in the game. The dependent claims of recording the generated prompt, the received content and game information, are merely 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.
Under prong 2 of step 2A, the examiner considers whether the additional elements in the claims integrate the abstract idea into a practical application. To do so, the examiner looks to the following exemplary considerations, looking at the elements individually and in combination:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses 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.
The above-identified abstract idea in each of independent Claims 1, 8, and 15 (and their respective dependent Claims) is not integrated into a practical application under 2019 PEG because the claimed method, gaming system, and host venue gaming system merely implements the above-identified abstract idea (e.g., certain method of organizing human activity) using rules (e.g., computer instructions) executed by a computer (e.g., a processor and memory as claimed). 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. Additionally the additional elements of: a generative AI system, a processor, and a memory are generically recited computer elements in the claims that do not improve the functioning of a computer, or any other technology or technical field. For example, 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. Furthermore, the additional elements do not 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. For at least these reasons, the abstract idea identified above in the independent Claims is not integrated into a practical application under 2019 PEG.
Step 2B
Finally, under step 2B, the examiner evaluates whether the additional elements:
add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The present claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements recite a processing system including a generative AI system, a processor and a memory. These additional elements are generically claimed computer components which enable a game to be conducted by performing the basic functions of: (i) receiving, processing, and storing data, (ii) automating mental tasks and (iii) receiving or transmitting data over a network, e.g., using the Internet to gather data. 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. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application.
Furthermore, the recitation of the above-identified generic computer limitations in Claims 1 to 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) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). 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. Therefore, none of the Claims 1 to 20 amounts to significantly more than the abstract idea itself.
Accordingly, Claims 1 to 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 the 2019 PEG.
AIA Notice
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.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2024/0362968 A1 to Lyons in view of U.S. Patent Application Publication 2024/0424405 A1 to Rao et al.
Regarding Claim 1, and similarly recited Claims 8 and 15, (Currently Amended) Lyons discloses a method for generating content for an electronic casino game, the method comprising, … gaming system comprising: a processor; and a memory coupled with and readable by the processor and storing therein a set of instructions which, when executed by the processor (fig. 2 memory 244, CPU 242), …, a gaming venue host system comprising: a processor; and a memory coupled with and readable by the processor and storing therein a set of instructions which, when executed by the processor (fig. 1 casino management system 122, gaming server 135 with processor and memory), …, comprising:
generating, by a processor of a gaming system, a prompt describing content for the electronic casino game (fig. 1, ¶¶ [0022] discloses prompt generator 118 generates (i.e., intelligently engineers) a prompt based on gathered prompt-related data associated with a gaming session… fig. 4, block 408 generate, based on gathered prompt related data, a prompt; see also fig. 6 prompt 600, command 610);
providing, by the processor of the gaming system, the prompt to a generative Artificial Intelligence (AI) system (fig. 4, block 410; fig. 6, ¶¶ [0075] discloses the processor may construct and run various prompts for various game assets presented in a game. The prompt 600 includes a command 610. The command 610 may be an instruction that is passed to the machine learning model (e.g., via an Application Programming Interface (API)) to dynamically generate the gaming content based on prompt data (e.g., based on the tokens included in the components of the prompt 600, including, but not limited to, image prompt(s) 611, text prompt 612, and prompt parameters 613)… ¶¶ [0084] discloses the processor provides a generative artificial intelligence (AI) chatbot, similar in style to the ChatGPT chatbot);
receiving, by the processor of the gaming system, the content for the electronic casino game from the generative AI system (fig. 4, block 410; ¶¶ [0024], [0045], [0049] discloses dynamically generating gaming content via a prompt; fig. 7, artwork 751, reel symbols 755, paytable 752);
applying, by the processor of the gaming system, the received content for the electronic casino game to the electronic casino game (¶¶ [0095] discloses fig. 4, block 412 discloses where the processor presents, via a presentation device of the gaming machine, the dynamically generated gaming content. For example, referring momentarily to FIG. 1 the content generator 119 provides the dynamically generated gaming content to the game controller 112, which the game controller 112 presents via the presentation device(s) 114. In one embodiment, the processor animates at least a portion of the gaming content, such as animating a presentation of game play for a wagering game, animating a presentation of a game outcome, etc. fig. 7, game array 730, reels 710-718); and
recording, by the processor of the gaming system, the generated prompt, the received content, and game information for a session of the electronic casino game to which the received content was applied in an electronic record associating the generated prompt with the received content and the game information (¶¶ [0085] discloses the processor saves the dynamically generated gaming content, along with other related user and/or use information (e.g., game-play data, prompt-related data, generated prompts, player-ratings of content, etc.) and can provide the saved gaming content and/or other information to the game developer system 150 (and/or the cloud computing platform 142) for analysis, re-training, etc. For instance, the game provider system 150 can analyze various dynamically generated bonus games to determine which dynamically generated bonus game met or exceeded a metric threshold (e.g., a metric that indicates the most elicited player reactions, produced the most positive emotional player responses, received the greatest post-presentation betting increases, produced an increased player retention or engagement, etc.; ¶¶ [0073] discloses the processor can store a generated unique prompt (associated with the unique avatar). The processor can further prevent that unique prompt from being used to generate a game character or to create another avatar that looks the same or similar.).
Lyons, however does not expressly discloses recording, by the processor of the gaming system, the generated prompt, the received content, and game information for a session of the electronic casino game to which the received content was applied in an electronic record associating the generated prompt with the received content and the game information (i.e. a record that associates the prompt, the content, and the per session game information for session recall). In a related invention, Rao discloses recording, by the processor of the gaming system, the generated prompt, the received content, and game information for a session of the electronic casino game to which the received content was applied in an electronic record associating the generated prompt with the received content and the game information (¶¶ [0029]-[0030] discloses The memory controller 210, which maintains a history of the game based on the inputs provided by the experience controller 208 (e.g., the narrative state graph, predicted next node, and real-time game state) over time, decides which information to pass on, e.g., in summarized form, to the NPC controller 212. By analyzing player interaction logs, the experience controller 208 can detect or predict new emerging nodes, which it may then automatically integrate into the experience (including, e.g., by graph completion, i.e., adding further nodes until a connection to the original graph is established) or pass on to the narrative experience creator for the next design iteration).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to record, in Lyons, the generated prompt, received content, and game information for a session in an associating electronic record as taught by Rao in order to allow for storing prompts and content for analysis, retraining, and to assure content in approved and authorized and from the recognized need in casino gaming to review and reconstruct exactly what a particular player was shown for a given outcome.
Regarding Claim 2, and similarly recited Claims 9 and 16, (Currently Amended) Lyons in view of Rao discloses the method of claim 1, wherein recording the generated prompt, the received content, and game information for the session of the electronic casino game to which the received content was applied comprises recording a unique identifier for the session of the electronic casino game (Rao, ¶¶ [0022], [0029]).
Regarding Claim 3, and similarly recited Claim 10, (Currently Amended) Lyons in view of Rao discloses the method of claim 1, wherein recording the generated prompt, the received content, and game information for the session of the electronic casino game to which the received content was applied comprises recording a date and time for the session of the electronic casino game (Rao, ¶¶ [0029]).
Regarding Claim 4, and similarly recited Claim 11, (Currently Amended) Lyons in view of Rao discloses the method of claim 1, wherein recording the generated prompt, the received content, and game information for the session of the electronic casino game to which the received content was applied comprises recording information identifying the generative Al system (Rao, ¶¶ [0013]).
Regarding Claim 5, and similarly recited Claim 12, (Currently Amended) Lyons in view of Rao discloses the method of claim 1, wherein recording the generated prompt, the received content, and game information for the session of the electronic casino game to which the received content was applied comprises recording all of the received content (Lyons, fig. 1. ¶¶ [0020]).
Regarding Claim 6, and similarly recited Claim 13, (Currently Amended) Lyons in view of Rao discloses the method of claim 5, wherein recording the generated prompt, the received content, and game information for the session of the electronic casino game to which the received content was applied comprises recording which content of the received content was applied to the session of the electronic casino game (Lyons, fig. 7).
Regarding Claim 7, and similarly recited Claims 14 and 19, (Currently Amended) Lyons in view of Rao discloses the method of claim 1, further comprising providing, by the processor of the gaming system, a replay of the session of the electronic casino game using the recorded generated prompt, received content, and game information for the session of the electronic casino game to which the received content was applied (Rao, ¶¶ [0018], [0029]-[0030]).
Regarding Claim 17, (Currently Amended) Lyons in view of Rao discloses the gaming venue host system of claim 15, wherein applying the received content for the electronic casino game to the electronic casino game comprises providing the received content for the electronic casino game to a gaming system on which the session of the electronic casino game to which the received content was applied is executed (Lyons, fig. 1).
Regarding Claim 18, (Currently Amended) Lyons in view of Rao discloses the gaming venue host system of claim 17, wherein the instructions further cause the processor to receive the game information for the session of the electronic casino game to which the received content was applied from the gaming system (Lyons, fig. 1).
Regarding Claim 20, (Currently Amended) Lyons in view of Rao discloses the gaming venue host system of claim 19, wherein providing the replay of the session of the electronic casino game using the recorded generated prompt, received content, and game information for the session of the electronic casino game to which the received content was applied comprises: receiving, from a gaming system, a request to replay the session of the electronic casino game using the recorded generated prompt, received content, and game information for the session of the electronic casino game to which the received content was applied (Rao, ¶¶ [0018], [0029]-[0030]);
retrieving the recorded generated prompt, received content, and game information for the session of the electronic casino game to which the received content was applied (Rao, ¶¶ [0018], [0029]-[0030]); and
providing the retrieved generated prompt, received content, and game information for the session of the electronic casino game to which the received content was applied to the gaming system (Rao, ¶¶ [0018], [0029]-[0030]).
Response to Arguments/Remarks
Applicant’s arguments filed 03/16/2026 have been fully considered.
Applicant’s arguments traversing the anticipation rejection over Rao are persuasive to the extent that Rao does not expressly or inherently disclose recording the generated prompt, the received content, and the game information in an electronic record associating them. The 35 USC 102(a)(2) rejection over Rao is withdrawn.
Regarding the argument against the 35 U.S.C. 101 rejection, the arguments are not persuasive.
Applicant asserts that “amendments have been made herein that are thought to fully address the reasons for the rejection or otherwise render the rejection moot. For at least these reasons, the Applicant requests withdrawal of the rejection.” The amendments adds “in an electronic record associating the generated prompt with the received content and the game information”. This amendment is a data storage/association and does not supply a technological improvement to the overall claims. Thus the 101 rejection is thereby maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SHAUNA-KAY HALL whose telephone number is (571)270-1419. The examiner can normally be reached M-F 9:00AM-5:00PM.
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/S.N.H/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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