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 they are 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.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
As summarized in the 2014 Interim Guidance on Patent Subject Matter Eligibility, examiners must perform a Two-Part Analysis for Judicial Exceptions.
In step 1, it must be determined whether the invention falls in one of the four statutory categories of invention. Claims 1-20 are directed to systems and methods, which are statutory categories of invention.
In step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the instant invention is directed to “facilitating selection of an electronic game in a multigame gaming system.” Spec. ¶ 1. Exemplary claim 1 recites the following (with emphasis):
1. A method for selecting electronic games available in a multigame system, the method comprising:
displaying, by a processor of a gaming system, a game selection user interface providing for selection of an electronic game of a plurality of electronic games available on the gaming system;
receiving, by the processor of the gaming system, through the game selection user interface, selection of a feature of a plurality of features of the plurality of electronic games available on the gaming system;
filtering, by the processor of the gaming system, a list of the plurality of electronic games available on the gaming system based on the selected feature of the plurality of features;
displaying, by the processor of the gaming system, through the game selection user interface, the filtered list of the plurality of electronic games available on the gaming system, wherein the filtered list comprises a plurality of the electronic games available on the gaming system;
receiving, by the processor of the gaming system, through the game selection user interface, a selection of an electronic game from the filtered list of the plurality of electronic games available on the gaming system; and
initiating, by the processor of the gaming system, execution of the selected electronic game.
The abstract idea is defined by the underlined portions of the exemplary claim, with substantially similar features found in independent claims 9 and 15. Dependent claims 2-8, 10-14, and 16-20 further define the abstract idea (e.g., by providing suggestions of which game to play based on a profile for a player, listing features such as bonus games or wild features, allowing players to switch between wagering games, etc.) or relate to implementation of the abstract idea (e.g., post solution activity such as displaying or printing results, etc.). The abstract idea may be viewed, for example as:
Real-time monitoring of an electronic system, as in Electric Power Group, LLC v. Alstom (Fed. Cir. 2016);
Device profiles for use in a digital image processing system, as in Digitech Image Techs., LLC v. Electronics for Imaging, Inc. (Fed. Cir. 2014);
An interface providing user display access of customized information, as in Intellectual Ventures I LLC v. Capital One Bank (Fed. Cir. 2015);
A method of managing games similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC (Fed. Cir. 2014) (non-precedential);
A method of exchanging financial obligations (e.g., wagering games) as discussed in In re Smith (Fed. Cir. 2016) and In Re Marco Guldenaar Holding B.V.; and
A method of organizing human activities, as discussed in Alice and Bilski.
The claimed abstract idea reproduced above is effectively an algorithm or set of instructions directed to providing a menu of games that meet one or more criteria. Such steps amount to observation, judgment, and collection of information that could be carried out mentally or with the use of pen and paper. The claims also include carrying out game actions played by human players, which suggests that the invention is directed to organizing human activities as discussed in Smith, Marco Guldenaar, Alice and Bilski.
In Electric Power Group, the Federal Circuit found that merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas. The claims at issue were directed to gathering information to identify problems in an electric grid and to output that information to a user. The court found that such steps constitute an abstract idea based upon several previous court decisions, including Microsoft Corp. v. AT&T Corp., OIP Techs., Inc. v. Amazon.com, Inc., Content Extraction &Transmission LLC v. Wells Fargo Bank, Digitech Image Techs. LLC v. Elecs. For Imaging, Inc., CyberSource Corp. v. Retail Decisions, Inc. The Court also relied upon TLI Communications, Digitech, Bancorp Servs. LLC v. Sun Life, among others, to state that analyzing information by steps people go through in their minds are essentially mental processes within the abstract-idea category.
The abstract idea in the present case is similar in that it gathers information about games and creates a listing of games that meet one or more selected criteria. There is no asserted inventive concept in the improvement of computers as tools, but instead upon certain independently abstract ideas that use computers as tools. Such a finding suggests that the decisions in Enfish v. Microsoft, BASCOM Global Internet v. AT&T Mobility LLC, and McRO, Inc. v. Bandai Namco Games America do not apply here. Therefore, under Step 2A prong 2, the claims are directed to the judicially recognized exception of an abstract idea.
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 claims encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se: a gaming system (or gaming machine) having a processor, display, memory, and user interface to carry out the abstract idea. 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. These features do not meaningfully limit the abstract idea because they encompass generic computer implementation (e.g., a computing device or a network device) as well as other well-understood, routine and conventional devices (e.g., smart phone, camera, audio device, etc.).
The Supreme Court in Alice found that claim recitations of a “data processing system” with a “communications controller” and “data storage unit” are purely functional and generic. The Court further stated, “Put another way, the system claims are no different from the method claims in substance...The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.” The Court concluded that “[b]ecause petitioner's system and media claims add nothing of substance to the underlying abstract idea, we hold that they too are patent ineligible under §101.” The same conclusion is reached with respect to the claims of the instant invention. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 9, 10, 15, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2004/0224753 to O’Donovan et al. (hereinafter O’Donovan).
Regarding claims 1, 9, and 15, O’Donovan teaches a system, EGM, and method for selecting electronic games available in a multigame system, the system or EGM comprising a display device (e.g., video display 12), processor coupled with the display device (e.g., to interface between the memory and display device in ¶ 17), and memory storing instructions (e.g., memory in ¶ 31), the method comprising:
displaying, by a processor of a gaming system, a game selection user interface providing for selection of an electronic game of a plurality of electronic games available on the gaming system (e.g., the player is prompted to enter the various criteria via a display screen menu or a series of menus in ¶ 18);
receiving, by the processor of the gaming system, through the game selection user interface, selection of a feature of a plurality of features of the plurality of electronic games available on the gaming system (e.g., the player is prompted to enter the various criteria via a display screen menu or a series of menus in ¶ 18);
filtering, by the processor of the gaming system, a list of the plurality of electronic games available on the gaming system based on the selected feature of the plurality of features (e.g., After inputting, the desired or necessary characteristics at Step S140, the gaming machine most closely matches the inputted desired characteristics with previously configured default games stored in memory at Step S150 in ¶ 20; see also filtering in ¶ 22);
displaying, by the processor of the gaming system, through the game selection user interface, the filtered list of the plurality of electronic games available on the gaming system (e.g., After inputting, the desired or necessary characteristics at Step S140, the gaming machine most closely matches the inputted desired characteristics with previously configured default games stored in memory at Step S150 in ¶ 20), wherein the filtered list comprises a plurality of the electronic games available on the gaming system (e.g., “comparing each of the one or more inputs with one or more game parameters of a plurality of default games previously stored in memory; suggesting one or more of the plurality of default games stored in memory most closely associated with the game configuration data” in reference claim 1);
receiving, by the processor of the gaming system, through the game selection user interface, a selection of an electronic game from the filtered list of the plurality of electronic games available on the gaming system (e.g., After the gaming machine matches or closely matches a default configuration, it asks the player to play the default configuration at Step S160. If the player accepts the default configuration at Step S170 play begins at Step S830. If the player does not accept the most closely matching default configurations, the gaming machine configures one or more new games with the desired characteristics at Step S180 and the user beings play at Step S130 in ¶ 21; see also reference claim 1); and
initiating, by the processor of the gaming system, execution of the selected electronic game (e.g., the user begins play at Step 170 or Step S130).
Regarding claims 2 and 16, O’Donovan teaches saving, by the processor of the gaming system, the received selection of the feature of the plurality of features in a profile associated with a player of the selected electronic game (e.g., loading a previously saved game at Step S110; see also ¶ 33 keeping a record of game theme combinations the player has a history of playing and suggesting them for future games).
Regarding claim 10, O’Donovan teaches wherein the selected feature comprises a free game bonus feature (e.g., bonus games in ¶ 18).
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 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over O’Donovan in view of US 2009/0104959 to Caputo et al. (hereinafter Caputo).
Regarding claims 11-14, O’Donovan teaches the invention substantially as described above, including selection of game features, but lacks in explicitly teaching that the features include a wild feature, multiplier feature, pick-a-prize bonus feature, or progressive prize feature. In a related disclosure, Caputo teaches a gaming device and method such that the gaming device enables a player to selectively apply or associate a plurality of modifiers to a single game component or apply the plurality of modifiers across the plurality of game components (see abstract). Caputo further teaches that various game components or characteristics of a game may be provided, including an applicable multiplier, a quantity of wild symbols, a quantity of picks or selections, and a quantity of progressive awards, as well as other components (see ¶¶ 101-128). It would have been obvious to one of ordinary skill in the art before the effective date to modify the system of O’Donovan to allow players to select the game components of Caputo in order to allow players greater control over their gaming preferences.
Claims 3-8 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over O’Donovan.
Regarding claims 3-8 and 17-20, O’Donovan teaches the invention substantially as described above, including presenting a game menu to a player and allowing a player to select a previously saved game, but lacks in explicitly teaching the game menu is provided (a) during execution of the game (claims 3-4 and 17-18) or (b) substantially upon conclusion of a game (claims 5-8 and 19-20). It would have been obvious to one of ordinary skill in the art before the effective date to modify O’Donovan to provide the game list to the player during execution of a game in order to allow the player to switch to a different game that is more suited to the player’s desires. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective date to modify O’Donovan to provide the game list to the player substantially upon conclusion of a game in order to allow the player to play a subsequent game.
Further regarding claim 7, O’Donovan teaches the invention substantially as described above, but lacks in explicitly teaching printing the list of games on a cash out ticket. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the system of O’Donovan to include the list of suggested games on a printed cash out ticket in order to provide the player with a written list of games to play at a future visit to the casino.
Further regarding claim 8, O’Donovan teaches the invention substantially as described above, but lacks in explicitly teaching a pop-up window to display the list of games. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the system of O’Donovan to include the list of suggested games on a pop-up window in order to allow players to consider possible game options without interrupting their current games.
Response to Arguments
Applicant's arguments filed 3/11/2026 have been fully considered but they are not persuasive.
Applicant states that the instant claim amendments address the rejection under 35 U.S.C. § 101. Remarks 7. The Examiner respectfully disagrees because the amendments simply relate to outputting a list of information. While the claims are modified from their previous form, there is no substantive difference in terms of patent eligibility. As such, the rejection under § 101 is maintained herein.
Applicant addresses the rejection of claims as anticipated or obvious over O’Donovan on pages 7-9 of the Remarks. Applicant acknowledges that O’Donovan teaches presenting a game that would most closely match a user’s selected criteria, but asserts that the reference presents only a single game, and would not provide a list of a plurality of available games having selected features. Remarks 8. The Examiner respectfully disagrees because the refence expressly states that the system suggests one or more games. In particular, claim 1 of the O’Donovan reference encompasses the steps of “comparing each of the one or more inputs with one or more game parameters of a plurality of default games previously stored in memory; [and] suggesting one or more of the plurality of default games stored in memory most closely associated with the game configuration data.” As such, O’Donovan teaches providing the user with one or a plurality of games that most closely match the user’s criteria. For this reason, the rejections under §§ 102 and 103 are maintained.
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 WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715
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