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
The examiner acknowledges applicant’s arguments in the Response dated February 12, 2026 directed to the Non-Final Office Action dated October 17, 2025. Claims 1-20 are pending in the application and subject to examination as part of this office action.
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 is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claims 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 1-20 has been analyzed to determine whether it is directed to any judicial exceptions.
The determination of subject matter eligibility under 35 USC 101, relies on the Mayo/Alice two-step analysis.
In step 1 of the analysis, the claims are evaluated to determine whether they fall within one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter). In the present case, claims 1-7 are directed to an electronic gaming machine (i.e., a machine), claims 8-14 are directed to a one or more non-transitory, computer-readable media (i.e., a manufacture), and claims 15-20 are directed to an method (i.e., a process). The claims are, therefore directed to one of the four statutory categories.
Under prong 1 of step 2A, the examiner is directed to determine whether the claim recites a judicial exception. The claims are compared to groupings of subject matter that have been found by courts as abstract ideas. These groupings include
(a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations;
(b) 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); and
(c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Claim 1 is considered representative and recites (the abstract idea is underlined) an electronic gaming machine comprising:
one or more displays;
one or more processors; and
one or more memory devices storing computer-executable instructions which, when executed by the one or more processors, cause the one or more processors to:
cause a base game graphical user interface (GUI) to be displayed on the one or more displays, the base game GUI including an array of symbol positions and one or more metamorphic indicators associated with a base game,
cause, for each play of the base game, symbols to be displayed in the symbol positions as part of a base game outcome,
cause, for each symbol position in which the symbol displayed therein is a trigger symbol associated with one of the one or more metamorphic indicators, a corresponding collection event associated with that symbol position to occur,
cause, for each collection event, display of a collection animation in which one or more graphical elements are caused to move from the trigger symbol displayed in the corresponding symbol position of that collection event to the metamorphic indicator associated with the trigger symbol displayed in the corresponding symbol position of that collection event,
randomly determine, for each play of the base game in which one or more collection events occurred, whether to a) enable a feature game having outcomes separate from the base game outcome and not enable a multiplier feature for the base game, b) enable the multiplier feature for the base game and not enable the feature game having outcomes separate from the base game outcome, or c) not enable the feature game having outcomes separate from the base game outcome nor the multiplier feature for the base game, wherein the feature game having outcomes separate from the base game outcome and the multiplier feature for the base game are not both able to be enabled for each play of the base game,
cause, for each play of the base game in which the one or more collection events occurred in association with the random determination that a) the feature game having outcomes separate from the base game outcome is to be enabled and the multiplier feature for the base game is to not be enabled, a GUI to be presented in which the feature game having outcomes separate from the base game outcome is enabled and the multiplier feature for the base game is not enabled,
cause, for each play of the base game in which the one or more collection events occurred in association with the random determination that b) the multiplier feature for the base game is to be enabled and the feature game having outcomes separate from the base game outcome is to not be enabled, the multiplier feature for the base game to be enabled without the feature game having outcomes separate from the base game outcome being enabled, and
cause, for each play of the base game in which the one or more collection events occurred in association with the random determination that c) neither the feature game having outcomes separate from the base game outcome nor the multiplier feature for the base game is to be enabled, the feature game having outcomes separate from the base game outcome and the multiplier feature for the base game to not be enabled.
The present invention provides an overall context for gaming machines that may be used to implement a feature game mechanic (Specification [0039]). This is accomplished by a graphical user interface for providing a game of chance with metamorphic indicators (Abstract). These steps fall under the category of certain methods of organizing human activity. Specifically, they are directed to the sub-category of managing personal behavior or relationships or interactions between people because the claims recite the rules of a game. The claims also recites a value associated with any winning pattern of displayed symbols in the base game and a meter that tracks a value associated with any winning pattern which fall into the sub-category of fundamental economic practices or principles. The determining steps and mathematical steps may be performed in the human mind or by a human using a pen and paper and therefore fall into the category of mental processes. Finally, the multiplying steps fall into the category of mathematical concepts.
Accordingly, the claims recite an abstract idea.
Under prong 2 of Step 2A, the examiner considers whether additional elements 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 (not considered relevant to the present claims);
• 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 additional elements in the present claims are one or more displays, one or more processors, one or more memory devices, one or more non-transitory computer-readable media, and a gaming machine. The additional elements do no integrate the judicial exception into a practical application. In particular, the additional elements do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. The additional elements do not implement a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim. The additional elements do not effect a transformation or reduction of a particular article to a different state or thing. The additional elements do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they does not impose any meaningful limits on practicing the abstract idea.
Under step 2B, the examiner evaluates whether the additional elements amount to significantly more than the judicial exception itself. The examiner considers if 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. The additional elements are well-understood, routine, or conventional, as shown:
one or more displays, one or more processors, one or more memory devices, one or more non-transitory computer-readable media (Bradford et al., US 6,709,333 B1, game device 100 includes the normal and well known internals needed in order to have a functioning game, such as at least one central processor, associated memory, input/output interfaces, peripheral interfaces to the video display [C8:7-21]); and
a gaming machine (Parham, US 2006/0089196 A1, the design and operation of gaming devices is well known and conventional gaming machines are available such as from International Gaming Technology.TM. and Bally.TM. [0022]).
Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
As a result, the claims are not directed to patent eligible subject matter.
Prior Art
There are currently no prior art rejections against claims 1-20.
Response to Arguments
Applicant's arguments filed February 12, 2026 have been fully considered but they are not persuasive.
With respect to prong 1 of step 2A, applicant states
As discussed in the Examiner Interview and as conceded by Examiner Garner in the Interview Summary of January 8, 2026, the "random determination" aspect of the claims cannot be performed in the human mind or by a human with pen and paper since the human mind is subconsciously affected by bias, thereby making any such determination not truly random. (Response [p. 13])
The examiner agrees that “randomly determining…” cannot be performed by the human mind. However, the claims recite limitations that fall into the grouping of mental processes. In particular, the following limitations could be performed in the huma mind:
determining winning symbol patterns (claims 2, 9, and 16),
the corresponding multiplier value to be multiplied, before being added to a meter (claims 6, 13, and 20),
determine, for each collection event, whether the metamorphic indicator associated with the trigger symbol displayed in the corresponding symbol position of that collection event is to undergo a corresponding graphical state change (claims 7 and 14)
Next, applicant states:
As also discussed in the interview, none of the independent claims recited a "credit meter." Each independent claim originally had a corresponding dependent claim that recited a "credit meter," but it is wholly improper to import limitations from a dependent claim into an independent claim for the purposes of determining the subject matter eligibility of the independent claim. The rejection of the independent claims under 35 U.S.C. § 101 cannot rely on language of a dependent claim-if this were the case, the one could obtain allowability of a rejected independent claim by canceling the dependent claim, which is an entirely nonsensical scenario. Moreover, even the dependent claims fail to recite a "credit meter" after this amendment. Thus, the alleged rationale for finding that the original claims are directed to a "fundamental economic practice" no longer exists. Applicant also notes that the mere inclusion of a credit meter does not make an apparatus "directed to" a fundamental economic practice. The choice of "directed to" in the M.P.E.P. is not intended to be interpreted as "in any way remotely connected with." Instead, "directed to" is intended to mean that the claim is focused on trying to claim a fundamental economic practice. Merely reciting that a device has a credit meter does not mean that the device is trying to claim a fundamental economic practice any more than a vending machine displaying an amount of credit, a cash register displaying an amount of change, or an ATM displaying an account balance. (Response [p. 14])
The subject matter eligibility analysis applies not just to the independent claims. Furthermore, a claim may recite multiple judicial exceptions. Such claims are analyzed in the same manner as claims reciting a single judicial exception. Additionally, MPEP 2106.04(II)(B), during examination, examiners should apply the same eligibility analysis to all claims regardless of the number of exceptions recited therein. MPEP 2106.04(II)(B) further states:
In other claims, multiple abstract ideas, which may fall in the same or different groupings, or multiple laws of nature may be recited. In these cases, examiners should not parse the claim. For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A Prong One to make the analysis clear on the record. However, if possible, the examiner should consider the limitations together as a single abstract idea for Step 2A Prong Two and Step 2B (if necessary) rather than as a plurality of separate abstract ideas to be analyzed individually.
Thus, although claim 1 is recited as a representative claim, limitations from other claims recite additional abstract idea groupings. In prong 1 step 2A all abstract ideas are identified throughout all claims even when the limitations are not in independent claims.
While applicant has removed the term “credit” from “credit meter”, the “meter” tracks a value associated with any winning pattern. The present application is directed to a slot machine game. Removing the word “credit” from a “credit meter” is an attempt to obfuscate the claim language in order to avoid identification of a fundamental economic practice. According to MPEP 2111:
The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004). Indeed, the rules of the PTO require that application claims must "conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description."
The present claims implement a feature game mechanic on a gaming machine (Specification [0039]). Figure 2B depicts a casino gaming environment (Specification [0032] and [Fig. 2B]). The examiner maintains that the term “meter” is related to fundamental economic practices (i.e., the tracking of values associated with any winning pattern). With reference to the specification, it is clear to one of ordinary skill in the art that the feature game mechanic recited in the claims is directed to a wagering game – not a vending machine displaying an amount of credit, a cash register displaying an amount of change, nor an ATM displaying an account balance.
Applicant also argues:
The recitation of a "multiplier" and "to be multiplied" in the claims also does not make the claims "directed to" a mathematical concept. Applicant is not trying to claim the principle of multiplication or any "mathematical concept." The amended claims recite a "multiplier feature for the base game," but the claims are clearly not directed to "multiplication" per se and do not seek to prevent others from using multiplication, multipliers, or other aspects of multiplication. No reasonable person looking at the present claims would characterize them as being "directed to" a mathematical concept. (Response [p. 14])
The examiner maintains that the multiplication of values based on outcomes that may or may not be multiplied by a multiplier feature is at the heart of the game provided by the electronic gaming machine.
Next applicant argues:
Finally, the Office's assertion that the claims are directed to "managing personal behavior or relationships or interactions between people" is completely unsupported. How does the claimed invention, which is directed at systems and methods for presenting a graphical user interface, "manage personal behavior"? How does it cause any human being to change behavior or behave in a particular manner? How does the claimed invention "manage a personal relationship"? How does the claimed invention "manage interactions between people"? The answer is that it does none of these things. The Office simply states that it does in a conclusory manner, but such an assertion is so divorced from reality that it cannot stand when looked at from the perspective of a reasonable person. The claims are directed to equipment or methods for operating equipment that can be used by a person, but just because equipment can be used by a person does not make it for "managing personal behavior or relationships or interactions between people." (Response [p. pp. 14-15])
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.
MPEP 2106.04(a) states:
To facilitate examination, 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.
According to MPEP 2106.04(a)(2)(II):
[T]he sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping. It is noted that the number of people involved in the activity is not dispositive as to whether a claim limitation falls within this grouping. Instead, the determination should be based on whether the activity itself falls within one of the sub-groupings.
MPEP 2106.04(a)(2)(II)(C) states:
The sub-grouping "managing personal behavior or relationships or interactions between people" include social activities, teaching, and following rules or instructions.
…
An example of a claim reciting following rules or instructions is In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of "rules for playing games", which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011.
Similarly, the present claims recite the steps carried out by the electronic gaming machine in providing a base game to a user wherein a collection event may enable a feature game, enabling a multiplier feature, or neither enabling a feature game nor a multiplier feature. The examiner maintains that this clearly falls into the sub-grouping of managing personal behavior or relationships or interactions between people which includes "rules for playing games."
Applicant argues:
The Office also asserts that the claims "recite the rules of a game" and are thus "directed to the sub-category of managing personal behavior or relationships or interactions between people." The present claims do not recite "rules of a game" any more than claims directed to a pin setter for a bowling alley recites rules of a game. Instead, the claims are directed to specific equipment or methods for using such equipment that is configured to facilitate play of a game. This does not make them "directed to" rules of a game. Is the Office now going to assert that any equipment used in any game is "directed to rules of a game" and is thus patent-ineligible? Would claims directed to a new type of baseball bat be patent ineligible because baseball bats are required, by the rules of baseball, to be made of certain materials and to satisfy certain dimensional requirements? Would claims directed to a physical chess board that has squares that light up to tell the player which piece to move and to where to carry out another, remote player's move be patent ineligible? If this is the Office's view, Applicant respectfully demands that the Office point to case law that supports the Office's position. The present Office Action cites to no legal support for any of its assertions with regard to the 35 U.S.C. §101 rejections except for a single reference to the "Mayo/Alice two-step analysis." Neither of these cases has anything to do with "rules of a game." (Response [p. 15])
The examiner disagrees with applicant’s argument that “[t]he present claims do not recite ‘rules of a game’ any more than claims directed to a pin setter for a bowling alley recites rules of a game”. The present claims recite nothing more than generic computer components that carry out the abstract idea – not specific equipment that is configured to facilitate play of a game.
More importantly, however, is that the analysis does not end upon a finding that the claim is directed to a law of nature, a natural phenomenon, or an abstract idea. The analysis continues to prong two, where the examiner determines whether the additional elements integrate the judicial exception into a practical application. Depending on the outcome of the analysis at prong two of step 2A, the examiner determines whether the claims recite additional elements amount to significantly more than the judicial exception at step 2B.
Next, applicant argues:
Applicant reminds the Office that the claims are, as admitted by the Office, directed to a statutory class of invention ("The claims are, therefore directed to one of the four statutory categories."). As Applicant's claims have satisfied this basic requirement of patentability, if the Office wishes to assert that an exception to this rule should be made for Applicant's claims, the burden of proof falls on the Office to demonstrate that legal precedent supports the Office's decision to deny patentability despite Applicant's claims falling squarely within the four statutory categories. The Office is, in denying patentability, taking the extraordinary step of "breaking" the statute and it is thus incumbent on the Office to defend its actions by citing to legal authority that specifically supports its decision. The Office makes no such effort here. (Response [p. 15])
Applicant appears to argue that the determination that the claims are directed to one of the four statutory categories should be sufficient to determine subject matter eligibility. Applicant’s concerns about the subject matter eligibility test are far beyond the examiner’s control. Until changes are made, the examiner is required to follow the subject matter eligibility analysis as currently described in MPEP 2106.
Applicant provides an summary of In re Smith and In re Marco Guldenaar and includes snippets from the oral arguments in each case (Response [pp. 15-23]). First, while the oral arguments may be informative, the published opinions are the official record and precedential. Further, as stated above, MPEP 2106.04(a) states that “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.” MPEP 2106.04(a)(2)(II)(A) includes rules for conducting a wagering game as falling into the sub-grouping of fundamental economic practices or principles and MPEP 2106.04(a)(2)(II)(C) includes rules for playing games as falling into the sub-grouping of managing personal behavior or relationships or interactions between people. The examiner maintains that the present claims fall into the sub-groupings of fundamental economic practices or principles and managing personal behavior or relationships or interactions between people.
Finally, with respect to prong 2 of step 2A, applicant argues:
Applicant respectfully submits that the Office has not demonstrated that the claims are directed to a judicial exception. Moreover, Applicant respectfully submits that even if the claims were, for the sake of argument, viewed as being directed to a judicial exception, the alleged judicial exception has been integrated into a practical application, i.e., a gaming machine with an improved user interface that provides features that help maintain player engagement with the game. As set forth in M.P.E.P. §2106.04(d)(I), "in Step 2A Prong Two, examiners should ensure that they give weight to all additional elements, whether or not they are conventional, when evaluating whether a judicial exception has been integrated into a practical application. Additional elements that represent well-understood, routine, conventional activity may integrate a recited judicial exception into a practical application." It is Applicant's position that the elements of claim 1, taken as a whole-including the alleged "conventional" elements and the elements allegedly directed to a judicial exception-integrate the alleged judicial exception into a practical application. Thus, the claims, even if found to be directed to a judicial exception in prong 1 of step 2A of the subject matter eligibility analysis, would be patent eligible under prong 2 of step 2A of the subject matter eligibility analysis. (Response [p. 24]).
The examiner disagrees.
Under prong 2, step 2B, limitations that the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include an improvement in the functioning of a computer, or an improvement to other technology or technical field. First, it is unclear what has improved in the user interface. There does not appear to be anything about the user interface that has been improved. Furthermore, maintaining player engagement is not an improvement to in the functioning of a computer, or an improvement to other technology or technical field. At best, applicant recites a more engaging abstract idea, which is still just an abstract idea. The additional elements do nothing to transform the abstract idea into a practical application.
For these reasons, there is no inventive concept. The claim is not patent eligible. Even when viewed as a whole, nothing in the claim adds significantly more to the abstract idea.
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 WERNER G GARNER whose telephone number is (571)270-7147. The examiner can normally be reached M-F 7:30-15:30 EST.
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, 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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/WERNER G GARNER/ Primary Examiner, Art Unit 3715