DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
The following claim(s) is/are pending in this office action: 1-19, 21
The following claim(s) is/are amended: 1, 10, 19
The following claim(s) is/are cancelled: 20
The following claim(s) is/are new: -
Claim(s) 1-19, 21 is/are rejected. This rejection is FINAL.
Response to Arguments
Applicant’s arguments filed in the amendment filed 5/5/2026, have been fully considered but are moot in view of new grounds of rejection. The reasons set forth below.
Applicant’s Invention as Claimed
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.
Claim(s) 1-19, 21 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim(s) 1-19, 21 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a fundamental economic principle or practice without significantly more. The claim(s) recite(s) “cause display of a plurality of player-selectable symbol positions for an electronic game, wherein the plurality of player-selectable symbol positions are associated with sets of coordinates stored in the at least one memory, the sets of coordinates corresponding to display locations on the at least on display device; receive a first player selection of a first player-selectable symbol position of the plurality of player-selectable symbol positions; reveal a first symbol at the first player-selectable symbol position in response to the first player selection, wherein the first symbol is associated with a first output amount; receive a second player selection of a second player-selectable symbol position of the plurality of player-selectable symbol positions; and in response to the second player selection: cause display of a message at the second player-selectable symbol position associated with a first multiplier being applied to at least one of the plurality of player-selectable symbol positions; cause display of the first multiplier at the first player-selectable symbol position based upon the first multiplier being applied to the first symbol; cause display of an animation at both the first player-selectable symbol position based upon the lookup and the second player-selectable position to indicate that the first multiplier will be applied at the first player-selectable symbol position based upon selection of the second player-selectable symbol position; apply a first multiplier associated with the second player-selectable symbol position to the first output amount to generate a multiplied first output amount; and reveal a second symbol at the second player-selectable symbol position, wherein the second symbol is associated with a second output amount” which are data manipulations with respect to gaming. Rules for conducting a wagering game are a fundamental economic practice, see MPEP 2106.04(a)(2). This judicial exception is not integrated into a practical application because the claims do not improve a computer or otherwise apply the judicial exception in a meaningful way. Instead, the claims merely use a computing device as a tool for processing. Spec, para. 55 purports to disclose “technical problems addressed” by the invention, but a person of ordinary skill in the art would not recognize from the specification that an improvement to a computer is being disclosed, and further the claims do not reflect the disclosed improvement. Specifically, the specification identifies four problems, but provides no technical teaching for overcoming those four problems and the claims do not disclose particular steps for defeating the problems. Rather Claim 1 only discloses revealing symbols and updating output amounts – conventional number manipulation and display that is clearly conventional in the art of computers – and other claims only disclose broad functional terms without particular steps for achieving the result (see, e.g., Claim 6, claiming “respective animations” “based on” the state of the game). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional features are conventional computer hardware and related actions such as receiving input and displaying symbols and storing and recalling data.
Claims not specifically mentioned are rejected by virtue of dependency and because they do not obviate the above-recited deficiencies.
Claim Rejections - 35 USC § 103
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.
Claims 1-19, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Gomez (US Pub. 2010/0075745) in view of Marks (US Pub. 2021/0304565) in view of Thomas (US Pub. 2021/0375094) and further in view of Marks (hereinafter “Marks2,” US Pub. 2022/0114862).
With respect to Claim 1, Gomez teaches an electronic gaming device comprising: at least one display device; (para. 18; display)
at least one memory with instructions stored thereon; and at least one processor in communication with the at least one memory, wherein the instructions, when executed by the at least one processor, cause the at least one processor to: (Fig. 2, paras. 25-26; gaming machine including processor and memory)
cause display of a plurality of player-selectable symbol positions for an electronic game, (Fig. 4, para. 31; player-selectable chests in multiple positions)
receive a first player selection of a first player-selectable symbol position of the plurality of player-selectable symbol positions; (Fig. 4, para. 31; player selects chest 62a)
cause a first set of coordinates of the sets of coordinates to be stored in a data structure in the at least one memory, the first set of coordinates corresponding to a first display location of the first player-selectable symbol position on the at least one display device, the data structure corresponding to selected symbol positions in the electronic game, (Coordinates will be taught later. paras. 32-36; system adds to values based upon previously selected arks, which suggests the storage of selections. See also Marks, para. 60, 140; lookup table or other data structure for storing data.)
reveal a first symbol at the first player-selectable symbol position in response to the first player selection, (Fig. 5, para. 32; selecting chest 62a reveals the number 30, which results in 30 credits being added to the bonus meter.)
receive a second player selection of a second player-selectable symbol position of the plurality of player-selectable symbol positions; (Figs. 12-13, para. 36; player selects chest 62g. Figs. 5-15, paras. 32-39; user can keep selecting chests until end condition)
cause display of a message at the second player-selectable symbol position (Fig. 9, para. 34; message displayed at location of second player-selectable symbol position. Fig. 12, para. 36; “2x” indicator, which is a message.)
associated with a first multiplier being applied to at least one of the plurality of player-selectable symbol positions; (Fig. 12, para. 36; system indicates a 2x multiplier following selection of a position.)
But Gomez does not explicitly teach apply a first multiplier associated with the second player-selectable symbol position to the first output amount to generate a multiplied first output amount.
Marks, however, does teach wherein the first symbol is associated with a first output amount; (First see Gomez, Fig. 5, para. 32; 30 credits added to bonus meter, which is an output amount. Figs. 5-14; chests display individual value amounts. Then see Marks, Fig. 9c, para. 162; value symbol 924.)
and in response to the second player selection: perform a lookup in the data structure in the at least one memory to identify the first set of coordinates corresponding to the first display location of the first player-selectable symbol position; (Coordinates will be taught later. paras. 60, 140; lookup table or data structure is referenced in performing value increments.)
cause display of the first multiplier at the first player-selectable symbol position based upon the lookup and the first multiplier being applied to the first symbol; apply the first multiplier associated with the second player-selectable symbol position to the first output amount to generate a multiplied first output amount; (First see Gomez, Figs. 12-13, para. 36; 2x multiplier applied to other locations. Then see Marks, para. 140; incremental increases of a value symbol may be percentage or multiplication. Para. 150-151; system displays prior value and then displays incrementing the value for a period. Fig. 9c, para. 162; value 924 had an initial value of 200 that is being incremented to 600.)
and replace display of the message with a second symbol at the second player-selectable symbol position, wherein the second symbol is associated with a second output amount. (First see Gomez, Figs. 5-14; chests display individual value amounts. See also Marks, Figs. 9c-9d, para. 162-163; system updates display at selection point. Fig. 9F; multiple value amounts in grid. Para. 151; change of value from first to second value. It would have been obvious to one of ordinary skill prior to the effective filing date to remove the multiplier message after the multiplier was applied because the multiplier message is no longer needed because the multiplication has already been performed, see MPEP 2144. Further, it would have been obvious to one of ordinary skill prior to the effective filing date to remove the multiplier message in order to display other outcomes of selecting the position.)
It would have been obvious to one of ordinary skill prior to the effective filing date to combine the device of Gomez with the multiplied first output amount in order to encourage the player to push their luck by creating larger payouts and further because it yields predictable results.
But modified Gomez does not explicitly teach coordinates.
Thomas, however, does teach wherein the plurality of player-selectable symbol positions are associated with sets of coordinates stored in the at least one memory, the sets of coordinates corresponding to display locations on the at least on display device; (For a plurality of selectable symbols, see Gomez, Fig. 4, para. 31; player selects chest 62a. Then see Thomas, paras. 110-114; selectable graphic objects have location properties in the form of xy coordinates that correspond to position on a display. Para. 73; memories for storing data values and other data.)
It would have been obvious to one of ordinary skill prior to the effective filing date to combine the device of modified Gomez with the coordinates in order to identify where graphical objects should be positioned on the display. (Thomas, para. 114)
But modified Gomez does not explicitly teach displaying an animation at two locations to call attention to replication of data from one location to another.
Marks2, however, does teach cause display of an animation at both the first player-selectable symbol position based upon the lookup and the second player-selectable position to indicate that the first multiplier will be applied at the first player-selectable symbol position based upon selection of the second player-selectable symbol position; (Examiner asserts that this limitation beyond “display an animation” is nonfunctional descriptive material, because the location and content/indication of the animation is directed toward conveying a message to a human which is not entitled to patentable weight under MPEP 2111.05. Marks1 teaches para. 97, 141, 151, 155; animations including animations for changing values such as an increment animation. Further, if given weight the content and the location features were obvious over the previous citations to other limitations dealing with conveying a multiplier message (See Gomez, (Fig. 12, para. 36; system indicates a 2x multiplier following selection of a position.) and with modifying values based on other selections (First see Gomez, Figs. 12-13, para. 36; 2x multiplier applied to other locations. Then see Marks, para. 140; incremental increases of a value symbol may be percentage or multiplication.). Regardless of the foregoing, to compact prosecution Examiner will also expressly teach animations at two locations which identify an interaction between them, and therefore see Marks2, Fig. 5, para. 67-68; Replication of prize symbol from one location to another. “Although prize symbols are, in some places, described herein as being replicated from symbol positions to bingo positions, it will be appreciated that other graphics may also be used to indicate transference of a prize symbol from reels 306-314 to bingo card 302…For example, a prize symbol may appear to fly off or otherwise transfer from a symbol position of reels and over to a bingo position…” Fig. 4, paras. 64-66; animation used to indicate a transference. See also Claim 2; Populating a position on a bingo card includes displaying an animation of the first prize symbol “to provide a visual cue of the first prize symbol being replicated onto one of the first and second bingo cards, thereby daubing the position with the first prize symbol.”)
It would have been obvious to one of ordinary skill prior to the effective filing date to combine the device of modified Gomez with the display of an animation at two locations to call attention to replication of data from one location to another.
With respect to Claim 2, modified Gomez teaches the electronic gaming device of claim 1, and Marks also teaches wherein the instructions further cause the at least one processor to: provide a number of player selections remaining for the electronic game; (para. 107; number of spins remaining. Fig. 9c; Spin 1 of 6.)
and decrement the number of player selections remaining after each of the first player selection and the second player selection. (para. 107; prior to start of next spin the available spins may be decremented. After completing a spin, the remaining quantity of spins may be adjusted based on the outcome. Fig. 9d; Spin 2 of 6.)
The same motivation to combine as the independent claim applies here.
With respect to Claim 3, modified Gomez teaches the electronic gaming device of claim 2, and Gomez also teaches wherein the instructions further cause the at least one processor to: receive a third player selection of a third player-selectable symbol position of the plurality of player-selectable symbol positions; (Figs. 6-7, para. 33; user selects chest 62b. Figs. 5-15, paras. 32-39; user can keep selecting chests until end condition)
and in response to the third player selection: increase the number of player selections remaining by at least one player selection; (para. 38; shield element that nullifies a game end. See also Marks, para. 107; quantity of spins may be adjusted based on the outcome of the spin. Para. 180; free spins and increments or decrements on a progressing free spin counter.)
and reveal a third symbol at the third player-selectable symbol position, wherein the third symbol is associated with a third output amount. (Figs. 5-14; chests display individual value amounts. See also Marks, Fig. 9F; multiple value amounts in grid.)
With respect to Claim 4, modified Gomez teaches the electronic gaming device of claim 1, and Gomez also teaches wherein the instructions further cause the at least one processor to: receive a third player selection of a third player-selectable symbol position of the plurality of player-selectable symbol positions; (Figs. 6-7, para. 33; user selects chest 62b. Figs. 5-15, paras. 32-39; user can keep selecting chests until end condition)
and in response to the third player selection: apply a second multiplier associated with the third player-selectable symbol position to the multiplied first output amount to generate a twice multiplied first output amount; (Figs. 12-13, para. 36; 2x multiplier applied to other locations. Therefore the art understood that a multiplier could be applied to the current location or to other locations and it would have been obvious to one of ordinary skill prior to the effective filing date to apply the multiplier to the first amount as a simple substitute of applying it to the later chest for predictable results and to encourage the player to push their luck by allowing for continual increasing of the first value.)
and reveal a third symbol at the third player-selectable symbol position, wherein the third symbol is associated with a third output amount. (Figs. 5-14; chests display individual value amounts. See also Marks, Fig. 9F; multiple value amounts in grid.)
With respect to Claim 5, modified Gomez teaches the electronic gaming device of claim 1, and Gomez also teaches wherein the instructions further cause the at least one processor to: receive a third player selection of a third player-selectable symbol position of the plurality of player-selectable symbol positions; (Figs. 6-7, para. 33; user selects chest 62b. Figs. 5-15, paras. 32-39; user can keep selecting chests until end condition)
and in response to the third player selection: add a bonus output amount associated with the third player-selectable symbol position to the multiplied first output amount to generate an updated first output amount; (Figs. 6-7, para. 33; 30 credits from 62a is added to 15 credits from 62b, and 62b is updated to be 45 credits. Therefore, the art understood that a value from one position could be added to the value from another position. Therefore, it would have been obvious to one of ordinary skill to add the bonus amount from the third selection to first selection as a simple substitution for predictable results.)
and reveal a third symbol at the third player-selectable symbol position, wherein the third symbol is associated with a third output amount. (Figs. 5-14; chests display individual value amounts. See also Marks, Fig. 9F; multiple value amounts in grid.)
With respect to Claim 6, modified Gomez teaches the electronic gaming device of claim 5, and Marks also teaches wherein the instructions further cause the at least one processor to cause display of respective animations at the first player-selectable symbol position and the third player-selectable symbol position based upon the multiplied first output amount being updated to the updated first output amount in response to the third player selection of the third player-selectable symbol position. (Fig. 9c, paras. 150, 162; original value of 200 is being updated/incremented (currently at 241) up to 600. para. 97; reveal animations. See also Gomez, Figs. 12-13, para. 36; 2x multiplier applied to other locations. Figs. 6-7, para. 33; 30 credits from 62a is added to 15 credits from 62b, and 62b is updated to be 45 credits.)
The same motivation to combine as the independent claim applies here.
With respect to Claim 7, modified Gomez teaches the electronic gaming device of claim 1, and Marks also teaches wherein the instructions further cause the at least one processor to cause display of respective animations at the first player-selectable symbol position and the second player-selectable symbol position based upon the first output amount being updated to the multiplied first output amount in response to the second player selection of the second player-selectable symbol position. (Fig. 9c, paras. 150, 162; original value of 200 is being updated/incremented (currently at 241) up to 600. para. 97; reveal animations. See also Gomez, Figs. 12-13, para. 36; 2x multiplier applied to other locations. Figs. 6-7, para. 33; 30 credits from 62a is added to 15 credits from 62b, and 62b is updated to be 45 credits.)
The same motivation to combine as the independent claim applies here.
With respect to Claim 8, modified Gomez teaches the electronic gaming device of claim 1, and Gomez also teaches wherein the instructions further cause the at least one processor to: receive a third player selection of a third player-selectable symbol position of the plurality of player-selectable symbol positions; (Figs. 6-7, para. 33; user selects chest 62b. Figs. 5-15, paras. 32-39; user can keep selecting chests until end condition)
and in response to the third player selection: cause display of a multiplier indicator at an unselected symbol position of the plurality of player-selectable symbol positions based upon a second multiplier to be applied to a third output amount associated with the unselected symbol position upon selection of the unselected symbol position; (figs. 12-13, para. 36; In response to selecting a chest the user gets a multiplier that is applied to the next-selected chest. It would have been obvious to one of ordinary skill prior to the effective filing date to place the multiplier at the unselected chests to indicate that their value will be multiplied due to the multiplier.)
and reveal a third symbol at the third player-selectable symbol position, wherein the third symbol is associated with a fourth output amount. (Figs. 5-14; chests display individual value amounts. See also Marks, Fig. 9F; multiple value amounts in grid.)
With respect to Claim 9, modified Gomez teaches the electronic gaming device of claim 1, and Marks also teaches wherein the instructions further cause the at least one processor to: determine a total output amount for the electronic game based at least in part upon one or more messages received from a server; (para. 34-37; game outcomes may be generated on a centralized server and then transmitted to terminals.)
The same motivation to combine as the independent claim applies here.
And Gomez also teaches and provide the total output amount at an end of the electronic game, wherein the total output amount includes the first output amount and the second output amount. (Fig. 7, paras. 32-33; total bonus meter is the sum of amounts. Paras. 33, 39; collect which ends the bonus. See also Marks, para. 41, 111; total amount of winnings.)
With respect to Claim 10, it is substantially similar to Claim 1 and is rejected in the same manner, the same art and reasoning applying. Further, Marks also teaches at least one non-transitory computer-readable storage medium with instructions stored thereon that, in response to execution by at least one processor, cause the at least one processor to: (para. 143; non-transitory storage media storing instructions executed by one or more processors)
The same motivation to combine as Claim 1 applies here.
With respect to Claims 11-18, they are substantially similar to Claims 2-9, respectively, and are rejected in the same manner, the same art and reasoning applying.
With respect to Claim 19, it is substantially similar to Claim 1 and is rejected in the same manner, the same art and reasoning applying.
With respect to Claim 21, modified Gomez teaches the electronic gaming device of Claim 1, and Gomez also teaches wherein the instruction further cause the at least one processor to cause a second set of coordinates of the sets of coordinates to be stored in the data structure in the at least one memory, the second set of coordinates corresponding to a second display location of the second player-selectable symbol position on the at least one display device. (Fig. 5, para. 32; selecting chest 62a reveals the number 30, which results in 30 credits being added to the bonus meter. paras. 32-36; system adds to values based upon previously selected arks, which suggests the storage of selections. See also Marks, para. 60, 140; lookup table or other data structure for storing data. See also Thomas, paras. 110-114; selectable graphic objects have location properties in the form of xy coordinates that correspond to position on a display.)
Remarks
Applicant amends the independent claims to include “cause display of an animation at both the first player-selectable symbol position based upon the lookup and the second player-selectable position to indicate that the first multiplier will be applied at the first player-selectable symbol position based upon selection of the second player-selectable symbol position.” Applicant argues the amended claims are eligible and nonobvious.
Examiner begins with an issue that made up much of the recent interview (Exin, 5/5/2026). Examiner is concerned that a large portion of the instant claims deal with nonfunctional descriptive material. Claim 1 is representative and describes a game wherein a player selects symbol positions. When the player selects a first symbol position the game records an output amount. An allegedly novel feature of the game is that when a second symbol position is selected, it may cause a multiplier to be applied to the output from the first position. Consequently, as a result of multiplier being applied the game (1) displays a message at the second symbol position identifying the multiplier, (2) (as newly amended) displays an animation at both the second and first symbol positions to indicate that multiplier will be applied to the first symbol position, (3) displays the multiplier at the first symbol position, (4) multiplies the value at the first position and (5) displays a second output amount at the second position.
In other words, the majority of the limitations here, and certainly all of the allegedly novel ones, deal with the display of particular information to the user consistent with the rules of this allegedly novel game. MPEP 2111.05 details the law around Nonfunctional Descriptive Material (NFDM). NFDM arises when a claim limitation concerns the content of information. If the content of information is not functionally or structurally related to the physical substrate, the information is printed matter that is owed no patentable weight. Examples of functional matter is indicia on a measuring cup, or when the particular position or sequence of numbers on a hatband. Conversely, a deck of playing cards with images on each card are not functional, despite the fact that the images identify and distinguish one deck of cards from another. Despite the fact that the cards were used for playing a game, the functions did not pertain to the structure of the apparatus and were not afforded weight. Similarly, dice used in a game that differed only the matter printed upon them were not entitled to weight.
MPEP 2111.05 has a section specifically on machine-readable media, and therein states “when the claim as a whole is directed to conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as support for information or data, no functional relationship exists…Such claims are directed towards conveying meaning to the human reader rather than towards establishing a functional relationship between recorded data and the computer.”
Here, the claims rely heavily upon what is being conveyed to a human viewer. The claim reveals symbols that have no meaning to the computer but convey output amounts to the human. The multiplier message is meant to convey to the human that the score will be multiplied, and the display of the animation is expressly claimed as “to indicate that the first multiplier will be applied at the first player-selectable symbol position based upon selection of the second player-selectable symbol position.”
Applicant does not assert (as it would be a wild assertion) that this Application teaches the art how to make computer-displayed animations. Rather Applicant asserts that the specification discloses, but the claims do not specifically claim, particular animations such as fireworks which convey to a human that an interaction between the first and second symbol positions will take place. Even assuming that the novelty existed, i.e. that nobody had discovered an animation that conveyed this meaning to a human before, the claim premises patentability upon the meaning conveyed to a human rather than upon a functional relationship vis-à-vis the computer system.
The problem with the claims is that, as will be reiterated shortly, Applicant could not claim the underlying allegedly-novel game because rules for conducting a wagering game are a fundamental economic practice, see MPEP 2106.04(a)(2). Applicant attempts an end-run around the judicial exception by claiming the displays that occur during the conducting of the wagering game. The problem with that is that (1) the displays differ from other displays only inasmuch as they present different information to a human because they are the product of allegedly novel wagering rules, and (2) there is no technical problem in displaying messages or animations to a user.
Examiner rejects the claims by adding the Marks2 reference, because this is not the first time Applicant has used replicated displays at two locations to identify a relationship between the two locations. But Examiner asserts that Examiner need not do so, because the newly amended limitation requires only the teaching, which previously existed in the first Marks reference, that a person of ordinary skill could display animations. The locations and content of the animations are NFDM, and not entitled to patentable weight.
Examiner, who is not an Examiner in “Amusement Devices” or similar fields (apparently the AU 3170s as Applicant asserts in Remarks, pg. 12) conveyed Examiner’s understanding of 2111.05 and the NFDM doctrine to Counsel during the interview, and invited Applicant to provide any authority which would guide Examiner on the issue. At Remarks, pg. 12, Applicant argues that the claims require “causing display of specific information” which does not dispute the NFDM doctrine – NFDM expressly contemplates computer-implemented limitations directed toward conveying information to a human user. Applicant further argues that “the USPTO has art units specifically for ‘amusement and education devices’ (the 3710 art units), such as the electronic gaming device of Claim 1.” But this provides no guidance at all. Examiner largely examines in the fields of Computer Networking and Computer Security, but the fact that those fields exists and have art units doesn’t mean that every limitation Examiner sees are entitled to patentable weight.
Applicant does not shake Examiner from his previous position in the interview. Consequently, Examiner now makes it of record. Examiner asserts that the Marks2 citation, in combination with the other teachings from the other references, would render the newly amended feature obvious even if full weight were given. However, Examiner primarily maintains that the Marks2 reference is not needed, because the claim limitation is largely not entitled to patentable weight beyond the citation of a displayed animation.
Applicant argues at Remarks, pgs.13-16 that the claims are eligible, pointing to Spec, paras. 55-57 and 65. Examiner previously responded to paras. 55-56 in Final, 8/19/2025 and to para. 65 in Non-Final 2/13/2026. The same replies apply here. Para. 57 is of a similar bent to 55-56. At Spec, para. 57 Applicant asserts that interface improvements are disclose “to efficiently and effectively communicate information.” Applicant asserts this makes the claims a practical application because they improve an interface. But Applicant does not identify a technical problem or a technical teaching such that this would be a technical solution. Rather, the fact that one portion of an image affects another portion of an image is applicable to all images, not to technology. Nor is a series of changing images (an animation) limited to technology. Nor does Applicant assert that animations were a technical problem for interfaces. Essentially, Applicant makes a bare assertion that the alleged novel displays are also technical problems, but the remainder of the specification and Applicant’s own prior art work suggest no technical problem exists as no technical solution is provided and prior art from the same applicant asserts animations and conveying interactions between locations on an image were previously performed.
Further, even if the animations constituted a technical improvement to an interface, the assertion of a practical application would still fail. “An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.” (MPEP 2106.05(a)) “The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing a result does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words ‘apply it.’” (MPEP 2106.05(f)) Assuming arguendo that the specification disclosure of ‘animations are provided to communicate which symbol position will receive an enhancement and from which symbol position the enhancement is being provided from” is a technical solution, that solution cannot be claimed by “display of an animation at [both the first and second positions] to indicate that the first multiplier will be applied [at the first position] based upon selection of the [second position]” as that is nothing more than simply stating “apply a solution to the problem” and perhaps include “with animations.” In other words, the claims are limited by a result-oriented solution that lacks details.
Examiner asserts that a person of ordinary skill reading the specification would not be able to identify a teaching of a technical solution to a technical problem that is particularly claimed by the claims. Consequently, the claims are not a practical application. Applicant does not meaningfully challenge the rest of the eligibility analysis. Examiner maintains the rejection.
At Remarks, pg. 16, Applicant asserts the cited art is insufficient to teach the amended independent claims. Pursuant to the above analysis, Examiner thinks little teaching is needed because the amendment is largely NFDM. Regardless, Examiner cites Marks2 and maintains the rejection.
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 extension fee 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 NICHOLAS P CELANI whose telephone number is (571)272-1205. The examiner can normally be reached on M-F 9-5.
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/NICHOLAS P CELANI/Examiner, Art Unit 2449
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