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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/11/2026 has been entered.
Response to Amendment
Examiner acknowledges receipt of amendment/arguments filed 06/11/2026. The arguments set forth are addressed herein below. Claims 1-20 remain pending, no Claims have been newly added, and no Claims have been canceled. Currently, Claims 1, 14-15, and 18-19 have been amended. No new matter appears to have been entered.
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 an abstract idea without significantly more.
Claims 1-20 is/are directed towards a statutory category they are directed to either a process, machine, manufacture, or composition of matter (Step 1, Yes).
Claim 1 recites, in part, the limitations of […]; and […], a persistence counter, and a plurality of predetermined thresholds, […]: cause display of an initial game outcome by displaying symbols from a plurality of reels in a plurality of columns, the plurality of reels including a plurality of symbol types; increment the persistence counter based on the initial game outcome; identify at least one symbol type of the plurality of symbol types based on a comparison of a value of the persistence counter relative to the plurality of predetermined thresholds; change the at least one symbol type in the initial game outcome to a second symbol type, wherein a first number of symbol types are changed to the second symbol type when the persistence counter is at a first value below a first threshold of the plurality of predetermined thresholds, and wherein a second number of symbol types greater than the first number of symbol types are changed to the second symbol type when the persistence counter is at a second value above the first threshold; and determine, based on changing the at least one symbol type, an upgraded game outcome. These limitations, individually and in combination, describe or set forth the abstract idea in claim 1 (substantially similar limitations are found in claims 15 and 19). The Examiner notes that the specific limitations that describe or set forth the abstract idea in Step 2A Prong 1 can be identified either individually or in combination (see p. 54 of 2019 Revised Patent Subject Matter Eligibility Guidance).
Under the broadest reasonable interpretation, the claims recites limitations that can be practically performed in the human mind or by a human using pen and paper. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Thus, the claims recite a mental process.
The claims also recite limitations that are considered a fundamental economic principle or practice (e.g., relating to commerce and economy), commercial interactions, business relations, managing personal behavior or relationships or interactions between people. The Examiner notes that certain activity between a person and a computer may fall within the certain methods of organizing human activity grouping (see p. 5 of the October 2019 Update: Subject Matter Eligibility).
Therefore, the claims fall under the following enumerated groupings of abstract ideas: mental processes (e.g., concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)), and/or certain methods of organizing human activity (e.g., 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), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)) (Step 2A, Prong 1, Yes).
Claim 1 recites the additional element(s) of “A gaming system comprising: a processor; and a memory storing instructions […] wherein the instructions when executed by the processor, cause the processor to: cause display of […]; […]; […]; […]; and […]”. These additional element(s) are recited at a high level of generality, and under the broadest reasonable interpretation are generic processor(s) and/or generic computer component(s) that perform generic computer functions. The generic processor and/or generic computer component limitation(s) are no more than mere instructions to apply the exception using a generic computer component. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional elements amount to adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computers and/or generic computer components does not integrate the judicial exception or amount to 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. Using a computer to take data, compute a result, and return the result to a user amounts to electronic data query and retrieval—some of the most basic functions of a computer. “[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application or add significantly more. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (Step 2A Prong 2, No).
Additionally, the specification makes it clear that the system for performing operations for a game can be implemented on a generic computer.
[0033] FIG. 1 illustrates several different models of EGMs which may be networked to various gaming related servers. Shown is a system 100 in a gaming environment including one or more server computers 102 (e.g., slot servers of a casino) that are in communication, via a communications network, with one or more gaming devices 104A-104X (EGMs, slots, video poker, bingo machines, etc.) that can implement one or more aspects of the present disclosure. The gaming devices 104A-104X may alternatively be portable and/or remote gaming devices such as, but not limited to, a smart phone, a tablet, a laptop, or a game console. Gaming devices 104A-104X utilize specialized software and/or hardware to form non-generic, particular machines or apparatuses that comply with regulatory requirements regarding devices used for wagering or games of chance that provide monetary awards.
As such, the game executed by at least one processor, for implementing the abstract idea, may require no more than generic, conventional, and well-known computer devices such as a general purpose computer (as evidenced in Para. 33).
In Step 2B, the additional element(s) also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong 2. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. However, unless an Examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B (see 2019 Revised Patent Subject Matter Eligibility Guidance). Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim that integrates the judicial exception in to a practical application, nor do they amount to a claim that amounts to significantly more than the abstract idea itself. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer components. The additional elements do not integrate the abstract idea into a practical application or amount to significantly more because they do not impose any meaningful limits on practicing the abstract idea (Step 2B, No).
Thus, Claims 1, 15, and 19 are rejected as shown above. Additionally, Claims 2-14, 16-18, and 20 also recite limitations that are similar to the abstract ideas identified with respect to Claim 1 above (i.e., certain methods of organizing human activities and/or mental processes). Claims 2-14, 16-18, and 20 do not recite any additional elements other than those recited in Claim 1. Therefore, for the same reasons set forth with respect to Claim 1, Claims 2-14, 16-18, and 20 also do not integrate the judicial exception into a practical application or amount to significantly more.
Prior Art
The Examiner notes that after a thorough search on the claims as currently amended, the claims currently overcome prior art. Additionally, Applicant’s arguments with regard to the 103 rejections are persuasive. The closest prior art found to date are the following:
MacGregor (US 2019/0005770 A1) discloses the concept of wager-based video slot reel games are described where prizes are awarded based upon the appearance of scatter symbols and the game logic can be configured to select the number of scatter symbols needed to win prizes.
Warms et al. (US 2023/0169820 A1) discloses the concept of providing games of chance with multiple levels of persistent features are disclosed, including scatter prize indicators that are each associated with different symbol positions of a game of chance, and when a scatter symbol is selected for a given symbol position, the scatter prize indicator associated therewith may be upgraded.
Response to Arguments
Applicant's arguments filed 06/11/2026 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Regarding the rejections under 35 USC 101, Applicant states: “As memorialized by the USPTO in the recent memorandum entitled "Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101," " a claim does not recite a mental process when it contains limitation(s) that cannot practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitation(s)." (Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101, USPTO Memorandum, pg. 2, August 4, 2025). The USPTO memorandum further emphasizes that "Examiners are reminded not to expand this grouping in a manner that encompasses claim
limitations that cannot practically be performed in the human mind." (Id.). As highlighted above, the steps recited in Claim 1 recite specific features with respect to controlling a display device, which the human mind is not equipped to perform.”
In response, the Examiner respectfully disagrees. The limitations outlined above, that exclude the additional elements, are limitations that can be practically performed in the human mind, and are considered certain methods of organizing human activity. The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The additional elements identified above, including causing display of an initial game outcome, are being used as tools, in their ordinary capacity, to perform the abstract idea. The advance lies entirely in the realm of the abstract idea.
Additionally, the August 4th Memo also states, “This memorandum is not intended to announce any new USPTO practice or procedure and is meant to be consistent with existing USPTO guidance.” Thus, the rejection of the claims, as outlined above, is believed to be consistent with existing USPTO guidance. Furthermore, a human game operator could practically display symbols, increment a counter, compare the counter to threshold values, change symbols, and determine an upgraded outcome, as games using symbols and counting exists outside the use of a processor.
Regarding the rejections under 35 USC 101, Applicant states: “Nor are the steps of Claim 1 directed to methods of organizing human activity. The present
claims are not directed to interactions between people but are instead directed to tracking outcomes to change a persistence counter and selectively upgrading outcomes by changing symbol types based on the value of the counter relative to pre-stored thresholds.”
In response, the Examiner respectfully disagrees. As recited above, the claims also recite limitations that are considered a fundamental economic principle or practice (e.g., relating to commerce and economy), commercial interactions, business relations, managing personal behavior or relationships or interactions between people. Such that, the claims, based on displaying an initial game outcome and determining an upgraded game outcome, fall under the abstract idea grouping relating to certain methods of organizing human activity (e.g., 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), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)). The claims, as outlined above, clearly relate to rules/steps for executing/operating a game (i.e., organizing human activity, such as, managing personal behavior including following rules or instructions).
Regarding the rejections under 35 USC 101, Applicant states: “The technology and technical field of reel games are improved, in at least one aspect, by the recited features of Claim 1, in that the processing demands on the gaming machine are reduced. For example, as described in paragraph [0031] of the originally filed application, embodiments of the application improve efficiency in the use of computer resources by tying the determination of award enhancements to be provided in the upgraded feature to a persistence counter that is updated during gameplay, and more specifically, to the persistent collectable scatter symbols collected during play of the base game. Moreover, the thresholds are each linked to a number of symbol types that are changed to the second symbol (e.g., the PIC. 1 symbol). As an example, where the persistence meter 614 has a value of seven, equal to the third threshold 642 of "PIC4", as indicated by the persistence meter 614. Processor 204 determines that the at least one symbol type includes each of the "PIC2", "PIC3", and "PIC4" symbols. See para. [0105]; FIG. 7. As a result, a random determination is not needed to determine the upgrade feature and the number of random determinations by the processor are reduced, thereby improving the processing availability and speed of the processor. See e.g., para. [0031].”
In response, the Examiner respectfully disagrees. The claimed invention does not provide improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a). Providing a means of anticipation for receiving an upgrade feature during a game (as claimed in amended claims 1, 15, and 19) is not a technical solution to a technical problem e.g. something specific to improvements to the functioning of a computer etc., but rather provides an improved user experience for a player. Managing and maintaining an initial outcome and an upgraded game outcome pertains to managing personal behavior including following rules or instructions pertaining to organizing human activity and/or a mental process. Applicant’s response recites, “a random determination is not needed to determine the upgrade feature and the number of random determinations by the processor are reduced.” The Examiner agrees that no random determination is needed nor is one reduced as no random determination is claimed. Additionally, the claims do require incrementing and maintaining a persistence counter, even if the persistence counter is replacing a random determination, it still requires resources to be updated and maintained. Thus, it appears resources are still required to determine the upgrade feature and only the steps to get the upgrade feature are different. Thus, the claims at issue lack integration into a practical application. Applicant’s claimed abstract idea lacks or fails to suggest improvements to the functioning of a computer or to any other technology or technical field. The Examiner contends that the claims do not provide an improvement to the technology in which it is generically applied.
Additionally, Applicant references features from paragraph 99 of the specification, with regard to the visual characteristics of the persistence counter. However, the claims only recite, “increment the persistence counter based on the initial game outcome” and nothing is claimed regarding any visual aspect of the counter. If the elements from paragraph 99 are incorporated into the function of the counter the claims would likely no longer recite an abstract idea.
At least based on the above, the 101 rejection of claims 1-20 are herein maintained.
Applicant’s amendments/arguments, see response, filed 06/11/2026, with respect to claims 1, 15, and 19 have been fully considered and are persuasive. The prior art rejection of claims 1-20 has been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHASE E LEICHLITER whose telephone number is (571)270-7109. The examiner can normally be reached Monday-Friday (10-6).
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/CHASE E LEICHLITER/Primary Examiner, Art Unit 3715
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