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 1-14 and 16-21 are rejected under 35 USC § 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. (2014).
Analysis
Based upon consideration of all of the relevant factors with respect to the claim as a whole, claim(s) 1 and 9-11 held to claim an abstract idea, and is/are therefore rejected as ineligible subject matter under 35 U.S.C. 101. The rationale for this finding is explained below:
Claims 1, 9 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites “receiving an indication of an identity of a user.”
The limitations of “receiving an indication of an identity of a user; determining an EGM configuration associated with the user based on the identity of the user; and transmitting an indication of the EGM configuration to the EGM” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “a processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “a processor” language, “receiving and transmitting” in the context of this claim encompasses receiving an indication of an identity of a user. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform both the ranking and determining steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 9, 10 and 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Higgins et al (US 2020/0020194 A1).
As per claim 1, Higgins et al disclose a method of operating an electronic gaming machine (EGM) configuration system, the method comprising: receiving an indication of an identity of a user [0108]; determining an EGM configuration associated with the user based on the identity of the user [0108]; and transmitting an indication of the EGM configuration to the EGM ([0024]-[0025]; see fig. 1; transmission is sent through the network to the EGM).
As per claim 2, Higgins et al disclose the method of Claim 1, wherein the EGM configuration comprises a game skin owned by the user, and wherein transmitting the indication of the EGM configuration to the EGM comprises transmitting an indication of configurations associated with the game skin ([0024]-[0025], transmission is sent to the EGM).
As per claim 9, Higgins et al disclose a method of operating an electronic gaming machine (EGM), the method comprising: determining an indication of an EGM configuration associated with a user of the EGM [0108]; and operating the EGM using the EGM configuration ([0024]-[0025]).
As per claim 10, Higgins et al disclose the method of claim 9, wherein the EGM configuration comprises a game skin owned by the user, and wherein operating the EGM using the EGM configuration comprises providing a game using the game skin ([0024]-[0025]; transmission is sent through the network to the EGM).
As per claim 16, Higgins et al disclose the method of claim 15, wherein determining the indication of the EGM configuration based on the identification of the user of the EGM comprises: transmitting an indication of the identification of the user of the EGM to a configuration system [0108]; and receiving the indication of the EGM configuration from the configuration system (see fig. 1; transmission is sent to the EGM).
As per claim 17, Higgins et al disclose the method of claim 16, wherein receiving the indication of the EGM configuration further comprises: receiving an indication of a plurality of EGM configurations associated with the user from the configuration system [0108]; displaying the indication of the plurality of EGM configurations associated with the user (see fig. 4, display 1035); and receiving a selection of the EGM configuration from the plurality of EGM configurations by the user [0108].
As per claim 18, Higgins et al disclose the method of claim 9, wherein determining the indication of the EGM configuration comprises: receiving an indication of the EGM configuration from a device associated with the user [0108].
As per claims 3-8, 11-14 and 19-21, no art rejection has been found.
Response to Arguments
Applicant’s arguments with respect to the 102 rejection of claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. As far as the 101 rejection,
In response, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because :
The additional elements when considered both individually and as a combination do not amount to significantly more than the abstract idea. The claims recite the additional elements of determining an EGM configuration associated with the user based on the identity of the user and transmitting an indication of the EGM configuration to the EGM.
The claimed electronic gaming machine (EGM) is seen as a generic computer performing generic functions without an inventive concept as such does not amount to significantly more. These devices are simply a field of use that attempts to limit the abstract idea to a particular environment. The type of data being manipulated does not impose meaningful limitations. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Therefore the claims do not amount to significantly more than the abstract idea itself. The claims are not patent eligible.
Furthermore, in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., the Courts held that claims to a method for making websites easier to navigate on a small-screen device were not directed to an abstract idea. 880 F.3d 1356, 1363 (Fed. Cir. 2018). Here, the claims are not drafted in the format CoreWireless. Rather than providing a technical solution that improves the way the computing device, the applicant is merely using alternate ways of using a computer for allowing a user to make a purchase based on favorable actions taken by a user. The computer or computing device or electronic platform is then applied to the abstract idea. The claims do not provide sufficient details to transform the abstract idea into patent eligible subject matter. See, e.g. Alice, 134 S. Ct. at 2360 (explaining that claims that “amount to ‘nothing significantly more’ than an instruction to apply the abstract idea…using some unspecified, generic computer” is not ‘enough’ to transform an abstract idea into a patent-eligible invention” (quoting Mayo, 566, U.S. at 77, 79)); Intellectual Ventures LLC v. Capital One Fin.Corp., 850 F. 3d 1332, 1342 (Fed. Cir. 2017) (“The claim language here provides only a result-oriented-solution with insufficient detail for how a computer accomplishes it”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See references cited on PTO form 892.
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/Ronald Laneau/
Primary Examiner, Art Unit 3715