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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 12th, 2026 has 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 1-5, 8-12, and 15-18 are rejected under 35 U.S.C. 101 because the claimed invention as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As summarized in MPEP § 2106, subject matter eligibility is determined based on a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant application includes claims concerning a sever (i.e., a machine) in claims 1-5, a method (i.e., a process) in claims 8-12 and a non-transitory computer readable storage medium (i.e. a manufacture) in claim 15-18.
In Prong 1 of Step 2A, it must be determined whether the claimed invention recites an Abstract Idea, Law of Nature or a Natural Phenomenon.
In particular exemplary presented claim 1 includes the following underlined claim elements:
1. A server computer, comprising:
a random number generator;
a processor; and
a memory which stores instructions;
wherein execution of the instructions by the processor causes the processor to generate a game outcome based on the random number generator, award a quantity of games based on a base quantity of trigger symbols in the game outcome multiplied by a multiplier depicted by one of the trigger sysbols, and cause a client computer to:
display first symbols of the game outcome at display positions of the client computer;
present a first symbols award in response to the first symbols at the display positions corresponding to any of a plurality of first winning symbol combinations;
for each game of the quantity of games,
update one or more second symbols at the display positions of the client computer; and
present a second symbols award in response to the second symbols at the display positions corresponding to any of a plurality of second winning symbol combinations:
present a first portion of a wild symbol awarding animation in which a single wild symbol is positioned in a first display position of the display positions and an animated object moves toward a second display position of the display positions;
present a second portion of the wild symbol awarding animation in which the animated object moves to the second display position and replaces one of the second symbols with a multiple wild symbol, wherein the multiple wild symbol is first added to the second display position and is then divided into a plurality of additional single wild symbols, with one of the plurality of additional single wild symbols remaining at the second display position, and at least another one of the plurality of additional single wild symbols being added to at least a third display position that is randomly selected from among display positions not occupied by a wild symbol; and
present the second symbols award based on the wild symbols.
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes including observation, evaluation, and judgement because the claims are directed to series of steps for determining and presenting a game state as well as Certain Methods of Organizing Human Activity including commercial or legal activities involving legal obligations, sales activities, business relations and managing personal behavior involving interactions between people including social activities and following rules or instructions because the claims set forth the steps for presenting game play and game outcomes.
As the exemplary claim recites an Abstract Idea, Law of Nature or a Natural Phenomenon it is further considered under Prong 2 of Step 2A to determine if the claim recites additional elements that would integrate the judicial exception into a practical application. Wherein the practical applications are set forth by MPEP §2106.05(a-c,e) are broadly directed to: the improvement in technology, use of a particular machine and applying or using the judicial exception in a meaningful way beyond generally linking the use thereof to a technology environment. Limitations that explicitly do not support the integration of the judicial exception in to a practical application are defined by MPEP 2106.05(f-h) and include merely using a computer to implement the abstract idea, insignificant extra solution activity, and generally linking the use of the judicial exception to a particular technology environment or field of use.
With respect to the above the claimed invention is not integrated into a practical application because it does not meet the criteria of MPEP §2106.05(a-c,e) and although it is performed on a server computer, a client computer, a processor, and a memory it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonably include other network connected devices such as slot machines, arcade amusement devices, generic computers smart phones, game consoles, and the like. Accordingly, the claims limitations are not indicative of the integration of the identified judicial exception into a practical application, and the consideration of patent eligibility continues to step 2B.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional element(s) or combination of elements in the claim(s) other than the abstract idea(s) per se including a server computer, a client computer, a processor, and a memory amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structures that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry per the applicant’s description (Applicant’s specification Paragraphs [0170], [0175]-[0176], [0188], [0192], [0235]). Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Accordingly, as presented the claimed invention when considered as a whole amounts to the mere instructions to implement an abstract idea [i.e. software or equivalent process steps] on a generic computer [i.e. controller or processor] without causing the improvement of the generic computer or another technology field.
The applicant’s specification is further noted as supporting the above rejection wherein neither the abstract idea nor the associated generic computer structure as claimed are disclosed as improving another technological field, improvements to the function of the computer itself, or meaningfully linking the use of an abstract idea to a particular technological environment (Applicant’s specification Paragraphs [0170], [0175]-[0176], [0188], [0192], [0235]). In particular the applicant’s specification only contains computing elements which are conventional and generally widely known in the field of the invention described, and accordingly their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art per the requirements of 37 CFR 1.71. Were these elements of the applicant’s invention to be presented in the future as non-conventional and non-generic involvement of a computing structure, such would stand at odds with the disclosure of the applicant's invention as found in their specification as originally filed.
“[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301). In this case, the claims recite a generic computer implementation of the covered abstract idea.
The remaining presented claims 2-5, 8-12, and 15-18 incorporate substantially similar abstract concepts as noted with respect to the exemplary claim 1, while the additional elements recited by the additional claims including one or more of a server computer, a client computer, a hardware random number generator, a processor, and a memory and a ticket as respectively presented in certain claims that when considered both individually and as a whole in the respective combinations of each of the additional claims are not sufficient to support patent eligibility under prong 2 of step 2A or step 2B because they each present substantially similar abstract concepts as noted with reflection to exemplary claim 1 above and accordingly for the same reasons set forth above with respect to the exemplary claim 1 are similarly directed to or otherwise include abstract ideas.
While the claimed invention is noted as previously incorporating a “hardware random number generator” the claimed invention does not explicitly utilized random numbers as presented and accordingly this element is understood to represent insignificant extra solution activity to the recited judicial exception as described by MPEP 2106.05(g).
Therefore, the listed claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed June 12th, 2026 have been fully considered but they are not persuasive.
Commencing on page 10, of the Applicant’s above dated remarks, the Applicant presents that the obvious type double patenting rejection involving US Patent 11,837,056 has been overcome based on the presented claim amendments.
Responsive to the preceding, and following review of the Applicant presented amendments, the double patenting rejection involving US Patent 11,837,056 has been withdrawn.
Continuing on pages 10-14, of the Applicant’s above dated remarks, the Applicant presents that the rejection of claims under 35 USC 101 as being directed to a judicial exception without significantly more is traversed because:
i.) the invention recites a specific technical improvement involving the use of specific components to provide game outcome presentation that are proposed as not falling under a Mental Process because these limitations cannot be practically performed in the human mind and would not fall under Organizing Human Activity because the claimed invention concerns the generation and evaluation of game symbols on a display not commercial or legal interactions, interpersonal activity or human behavior management (Remarks Page 11);
ii. That the claimed invention when considered as an ordered combination, incorporates a practical application through improving technology by displaying a game award and animation sequence that are proposed as being supported by the court’s decisions in BASCOM and ENFISH as well as USPTO SME examples, 21, 23, 34, & 37. (Remarks Pages 11-14); and
iii. That the claims as amended and incorporate features including a first-positioned single wild symbol, a separately positioned second-position multiple wild symbol, division of that multiple wild symbol into additional single wild symbols, retention of one such additional single wild symbol at the second display position, and random placement of at least another such additional single wild symbol at a third display position not occupied by a wild symbol that are proposed as not being taught by the previously applied prior art references of Randall & Schultz, when considered individually or in combination. (Remarks Pages 14-16)
Responsive to the preceding the following is noted in the corresponding respective order and enumeration to the Applicant’s arguments as summarized herein above:
i.a) The claimed invention is directed to the court enumerated abstract idea of Mental Processes including observation, evaluation, and judgement because the claims are directed to series of steps for determining and presenting a game state and further because the court has recognized that similar inventions similar inventions fall under this enumerated grouping in Planet Bingo, LLC v VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014). While the claimed invention utilizes a computer to perform the elements presented therein, the mere performance of an invention alone is not sufficient to exclude an invention from falling under this enumerated grouping of abstract idea as per MPEP 2106.04(a)(2) Sub. III.C.
The claimed invention is additionally directed to the court enumerated abstract idea of Certain Methods of Organizing Human Activity including commercial or legal activities involving legal obligations, sales activities, business relations and managing personal behavior involving interactions between people including social activities and following rules or instructions because the claims set forth the steps for presenting game play and game outcomes and further because the court has recognized that similar inventions similar inventions fall under this enumerated grouping in In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016)
ii.a) The decision in Enfish, LLC v. Microsoft Corp. explicitly presents, “In this case, however, the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity…Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table” (emphasis added). Accordingly, the enhanced functionality that is referenced in Enfish is fairly understood to describe the functionality of the computer itself and a specific improvement to the way computers operate but would specifically not support other tasks for which a computer is used in its ordinary capacity. In the instant application the plain focus of the claim is on an improved algorithm and rules for determining a game state for which a computer is utilized in its ordinary capacity to enact and accordingly the claimed invention does not meet the eligibility criteria as discussed in Enfish, LLC v. Microsoft Corp. as presented.
In BASCOM Global Internet Services v. AT&TMobility LLC, the court agreed that the additional elements were generic computer, network, and Internet components that did not amount to significantly more when considered individually, but explained that the district court erred by failing to recognize that when combined, an inventive concept may be found in the non-conventional and non-generic arrangement of the additional elements. Specifically, when considered as an ordered combination the court identified the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user as representing a non-conventional and non-generic arrangement of the additional elements wherein such merged the benefits of remote based filtering tools and personal based filtering tools to create a unique beneficial arrangement that was not separately available with either of these known arrangements for filter tools previously. With relation to the preceding the presented arguments do not identify how the claimed invention when considered as an ordered combination provides significantly more than a conventional or generic arrangement of known hardware executing algorithm or how such provide for a unique beneficial arrangement that was not separately available with the claimed elements previously and in a manner that would separate the claimed invention from the specific arrangement as cautioned against in Alice, “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301).
While the Applicant cited USPTO SME examples, 21, 23, 34, & 37, are noted they are not specifically analogous to the claimed invention and would not support the broader proposition that the visual presentation of game outcome would be sufficient to support the presence of patent eligible subject matter as proposed.
iii.a) The rejection of claims under the previously applied prior art references of Randall & Schultz is withdrawn in view of the Applicant presented amendments and arguments concerning the same.
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E MOSSER whose telephone number is (571)272-4451. The examiner can normally be reached M-F 6:45-3:45.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/ Primary Examiner, Art Unit 3715
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