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 .
DETAILED ACTION
Response to Amendment
Applicant’s submission of a response was received on 2/23/26.
In the response Applicant amended claim(s) 1, 11, 18.
Currently, claim(s) 1-20 is/are pending.
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.
In the instant application, claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Claim(s) 1-20 is/are drawn to at least one of the four statutory categories of invention (i.e. process, machine, manufacture, or composition).
Step 2A:
However, claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
For instance, regarding independent claim(s) 1, 11, 18,
Prong 1 analysis:
The limitations of “responsive to a second chance award opportunity activation event, activate a second chance award opportunity associated with a plurality of plays of a game, and responsive to an occurrence, after the activation, of a second chance award opportunity realization event associated with the activated second chance award opportunity: determine, based on a plurality of awards determined in association with the plurality of plays of the game, a second chance award” (claim 1), “responsive to a second chance award opportunity activation event, activate a second chance award opportunity associated with a plurality of plays of a game, responsive to another second chance award opportunity activation event, activate another second chance award opportunity associated with another plurality of plays of the game, and after any activations of any second chance award opportunities, responsive to an occurrence of a second chance award opportunity realization event: select at least one of the activated second chance award opportunities, and for each selected activated second chance award opportunity: determine, based on a plurality of awards determined from the plurality of plays of the game associated with that activated second chance award opportunity, a second chance award” (claim 11), “responsive to a second chance award opportunity activation event occurring in association with a plurality of plays of a first game, activate a second chance award opportunity associated with the first game, responsive to a second chance award opportunity activation event occurring in association with a plurality of plays of a different, second game, activate a second chance award opportunity associated with the second game, and after any activations of any second chance award opportunities and responsive to an occurrence of a second chance award opportunity realization event: select at least one of the activated second chance award opportunities, responsive to the activated second chance award opportunity associated with the first game being selected: determine, based on a plurality of awards determined from the plurality of plays of the first game, a second chance award, and responsive to the activated second chance award opportunity associated with the second game being selected: determine, based on a plurality of awards determined from the plurality of plays of the second game, another second chance award” (claim 18), are considered to fall within the certain methods of organizing human activity grouping (managing personal behavior, rules). The mere nominal recitation of generic computer elements does not take the claim out of the methods of organizing human activity grouping. Thus, the claim(s) recites an abstract idea.
Furthermore, dependent claims 2-10, 12-17, 19-20 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they are merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Prong 2 analysis:
The above-identified abstract idea is not integrated into a practical application under the 2019 PEG because the additional elements “a processor; and a memory device that stores a plurality of instructions; communicate data that results in a display, by a display device, of the determined award”, are generically recited computer elements that do not improve the functioning of a computer, or any other technology or technical field. Nor do these additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above is not integrated into a practical application under the 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under the 2019 PEG because the claimed method and system merely implements the above-identified abstract idea using rules (e.g., computer instructions) executed by a computer. The claimed elements are recited at a high level of generality, and amounts to mere data gathering and data transmission, which is a form of insignificant extra-solution activity. Each of the additional limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these 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. As such, the claim is directed to the abstract idea.
Step 2B:
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, in view of Berkheimer, the recited additional elements are considered as conventional activity. For instance, Acres (2020/0105093) and Hoffman (2010/0120503) teach an electronic gaming machine that notifies the player of the bonus award on a display screen (Acres, ¶¶0031, 0153; Hoffman, ¶¶0037, 0125).
In addition, with regards to the present claims, the courts have recognized the computer functions as well‐understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
For instance, regarding claims 1-20, each claim describes physical or software elements that provide a generic environment in which to carry out the abstract idea, which is similar to the conventional activity or as insignificant extra-solution activity of selecting information, based on types of information, for collection, analysis and display in EPG, gathering, receiving and transmitting data in Symantec, TLI, OIP Techs., buySAFE, and rules in In re Smith.
Therefore, claim(s) 1-20 is/are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Response to Arguments
Applicant's arguments filed 2/23/26 have been fully considered but they are not persuasive.
Re 35 U.S.C. §101 Rejection,
Applicant argues that the claims integrate the abstract idea into a practical application. Specifically, independent claims provide a solution that include persistent aspects carried over from one play to another play of a game and from the plays of the game to an award determination responsive to an occurrence of a second chance award opportunity realization event. Examiner respectfully disagrees. In fact, this arguments describe how a game is played. The Federal Circuit has treated rules for games as abstract. See, e.g., In re Smith, 815 F.3d 816 (Fed. Cir. 2016) (card game rules abstract); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014); In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018).
In addition, Applicant argues that the claims’ recited elements of “activating a second chance award opportunity...” and “tracking a quantity of occurrences of primary award opportunities…” provide the functionality of the gaming system changes during different periods of time and the gaming system may employ different average expected payback percentages at different points in time. This argument is not persuasive. As discussed above, the claimed elements describe game rules and fundamental economic practices (i.e., awards and payments). As such, they are considered to fall within certain methods of organizing human activity. Furthermore, independent claims tie the abstract rules to a gaming system comprising a processor and a memory device executing the claimed elements. There is no recited improvement to the functioning of the computer itself (e.g., no change to memory hierarchy, graphics pipeline, input handling, networking, or processor operation). The claims do not specify a particular technical data structure or algorithm that improves computer performance. The claimed elements yield different awards, not a computer-function improvement. Thus, the abstract rule is not integrated into a practical application under the 2019 PEG.
Applicant further seeks to compare the claims to those in DDR Holdings. The cases are not at all similar. In DDR, the claims were directed to a business method involving look and feel of a website. The current case involves a casino game. In DDR, the result overrode the usual sequence of events by keeping a user within the same webstore when he clicked on a hyperlink. In contrast, the present claims no not override any usual sequence of events and do not address problems unique to the Internet. Therefore, for the reasons as set forth above, the 101 rejection has been maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/JASON T YEN/Primary Examiner, Art Unit 3715
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