DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
Examiner acknowledges receipt of amendment/arguments filed 03/18/2026. 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 1-2, 8-9, and 15-16 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 […]: in response to a player request to restore an […] game to a game state at an […] gaming device, receive, […], a session identifier associated with the game state of the […] game, the game state being one of a plurality of predefined possible game states of the […] game, the session identifier stored […] in association with the player in response to the player request […]; and cause […] to display the session identifier, wherein the session identifier, when input to the […] gaming device, causes the […] gaming device to restore the […] game to the game state. These limitations, individually and in combination, describe or set forth the abstract idea in claim 1 (and similarly in claims 8 and 15). 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 recite 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 mobile communication device comprising: a memory device; and a processor configured to execute instructions stored on the memory device, which when executed, cause the processor to at least: […] an electronic gaming device […], a session server, […]; and […] a display device associated with the mobile communication device […]. 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 generate 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).
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, 8, and 15 is rejected as shown above. Additionally, Claims 2-7, 9-14, and 16-20 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 2-7, 9-14, and 16-20 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 2-7, 9-14, and 16-20 also do not integrate the judicial exception into a practical application or amount to significantly more.
Response to Arguments
Applicant’s amendments/remarks, see response, filed 03/18/2026, with respect to the prior art rejections of claims 1-20 have been fully considered and are persuasive. The prior art rejection of claims 1-20 has been withdrawn.
Applicant's arguments filed 03/18/2026 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Regarding the rejections under 35 USC 101, Applicant states: “The Office Action alleges, at Pages 3-4, that the claims fall within the "Mental Process"
and "Methods of Organizing Human Activity" groupings of abstract ideas. Applicant respectfully disagrees. As stated in the August 4, 2025 USPTO memorandum (Kim, Charles. "Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101." August 4, 2025), "Examiners should be careful to distinguish claims that recite an exception (which require further eligibility analysis) from claims that merely involve an exception (which are eligible and do not require further eligibility analysis)." (Emphasis added.)
Applicant respectfully submits that, even if the current claim limitations were considered to involve an exception, these claim limitations do not recite any activity capable of being performed in the human mind or fundamental economic practices, at least because they recite electronic devices and computer-implemented steps that inherently must be performed by a computer (e.g., "in response to a player request to restore an electronic game to a game state at an electronic gaming device, receive, from a session server, a session identifier associated with the game state of the electronic game, the game state being one of a plurality of predefined possible game states of the electronic game, the session identifier stored in the session server in association with the player in response to the player request at the electronic gaming device," and "cause a display device associated with the mobile communication device to display the session identifier, wherein the session identifier, when input to the electronic gaming device, causes the electronic gaming device to restore the electronic game to the game state"). Accordingly, Applicant respectfully submits that the pending claims are patent-eligible under the first prong of Step 2A and requests the Section 101 rejection be withdrawn.”
In response, the Examiner respectfully disagrees. 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 player and game operator could practically perform steps as the identified abstract idea of saving and restoring a game state, exists outside the use of a processor.
Additionally, 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 the mobile communication device, the electronic gaming device, connected with the session server, 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.
Finally, 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 receiving a request, receive an identifier, display said identifier, and input said identifier to restore a game state, fall under the abstract idea grouping relating to certain methods of organizing human activity (e.g., 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 requesting/maintaining/restoring a game state.
Regarding the rejections under 35 USC 101, Applicant states: “One path to establishing a practical application is to show an improvement to another
technology. See MPEP 2106.04(d)(1). Here, the pending claims are drawn to a practical application that applies any alleged abstract idea in a manner that imposes a meaningful limit on the alleged abstract idea. For example, the claims recite a number of additional elements, which are used in the steps recited in the independent claims, and these recitations extend well beyond the scope of any alleged abstract idea. The claims are clearly more than a drafting effort designed to monopolize any alleged abstract idea. The present claims do not cover the general concept of game instructions being performed on a machine. Rather, the claims are drawn to a practical application performed on a particular gaming system that does not monopolize all rule-based games being performed on a gaming system.
For example, the features recited in Claim 1 permit restoration of a game based on a session identifier. Claim 1 therefore provides a practical application in that security is improved. For example, as described in the Specification at paragraph [0141], security is improved through the use of a unique session identifier. In some cases, the session identifier may be verified or validated to ensure that the session identifier has not been re-used and/or that the session identifier has not been used more than an allowed number of times.”
In response, the Examiner respectfully disagrees. With regard to the argument that the claims are patent-eligible because they do not cover all methods of rule-based games being performed on a gaming system, the Examiner respectfully disagrees. Questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo, as explained by the Federal Circuit in OIP and Sequenom. Moreover, while a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible. Additionally, the purported improvement to security involving verification or validation as discussed in the specification are not recited in the claims.
Regarding the rejections under 35 USC 101, Applicant states: “Based on the claim recitations discussed above, the present claims also satisfy Step 2B of
the 2019 PEG. There is no indication in the Office Action that it was well-understood, routine, or conventional to, for example, "in response to a player request to restore an electronic game to a game state at an electronic gaming device, receive, from a session server, a session identifier associated with the game state of the electronic game, the game state being one of a plurality of predefined possible game states of the electronic game, the session identifier stored in the session server in association with the player in response to the player request at the electronic gaming device," and "cause a display device associated with the mobile communication device to display the session identifier, wherein the session identifier, when input to the electronic gaming device, causes the electronic gaming device to restore the electronic game to the game state," as recited in Claim 1. The fact that the pending claims overcome the cited art for the reasons described below strengthens the conclusion that these steps are not well understood, routine, and conventional.”
In response, the Examiner respectfully disagrees. "[L]ack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional activities. Because they are separate and distinct requirements from eligibility, patentability of claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101". (MPEP 2106.05(I)). Therefore, as shown above, the claims do not integrate the judicial exception into a practical application or amount to significantly more.
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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/CHASE E LEICHLITER/Primary Examiner, Art Unit 3715
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