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 .
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 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 method (i.e., a process) in claims 1-13 and a system (i.e., a machine) in claims 14-20.
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 method comprising:
detecting, by an electronic processor of a gaming machine in response to user input, a request to reconfigure a portion of a setting of a progressive jackpot while the progressive jackpot is in progress;
storing, by the electronic processor in a memory of the gaming machine, gaming data associated with use of the setting; and
enabling, by the electronic processor in response to storing the gaming data and while the progressive jackpot remains in progress, reconfiguration of the portion of the setting without requiring reconfiguration of an additional portion of the setting, wherein the portion of the setting comprises one or more of a contribution rate to the progressive jackpot or an override amount to the progressive jackpot.
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 observing a an input, evaluating if the input is directed to the modification of a game setting, and making a judgement to enact the same without modification of additional settings as well as Certain Methods of Organizing Human Activity including commercial interactions involving business relations and sales activities, and managing personal behavior including interactions between people including social activities and following rules or instructions because the claims set forth the interactions involving one or more parties in the context of implementing modification to game awards.
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 an electronic processor, a gaming machine, 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 devices such as 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 an electronic processor, a gaming machine, 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 [0023], [0030], [0039], [0049], [0058]-[0062]). 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 [0023], [0030], [0039], [0049], [0058]-[0062]). 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 2-20 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 an electronic processor, a gaming machine, 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.
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 May 4th, 2026 have been fully considered but they are not persuasive.
Commencing in the sub-section entitled “Step 2A, Prong One - The Independent Claims Do Not Recite a Judicial Exception” as presented on page 8, of the Applicant remarks the Applicant presents that the claim invention includes elements directed to the use of a processor and memory device and operations to control a gaming machine-memory and progressive-jackpot configuration state that cannot be practically performed as mental operation or pen-and-paper calculations.
Responsive to the preceding the Applicant’s arguments as best understood are focused on the proposed exclusion of the claimed invention from a Mental Process based on the position that modification of the progressive jackpot that is performed by a computer including the modification of the memory of the same and as such would not be performable by a human mind with the benefit of pen and paper. It is respectfully noted that the enumerated grouping of Mental Processes includes the performance of a mental process on a computer (See MPEP 2106.04(a)(2) Sub III.C) and as such, properties inherent to the execution of a process on a computer such as the use of a processor and modification of a memory would not in of itself be sufficient to support the proposition that a claimed invention was excluded from representing a Mental Process as proposed.
Continuing in the sub-section entitled “Step 2A, Prong Two - The Claims Integrate Any Alleged Abstract Concept Into a Practical Application” as presented on pages 9-11, of the Applicant remarks the Applicant presents that the claim invention integrates the recited abstract idea into a practical application by improving the operation of the gaming machine itself, through enabling the in-process modification of a jackpot contribution rate or override amount without losing information, account meters, game play history or requiring a longer machine downtime that may be associated with a full RAM clear and reconfiguration. The Applicant proposes that the improvement recite a specific manner of producing a technical result even where the recitation of the same is at a higher level and proposes that this interpretation is supported by the court’s decisions in DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245, 113 U.S.P.Q.2d 1097 (Fed. Cir. 2014) and McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016). Concluding this subsection the Applicant presents the rejections identification of the claim elements including “electronic processor”, “gaming machine” and “a memory” as not supporting the presence of a particular machine misconstrues the claimed invention which requires the recited hardware components to perform the recited in progress modification of jackpot elements rather than representing generic use of a processor and memory.
Responsive to the preceding applicant arguments as summarized above it is respectfully noted that the Applicant proposed improvement of enabling the in-process modification of a jackpot contribution rate or override amount without losing information, account meters, game play history or requiring a longer machine downtime that may be associated with a full RAM clear and reconfiguration, refences proposed properties that are not present in claim invention as a whole while dependent claims 2 and 15 respectively touch on the these functionalities, even in these instances these represent additional features of the claimed invention and do not reflect specific advantages tied to enabling the in process modification of jackpot contribution rate or override amount. Alternatively stated, the proposed advantages appear to be separate considerations based on operational decisions to preserve or reset game information that is not functionally impacted/limited by enabling in-process modification of a jackpot contribution rate or override amount and as such are not do not support an improvement in a technology as proposed.
Insomuch as the Applicant’s arguments may be understood to propose that the improvement in technology reflects an improvement in the rules governing the operation of the gaming machine, Applicant’s argument is not persuasive because the features Applicant identifies as the inventive concept are part of the abstract idea itself; as such, these features cannot constitute the “inventive concept.” See Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.”); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”).
Response to the Applicant’s remarks of this section directed to McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., it is noted that court relied upon a similar considerations as was discussed in Enfish, LLC v. Microsoft Corp., insomuch as the court looked for “an improvement in computer-related technology”. Wherein an "improvement in computer-related technology" is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of "rules" (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer. In McRO the court found that the claims were directed to an improvement in computer-related technology (allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that previously could only be produced by human animators), and thus did not recite a concept similar to previously identified abstract ideas. While the claims of the instant invention define a set of rules for game play, these rules do not improve the functionality of the computer by allowing computer performance of a function not previously performable by a computer in a manner similar to McRO. Proposed improvements to game operation rules or even improvements to the algorithms themselves that do not result in an improvement of the hardware which they are practiced on are not sufficient to improve the functionality of the computer but instead result in the mere operation or practice of these rules and algorithms on a computer in a manner specifically caution 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). Accordingly, the decision in McRO does not support the presence of patent eligible subject matter in the claimed invention as proposed.
The identification of the claim elements including “electronic processor”, “gaming machine” and “a memory” in the rejection reflects considerations of if the claimed invention supports the presence of a practical application through the incorporation of a particular machine and is an element in determining if claimed invention as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception.
Continuing in the sub-section entitled Step 2B - The Ordered Combination Recited by the Claims Constitutes Significantly More as presented on pages 11-12, of the Applicant remarks the Applicant presents that the analogous to considerations presented in BASCOM Global Internet Services v. AT&TMobility LLC, 827 F .3d 1341 (Fed. Cir. 2016) the claimed invention the claimed invention recites an unconventional arrangement and interaction of otherwise conventional elements including the processor memory, processors and operations of modifying portions of the setting relating to the progressive jackpot as respectively presented. The Applicant additionally presents that the office action has not established that the specific ordered combination has not been shown to be well-understood, routine, or conventional consistent with the guidance of Berkheimer v. HP, Inc. 881 F.3d 1360, 125 U.S.P.Q.2d 1649 (Fed Cir. 2018).
Responsive to the preceding remarks, 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).
Additionally, it is respectfully noted that the decision in Berkheimer v. HP, Inc, and April 19th 2018 USPTO memo concerning the same, focus on if the Additional Elements (i.e. non-abstract portions) of the claimed invention represent well-understood, routine, and conventional activity. Relating to the preceding the rejection of record properly identifies the non-abstract portions of the claimed invention, corresponding disclosure of these element in the Applicant’s specification, and the requirements thereof as set forth by 37 CFR 1.71 to support the factual determination that that the claimed additional elements of the claimed invention represent well-understood, routine, and conventional activity at the time of invention.
Insomuch as the Applicant’s arguments may be understood to propose that the abstract rules themselves has not been shown to be well-understood, routine, or conventional it is respectfully noted that the “‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”).
Continuing in the sub-section entitled An August 4, 2025 Memorandum Confirms the Proper Framework as presented on pages 12-13, of the Applicant remarks the Applicant presents that the Charles Kim memo restates the existing MPEP principles the need to evaluate claimed invention as a whole and recognize claims that provide a particular solution to a problem or a particular way to achieve a desired outcome and presents that the claimed invention provides a particular solution.
Responsive to the preceding and consistent with the Charles Kim memo and MPEP guidance the claimed invention is respectfully not understood to provide a particular solution to a technical problem for the reasons set forth above in response to the application sub-section entitled Step 2A, Prong Two - The Claims Integrate Any Alleged Abstract Concept Into a Practical Application.
The Applicant presented remarks as presented on pages 13-17 are reasonable persuasive in overcoming the rejection of claims as amended over the previously applied prior art reference of Baerlocher et al (US 7,666,094) and accordingly this rejection has been withdrawn.
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.
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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