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 .
Response to Amendment
Examiner acknowledges receipt of Applicant’s amendments and arguments filed 01/22/2026. The arguments set forth are addressed herein below.
New rejections are made under 35 USC 112(b) in view of amendments, see detailed analysis below.
Applicant’s IDS submission is acknowledged and provided herewith.
Claims 1-20 are now pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 10, and 12 recites that the electronic gaming machine "operating independent of the device." The metes and bounds of "operating independent" cannot be ascertained from the claim language. It is unclear whether "independent" requires (i) physical separation in distinct housings, (ii) execution by separate processors, (iii) operation on separate power supplies, (iv) operation under different control software, (v) operation without any shared electrical or data connection, or (vi) some combination thereof. The claims themselves recite a communication interface (and, in Claim 10, a second communication interface) between the claimed device and the master gaming controller of the electronic gaming machine, indicating that the two are not fully "independent" in any ordinary sense. Appropriate clarification is required.
Dependent claims 2-9, 11, and 13-20 inherit this discrepancy by nature of their dependencies.
Independent Claims 1, 10, and 12 each recite “increasing, independent of any amounts of funds modifying any balances of any gaming establishment accounts,…” The term "gaming establishment account" is not defined in the claims and its scope is unclear. The term could encompass (i) a casino's house/general ledger accounts, (ii) cashless wagering accounts maintained by the gaming establishment for players (e.g., front-money/safekeeping accounts), (iii) player tracking/loyalty accounts, (iv) cage accounts, or (v) all of the foregoing. Different constructions yield substantially different claim scope. Appropriate clarification is required.
Dependent claims 2-9, 11, and 13-20 inherit this discrepancy by nature of their dependencies.
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 to 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. Each of Claims 1 to 20 has been analyzed to determine whether it is directed to any judicial exceptions. The following diagram is an overview of the steps involved. The examiner follows the two step-analysis, as described in MPEP 2106 (available at https://www.uspto.gov/web/offices/pac/mpep/s2106.html).
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Step 1
Step 1 of the two step-analysis considers whether the claims fall into one of the four statutory categories of invention such as a process, machine, manufacture, or composition of matter. The instant invention claims a device in Claims 1-11, and a method of operating a device claims 12-20. As such, the claimed invention falls into the broad statutory categories of invention. However, claims that fall within one of the four statutory categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas.
Step 2A
Step 2A has been further divided into two prongs as shown in the following diagram. Under this step, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception and does the claims recite additional elements that integrate the judicial exception into a practical application. .
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Step 2A, Prong 1
Under prong 1 of step 2A, the examiner considers whether the claim recites an abstract idea, law of nature or natural phenomenon. The term “abstract idea” is not interpreted as a layperson might. Instead, the term “abstract idea” is interpreted as described in legal opinions by courts.
According to MPEP 2106.04(a):
the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – 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); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Here, representative claim 1 recites the following (with emphasis): “Claim 1 (currently amended): A device comprising:
a communication interface;
a processor; and
a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
capture, in association with a payment instrument associated with a financial institution account maintained by a financial institution, data associated with the financial institution account,
capture, in association with an input device, data associated with an amount of funds, and
responsive to a receipt of data associated with a financial institution confirmation of an availability of the amount of funds in the financial institution account, communicate, via the communication interface and to a master gaming controller of an electronic gaming machine operating independent of the device, at least part of the data associated with the amount of funds which results in the master gaming controller of the electronic gaming machine increasing, independent of any amounts of funds modifying any balances of any gaming establishment accounts, a credit balance of the electronic gaming machine based on the amount of funds, wherein the increase of the credit balance of the electronic gaming machine occurs independent of any physical currency received by the electronic gaming machine and independent of any cashless ticket vouchers received by the electronic gaming machine.”
Claim 10 (currently amended): A device comprising:
a first communication interface;
a second communication interface;
a card reader;
an input device;
a processor; and
a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
capture, via the card reader, data associated with a financial institution account from a financial institution card,
receive, via the input device, an input of an amount of funds to be transferred from the financial institution account, and
responsive to a communication, via the first communication interface and to a payment gateway in communication with a computing device of a financial institution that maintains the financial institution account, of data associated with at least the financial institution account and the amount of funds to be transferred from the financial institution account, and responsive to a receipt, via the first communication interface and from the payment gateway, of data associated with a financial institution confirmation of an availability of the amount of funds in the financial institution account, serially communicate, via the second communication interface and in accordance with a slot accounting system protocol, at least part of the data associated with the amount of funds to a master gaming controller of an electronic gaming machine operating independent of the device, wherein which, based on the amount of funds and independent of any amounts of funds modifying any balances of any gaming establishment accounts, the master gaming controller of the electronic gaming machine increases a credit balance of the electronic gaming machine.”
Claim 12 (currently amended): A method of operating a device, the method comprising:
capturing, by a processor and in association with a payment instrument associated with a financial institution account maintained by a financial institution, data associated with the financial institution account,
capturing, by the processor and in association with an input device, data associated with an amount of funds, and
responsive to a receipt of data associated with a financial institution confirmation of an availability of the amount of funds in the financial institution account, communicating, via a communication interface and to a master gaming controller of an electronic gaming machine operating independent of the device, at least part of the data associated with the amount of funds which results in the master gaming controller of the electronic gaming machine increasing, independent of any amounts of funds modifying any balances of any gaming establishment accounts, a credit balance of the electronic gaming machine based on the amount of funds, wherein the increase of the credit balance of the electronic gaming machine occurs independent of any physical currency received by the electronic gaming machine and independent of any cashless ticket vouchers received by the electronic gaming machine.”
The italicized portions of representative Claim 1, and similarly recited Claims and 10 and 12, generally encompass the abstract idea. Without the generic computer and electronic gaming structure, Independent Claim 1 recites: capturing financial-account data from a payment instrument; capturing an amount of funds; confirming with a financial institution that the funds are available; and causing a balance to be increased by that amount. These steps of the claims falls under abstract ideas such as, for example: a fundamental economic practice (authorizing and applying a charge against a payor's account) as discussed in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014) and a method of organizing human activity (managing a commercial transaction between a payor, a financial institution, and a balance-holder) as discussed in Bilski v. Kappos, 561 U.S. 593 (2010) and Alice Corp. v. CLS Bank — both of which are enumerated abstract-idea groupings under the 2019 Revised Patent Subject Matter Eligibility Guidance.
Further, the dependent Claims 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’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2
Under prong 2 of step 2A, the examiner considers whether the additional elements in the claims integrate the abstract idea into a practical application. To do so, the examiner looks to the following exemplary considerations, looking at the elements individually and in combination:
Improvements to the functioning of a computer, or to any other technology or technical field ( see MPEP 2106.05(a));
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition ;
Applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b));
Effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)); and/or
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda Memo).
Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
The above-identified abstract idea in each of independent Claims 1, 10, and 12 (and their respective dependent Claims) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in independent Claims 1, 10, and 12), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of: "a communication interface," "a processor," "a memory device," "a card reader," "an input device," "a first communication interface," "a second communication interface," and (in Claim 10) a "slot accounting system protocol" — are recited at a high level of generality and merely invoke generic computing components as tools to carry out the abstract idea. Here:
(i) The processor, memory, and communication interfaces perform conventional computing operations (receiving, storing, transmitting).
(ii) The card reader and input device are recited generically to perform their conventional functions of capturing card-borne data and operator input.
(iii) The master gaming controller and electronic gaming machine define the field of use (gaming). Limiting an abstract idea to a particular technological environment does not provide patent eligibility. Alice, 573 U.S. at 222–23.
(iv) The "slot accounting system protocol" (SAS) of Claim 10 is a well-known industry standard used routinely for financial communications between peripheral devices and EGMs
Furthermore, none of these elements reflects an improvement to the functioning of a computer, or any other technology or technical field. The claims do not recite any improvement to the functioning of a computer, an electronic gaming machine, or a payment network; they merely automate, on generic hardware, the long-standing economic practice of authorizing a charge and applying it to a balance. See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016).
Additionally, none of 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. For at least these reasons, the abstract idea identified above in independent Claims 1, 10, and 12 (and their respective dependent claims) is not integrated into a practical application under 2019 PEG.
Accordingly, independent Claims 1, 10, and 12 (and their respective dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
Finally, under step 2B, the examiner evaluates whether the additional elements:
add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present (MPEP 2106.05(d)); or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
Considered individually and as an ordered combination the additional elements as recited above do not amount to significantly more than the abstract idea. The recited electronic gaming machine components are each well-understood, routine, and conventional in the gaming art. These additional elements are generically claimed computer components which enable a game to be conducted by performing the basic functions of: (i) receiving, processing, and storing data, (ii) automating mental tasks and (iii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Additionally, a claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
Furthermore, taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1, 10, and 12 (and their dependent Claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to conduct a game with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment.
For at least the above reasons, Claims 1 to 20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
Dependent Claims are ineligible and lack a practical application.
Claims 2-9 inherit the same abstract idea as Claim 1.
Claim 11 inherit the same abstract idea as Claim 10.
Claims 13-20 inherit the same abstract idea as Claim 12.
The dependent claims recite further extra-solution activities and further define the abstract idea of the independent claims.
AIA Notice
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication 2021/0383647 A9 to Warner et al. (hereinafter Warner).
Regarding Claim 1 (currently amended), and similarly recited Claims 10 and 12,: Warner discloses a device comprising:
a communication interface (fig. 1, EFT terminal 108, ¶¶ 70);
a processor (fig. 1, EFT terminal 108, ¶¶ 70); and
a memory device that stores a plurality of instructions that, when executed by the processor (fig. 1, EFT terminal 108, ¶¶ 70), cause the processor to:
capture, in association with a payment instrument associated with a financial institution account maintained by a financial institution, data associated with the financial institution account (¶¶ 0131-0132, 0159 discloses the EFT terminal includes a Point-of-Sale (POS) that receives the fund transfer request from a patron at one of a display and keypad),
capture, in association with an input device, data associated with an amount of funds (¶¶ 0123-0127 discloses a terminal at which the patron enters the transaction amount), and
responsive to a receipt of data associated with a financial institution confirmation of an availability of the amount of funds in the financial institution account, communicate, via the communication interface and to a master gaming controller of an electronic gaming machine operating independent of the device, at least part of the data associated with the amount of funds which results in the master gaming controller of the electronic gaming machine increasing, …a credit balance of the electronic gaming machine based on the amount of funds (¶¶ 13-14 0212-0214 discloses upon receipt of approval from the financial network for a compliant transaction the gateway transmits the transaction information to the SAS for credit application to the EGM), independent of any amounts of funds modifying any balances of any gaming establishment accounts (fig. 1, ¶¶ 12-14 discloses a direct path between the patron financial account and the EGM credit balance via the gateway and the SAS, without intermediation through any cashless wagering account), wherein the increase of the credit balance of the electronic gaming machine occurs independent of any physical currency received by the electronic gaming machine and independent of any cashless ticket vouchers received by the electronic gaming machine (¶¶ 13-14, 57, 81-83 discloses credit card application is electronic via SAS with no insertion of bills, coins or vouchers; the SAS validates a voucher code that code is generated by the gateway in connection with the EFT transaction).
Regarding Claim 2 (original): Warner discloses the device of Claim 1, wherein the receipt of data associated with the financial institution confirmation of the availability of the amount of funds in the financial institution account occurs in association with a payment gateway (See Claim 1, discloses the gateway as the communication path with the financial network).
Regarding Claim 3, and similarly 11 and 14, (original): Warner discloses the device of Claim 1, wherein the memory device stores a plurality of further instructions that, when executed by the processor, cause the processor to impose a limit in association with the increase of the credit balance of the electronic gaming machine (¶¶ 13-14).
Regarding Claim 4 (original): Warner discloses the device of Claim 1, wherein the memory device stores a plurality of further instructions that, when executed by the processor, cause the processor to capture user authentication data associated with the financial institution account (¶¶ 122-124).
Regarding Claim 5 (original): Warner discloses the device of Claim 4, wherein the user authentication data associated with the financial institution account is captured in association with a financial institution personal identification number (¶¶ 122-125).
Regarding Claim 6 and 17, (original): Warner discloses the device of Claim 1, further comprising a housing and a card reader supported by the housing, wherein the payment instrument comprises a financial institution card and the data associated with the financial institution account is captured in association with the financial institution card (figs. 1-2, ¶¶ 70).
Regarding Claim 7 and 18 (original): Warner discloses the device of Claim 6, wherein the financial institution card comprises one of a debit card and a credit card (¶¶ 121-122).
Regarding Claim 8 and 19, (original): Warner discloses the device of Claim 1, wherein the memory device stores a plurality of further instructions that, when executed by the processor, cause the processor to cause a generation of a receipt in association with the increase of the credit balance of the electronic gaming machine ((¶¶ 39, 92).
Regarding Claim 9 and 20 (original): Warner discloses the device of Claim 1, wherein the input device is separate from a housing of the device (figs. 1-2).
Regarding Claim 13 (original): Warner discloses the method of Claim 12, wherein the receipt of data associated with the financial institution confirmation of the availability of the amount of funds in the financial institution account occurs in association with a payment gateway (figs. 1-2, ¶¶12-14).
Regarding Claim 15 (original): Warner discloses the method of Claim 12, further comprising capturing, by the processor, user authentication data associated with the financial institution account (figs. 1-2, ¶¶12-14).
Regarding Claim 16 (original): Warner discloses the method of Claim 15, wherein the user authentication data associated with the financial institution account is captured in association with a financial institution personal identification number (¶¶ 122-125).
Response to Arguments/Remarks
Applicant’s arguments, see pages 7-8 of the Response filed 01/22/2026, with respect to the rejection of Claims 1-20 under 35 U.S.C. 102(a)(2) as anticipated by U.S. Patent 5,038,022 to Lucero, have been fully considered and are persuasive in view of the amendments to Claims 1, 10, and 12 reciting the electronic gaming machine operates “independent of the device”. Lucero discloses an integrated card reader forming part of the gaming machine itself, rather than a separate device. Accordingly, the rejection over Lucero is withdrawn.
However, upon further consideration in light of the amendments, new grounds of rejection are made under 35 U.S.C. 112(b), 101, 102(a)(2) and 103 overly newly cited prior art.
Conclusion
Claims 1-20 are examined above.
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/S.N.H/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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