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 .
Applicant’s amendments dated 4/14/26 are hereby 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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-16 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being, and/or the rules of a game.
In regard to Claims 1 and 9, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or claim the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming:
[a] method of [playing a game], the method comprising:
displaying […] a value of a progressive award,
responsive to an occurrence of a progressive award increment event, displaying […] an increase to the value of the progressive award,
randomly determining […] whether to associate an occurrence of a progressive award triggering event with an occurrence of a progressive award current value retention event, and
responsive to the occurrence of the progressive award triggering event being randomly associated with the occurrence of the progressive award current value retention event:
displaying […] a win of a currently displayed value of the progressive award, and
responsive to another occurrence of the progressive award increment event, displaying […] an increase to the currently displayed value of the progressive award which was displayed as being won, wherein the progressive award triggering event is associated with the occurrence of the progressive award current value retention event independent of any value of the progressive award and independent of any prior occurrences of the progressive award triggering event.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being and/or the rules of a game.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., a gaming system, a display device, and/or embodying Applicant’s abstract idea as computer software being executed on a computer processor, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., a gaming system, a display device, and/or embodying Applicant’s abstract idea as computer software being executed on a computer processor, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F3 and F4A-C in Applicant’s PGPUB and text regarding same, and, e.g., p76 and 161.
Response to Arguments
Applicant argues in its Remarks in regard to the rejections made under 35 USC 101 that it has not claimed an abstract idea that can be performed mentally because it claims a random number generator. Applicant’s argument is not persuasive because the claimed “random number generator” is not identified in the 101 rejection made supra, as being part of the alleged abstract idea. Instead, it is identified as an element being claimed in addition to Applicant’s abstract idea in terms of being part of Applicant’s software embodiment of its abstract idea, as disclosed at, e.g., p161 in Applicant’s PGPUB. Furthermore, generating random indicia has been held by the CAFC to be patent ineligible subject matter in, e.g., In re: Marco Guldenaar Holding.
Applicant further argues that its claimed invention is analogous to that of DDR Holdings. Applicant’s argument is not persuasive because Applicant’s invention does not concern anything analogous to systems and methods of generating a composite web page that combines certain visual elements of a “host” website with content of a third-party merchant. Instead, Applicant’s claimed invention is more closely analogous to, e.g., In re: Smith, Savvy Dog Systems (non-precedential), and In re: Marco Guldenaar, in terms of claiming the rules of game and, thereby, directed to an abstract idea under the Mayo test.
Applicant further argues that it has claimed patent eligible subject matter by increasing human engagement. Such an improvement, however, is not patent eligible under the Mayo test:
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USAA v. PNC Bank, slip. op., page 9.
For these reasons the rejections made under 35 USC 101 are 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 extension fee 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 Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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