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 Arguments
Applicant's arguments filed 5/11/2026 have been fully considered but they are not persuasive.
Applicant argues that the amended claims recite features "that occur to facilitate actions during a gaming session at an EGM" and "facilitating a useful human-to-machine interaction," and that none of the steps can be reasonably construed as "certain methods of organizing human activity." Applicant further argues that the EGM with processing circuitry/memory executing the recited operations "cannot be interpreted as mere generic computer components," that verifying the non-gaming purchase "serves as a practical application, and a technical solution to facilitating a useful human-to-machine interaction," and that the claims represent "an improvement to another technology or technical field, in this case, the technology of electronic gaming." Applicant cites MPEP 2106.04(d), 2106.05(a)-(e), and cases such as DDR Holdings, Diehr, BASCOM, and Classen in support.
The Examiner respectfully disagrees. The claims remain directed to the abstract idea of organizing human activity (commercial interactions via loyalty/reward programs linking non-gaming purchases to gaming incentives). The amendments specify when and in what context the abstract process occurs (prior purchase + player account + award during identified gaming session on EGM), but this is still the abstract commercial process itself, merely limited to a particular field of use (casino EGM environment) and conventional data (player account). See MPEP 2106.05(h) (generally linking the exception to a technological environment does not integrate it into a practical application).
The "human-to-machine interaction" is the routine, conventional interaction between a player and an EGM (inserting/reading player card or identifier to start a tracked session and receiving awards/bonuses). This does not transform the abstract idea into a practical application or technical improvement. An EGM comprising generic processing circuitry and memory executing instructions to receive identifiers, verify data, and provide awards is precisely the type of generic computer component/tool performing routine functions that the Guidance and case law instruct do not integrate an abstract idea (MPEP 2106.05(f)). There is no recited improvement to the functioning of the EGM itself, its hardware, display, RNG, network communication, or any other technical aspect of electronic gaming machines. The claims do not solve a technical problem in electronic gaming; they solve a business/loyalty problem (how to reward prior non-gaming spend with gaming incentives) using conventional EGM capabilities.
Regarding the cited cases:
DDR Holdings involved a specific, unconventional modification to conventional Internet hyperlink protocol to produce a hybrid webpage—absent here.
Diehr involved a specific, unconventional arrangement integrating a thermocouple into a rubber-molding process to solve a technical curing problem—absent here (no modification to EGM hardware or process control).
BASCOM involved a non-conventional, non-generic arrangement of computer components for filtering Internet content—absent here (conventional player tracking + award logic on a standard EGM).
Classen involved a specific immunization step integrating data comparison into a concrete medical process that lowered disease risk—absent here (no analogous integration or technical effect beyond business reward delivery).
The claims apply the abstract idea in a meaningful way only in the sense of generally linking it to the EGM/gaming session environment. This is insufficient under MPEP 2106.05(e). The "account," "before accessing," and "during the gaming session" limitations are insignificant extra-solution activity or field-of-use restrictions that do not confer eligibility.
Furthermore, Applicant argues that Rowe does not teach or suggest "receiving user input indicating an identifier of an individual accessing the EGM for a gaming session, wherein the individual has an account associated therewith" and "receiving user input indicating an identifier of a non-gaming purchase, wherein the non-gaming purchase is made before accessing the EGM and establishing the gaming session," citing Rowe [0098] (anonymous play example starting with credit deposit without identification) and arguing that loyalty points accrue during play rather than based on prior non-gaming purchases delivered during a later identified session.
The Examiner respectfully disagrees. Rowe as a whole discloses a player tracking and loyalty system that supports identified play via player tracking cards/accounts as a core feature (multiple embodiments and figures describe card-based identified sessions, account-linked tracking of both gaming and non-gaming activity, and award delivery based on verified spend). The [0098] passage describes one optional mode (anonymous/triggered play); it does not negate or limit the identified/account-based embodiments that meet the claims. Non-gaming purchases (retail, dining, hotel, etc.) are tracked and associated with player accounts via identifiers that can be captured/verified prior to a particular EGM gaming session. When the player later accesses an EGM with their player/account identifier, the system verifies the prior non-gaming activity and can deliver the associated gaming award (bonuses, free spins, etc.) during that identified session. This anticipates the amended claim limitations. Anticipation does not require every embodiment or example to match; it requires the reference to teach every limitation of the claim, which Rowe does in its identified-player, account-linked, cross-activity tracking and award embodiments. The "before accessing the EGM" and "during the gaming session" timing is taught by the system's ability to record non-gaming spend independently (via POS/tickets/codes linked to accounts) and then apply awards when the player engages in an identified gaming session on an EGM. No new ground of rejection is introduced; the mapping has been updated to explicitly address the amendments while relying on the same reference and rationale.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claims are directed to the abstract idea of mental processes and/ or certain methods of organizing human activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter
More specifically, regarding Step 1, of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a machine, process, and/or an article of manufacturer, which are statutory categories of invention.
Step 2a – Prong 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
The claims recite an abstract idea falling under "certain methods of organizing human activity," specifically commercial interactions (sales activities, business relations, and managing transactions between people).
Core elements include receiving user input for a non-gaming purchase, verifying an identifier to distinguish it from gaming, and transmitting indications/instructions (e.g., Claims 1, 5, 12, 20).
This mirrors verifying and processing transactions, akin to USPTO Example 35 (ineligible Claim 1: method for verifying identity in ATM transactions) or routine recordkeeping/authorization in financial or retail contexts.
Dependent claims (e.g., 2-4 adding awards like free spins; 8-9 associating with casino services/discounts; 16-18 involving POS devices) refine the transaction management but do not escape the abstract category—they describe business rules for handling dual-purpose purchases on a gaming device. Distinguishing gaming/non-gaming purchases appears to address regulatory or operational needs in casinos (e.g., compliance with gaming laws while enabling retail), but it's framed as an abstract commercial process.
Step 2a – Prong 2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-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 - see Vanda Memo
-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)
-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
Limitations that are not indicative of integration into a practical application:
-Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea- see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h)
Claims 1-20 do not improve the functioning of a computer or other technology, effect a transformation of a particular article to a different state or thing, or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
The claims recite generic computer components (e.g., processing circuitry, memory, devices like POS terminals, electronic gaming machines) performing routine functions (receiving input, verifying data, transmitting instructions/indications, storing data). These are recited at a high level of generality and merely automate the abstract idea using conventional technology, without providing a technological solution to a technological problem. For example, verifying purchases and providing awards is not a technical improvement but a business one; the EGM or system is used as a tool to implement the commercial practice. There is no specific improvement to gaming machine hardware, network security, data processing efficiency, or user interface beyond the abstract reward logic. The casino environment is merely a field of use, not an integration. Thus, the claims are directed to the abstract idea itself.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The additional elements are the generic computer components (processing circuitry, memory, devices, transmission means) performing well-understood, routine, and conventional activities (data receipt, verification, storage, transmission). These are basic computer functions, as evidenced by the specification, which describes them without detail on non-conventional implementation. The combination of elements is conventional, merely linking the abstract idea to a gaming machine environment without inventive programming or hardware. No unconventional arrangement or specific technological advancement is claimed.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1-3, 5-18, 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rowe (US 2005/0054439 A1).
1. Rowe discloses an electronic gaming machine (“EGM”) configured to provide a wagering game, the EGM comprising: processing circuitry; and memory coupled to the processing circuitry and having instructions stored therein that are executable by the processing circuitry to cause the EGM to perform operations including (Fig. 2):
receiving user input indicating an identifier of an individual accessing the EGM for a gaming session, wherein the individual has an account associated therewith (player tracking card or other identifier provided to start an identified gaming session linked to the player's loyalty/account record for tracking and award purposes), [0020], [0024], [0026], [0059], [0070], (Fig. 2);
receiving user input indicating an identifier of a non-gaming purchase, wherein the non-gaming purchase is made before accessing the EGM and establishing the gaming session (input via card, ticket, code, or system association for non-gaming spend such as retail, dining, or hotel, which can occur and be recorded/associated with the player account prior to or independently of starting a particular gaming session on the EGM), [0020], [0024], [0026], [0059], [0070];
verifying the non-gaming purchase based on the identifier of the non-gaming purchase (validation/authentication through server checks at EGMs or terminals matching the identifier to stored records), [0059], [0064], (Figs. 6, 8, 9); and
responsive to verifying the non-gaming purchase, providing a gaming award associated with the wagering game during the gaming session based on the non-gaming purchase (awarding bonuses, free plays, credits, or spins on the EGM during the identified session based on verified prior or linked non-gaming spend associated with the player account), [0070], [0137].
2. Rowe discloses the EGM of Claim 1, wherein verifying the non-gaming purchase includes: transmitting an indication of the identifier of the non-gaming purchase to a system; and receiving instructions from the system to provide the gaming award (e.g., transmitting data to servers for validation and award issuance), [0059], [0064], (Fig. 6, 8, 9).
3. Rowe discloses the EGM of Claim 2, wherein the wagering game includes a slot game, wherein the gaming award includes a number of free spins, and wherein receiving the instructions from the system to provide the gaming award includes receiving an indication of the number of free spins (e.g., bonuses include free plays or spins on slots based on non-gaming activities), [0014], [0070], [0084], [0137].
5-7. Rowe discloses a system comprising: processing circuitry; and memory coupled to the processing circuitry and having instructions stored therein that are executable by the processing circuitry to cause the system to perform operations including: receiving user input indicating an identifier of an individual accessing a device for a gaming session, wherein the individual has an account associated therewith; receiving user input indicating an identifier of a non-gaming purchase from the device, wherein the non-gaming purchase is made before accessing the device and establishing the gaming session; verifying the non-gaming purchase based on the identifier of the non-gaming purchase; and responsive to verifying the non-gaming purchase, transmitting instructions to the device to provide an award associated with the non-gaming purchase during the gaming session as similarly discussed above.
8. Rowe discloses the system of Claim 5, wherein the non-gaming purchase is associated with a casino environment, wherein the device is associated with a service in the casino environment, and wherein the award is associated with the service, [0028], [0049].
9. Rowe discloses the system of Claim 8, wherein the award includes a discount associated with a price of the service, [0026], [0067], [0094].
10. Rowe discloses the system of Claim 5, wherein transmitting the instructions to the device includes transmitting instructions to the device to provide the award associated with the non-gaming purchase for a period of time [0059], [0064], (Fig. 6, 8, 9).
11. Rowe discloses the system of Claim 5, wherein verifying the non-gaming purchase includes verifying that the award associated with the non-gaming purchase has been used less than a threshold number of times [0072].
12. Rowe discloses the system of Claim 5, the operations further comprising: prior to receiving the identifier of the non-gaming purchase from the device, determining the identifier of the non-gaming purchase; and responsive to determining the identifier of the non-gaming purchase, storing the identifier of the non-gaming purchase [0066].
13. Rowe discloses the system of Claim 12, wherein verifying the non-gaming purchase includes determining that the identifier of the non-gaming purchase received from the device matches the identifier of the non-gaming purchase stored by the system (e.g., matching validation), [0059], [0064], (Fig. 6, 8, 9).
14. Rowe discloses the system of Claim 12, the operations further including: determining the award based on a product or service associated with the non-gaming purchase; and storing an indication of the award in association with the identifier of the non-gaming purchase (e.g., award determination and storage linked to activities), [0048]-[0049].
15. Rowe discloses the system of Claim 12, wherein the device is a second device, the operations further including: prior to receiving the identifier of the non-gaming purchase from the second device, transmitting the identifier to a first device associated with an individual that made the non-gaming purchase [0059], [0064], (Fig. 6, 8, 9).
16. Rowe discloses the system of Claim 12, wherein the device is a second device, wherein determining the identifier of the non-gaming purchase includes determining the identifier of the non-gaming purchase prior to the non-gaming purchase, and wherein a first device is a point of sale (“POS”) device that performed the non-gaming purchase, the operations further including: prior to receiving the identifier of the non-gaming purchase from the second device, transmitting instructions to the first device to provide the identifier of the non-gaming purchase to an individual that made the non-gaming purchase [0026], [0049], [0059], [0064], (Fig. 6, 8, 9).
17. Rowe discloses the system of Claim 12, wherein the device is a second device, the operations further comprising: receiving an indication from a first device that the non-gaming purchase has been made, the first device being a point of sale (“POS”) device that performed the non-gaming purchase [0026], [0049], [0059], [0064], (Fig. 6, 8, 9).
18. Rowe discloses the system of Claim 12, wherein the device is a second device, and wherein determining the identifier of the non-gaming purchase includes, prior to receiving the identifier of the non-gaming purchase from the second device, receiving the identifier from a first device that is a point of sale (“POS”) device configured to perform the non-gaming purchase [0026], [0049], [0059], [0064], (Fig. 6, 8, 9).
20. Rowe discloses a non-transitory computer readable medium having instructions stored therein that are executable by processing circuitry to cause the processing circuitry to perform operations comprising: receiving user input indicating an identifier of an individual accessing an electronic gaming machine (EGM) for a gaming session, wherein the individual has an account associated therewith; determining that a player has made a non-gaming purchase, wherein the non- gaming purchase is made before accessing the EGM and establishing the gaming session; and providing a gaming-related award to the player during the gaming session based on determining that the player has made the non-gaming purchase as similarly discussed above.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 4 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Rowe (US 2005/0054439 A1) in view of Fernandez (US 2022/0414701 A1).
4. Rowe discloses the EGM of Claim 2, but does not expressly disclose receiving user input acknowledging that the non-gaming purchase will be made final if the award is provided; and transmitting an indication of the user input to the system; however, such process is known as evidenced by Fernandez (US 2022/0414701 A1). It would have been obvious to a person of ordinary skilled in the art to implement and would yield predictable result of preventing fraud/cheating the system by returning item after award if provided, Rowe [0072].
19. Rowe discloses the system of Claim 5, wherein the device is a second device, the operations further comprising: subsequent to verifying the non-gaming purchase based on the identifier of the non-gaming purchase, transmitting an indication to a first device that the non-gaming purchase is final, the first device being a point of sale (“POS”) device that performed the non-gaming purchase as similarly discussed above.
Filing of New or Amended Claims
The examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See Wertheim, 541 F.2d at 263, 191 USPQ at 97 (“[T]he PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.”). However, when filing an amendment an applicant should show support in the original disclosure for new or amended claims. See MPEP § 714.02 and § 2163.06 (“Applicant should specifically point out the support for any amendments made to the disclosure.”). Please see MPEP 2163 (II) 3. (b)
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SENG H LIM whose telephone number is (571)270-3301. The examiner can normally be reached Monday-Friday (9-5).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Seng H Lim/Primary Examiner, Art Unit 3715
Prosecution Insights