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
In light of Applicant's submission March 18, 2026, the Examiner has maintained and updated the 35 USC § 101 and 103 rejections.
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.
The claims herein are directed to a method and system which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes). Claim 1, 17, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:
Claims 1 and 20
receiving an identifier of an individual accessing the EGM for a gaming session, wherein the individual has an account associated therewith
determining, based on the identifier, that the individual made a non-gaming purchase before accessing the EGM and establishing the gaming session;
determining that a gaming-related condition has been met subsequent to the non- gaming purchase, the gaming related condition being associated with play of a wagering game by the individual during the gaming session;
applying a credit to the account associated with the individual based on determining during the gaming session that the gaming-related condition was met subsequent to the non-gaming purchase.
Claim 17
receiving an identifier of an individual accessing the EGM for a gaming session, wherein the individual has an account associated therewith
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;
transmitting an indication of the identifier of the non-gaming purchase; and
responsive to transmitting the indication of the identifier of the non-gaming purchase, receiving an indication of a gaming-related condition the gaming related condition being associated with pay of a wagering game, by the individual during the gaming session;
determining that the gaming-related condition was met subsequent to the non-gaming purchase during the gaming session
responsive to determining that the gaming-related condition has been met, a controlling during the gaming session, notification that the non-gaming purchase will be made final if a credit is applied to the account associated with the individual that made the non-gaming purchase;
transmitting an indication that the gaming-related condition was met subsequent to the non-gaming purchase.
The limitations of independent claims 1,17, and 20 as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations;) because the claims (in summary) disclose determining an individual made a purchase, determine a condition has been met, and applying a credit based on said determination. Accordingly, the claims recite an abstract idea This judicial exception is not integrated into a practical application. In particular the claims recite the additional elements of using a EGM, gaming controller, circuitry, memory electronic gaming machine, remote device, interface, and non-transitory computer readable medium. The aforementioned additional generic computing elements perform the steps of the claims at a high level of generality (i.e. As a generic medium performing generic computer function of determining, receiving, transmitting, responsive, and applying) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to
amount to significantly more than the judicial exception. The claims does not include additional elements that are sufficient to amount to significantly more than the judicial exception As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a using circuitry, gaming controller, EGM, interface, memory electronic gaming machine, remote device, and non-transitory computer readable medium amounts to no more than mere instruction to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The dependent claims 2-3, 5-16,18, 19, and 21, appear to merely further limit the abstract and as such, the analysis of dependent claims 1-3, 5-21 results in the claims “reciting” an abstract idea. The claims the claims do not recited additional elements that integrate the exception into a practical application the additional elements do not amount to an inventive concept (significantly more) other than the above-identified judicial exception (the abstract idea). Thus, based on the detailed analysis above, claims 1-3, 5-21 are not patent eligible.
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 (i.e., changing from AIA to pre-AIA ) 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, 5-8, 10, 11, 14-16, 18, 20, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rowe et al. (US 2005/0054439).
Claim 1 and 20: Rowe discloses a game controller for an electronic gaming machine (“EGM”), the game controller comprising ([0008]):
processing circuitry;([0110], processors) 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: ([0011], memory)
receiving an identifier of an individual accessing the EGM for a gaming session, wherein the individual has an account associated therewith ([0009] when a game player wants to play a game on a gaming machine and utilize the player tracking services available through the player tracking unit, a game player inserts a player tracking card, such as a magnetic striped card, into a card reader 24. After the magnetic striped card has been so inserted, the player tracking unit 107 may detect this event and receive certain identification information contained on the card. For example, a player's name, address, and player tracking account number encoded on the magnetic striped card may be received by the player tracking unit 107 (also see [0010 and 0011])
determining, based on the identifier, that the individual made a non-gaming purchase before accessing the EGM and establishing the gaming session; [0066] A player may participate in a number of activities at the gaming establishment of property 300 for which the player can earn loyalty points. For instance, loyalty points may be earned while playing a game of chance at pit games 337, while playing one of the gaming machines, or while making a food purchase, an entertainment purchase, a transportation purchase, a lodging purchase, a merchandise purchase or a service purchase at one of the other venues 338 at property 300, [0070] For instance, a player may commit five hundred loyalty points earned from a lodging purchase, stored on a loyalty program instrument, to activate a bonus feature on a gaming machine (the aforementioned establishes that non-gaming purchases happened before accessing the EGM and gaming session. Also see [0071] ) determining that a gaming-related condition has been met subsequent to the non- gaming purchase, the gaming-related condition being associated with play of a wagering game, by the individual during the gaming session ( [0056], e player, using input mechanisms 202, may make wagers on a number of games presented on the gaming machine and view the game outcomes on display 34. Based upon a manner in which the player participates in game play on the gaming machine 100, such as the amount wagered over a specific period of time, loyalty points may be awarded to the player. A rate at which the player accrues loyalty points may be adjusted according to the following parameters (without limitation thereto): 1) the time of the day, 2) the day of the week, 3) month of the year, 4) a total amount wagered, 5) an amount of time spent playing, 6) a game denomination, 7) a promotional event and 8) a game type..(also see [0057]))
applying a credit to the account associated with the individual based on determining, during the gaming session that the gaming-related condition has been was met subsequent to the non-gaming purchase.(see [0070] and [0093] the player may be transfer the awarded loyalty point to a player tracking account. After providing account information (e.g., by inserting a player tracking card), the player tracking points may be transferred to a player tracking account of the player directly on the gaming machine (see FIG. 5) . In other embodiments, the player may credit player tracking points or loyalty points, stored on a loyalty point instrument, to a player tracking account 1)
Claim 2: Rowe discloses the system of Claim 1, wherein determining that the gaming-related condition has been met includes receiving an indication from an electronic gaming machine (“EGM”) that the gaming- related condition has been met. (see [0070 and 0098])
Claim 3: Rowe discloses the game controller of Claim 2, wherein determining that the individual made the non-gaming purchase includes determining an identifier of the non-gaming purchase, and wherein determining that the gaming-related condition has been met includes receiving the identifier of the non-gaming purchase from the EGM. ([0066, 0087 and 0088])
Claim 5: Rowe discloses the game controller of Claim 1, wherein the gaming-related condition includes a user playing a wagering game within a window of time, and wherein determining that the gaming-related condition has been met includes: receiving an indication of a time that the user played the wagering game; and determining that the gaming-related condition has been met based on the time that the user played the wagering game being within the window of time. [0056] Claim 6: Rowe discloses the game controller of Claim 5, wherein determining that the individual made the non-gaming purchase includes determining a time that the individual made the non-gaming purchase, and wherein determining that the gaming-related condition has been met includes determining the window of time based on the time that the individual made the non-gaming purchase. [0056, 0066, 0088]
Claim 7: Rowe discloses the game controller of Claim 5, wherein the non-gaming purchase includes a purchase of a future product or future service, and wherein determining that the gaming-related condition has been met includes: receiving an indication of a time that the future product or future service was provided; and determining the window of time based on the time that the future product or future service was provided.[0066, 0070]
Claim 8: Rowe discloses the game controller of Claim 7, wherein the non-gaming purchase includes a purchase of a ticket for a casino show, and wherein the future service includes the casino show. [0050, 0066, 0070]
Claim 10: Rowe discloses the game controller of Claim 9, wherein the account associated with the individual includes a virtual wallet provided by a casino associated with the system. [0089 and 0093]
Claim 11: Rowe discloses the game controller of Claim 1, wherein determining that the individual made the non- gaming purchase includes subsequent to determining that the gaming-related condition has been met, determining that the non-gaming purchase is valid, and wherein applying the credit to the account associated with the individual includes applying the credit to the account based on determining that the non-gaming purchase is valid. [0072 and 0113]
Claim 14: Rowe discloses the game controller of Claim 1, the operations further including: providing an offer to the individual indicating the non-gaming purchase, the gaming-related condition, and the credit. [0070]
Claim 15: Rowe discloses the game controller of Claim 1, the operations further including: determining an amount of the credit based on the non-gaming purchase. ([0066)
Claim 16: Rowe discloses the game controller of Claim 1, the operations further including: determining an amount of the credit based on a gaming-related action performed to meet the gaming-related condition. ([0067])
Claim 18: Rowe discloses the EGM of Claim 17, wherein receiving the user input indicating the identifier of the non- gaming purchase includes scanning a code on a receipt of the non-gaming purchase. ([0064 and 0089])
Claim 21: Rowe discloses the game controller of claim 1, wherein determining that the individual made a non-gaming purchase comprises scanning a code on a receipt of the non-gaming purchase acquired by the individual subsequent to the non-gaming purchase. [0050, 0056, 0064, 0066, and 0070]
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 (i.e., changing from AIA to pre-AIA ) 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rowe et al. (US 2005/0054439) in view of Chien et al. (US 2001/0054003)
Claim 9: Rowe discloses the game controller of Claim 1, but does not explicitly disclose wherein determining that an individual made a non-gaming purchase includes applying a debit to the account associated with the individual, and wherein applying the credit to the account includes reducing the debit being applied to the account association with the individual.
However Chien discloses wherein determining that an individual made a non-gaming purchase includes applying a debit to the account associated with the individual, and wherein applying the credit to the account includes reducing the debit being applied to the account association with the individual. [0008 and 0026]
Both Rowe and Chien teach a game controller of loyalty rewards. It would have been obvious to a person of ordinary skill to use the credit/debit process of Chien before the effective filing date of the claimed invention credit/debit to be used in Rowe to help businesses develop and maintain participant loyalty and are used as marketing tools to develop new clientele. (see [0003] of Chien)
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rowe et al. (US 2005/0054439) and in view of Curtain et al (US 20150072762)
Claim 12: Rowe discloses the game controller of Claim 1, but does not explicitly disclose wherein determining that the individual made the non-gaming purchase includes prior to applying the credit to the account, determining that less than a threshold number of credits have been applied to the account in association with the non-gaming purchase, and wherein crediting the account associated with the individual includes crediting the account based on determining that less than the threshold number of credits have been applied to the account in association with the non-gaming purchase.
However Curtain discloses wherein determining that the individual made the non-gaming purchase includes prior to applying the credit to the account, determining that less than a threshold number of credits have been applied to the account in association with the non-gaming purchase, and wherein crediting the account associated with the individual includes crediting the account based on determining that less than the threshold number of credits have been applied to the account in association with the non-gaming purchase. (see for example [0037], which describes scenarios where a financial institution may provide a financial transaction device, such as a debit or credit card, with a specified credit limit (e.g., $1,000). This credit limit acts as a threshold that governs the maximum amount available for use in gaming and non-gaming environments. The patent further illustrates how winnings, such as a $1,000 jackpot, can be added to the existing credit, updating the financial transaction device to reflect the new total balance. This ensures that the applied credits do not exceed the predetermined threshold set by the financial institution)
Both Rowe and Curtain teach a game controller of casino gaming and player tracking. It would have been obvious to a person of ordinary skill to use the thresholds/credit of Curtain before the effective filing date of the claimed invention the thresholds/credit to be used in Rowe encourages the user to only spend or use what is available to the user.
Claim(s) 13 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rowe et al. (US 2005/0054439) in view of NPL – Microsoft Rewards refund and exchange policy Microsoft page 2 (dated December 10, 2023) Claim 13: Rowe discloses the game controller of Claim 1, the operations further including: transmitting an indication that the non-gaming purchase is final.
However Microsoft discloses the operations further including: transmitting an indication that the non-gaming purchase is final. (page 2)
Both Rowe and Microsoft teach a loyalty/reward system. It would have been obvious to a person of ordinary skill to use the transmitting loyalty/reward information system process of Microsoft before the effective filing date of the claimed invention for transmitting loyalty/reward information system to be used in Rowe in order to keep in accordance with applicable law. (page 2, Microsoft)
Claim 17: Rowe discloses an electronic gaming machine (“EGM”) comprising:
a display device; ([0056], gaming machine having a display)
a game controller comprising processing circuitry; [0056]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 [0011 and 0056]:
receiving an identifier of an individual accessing the EGM for a gaming session, wherein the individual has an account associated therewith ([0009] when a game player wants to play a game on a gaming machine and utilize the player tracking services available through the player tracking unit, a game player inserts a player tracking card, such as a magnetic striped card, into a card reader 24. After the magnetic striped card has been so inserted, the player tracking unit 107 may detect this event and receive certain identification information contained on the card. For example, a player's name, address, and player tracking account number encoded on the magnetic striped card may be received by the player tracking unit 107 (also see [0010 and 0011])
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; [0066] A player may participate in a number of activities at the gaming establishment of property 300 for which the player can earn loyalty points. For instance, loyalty points may be earned while playing a game of chance at pit games 337, while playing one of the gaming machines, or while making a food purchase, an entertainment purchase, a transportation purchase, a lodging purchase, a merchandise purchase or a service purchase at one of the other venues 338 at property 300, [0070] For instance, a player may commit five hundred loyalty points earned from a lodging purchase, stored on a loyalty program instrument, to activate a bonus feature on a gaming machine (the aforementioned establishes that non-gaming purchases happened before accessing the EGM and gaming session. Also see [0071] ) transmitting an indication of the identifier of the non-gaming purchase to a remote device; ([0095], In this case, the gaming machine may send a message to remote server storing the loyalty point account information and request that some amount of loyalty points be deducted from the player's account)
responsive to transmitting the indication of the identifier of the non-gaming purchase, receiving an indication of a gaming-related condition, the gaming-related condition being associated with play of a wagering game on the EGM by the individual during the gaming session; ([0070], In another embodiment, a player may redeem loyalty points stored on a loyalty point instrument to access a special bonus features or game play features on a gaming machine. For example, after the play has been issued a printed ticket with loyalty points during one activity, the player may initiate a game play session on a gaming machine by entering the printed ticket into a bill validator on the gaming machine. After a given ticket has been validated, as described below, some or all of the loyalty points stored on the printed ticket may be used to access a special bonus game or a special game play feature available on the gaming machine such as a chance to win a special jackpot. For instance, a player may commit five hundred loyalty points earned from a lodging purchase, stored on a loyalty program instrument, to activate a bonus feature on a gaming machine.)
determining that the gaming-related condition was met subsequent to the non-gaming purchase, during the gaming session; ([0070] a player may commit five hundred loyalty points earned from a lodging purchase, stored on a loyalty program instrument, to activate a bonus feature on a gaming machine.) and transmitting an indication that the gaming-related condition was met subsequent to the non-gaming purchase.[0070] but does not explicitly disclose responsive to determining that the gaming-related condition has been met, controlling a graphical user interface (“GUI”) to present, by the display device, a notification that the non-gaming purchase will be made final if a credit is applied to an account associated with an individual that made the non-gaming purchase; However Microsoft discloses responsive to determining that the gaming-related condition has been met, controlling during the gaming session a graphical user interface (“GUI”) to present, by the display device, a notification that the non-gaming purchase will be made final if a credit is applied to an account associated with an individual that made the non-gaming purchase;(Microsoft page 2)
Both Rowe and Microsoft teach a loyalty/reward system. It would have been obvious to a person of ordinary skill to use the transmitting loyalty/reward information system process of Microsoft before the effective filing date of the claimed invention for transmitting loyalty/reward information system to be used in Rowe in order to keep in accordance with applicable law. (page 2, Microsoft)
Claim(s)19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rowe et al. (US 2005/0054439) in view of Granville, iii (US 2013/0046607)
Claim 19: Rowe discloses the EGM of Claim 17, the operations further including:
responsive to determining that the gaming-related condition has been met, (see [0070 and 0098]) but does not explicitly disclose receiving user input acknowledging that the non-gaming purchase will be made final and requesting that a credit be applied to an account associated with an individual that made the non-gaming purchase. However Granville discloses receiving user input acknowledging that the non-gaming purchase will be made final and requesting that a credit be applied to an account associated with an individual that made the non-gaming purchase. [0303, 0304 and 0306]
Both Rowe and Granville teach an offer system. It would have been obvious to a person of ordinary skill to use input acknowledging process of Granville before the effective filing date of the claimed invention for input acknowledging system to be used in Rowe in order facilitate the redemption of loyalty currency. (abstract Granville)
Response to Arguments
Applicant's arguments filed March 18, 2026, have been fully considered but they are not persuasive.
The applicant argues the 103 rejection by stating, “ Application respectfully submits that input from a game player that has not provided any identification information is opposite to the features recited in the claims. Additionally, Rowe states that the player may accrue loyalty points while the game is being played. Again, to the contrary, Applicant respectfully submits that such teachings of Rowe do not teach, suggest or disclose the step of "determining, based on the identifier, that the individual made a non-gaming purchase before accessing the EGM and establishing the gaming session" as recited in claim 1. Therefore, Applicant respectfully submits that Rowe does not anticipate or render obvious the features recited in the claim 1.” The Examiner respectfully disagrees the limitation of receiving an identifier of an individual accessing the EGM for a gaming session, wherein the individual has an account associated therewith , the reference of Rowe states at ([0009] when a game player wants to play a game on a gaming machine and utilize the player tracking services available through the player tracking unit, a game player inserts a player tracking card, such as a magnetic striped card, into a card reader 24. After the magnetic striped card has been so inserted, the player tracking unit 107 may detect this event and receive certain identification information contained on the card. For example, a player's name, address, and player tracking account number encoded on the magnetic striped card may be received by the player tracking unit 107 (also see [0010 and 0011]) and the limitation of determining, based on the identifier, that the individual made a non-gaming purchase before accessing the EGM and establishing the gaming session; Rowe discloses [0066] A player may participate in a number of activities at the gaming establishment of property 300 for which the player can earn loyalty points. For instance, loyalty points may be earned while playing a game of chance at pit games 337, while playing one of the gaming machines, or while making a food purchase, an entertainment purchase, a transportation purchase, a lodging purchase, a merchandise purchase or a service purchase at one of the other venues 338 at property 300, [0070] For instance, a player may commit five hundred loyalty points earned from a lodging purchase, stored on a loyalty program instrument, to activate a bonus feature on a gaming machine (the aforementioned establishes that non-gaming purchases happened before accessing the egm and gaming session. Also see [0071] ) Thus based on the aforementioned cited paragraphs the reference of Rowe discloses the added limitations.
The applicant also argues that [0098] of Rowe is the opposite to the features recited in the claim, the Examiner respectfully disagrees the reference of Rowe based on the updated rejection above and throughout the reference clearly uses an identifier to track player’s play and purchases. It’s not relevant if the player is anonymous as long there is an identifier associated with the player for tracking purposes. Therefore, based on the updated rejection above, the 103 rejection is maintained.
The applicant argues in regards to the 101 rejection, that based on the amendments that the claims are not directed to certain methods of organizing human activity, the Examiner respectfully disagrees the applicant’s claims are directed to identifying an individual, determining that the individual previously made a non-gaming purchase, determining that the individual satisfied a wagering related promotional condition and applying a credit to the individual’s account. The aforementioned features falls within certain methods of organizing human activity, specifically commercial interactions that involve commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). Thus, it is appropriately deemed an abstract idea.
The applicant further argues the 101 rejection that that game controller is significantly more than a mere generic computer component, the Examiner respectfully disagrees per MPEP 2106.05(b) - It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions). If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim recites significantly more because the generic computer is 'specially programmed' (as in Alappat, now considered superseded) or is a 'particular machine' (as in Bilski), the examiner should look at whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24, 110 USPQ2d 1976, 1983-84 (2014). See In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994); In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008) The applicant’s recitation of game controller is not persuasive. As stated above merely programming a computer or controller to perform the steps of the abstract idea does not establish that the controller is technologically improved or used in unconventional manner. The claim recites the processing circuitry and memory at a high level of generality. It does recite any limitations that provide an improvement to the functioning of the computer, or to any other technology or technical field. The claimed functionality is merely the implementation of the abstract idea in a technological environment. (MPEP 2106.05(h)) The limitations describe the result that the controller is programmed to achieve and does not have limitations that are indicative of integration into a practical application. The gaming controller is merely used as tool to execute the rules of the promotional program and the claim does not have indications that the game controller is improved.
The applicant further argues the determining condition provides a technological solution that facilitates meaningful human to machine interaction, the Examiner respectfully disagrees the Examiner nor has the applicant cited where in the specification that discloses the asserted technological solution. Per MPEP 2106.05(a) - If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. 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. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. McRO, 837 F.3d at 1313-14, 120 USPQ2d at 1100-01. In contrast, the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016). Building a level of trust and/or usefulness does not integrate into a practical application. The asserted benefit is not an improvement to the EGM/computer, any other technology or technical field. The applicant further argues that the claims recite a particular machine or manufacture, the Examiner respectfully disagrees per MPEP 2106.05(b) (see above) the applicant’s EGM merely provides the environment in which the abstract idea is performed. It is noted that while the application of a judicial exception by or with a particular machine is an important clue, it is not a stand-alone test for eligibility. Id.
The applicant further argues the claims provide an improvement for the same reasons above the Examiner respectfully disagrees. As stated above the applicant has not cited anywhere in the specification that discloses a technical problem and the details of an unconventional technical solution. The claim does not improve the operation of the wagering game, EGM hardware, technology or technical field. Instead the claim merely changes what information is considered when deciding whether to provide a promotional credit. The claim merely processes business decisions in a technological environment. Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
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
The applicant’s claims do not have any limitations that indicative of integration into a practical application, thus the 35 U.S.C 101 rejection is maintained.
Applicant’s arguments with respect to claim(s) 1,3, and 5-21 are moot due to the updated rejection above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DARNELL A POUNCIL whose telephone number is (571)270-3509. The examiner can normally be reached Monday - Friday 10:00 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at (571) 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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