DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1, 7, 9, 14 and 20 are amended.
Claims 1 – 20 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/25/2025 has been 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.
This subject matter eligibility analysis follows the latest guidance for Patent Subject Matter Eligibility Guidance.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Claims 1 – 13 are drawn to a device and system.
Claims 14 – 20 are drawn to a non-transitory CRM.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter.
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Claims 1 -13 are exemplary because they require substantially the same operative limitations of the remaining claims (reproduced below.) Examiner has underlined the claim limitations which recite the abstract idea, discussed in detail in the paragraphs that follow.
1. An electronic gaming system comprising:
at least one memory with instructions stored thereon; and
at least one processor in communication with the at least one memory, wherein the instructions, when executed by the at least one processor, cause the at least one processor to:
receive an input from an electronic gaming device for a play of an electronic game at the electronic gaming device, wherein the electronic gaming device displays an indicator in a first state to indicate that the electronic gaming device is ineligible from presenting a bonus output, and wherein the electronic game is associated with a paytable;
determine a range of numbers based upon the input, wherein the range of numbers one of increases or decreases based upon different inputs;
determine that the electronic gaming device is eligible to present the bonus output for the play based upon a comparison of a randomly generated number to the range of numbers wherein determining whether the electronic gaming device is eligible to present the bonus output is a different determination from determining whether the electronic gaming device will present the bonus output;
in response to determining that the electronic gaming device is eligible to present the bonus output:
cause display of the indicator at the electronic gaming device to change from the first state to a second state to indicate that the electronic gaming device is eligible to present the bonus output for the play;
access a bonus paytable different from the paytable, wherein the bonus paytable comprises at least one bingo card parameter not included in the paytable associated with presenting the bonus output
compare a bingo card parameter for the play to the at least one bingo card parameter associated with presenting the bonus output in the bonus paytable; and
determine whether to cause the electronic gaming device to present the bonus output based upon the comparison.
The claims recite italicized limitations that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG, namely, Certain Method of Organizing Human Activity.
More specifically, under this grouping, the italicized limitations represent the managing of personal behavior or interactions between people (including social activities, teaching and following rules or instructions) namely in the present case the following of rules to determine when a game output should be presented . For example, the italicized limitations are directed towards the displaying of a state of an eligibility indicator upon a game display based upon a randomly generated number in comparison to a selected range of numbers and providing a bonus output to a user in reference to a paytable.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations as follow, (emphasis added): memory, processor, and electronic game device, a display for displaying information.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea. Therefore, since the additional limitations, individually or in combination, are indistinguishable from a computer used as a tool to perform the abstract idea, the analysis continues to Step 2B, below.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional and routine computer implementation and mere instructions for implementing the abstract idea on generic computing devices.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract idea. Applicant has claimed computer processor, display and electronic devices, memory, and random number generator. However, all of these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
As the Alice court cautioned, citing Flook, patent eligibility cannot depend simply on the draftsman’s art. Here, amending the claims with generic computing elements does not (in this Examiner’s opinion), confer eligibility.
Regarding the Berkheimer decision, Itkis et al. (US 2003/0104865) establishes that these additional elements are generic:
“Subsequently, in the step "DECREMENT UNIT's BALANCE" 123, PC 21, assuming the current balance 57 is sufficient, decrements a player's balance 57 by the amount of coins specified in the field 95 of request 94Rob to edit At this point, PC 21 determines the random outcome of player's bet 95 by executing the step "GENERATE RANDOM OUTCOME" 124 involving a generation of a pseudo random number with the help of a conventional software utility. If the generated random outcome results in winnings as determined in the test step 125, PC 21 increments a player's balance 57, by the amount won as specified in the pay table of the game stored in the memory of PC 21, in the step "INCREMENT PLAYER's BALANCE" 126. Otherwise, PC 21 directly proceeds to the step "FORM RESPONSE" 127. In the latter step, PC 21 forms data field 91 and the return address 33 of MPU 1 and increments the block sequence number 89. Subsequently, PC 21 computes digital signature 88 utilizing the encoding/decoding key 82 in the step "ENCODE RESPONSE" 129. Finally, PC 21 transmits the fully formed response 87 to MPU 1 via transceiver 16. The response 87 of UDK 2 is received by MPU 1 in the step "RECEIVE RESPONSE" 130 and is decoded in the step "DECODE RESPONSE" 132 with the help of key 82. Specifically, the random outcome of the game 91 is filtered out and is presented on touchscreen 3 in the step "DISPLAY OUTCOME" 132 shown in FIG. 16 illustrating a “display outcome" task. (paragraph 0062)
Slomiany et al. (US 2008/0254854) similarly establishes that these additional elements are generic:
“Each gaming machine 101-110 in the network 100 may have one or more of the typical gaming machine elements, such as (1) one or more video displays, (2) one or more input devices, perhaps inducing buttons and a touch-screen on the video display(s), (3) means to put money at stake, such as coin/bill/ ticket acceptors, credit- card readers, a module for accepting electronic funds transfers, etc., (4) means to pay out wins and balances, such as a coin hopper, a ticket printer, a module for sending electronic funds transfers, etc. In general, there are many different combinations of gaming-machine elements that are well known in the art, and each station may be constructed of these or other components without departing from the invention. (paragraph 0024)”
Therefore, these elements fail to supply additional elements that yield significantly more than the underlying abstract idea. 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 a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they merely recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit has said in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 103
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guinn (US 2016/0063817) in view of Harris (US 2015/0080118) in view of Colvin et al (US 2015/0011288) in view of Vancura (US 7,172,505)
As per claim 1, Guinn discloses:
at least one memory with instructions stored thereon; and (Guinn discloses memory with instructions stored thereon) (Guinn 0026)
at least one processor in communication with the at least one memory, wherein the instructions, when executed by the at least one processor, cause the at least one processor to: (Guinn discloses a processor in communication with the memory) (Guinn 0026)
receive an input from an electronic gaming device for a play of an electronic game at the electronic gaming device, wherein the electronic gaming device displays an indicator in a first state to indicate that the electronic gaming device is ineligible from presenting a bonus output, and wherein the electronic game is associated with a paytable; (Guinn discloses the displaying of a state displaying the of eligibility wherein the interface request the user to select an option to “remain eligible for progressive jackpot” (Guinn Fig 6B, 6C). Thus the game is in effect presenting the user with an indication that the game machine and/or player will not be eligible for a progressive in the next play unless they take a specific action.) (Guinn 0060)
in response to determining that the electronic gaming device is eligible to present the bonus output: cause display of the indicator at the electronic gaming device to change from the first state to a second state to indicate that the electronic gaming device is eligible to present the bonus output for the play; (Guinn discloses the displaying of an indication screen allowing the player to confirm changes to paytables that allow a player to remain eligible for progressive play) (Guinn 0061, 7A, 7B)
compare a bingo card parameter for the play to a plurality of bingo card parameters in a bonus paytable different from the paytable; and (Guinn discloses the comparison of bingo card parameter to a modified (i.e. different) paytable that is used to determine the game outcome) (Guinn 00079 – 0081)
determine whether to cause the electronic gaming device to present the bonus output based upon the comparison. (Guinn 00079 – 0081)
Guinn fails to disclose:
determine a range of numbers based upon the input, wherein the range of numbers one of increases or decreases based upon different inputs;
determine that the electronic gaming device is eligible to present the bonus output for the play based upon a comparison of a randomly generated number to the range of numbers;
access a bonus paytable different from the paytable, wherein the bonus paytable comprises at least one bingo card parameter not included in the paytable associated with presenting the bonus output wherein determining whether the electronic gaming device is eligible to present the bonus output is a different determination from determining whether the electronic gaming device will present the bonus output;
compare a bingo card parameter for the play to the at least one bingo card parameter associated with presenting the bonus output in the bonus paytable; and
In similar field of endeavor, Harris discloses the determination of eligibility based upon a selection of a random number with respect to a range of number wherein the range of numbers is determined based upon the amount wagered or bet by the user. (Harris 0149). The Examiner notes that in regards to Harris, Harris discloses specifically the determining an eligibility of a game machine to present a bonus output prior to the causing the game to present to the bonus output, such as upon or prior to each play of each electronic game machine (i.e. before the start of the primary game and thus the bonus game. “In this embodiment, upon or prior to each play of each electronic gaming machine, an electronic gaming machine selects a random number from a range of numbers and during each primary game, the electronic gaming machine allocates the first N numbers in the range, where N is the number of credits bet by the player in that primary game. At the end of the primary game, the randomly selected number is compared with the numbers allocated to the player and if a match occurs, one or more of such events or conditions occur. It should be appreciated that any suitable manner of causing a bonus event triggering condition to be satisfied, one or more bonus award ineligibility time periods of one or more bonus event component sequences to be initiated and/or concluded, one or more bonus award eligibility time periods of one or more bonus event component sequences to be initiated and/or concluded, and/or one or more players to be selected to be provided one or more bonus awards of one or more bonus event component sequences occur may be implemented in accordance with the gaming system and method disclosed herein.” (Examiner emphasis added).
It would be obvious to one of ordinary skill in the art, at the time of filing, to modify Guinn in view of Harris to utilize a known technique to improve similar devices in the same way to determine eligibility of a user and/or game machine based upon the amount that they wager when compared to a randomly generated number. This would be beneficial to the game establishment as they can control the profitability of the game machine by assigning different ranges of wagers such as small bets to low probabilities.
In a similar field of endeavor, wherein eligibility determinations are made Vancura teaches the use of at least two determinations to determine a players eligibility and a second determination to determine the presentation of the bonus game. Vancura specifically teaches “A multi-stage method qualifies a player for a bonus game. If two stages are used, the first has the player aligning a combination including at least one trigger symbol. The second stage uses the trigger symbols, reel symbols, other secondary mathematically related elements, or elements associated therewith, to qualify the player for the bonus game. The player interacts during the qualification process by providing input to the second stage.” (Vancura Abstract).
It would be obvious to one of ordinary skill in the art, at the time of filing, to modify Guinn and Harris in view of Vancura to utilize two different eligibility determinations wherein one determines if a device is eligible to present the bonus a separate determination that determines if the device will present the bonus game. This would be beneficial as Vancura discloses “ The second difficulty is that it is desirable to have the player occasionally (with more trigger symbols) play a bonus game of more value. For example, a bonus game in which the player qualified with 4 trigger symbols might be worth 3 times as much as a bonus game in which the player qualified with 3 trigger symbols, and so forth. Having the same bonus worth potentially different amounts (for example, depending on the number of initiating trigger symbols) helps hold a player's interest. However, practically speaking (because the trigger symbols also occupy space on the reels), the relative probability of the player entering the bonus game with 4 (or 5) triggers drops exponentially from that of 3 triggers.” (Vancura 2:29-42).
In a similar field of endeavor, wherein a bingo game is provided, Colvin discloses a system that offers a player a primary bingo game and a bonus bingo game wherein the bonus bingo game utilizes a paytable that is different from the primary bingo game. The bonus bingo paytable provided a player with win outcomes based upon different outcome combinations that include a bonus ball wherein the paytable used in the bonus bingo game pays double (Colvin 0251)
It would be obvious to one of ordinary skill in the art, at the time of filing, to modify Guinn in view of Colvin to utilize a known technique of modifying similar devices in the same way to by providing a different bingo paytable that is used for a bonus game. This would be beneficial as it would allow a game system to offer greater rewards to user when they achieve a bonus opportunity thus increasing their excitement to play the game.
As per claim 2, wherein the instructions further cause the at least one processor to cause display of the indicator at the electronic gaming device to change from the first state to the second state by transmitting a control instruction to the electronic gaming device. (Guinn discloses the displaying of a state displaying the of eligibility wherein the interface request the user to select an option to “remain eligible for progressive jackpot” (Guinn Fig 6B, 6C). Thus the game is in effect presenting the user with an indication that the game machine and/or player will not be eligible for a progressive in the next play unless they take a specific action.) (Guinn 0060)
As per claim 3, wherein the randomly generated number is generated by a random number generator (RNG). (Harris 0149)
As per claim 4, wherein the instructions further cause the at least one processor to receive the bingo card parameter from the electronic gaming device. (Guinn discloses the comparison of bingo card parameter to a modified (i.e. different) paytable that is used to determine the game outcome) (Guinn 00079 – 0081)
As per claim 5, wherein the instructions further cause the at least one processor to determine the bingo card parameter. (Guinn discloses the comparison of bingo card parameter to a modified (i.e. different) paytable that is used to determine the game outcome) (Guinn 00079 – 0081)
As per claim 6, wherein the bingo card parameter comprises at least one of a marked bingo card or a daubed bingo card. (Guinn Fig 9A, 9B)
As per claim 7, wherein the instructions further cause the at least one processor to: receive a second input from the electronic gaming device for a second play of the electronic game at the electronic gaming device; determine a second range of numbers based upon the second input; and determine that the electronic gaming device is ineligible to present the bonus output for the second play based upon a comparison of a second randomly generated number to the second range of numbers and utilize the paytable for the second play of the electronic game. (Combination of Guinn in view of Harris and Colvin, wherein Guinn discloses multiple successive game wherein a player may make a decision to “remain eligible for the progressive game” to thereby cause a new round of game play to select a second range of numbers as taught by Harris) (Guinn 0060 , 6A, 6B). Regarding the limitation of “utilize the paytable for the second play of the electronic game”, the Examiner notes that Colvin specifically discloses the utilization of two different paytables within the same game (i.e. enhanced paytable #1430 vs normal paytable #1432, Fig 14) upon matching a bonus ball (i.e. eligibility criteria)) (Colvin Fig 14).
As per claim 8, wherein the instructions further cause the at least one processor to cause display of the indicator to change from the second state to the first state to indicate that the electronic gaming device is ineligible from presenting the bonus output for the second play. (Guinn 0060 , 6A, 6B)
Independent claim(s) 9 and 14 is/are made obvious by the combination of Guinn, Harris, Vancura and Colvin based on the same analysis set forth for claim(s) 1, which are similar in claim scope.
Dependent claim(s) 10 and 16 is/are made obvious by the combination Guinn, Harris, Vancura and Colvin based on the same analysis set forth for claim(s) 3, which are similar in claim scope.
Dependent claim(s) 11 and 17 is/are made obvious by the combination of Guinn, Harris, Vancura and Colvin based on the same analysis set forth for claim(s) 4, which are similar in claim scope.
Dependent claim(s) 12 and 19 is/are made obvious by the combination of Guinn, Harris, Vancura and Colvin based on the same analysis set forth for claim(s) 6, which are similar in claim scope.
As per claim 13, wherein the at least one server performs the comparison. (Guinn Fig 5, 0028, 0041, 0043, 0044)
As per claim 15, wherein the instructions further cause the at least one processor to cause display of the indicator at the electronic gaming device to change from the first state to the second state by transmitting a control instruction to the electronic gaming device. (Guinn discloses the displaying of an indication screen allowing the player to confirm changes to paytables that allow a player to remain eligible for progressive play) (Guinn 0061, 7A, 7B)
Dependent claim(s) 18 is/are made obvious by the combination of Guinn, Harris, Vancura and Colvin based on the same analysis set forth for claim(s) 5, which are similar in claim scope.
Dependent claim(s) 20 is/are made obvious by the combination of Guinn, Harris, Vancura and Colvin based on the same analysis set forth for claim(s) 7, which are similar in claim scope.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 - 20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Please see above rejection in view of Vancura addressing the newly amended claim limitations.
Regarding the rejection of the claims under 35 U.S.C. 101, the Applicant refers to the specification at paragraph 0019 and alleges that the claim limitations are indicative of a practical application since they provide an "[i]mprovements to the functioning of a computer, or to any other technology or technical field. " MPEP §2106.05(a).
Here, paragraph [0019] of the present application explains that "EGMs may be configured to provide a variety of games, and player wagers may vary from one game to another as a result of game rules and/or configuration criteria specific to each game. To account for the availability of varying wager options, and to comply with Class II regulatory requirements, in such a cross- game environment, the progressive server may factor player wager amounts into a progressive jackpot determination." (Remarks page 9). The Examiner respectfully disagrees and notes the alleged improvement is not an improvement to the functioning of a computer or technical field but rather more akin to an improvement of a business problem as it relates to how to bring a wagering game into compliance with legal regulations or requirements.
The Examiner notes that the Applicant repeats previously made arguments in reference to paragraph 0075. Thus the Examiner copies the previous Response to arguments made in Office Action dated 9/8/2025 below)
Regarding the rejection of the claims under 35 U.S.C. 101, the Applicant merely recites a portion of the claim 1, references paragraph 0075 of the specification directed towards the change in color of a bingo card enabling a user to understand that they are eligible to participate in a jackpot determination and makes the allegation that “Accordingly, Applicant respectfully submits that the claims do not recite an abstract idea or, alternatively, even if the claims do recite an abstract idea (which Applicant does not concede), that any alleged abstract idea is integrated into a practical application. (Remarks pages 8 -9). The Examiner respectfully disagrees and notes that the changing of a display indicator such as color (Examiner notes the limitation of color is not even specified in claim 1) to enable a user to understand eligibility is not indicative of an integration into a practical application. Examiner notes a human utilizing pen and paper can make an indication of eligibility in two different color ink by mean of a pen. The use of a display to do so is merely being relied upon for conventional and generic display means or functions. The Examiner maintains the rejection.
Conclusion
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/RAW/Examiner, Art Unit 3715 3/7/2026
/KANG HU/Supervisory Patent Examiner, Art Unit 3715