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
This is in response to the amendments filed on 4/14/26. Claims 1, 10, and 19 have been amended. Claims 1 – 20 are pending in the current application.
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 non-statutory subject matter.
Step 1: It must be determined whether the invention falls in one of the four statutory categories of invention. Claims 1 – 9, 19, and 20 are directed towards a system and machine, (machine), and claims 10 – 18 are directed towards a method, (process), which are statutory categories of invention.
Step 2a:
Prong 1: It must be determined whether the invention is directed to judicially recognized exception. Claim 1 is analyzed below with limitations indicating recitations of an abstract idea.
A system, comprising: a processor; and memory coupled with the processor and storing instructions thereon that, when executed by the processor, cause the processor to: receive an input at the processor indicating a user selection of a primary game from a group of games; execute, with the processor, the primary game; during execution of the primary game by the processor, determine, with the processor, that a player of the primary game has earned at least two upgrade symbols for at least one category of symbol types generated by the primary game; store, in the memory, information indicating that the player has earned the at least two upgrade symbols and is entitled to access a player performance feature in an event that a skill- based bonus game is activated; determine, with the processor, that the player has activated the skill-based bonus game during execution of the primary game; execute, with the processor, the skill-based bonus game; and during execution of the skill-based bonus game, provide the player with an ability to access the player performance feature during execution of the skill-based bonus game.
The abstract idea is defined by the underlined portions exemplary claim 1, with substantially similar features found in claims 10 and 19. Dependent claims 2 – 9 and 11 – 18, and 20 further define the abstract idea or relate to the implementation of the abstract idea. The abstract idea is defined in at least the following grouping below:
Certain methods of organizing human activity (rules for conducting a game)
Mental processes (observation, evaluation, judgment)
The claims are directed towards an abstract idea of rules for conducting a game which falls into the category of organizing human activity, (See MPEP 2106/04(a)(2)(II)(C)). More specifically, the claimed invention recites a gaming system comprising a primary game with gaming symbols and a skill-based bonus game, wherein the gaming provides a primary and possibly a bonus game to a player, wherein the game represents the exchange of consideration based on probabilities created during the dealing and displaying of randomly displayed symbol outcomes. Controlling a game that allows a player to participate represents rules for conducting a game. (See Alice Corp. v. CLS Bank).
The claims are also directed towards a series of steps which can practically be performed by one or more human, which fall into the category of mental processes, (See MPEP 2106.04(a)(2)(III)). More specifically, the claimed invention recites a game, wherein the claims require displaying game symbols and determining results of plays of a game. The claims recite instructions for controlling a game with these features. Here, a human can observe the displaying of game symbols and determine an outcome, wherein based on the state of the game with respect to upgrade symbols and a bonus game, a player can observe and determine that an upgrade symbol and a bonus game has been earned and triggered. Therefore, since the claimed invention can practically be performed in the human mind, it represents an ineligible abstract mental process.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
The claims recite a generic processor and memory along with instructions that generate and present a game to a player and determine the result of plays of the game, which is viewed as no more than instructions to implement a judicial exception.
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.
Step 2b: It must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception.
The claim language does recite a processor, memory and game symbols, however, viewed as a whole, these additional elements are indistinguishable from conventional computing elements known in the art, ( See US 6186894 B1 at col. 5, lines 25-38 regarding video slot reels including displaying outcomes and that the activity of spinning and producing random outcomes from a wagering game are conventional activities well-understood in the art). Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Viewing 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.
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.
Claims 1 – 20 are rejected under 35 U.S.C. 102(a) as being anticipated by Bowers et al. (U.S. 2011/0212766).
Regarding claims 1, 10, and 19, Bowers discloses a system, method, and gaming machine comprising a processor, (“one or more processors”, par. 0012), and memory coupled with the processor and storing instructions thereon, (“one or more machine-readable media having instructions stored thereon”, par. 0012), when executed by the processor, cause the processor to receive an input at the processor indicating a user selection of a primary game from a group of games, (“the wagering game system 100 can include numerous capabilities and configurations. For example, although FIG. 1 illustrates a specific example of a skilled-based wagering game that responds to physical skill (e.g., hand-eye coordination), the wagering game machine 160 can also present other types of skill-based wagering games, such as games that rely on a player's knowledge, dexterity, strategy, stamina”, par. 0049), wherein the Examiner views the gaming system comprising numerous configurations and presenting different types of games to players as being equivalent to a player selecting a primary game from a group of games. Bowers further discloses execute, with the processor, the primary game, (“an apparatus comprises means for presenting a first wagering game on a wagering game machine”, par. 0025), during execution of the primary game, by the processor, determine, with the processor, that a player of the primary game has earned at least two upgrade symbols for at least one category of symbol types generated by the primary game, (“the system awards one or more game modifiers usable to enhance performance during a wagering game. In some embodiments, the game modifiers can be related to the current skill-based wagering game”, par. 0083 and fig. 7, parts 702, 706, and 708), wherein the Examiner views the game modifiers as being equivalent upgrade symbols, wherein fig. 8, part 814 discloses an embodiment of a player earning four game modifiers, which is equivalent to at least two upgrade symbols. Bowers further discloses store, in the memory, information indicating that the player has earned the at least two upgrade symbols, (fig. 8, part 814), and is entitled to access a player performance feature in an event that a skill-based bonus game is activated, determine, with the processor, that the player has activated the skill-based bonus game during execution of the primary game, and execute, with the processor, the skill-based bonus game, (“ Upon playing the base game, a player can earn, or receive, one or more units (e.g., icons, graphics, symbols, etc.) representing a skill-based game modifier. The accumulation of such units may occur until a subsequent skill-based game (e.g., a skill-based bonus round) is triggered”, par. 0083), and during execution of the skill-based bonus game, provide the player with an ability to access the player performance feature during execution of the skill-based bonus game, (“the system activates the one or more game modifiers during the wagering game to improve performance”, par. 0084).
Regarding claims 2 and 11, Bowers discloses wherein the at least one category of symbol types comprises an upgrade symbol that enhances player control of a quantifiable skill-based input during the skill-based bonus game, (“Game modifiers may include, extra abilities of a player's character or decreased abilities of non-player elements, which may include, but are not limited to, increased health values, extra lives, extra power for controllable game elements (e.g., more powerful player controlled characters, double shooters, double-sized paddle or double paddle, smart bombs, etc.), increased speed for controllable game elements (e.g., faster player controller characters, quicker paddles, faster shooting devices”, par. 0083).
Regarding claims 3 and 12, Bowers discloses wherein the upgrade symbol provides an additional skill-based feature in the skill-based bonus game not otherwise available to the player in the skill-based bonus game without using the upgrade symbol, (“means for tracking wagering game activity during the first wagering game; means for awarding one or more game modifiers, based on the wagering game activity”, par. 0025).
Regarding claims 4 and 13, Bowers discloses wherein the primary game comprises a game of chance, (“the wagering game unit 1132 can present wagering games, such as video poker, video black jack, video slots, video lottery, reel slots”, par. 0125), wherein the Examiner views the slot machine games as games of chance.
Regarding claims 5 and 14, Bowers discloses wherein the group of games comprises at least one of a video slot game, a video poker game, a video blackjack game, a video keno game, a video bingo game, and a reel game, (“the wagering game unit 1132 can present wagering games, such as video poker, video black jack, video slots, video lottery, reel slots”, par. 0125).
Regarding claims 6 and 15, Bowers discloses generate a skill-based bonus award according to the at least two upgrade symbols used during execution of the skill-based bonus game and a detected number of quantifiable skill-based inputs used by the player during execution of the skill-based bonus game, (“ Upon playing the base game, a player can earn, or receive, one or more units (e.g., icons, graphics, symbols, etc.) representing a skill-based game modifier. The accumulation of such units may occur until a subsequent skill-based game (e.g., a skill-based bonus round) is triggered”, par. 0083, and fig. 8, part 814).
Regarding claims 7 and 16, Bowers discloses generating an additional award upon determining that the detected number of quantifiable skill-based inputs used by the player during execution of the skill-based bonus game is less than a threshold, (fig. 3, parts 304, 306, 308, and 310), wherein the Examiner views the player receiving a surplus award based on the game goals, which is less than the entire winnable amount, as being equivalent generated an additional award if the player’s performance is less than a threshold.
Regarding claims 8 and 17, Bowers discloses wherein the instructions further cause the processor to transfer at least a portion of control during the skill-based bonus game to an input device to detect a quantifiable skill-based input, (“the apparatus further comprises means for presenting a selection interface for a player account to select the game modifier”, par. 0028).
Regarding claims 9 and 18, Bowers discloses wherein the quantifiable skill-based input comprises at least one of a quantifiable input of a mental skill and a quantifiable input of a physical skill, (“a player account can win some, or all, of the winnable award amount by playing the skill-based pinball bonus game”, par. 0048), wherein the Examiner views the pinball as requiring both a mental and physical skill.
Regarding claim 20, Bowers discloses wherein the at least one category of symbol types comprises an upgrade symbol that enhances player control of a quantifiable skill-based input during the skill-based bonus game, (“Game modifiers may include, extra abilities of a player's character or decreased abilities of non-player elements, which may include, but are not limited to, increased health values, extra lives, extra power for controllable game elements (e.g., more powerful player controlled characters, double shooters, double-sized paddle or double paddle, smart bombs, etc.), increased speed for controllable game elements (e.g., faster player controller characters, quicker paddles, faster shooting devices”, par. 0083), and wherein the upgrade symbol provides an additional skill-based feature in the skill-based bonus game not otherwise available to the player in the skill-based bonus game without using the upgrade symbol, (“means for tracking wagering game activity during the first wagering game; means for awarding one or more game modifiers, based on the wagering game activity”, par. 0025).
Response to Arguments
With respect to the double patenting rejection of claims 1 – 20, Applicants have requested that the rejection be held in abeyance, however, in light of the recent amendments, the Examiner has removed the double-patenting rejection. Therefore, the double-patenting rejection has been withdrawn.
Applicant's arguments filed 4/14/26 have been fully considered but they are not persuasive. Regarding the 101 rejection of claims 1 – 20, Applicants argue that “the independent and dependent claims have been amended to recite features that cannot fairly be interpreted as corresponding to any one of the above-noted abstract idea and do not fall into the definition of certain methods of organizing human activity”. More specifically, it is argued that “none of the operations recited in the independent claims can fairly be considered to fall within the definition of a fundamental economic principle or practice, a commercial or legal interaction, and/or managing personal behavior or relationships or interactions between people”. The Examiner respectfully disagrees. The claims are directed towards a gaming system comprising gaming symbols, that allows a player to participate in plays of the game in order to win an award, based on probabilities created during the dealing and displaying of randomly displayed symbol outcomes. The claims clearly represent following rules/instructions that define how the game is conducted, which falls into the category of organizing human activity. The claims allow a player to play an award-providing game according to rules of the game. Such transactions relate to the sort of organizing human activities discussed in Bilski, (Bilski v. Kappos, 561 U.S. 593 (2010)).
Applicants further argue that the features of the claims “alone and in combination, cannot fairly be interpreted as hedging or risk management, commercial or legal interactions, financial transaction processing, and/or wagering”. The Examiner respectfully disagrees. As stated above, the claims are directed towards a gaming system comprising gaming symbols, that allows a player to participate in plays of the game in order to win an award based on the outcome of the game, (“A credit balance may be established for a placement of the one or more wagers and to receive potential winnings resulting from the primary game”, par. 0084, ). The claims clearly represent a fundamental economic practice of rules for conducting a game, which relate fundamental economic practice of rules for conducting a game as discussed in Alice, (Alice Corporation Pty. Ltd. V. CLS Bank International, et al. 573 U.S. 208 (2014)).
Applicants further argue that the claims “facilitate human-to-machine interactions”, wherein such interactions “between the machine and the player involves a technical solution to a technical problem”. The Examiner respectfully disagrees. As stated above, the claims recite a generic processor and memory along with instructions that generate and present a game to a player and determine the result of plays of the game. These additional elements, the processor and memory, are devices that execute and present a game to users are well-understood, routine, and conventional computer functions. See Alice (generic computer). There is no indication that the combination of conventional elements provides a technical solution to a technical problem.
Applicants further argue that “none of the features recited in the independent claims are capable of being performed in the human mind and cannot fairly be interpreted as a mental process”. The Examiner respectfully disagrees. The claims are directed towards determining if conditions are met, the conditions underline above disclosing selecting of a primary game and determining that the player has earned symbols which activates a skill-based game. These actions related to the game can be observed and determined in the human mind. For example, nothing precludes a human from viewing the execution of a primary game, nothing precludes a human from determining that upgrades symbols have been earned as a result of the primary game, and nothing precludes a human from determining that a skill-based bonus game has been activated. Implementing the claimed invention using electronic elements is merely using computers to implement an abstract idea.
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101 as the claims do not integrate the exceptions into a practical application or add an “inventive concept” beyond well-understood, routine, and conventional computer components and functions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC M THOMAS whose telephone number is (571)272-1699. The examiner can normally be reached 9:00am - 5:00pm.
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/E.M.T/Examiner, Art Unit 3715
/JUSTIN L MYHR/Primary Examiner, Art Unit 3715
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