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 7/16/2026 have been fully considered but they are not persuasive.
Applicant argues that the claims are not directed to an abstract idea because they relate to controlling electronic displays rather than a wagering contract or method of determining financial obligations, and that even if an abstract idea is present, the claims integrate it into a practical application by solving a technical problem of controlling the frequency, pacing, and distribution of opportunities to trigger multiple metamorphic features within a single game outcome while preserving randomness and volatility. Applicant further points to the multi-triggering symbol architecture, multiple RNG-controlled selection stages, coordinated display control, and (in Claim 21) weighted lookup tables with different respective probabilities as reflecting a specific gaming-machine implementation that improves how the machine controls feature-trigger behavior and display-state transitions.
The Examiner respectfully disagree. The claims continue to recite rules for conducting a wagering/electronic game of chance (i.e. generating random outcomes that include particular categories of triggering symbols associated with metamorphic features, determining activations of those features based on respective RNG outcomes, and displaying corresponding visual changes). Such rules fall within the “certain methods of organizing human activity” grouping (managing personal or commercial interactions, including gaming and wagering). See In re Smith, 815 F.3d 816 (Fed. Cir. 2016); In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018). The asserted “technical problem” is a problem of game-design probability control and player-experience pacing rather than a technological problem rooted in computer functionality, display hardware, RNG circuitry, or memory architecture. The recited additional elements (memory device, processor, RNG, display device, and the newly emphasized multi-triggering symbol / weighted-lookup-table control) remain recited at a high level of generality and amount to mere instructions to apply the abstract game rules on conventional electronic-gaming hardware. They do not improve the functioning of a computer or any other technology; they merely automate the game rules. Conventional use of separate weighted tables per feature and multiple RNG outcomes is well-understood, routine, and conventional in electronic gaming systems. Accordingly, the § 101 rejection is maintained.
Furthermore, Applicant argues that the amendments introduce limitations not previously considered: (1) a single-triggering symbol “capable of triggering solely a first metamorphic feature,” and (2) a multi-triggering symbol “that is different from the single-triggering symbol” and “capable of triggering the first metamorphic feature and at least one other metamorphic feature.” Applicant asserts that these limitations overcome the rejection as to independent Claims 1, 11, and 20, and therefore as to all pending dependent claims.
The Examiner respectfully disagree. Boese discloses feature symbols (i.e. yin-yang symbols having distinct colored swirl portions) that appear on the reels of an electronic game, wherein each such symbol is capable of providing an outcome associated with a single metamorphic feature (e.g., tiger) or multiple metamorphic features (e.g., tiger and dragon). The system may generate a single RNG outcome for a given feature symbol (or set of symbols) directed to one metamorphic feature, or it may generate multiple RNG outcomes (i.e. one per metamorphic feature) associated with the same symbol or with different symbols. Separate weighted tables or thresholds may be provided for each metamorphic feature, thereby giving each feature a different respective probability. Visual changes (animations of coins being added to feature-specific bowls, replacement of reel symbols with active-feature indicators such as a tiger image versus an inactive “dragon awaits” indicator, and population of the colored swirl portions) are displayed to indicate which features have been activated. Under BRI, a feature symbol that is used (or is configured to be used) to generate an RNG outcome directed solely to one metamorphic feature meets the “capable of triggering solely a first metamorphic feature” limitation. A different feature symbol appearing on a different reel, or the same type of symbol configured or used to generate multiple RNG outcomes or associated with multiple colored portions corresponding to multiple features, meets the “multi-triggering symbol that is different from the single-triggering symbol” and “capable of triggering the first and at least one other” limitations. Different instances of the feature symbol on different reels are, by definition, different symbols. Therefore, the amended language remains anticipated by Boese.
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 1-18, 20-21 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.
Each independent claims (1, 11 and 20) are directed to rules for conducting a game of chance or wagering game, which falls under the enumerated grouping of "certain methods of organizing human activity," including commercial or legal interactions (such as business relations, sales activities, or managing interactions between people, including gaming and wagering). The claimed steps and elements, such as generating random outcomes for reels, including single-triggering and multi-triggering symbols associated with metamorphic features, determining whether to activate metamorphic features based on RNG outcomes, and displaying visual changes associated with activated features, describe game mechanics and rules for managing randomness and symbol interactions in an electronic game. These are analogous to abstract ideas identified by the courts in cases involving wagering games, such as In re Smith, 815 F.3d 816 (Fed. Cir. 2016) (methods for conducting a wagering game using shuffled cards deemed abstract as rules for a game), and In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018) (dice-based wagering game held ineligible as abstract rules for playing a game).
Regarding dependent claims, each claim is dependent either directly or indirectly from at least one of the independent claims identified above and includes all the limitations of said independent claim. Therefore, each dependent claim recites the same abstract idea as identified above. Each of the dependent claims further describe additional aspects of the abstract idea, i.e. additional aspects to the mental processes and/ or certain methods of organizing human activity.
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 1-18, 20-21 does not integrate the abstract idea into a practical application because the additional elements (e.g., at least one memory device, at least one processor in communication with the memory device, a random number generator (RNG), and a display device) are recited at a high level of generality and merely serve as tools to implement the abstract game rules on generic computer hardware. These elements perform basic functions such as generating random outcomes, determining activations based on those outcomes, and displaying results, without improving the functioning of the computer itself, effecting a transformation of a particular article, or applying the abstract idea in some other meaningful way beyond generally linking it to a technological environment (i.e., electronic gaming). The "metamorphic features" and "multi-triggering symbols" are part of the game rules themselves and do not reflect an improvement in computer technology or solve a technological problem; rather, they describe conceptual game enhancements. As such, the claim as a whole does not impose any meaningful limits on practicing the abstract idea and merely uses generic computing components to automate the game mechanics (see MPEP § 2106.05(a)-(c), (e)-(h)).
For the reasons as discussed above, the claim limitations are not integrated to a practical application.
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, both individually and in combination, do not amount to significantly more than the abstract idea. The use of a processor, memory device, RNG, and display to generate random outcomes, determine activations, and display visual changes is well-understood, routine, and conventional in the field of electronic gaming systems, as evidenced by the ubiquity of such components in slot machines and video games (see, In re Smith; MPEP § 2106.05(d)). The claim does not recite any unconventional technological features or ordered combination that transforms the abstract idea into an inventive concept; it merely implements the game rules on a computer without adding meaningful limitations beyond the abstract idea itself.
Accordingly, claims 1-18, 20-21 are directed to a judicial exception without significantly more and is ineligible under 35 U.S.C. § 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) 1-18, 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boese (US 2023/0334953 A1).
1. Boese discloses a system for electronic gaming comprising: at least one memory device; and at least one processor in communication with the memory device, the at least one processor configured to (Fig. 1, 2A):
generate a first random outcome for a first reel of an electronic game, the first random outcome including a single-triggering symbol capable of triggering solely a first metamorphic feature (generating random outcomes for reels in a base game, where feature symbols (e.g., yin and yang symbols) appear and are capable of providing a single chance/RNG outcome directed solely to one metamorphic feature, e.g., the tiger feature), [0083]-[0084];
generate a second random outcome for a second reel of the electronic game, the second random outcome including a multi-triggering symbol that is different from the single-triggering symbol, the multi-triggering symbol capable of triggering the first metamorphic feature and at least one other metamorphic feature, each of the metamorphic features associated with a visual change in the electronic game indicating the metamorphic feature is active (feature symbols appearing on different reels are different symbols; the same type of feature symbol is capable of generating multiple RNG outcomes, one per metamorphic feature, or of being associated with multiple features via distinct colored swirl portions, thereby functioning as a multi-triggering symbol; visual changes including animations, populated swirl portions, and active/inactive indicators are displayed), [0084], [0087];
for each of the metamorphic features associated with the multi-triggering symbol, determine whether to activate the metamorphic feature based on a respective random number generator (RNG) outcome (using RNG outcomes per metamorphic feature to determine activation, with one RNG per feature per symbol for multi-triggering), [0084]-[0087];
for the first metamorphic feature associated with the single-triggering symbol, determine whether to activate the first metamorphic feature based on a respective RNG outcome (determines activation for individual metamorphic features based on their respective RNG outcomes, applicable to single-triggering scenarios), [0084]; and
for each activated metamorphic feature, control a display device to display the visual change associated with the activated metamorphic feature based on the respective RNG outcomes (displays visual indications and changes for active metamorphic features, such as animations and populated symbol portions, based on RNG-determined activations), [0087]-[0089].
2. Boese discloses the system of Claim 1, wherein the multi-triggering symbol is associated with two metamorphic features, three metamorphic features, or four metamorphic features [0087]-[0088].
3. Boese discloses the system of Claim 1, wherein the at least one processor is further configured to: determine that the first random outcome includes the single-triggering symbol associated with a first metamorphic feature; and determine to upgrade the single-triggering symbol to a multi-triggering symbol (activating additional inactive metamorphic features during gameplay, effectively upgrading the triggering capability from single to multi by adding more active features via new symbols and RNG), [0087]-[0088], [0095].
4. Boese discloses the system of Claim 3, wherein the processor is configured to determine to upgrade the single-triggering symbol to the multi-triggering symbol based on an RNG outcome [0087]-[0088], [0095].
5. Boese discloses the system of Claim 3, wherein the processor is configured to determine to upgrade the single-triggering symbol to the multi-triggering symbol based on the first random outcome resulting in a predefined pattern [0019], [0082], [0088], [0093], [0095].
6. Boese discloses the system of Claim 3, wherein the processor is further configured to, in response to determining to upgrade the single-triggering symbol to the multi-triggering symbol, select at least a second metamorphic feature to be associated with the second metamorphic feature [0087]-[0088], [0095].
7. Boese discloses the system of Claim 6, wherein the processor is further configured to select the second metamorphic feature based on the first random outcome [0087]-[0088], [0095].
8. Boese discloses the system of Claim 3, wherein the processor is further configured to, in response to determining to upgrade the single-triggering symbol to the multi-triggering symbol, cause the display device to replace the single-triggering symbol with the multi-triggering symbol [0088], [0093], [0095].
9. Boese discloses the system of Claim 1, wherein the multi-triggering symbol includes a display aspect associated with each metamorphic feature associated with the multi-triggering symbol (feature symbols include display aspects like colored swirls (green for tiger, red for dragon) associated with the multi-triggering nature), [0083], [0089], [0092].
10. Boese discloses the system of Claim 9, wherein the display aspect includes a color corresponding to with the metamorphic feature associated with the display aspect (colors for metamorphic features, e.g., green swirls for tiger, red for dragon, corresponding to the associated features), [0083], [0089], [0092].
11-19. Boese discloses at least one non-transitory computer-readable storage media having computer-executable instructions embodied thereon, wherein when executed by at least one processor in communication with at least one memory device, the computer- executable instructions cause the at least one processor to: generate a random outcome for an electronic game, the random outcome including a single-triggering symbol capable of triggering solely a first metamorphic feature and a multi-triggering symbol that is different from the single-triggering symbol, the multi- triggering symbol capable of triggering the first metamorphic feature and at least one other metamorphic feature, each of the metamorphic features associated with a visual change in the electronic game indicating the metamorphic feature is active; for each of the metamorphic features associated with the multi-triggering symbol included in the random outcome, determine whether to activate the metamorphic feature based on a respective random number generator (RNG) outcome; for the first metamorphic feature associated with the single-triggering symbol included in the random outcome, determine whether to activate the first metamorphic feature based on a respective RNG outcome; and for each activated metamorphic feature, control a display device to display the visual change associated with the activated metamorphic feature based on the respective RNG outcomes as similarly discussed above.
20. Boese discloses a method for electronic gaming, the method comprising: generating a random outcome for an electronic game, the random outcome including a single-triggering symbol capable of triggering solely a first metamorphic feature and a multi-triggering symbol that is different from the single-triggering symbol, the multi-triggering symbol capable of triggering the first metamorphic feature and at least one other metamorphic feature, each of the metamorphic features associated with a visual change in the electronic game indicating the metamorphic feature is active; for each of the metamorphic features associated with the multi-triggering symbol included in the random outcome, determining whether to activate the metamorphic feature based on a respective random number generator (RNG) outcome; for the first metamorphic feature associated with the single-triggering symbol included in the random outcome, determining whether to activate the first metamorphic feature based on a respective RNG outcome; and for each activated metamorphic feature, controlling a display device to display the visual change associated with the activated metamorphic feature based on the respective RNG outcomes as similarly discussed above.
21. Boese discloses the system of Claim 1, wherein the at least one processor is configured to, for each of the metamorphic features associated with the multi-triggering symbol, randomly determine whether to activate the metamorphic feature by using the respective RNG outcome to parse a corresponding weighted lookup table of a plurality of weighted lookup tables, each of the plurality of lookup tables corresponding to one of the metamorphic features and associated with a different respective probability of triggering the corresponding metamorphic feature (separate weighted tables or thresholds provided for each metamorphic feature, each carrying different triggering probabilities; RNG outcome used with the corresponding table to determine activation), [0084]-[0087].
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.
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/Seng H Lim/Primary Examiner, Art Unit 3715
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