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 Rejections - 35 USC § 101
2. 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.
3. Claims 1-3, 5, 7-10, 12, 14-17, and 19 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 4, 6, 11, 13, 18, and 20 are eligible because each recites a practical application of increasing or decreasing a return to a player.
4. Step 1
Claims 1-20 are directed to a system, apparatus, or method meeting the requirements for Step 1.
5. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 9 and 16), recite a hit rate which is a mathematical relationship (See also Applicant’s specification describing the hit rate as a math profile [0002, 0017, 0034, 0041]) which is an abstract mathematical relationship.
6. Step 2A Prong II
The abstract idea is not integrated into a practical application. Akin to controlling the alarm limit of a rubber mold in Parker v. Flook, 437 U.S. 584 (1978), only Claims 4, 6, 11, 13, 18, and 20 provide a control of a return to a player.
Examiner notes that while a processor, memory, plurality of instructions, and display are recited, these are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. Applicant’s Specification does not disclose that the processor, memory, set of instructions, or display are directed to a technological solution to a technological problem that “overcome some sort of technical difficulty.” citing ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 768 (Fed. Cir. 2019). According to Applicant’s specification the gaming system is not limited to an EGM but also personal computers, smartphones, laptops, tablets, and wearable devices ([0018]); includes non-limiting examples of memory ([0038]); where “computer program code for carrying out operations for aspects of the present disclosure may be written in any combination of one or more programming languages” ([0059]); and use of known types of displays ([0039]). Consequently, these devices and programming are viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer or as a means to automate the steps. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Claims 1, 9 and 16 further recite receiving a selected option which is extra-solution data gathering.
Even when the limitations are viewed in combination, the additional elements in this claim do no more than automate the steps needed to be performed, using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Latric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality).
Accordingly, each claim, as a whole, does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. Thus, Claim 1, and similarly Claims 9 and 16, lack the eligibility requirements of Step 2 Prong II.
7. Step 2B
According to the 2019 PEG, in addition to the considerations discussed in Step 2A, an additional consideration indicative of an inventive concept (aka “significantly more”) is the addition of a specific limitation other than what is well-understood, routine, conventional activity in the field (MPEP 2106.05(d)). Conversely, an additional consideration not indicative of an inventive concept is simply appending well-understood, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
The claims recite extra-solution data gathering which is well-understood when claimed in a generic manner (receiving or transmitting data over a network MPEP 2106.05(d)(II)(i)). Accordingly, a conclusion that the step is well-understood, routine, conventional activity is supported under Berkheimer. Therefore, these limitations remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more.
Thus, Claim 1, and similarly Claims 9 and 16, do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. Thus, Claims 1, 9 and 16 are ineligible.
8. Dependent Claims
In reference to Claims 2-3, 5, 7-8, 10, 12, 14-15, 17, and 19, Claims 2, 3, 5, 10, 12, 17, and 19 provide more attributes of the abstract math relationship. Claims 7-8 and 14-15 recite extra-solution features of the interface. Thus, none of the claims supply a practical application or inventive concept sufficient to transform the nature of the claim into a patent-eligible application. Additionally, the combination of additional elements adds nothing that is not already present when considered individually where the additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept. Thus, Claims 2-3, 5, 7-8, 10, 12, 14-15, 17, and 19 are ineligible.
Claim Rejections - 35 USC § 103
9. 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.
10. 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.
11. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
12. Claims 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. No. 2015/0339876 to Koza in view of 2017/0228976 to Chesworth.
In Reference to Claims 1, 9, and 16
Koza discloses an apparatus and method for operating an electronic game machine (EGM) (Fig. 4), the system and method comprising:
providing, by a processor of a gaming system (Fig. 4 300, [0070]), through a display device of the gaming system (Fig. 4 374 [0070]), a user interface (Fig. 4 332), the user interface providing options for each of a plurality of features of the electronic game (controls may be any acceptable controls such as, but not limited to buttons, toggles, slides, knobs, joysticks [0042] such as to selecting a volatility of different paytables {option} (Abstr., alter paytables [0011], inputs have paytables which vary in range [0014], one of a number of available paytables [0022] for payouts that are related to selected paytables [0034] and selection of a volatility levels [0022, 0032, 0036, 0038, 0059]);
receiving an indication of a selected option wherein the selected option affects a hit rate (Fig. 3 showing a player position at a table or at a gaming machine where “[t]he paytable and related volatility slide component 310 is shown with a guide path or slot 312 and a finger movement or position post 314a. The paytable and related volatility slide component 310 may be a virtual slide (e.g., on a touchscreen), or the entire field of slide component 310, slot 312, finger post 314, first player input panel 302 and game status panel 304 may be on a single touchscreen defining the entire area within the support frame 306.” [0068] where the slider may “adjust paytable and related volatility” [0065], see also Fig. 5 volatility control dial 400); and
applying and executing the selected option for the paytable of the electronic game (“[t]he processor determines payouts for the results, and the payouts are based on selected paytables and related volatility rates for the game played. [0035]).
However, Koza is not explicit as to the workings of how volatility relates to particular paytable game features. One of skill in the art would be aware of the teachings of Chesworth.
Chesworth teaches of modifying game volatility e.g., the number and frequency of payouts and modification of the number, sequence, and/or type of symbols on one of more symbol-based reels [0043] where “[e]ach of the available player-selectable configuration options specifies a particular volatility that is variant. Thus, a range of volatility choices are available for player selection, and a greater number of available player-selectable configuration options (i.e., a greater range of volatility choices for the non-skill-based feature) are presented to the player for selection in response to a greater level of skill exhibited during the skill-based feature.” [0045]. Fig. 4B shows choices of volatility determines the frequency of occurrence of the number of free games (features} 142, 144, 146, and 148 during the execution of the game on the EGM (Fig. 4C). Chesworth provides this system and method for allowing gaming systems to determine options and features for customizing a gaming system based on player skill ([0002]).
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way; and
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Here, it would require only routine skill in the art to amplify the aspects of volatility and paytables of Koza with the aspects of volatility as they relate to the frequency of a free game feature of Chesworth to demonstrate how volatility and paytables result in changes in frequency of a paytable free spin feature.
In Reference to Claims 2
Chesworth discloses volatilities options related to free games features which are a frequency of occurrence of the feature during execution of the electronic game (Fig. 4C).
In Reference to Claims 3-6, 10-13, and 17-20
Chesworth teaches of selecting volatility options which increase a free game option to 142 or decrease to 148, each resulting in lowering and raising returns, respectively (Fig. 4C).
In Reference to Claims 7-8 and 14-15
Koza discloses a volatility slider control (Figs. 2, 3, and 5) for the selected option for the selected feature or the use of a series of buttons ([0059], Claim 5).
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
15. 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.
16. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached on (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/Primary Examiner, Art Unit 3715