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 .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/10/2026 has been entered.
Response to Amendment
3. Applicant alleges Claims 1-3, 5, 7-10, 12, 14-17 and 19 are eligible under 35 USC § 101 but has merely added an extra-solution math profile. Applicant hasn’t explained how the addition of the math profile provides a practical application. Thus, the rejection of the claims is maintained. Additionally, upon further reconsideration, Claims 4, 6, 11, 13, and 18, and 20 are also rejected as they are now deemed to be not practical application which improve the functioning of a computer but just merely additional aspects of the mathematical relationships. Thus, Claims 1-20 are ineligible.
4. Applicant argues that O’Donovan maintains a pre-defined pay table and payback percentage such that the pay table or math profile stays the same (Remarks 8 filed 8/10/2026). Examiner disagrees. It is improper to conclude that O’Donovan’s pay tables “stay the same” implying there is only one pay table. According to O’Donovan, based on a player’s selections (Fig. 2 S140, [0018]) such as a win frequency (Fig. 4B S480), there is a decision step to employ a ”most closely matching default game” at S160 to use a pre-set default game with paytable S170 or configure a new game S180 [0021]. O’Donovan discloses that substantive changes that include changing the prize profile are implemented by modifying a default game configuration by adjusting the combination of win frequencies and award amounts in other categories [0023]. This results in a change or affect to the default pay table to provide the most closely matching default game. If Applicant disagrees that O’Donovan does not have a same paytable, Applicant is directed to the teachings of U.S. Pat. Pub. No. 2020/0357235 to Humphrey who presents dynamic paytables for his consideration.
5. Applicant does not pose separate arguments for the claims rejected based on Koza and relies on the arguments made above. For this reason, the rejection of the claims based on Koza are maintained.
Claim Rejections - 35 USC § 101
6. 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.
7. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
8. Step 1
Claims 1-20 are directed to a system, apparatus, or method meeting the requirements for Step 1.
9. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 9 and 16), recite affecting a hit rate and math profile which is a mathematical relationship (See also Applicant’s specification describing the hit rate and set of math profiles [0002, 0017, 0034, 0041]) which is an abstract mathematical relationship.
10. 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 and extra-solution math profiles.
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.
11. 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)). Also, the claims have been amended to recite known math profiles (disclosed by Applicant to be known (Spec. [0002]). 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.
12. Dependent Claims
In reference to Claims 2-8, 10-15, and 17-20, Claims 2, 3, 4, 5, 6, 10, 11, 12, 13, 17, 18, 19, and 20 provide more attributes and permutations of the abstract math relationship. For example, reciting features that increase or decrease a frequency of occurrence or a return to a player, and combinations thereof. 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, Claim are ineligible.
Claim Rejections - 35 USC §§ 102/103
13. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
14. 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.
15. 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.
16. Claim(s) 1-6, 8-13, and 15-20 is/are rejected under 35 U.S.C. 102(a1, a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. Pat. Pub. No. 2003/0195031 to O’Donovan in view of U.S. Pat. Pub. No. 2020/0357235 to Humphrey.
In Reference to Claims 1, 2, 8-9, and 15-16
O’Donovan discloses a gaming machine (Fig. 1 10), and method (Fig. 2), comprising:
a display device (Fig. 1 display 12 [0016]);
a processor coupled with the display device (central processor [0016]); and
a memory coupled with and readable by the processor and storing therein a set of instructions which ([0017]), when executed by the processor, causes the processor to:
provide, through the display device of the gaming system, a user interface a user interface (Fig. 1 buttons 18 [0016]), the user interface providing options for each of a plurality of features of the electronic game (Fig. 3 denomination 26 with a plurality of options and paylines 28 with a plurality of options, where paytables are pre-configured for each denomination [0022]), wherein the options for each of the plurality of features comprise an option related to a frequency of occurrence of the feature during execution of the electronic game (“frequency of payout, size of jackpots, game theme, bonus games, and play speed and would be considered within the scope of the present invention.” [0018]; Also related to the frequency of occurrence, O’Donovan discloses that for substantive configurations changes could altered paytables “[s]uch substantive changes may include changing the prize profile of the game (i.e., frequent small wins, less frequent large rains [sic, wins]” [0023], see also wherein 3 preset pay tables can be affected depending on the selected features [0030] where the gaming machine matches of closely matches a default configuration [0021]);
receive an indication of a selected option for a selected each feature of the plurality of features of electronic game, wherein the selected option for the selected feature each feature of the plurality of features affects a hit rate for the selected feature and a math profile for the electronic game (“FIG. 3 is a representative of a preferred display screen 24 prompting a player to enter in desired game characteristics. In this display screen, the user is selecting the wagering denomination 26 and the number of pay lines 28. As would be understood, other configuration characteristics would include, but not be limited to, frequency of payout, size of jackpots, game theme, bonus games, and play speed and would be considered within the scope of the present invention.” [0018] or the method of Fig. 4A, 4B of a cascading configuration selection sequence at Steps S440, S460 and a win frequency S480 [0027-0028] resulting in the modification of default paytables resulting in alternate paytables created by when the configuration of game categories are adjusted to best accommodate a players configuration changes (Fig. 2 S140, [0018]) such as a win frequency (Fig. 4B S480), there is a decision step to employ a ”most closely matching default game” at S160 to use a pre-set default game with paytable S170 or configure a new game S180 [0021]. O’Donovan discloses that substantive changes that include changing the prize profile are implemented by modifying a default game configuration by adjusting the combination of win frequencies and award amounts in other categories [0023]);
apply the selected option for the selected features each feature of the plurality of features of the electronic game (“To implement a substantive configuration change gaming machine modifies a default game configuration by changing the selected configuration criteria. However, because substantive configuration changes would affect the pay table of the game, the gaming machine adjusts other parameters to maintain a predefined pay table and payback percentage.” ([0023], see 3 pre-set paytables [0030] whichever most closely matches [0021]); and
execute the electronic game with the applied selected option for the selected feature options for each feature of the plurality of features (Fig. 4B Step S430).
If Applicant disagrees that O’Donovan’s maintaining a predefined paytable is not to be taken literally but is in fact a plurality of variations from a default table, one of skill in the art would be aware of Humphreys.
Humphreys teaches of persistent supplemental awards to dynamically modify one or more default awards of a paytable (Abstr. [0038, 0051]). Humphreys teaches of a first paytable with a supplemental award and the creation of a second, different paytable when the supplemental award has been dynamically associated with a different ranked category of award ([0003, different paytables [0131]). As if Fig. 2A, a first paytable has a supplemental award associated with rank category 202a. In Fig. 2C, a paytable, different that the first paytable results when the supplemental award is associated with a different rank category 202b. And so as in Fig. 2D. Humphreys shows a default paytable but with every dynamic iteration the paytable is replaced with a different paytable.
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 recognize that O’Donovan’s maintenance of a predefined pay table is made clear by the teachings of Humphreys such that when O’Donovan works to deliver his default and a ”most closely matching default game” which is made possible by modifying a default game configuration award amounts in other categories to achieve the predictable result of affecting a default paytable to produce a different paytable. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
In Reference to Claims 3-6, 10-13, and 17-20
O’Donovan discloses that any received indication of the option for a feature can increase or decrease the frequency of occurrence during execution of the game and where an increase in hit frequency decreases a return to the player (frequent small wins [0023]) and a decrease in hit frequency increases a return to the player (less frequent large rains [sic, wins] [0023]).
Claim Rejections - 35 USC § 103
17. 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.
18. 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.
19. 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.
20. Claims 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over O’Donovan, Humphreys, further in view of U.S. Pat. Pub. No. 2015/0339876 to Koza.
O’Donovan discloses the invention substantially as claimed. However, the reference does not explicitly disclose a graphical representation of a slider control. One of skill in the art would be aware of the teachings of Koza.
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).
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 modify the button display of O’Donovan with the slider display of Koza to achieve the predictable result of providing an alternative method of selecting a display of feature options. The Courts have held that simple substitution of one known element for another to obtain predictable results to be indicia of obviousness.
Conclusion
21. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
22. 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.
23. Examiner interviews may be available depending on the stage of prosecution and provided 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.
24. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached on (571) 270-1344. 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
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