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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/20/2026 has been entered.
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 07/20/2026. Presently, claims 1-20 are pending.
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 an abstract idea without significantly more. The claim(s) recite(s) A method of operating a gaming machine, the gaming machine comprising a gaming cabinet housing game-logic circuitry securely housed within a locked box inside the gaming cabinet, the game-logic circuitry comprising a central processing unit connected to a main memory, and a presentation assembly, the method comprising the operations of: prior to conducting a game on the gaming machine, executing, by the game-logic circuitry, an authentication program stored in the main memory, the executing including generating a live authentication code from contents of the main memory, comparing the live authentication code to a trusted code stored in the main memory, and permitting execution of random number generator programming and game-outcome logic stored in the main memory only upon a match between the live authentication code and the trusted code; accepting, via a value input device, a physical item associated with a monetary value to establish a monetary balance; conducting, by the game-logic circuitry, a game including: presenting, by the presentation assembly, a plurality of symbol-bearing reels, and an array; spinning and stopping the plurality of reels to land symbols from the reels in the array to produce an outcome; and randomly determining whether or not to award a bonus game; and in response to awarding the bonus game: displaying, via the presentation assembly, a first menu comprising choices of a first type associated with a first game parameter and choices of a second type associated with a second game parameter; accepting a first selection from the first menu, designating the first type as selected and the second type as unselected if a selected choice of the first selection is made from the choices of the first type and designating the first type as unselected and the second type as selected if the selected choice of the first selection is made from the choices of the second type; displaying, via the presentation assembly, a second menu comprising choices of the unselected type from the first menu and choices of a third type associated with a third game parameter; accepting a second selection from the second menu, designating the unselected type from the first menu as selected and the third type as unselected if a selected choice of the second selection is made from the choices of the unselected type from the first menu and designating the third type as selected if the selected choice of the second selection is made from the choices of the third type; setting the game parameter associated with the type of the first selection according to the selected choice of the first selection; setting the game parameter associated with the type of the second selection according to the selected choice of the second selection; randomly determining a choice from a weighted set of choices based on the selected choices of the first selection and the second selection, the weight set of choices being weighted to maintain an average return to player of the bonus game, and setting the game parameter associated with the unselected type of choices to the randomly determined choice; accessing, by the game-logic circuitry from the main memory, game assets corresponding to the set game parameters, and causing the presentation assembly to present the bonus game according to the game parameters; and receiving, via at least one of one or more electronic input devices, a cash out input that initiates a payout from the monetary balance via a value output device. The underlined portions above are all parts of an abstract idea of certain methods of organizing human activity in that they are parts of managing a wagering game. This judicial exception is not integrated into a practical application because the claims are merely directed towards applying the abstract idea onto well-known electronic gaming machine structure and thus are not enough to bring the claims into patent eligibility (See MPEP 2106.04(d) “The courts have also identified limitations that did not integrate a judicial exception into a practical application:…Generally linking the use of a judicial exception to a particular technological environment or field of use”). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements beyond the abstract idea are well-known parts of an electronic gaming machine (See US Patent Application Publication No. 2016/0335835 paragraphs 0023-0031; and US Patent Application Publication No. 2010/00293871 0038).
All dependent claims have been analyzed but do not cure the deficiencies of the independent claims.
Response to Arguments
Applicant argues that the claims are not directed towards a judicial exception because Applicant believes “it is not a concept performed in the human mind and it is not, as claimed, a method of organizing human activity,” (Arguments, page 9). However, the Office disagrees and as discussed above, views the claim limitations as merely providing rules to manage a wagering game, as it allows the players to make certain selection and then based on those selections weighting other choices to keep the return to player in accordance with laws/profitability of the gaming machine. As such, it is rules to manage the wagering game.
Applicant’s argument that the claims have a specific improvement (Arguments, pages 9-10) have been considered but are not found to be convincing. That is, the specific improvement Applicant argues is found to just be another rule in the wagering game, and as such is a continued part of the abstract idea. Rather than this being a technical problem this is viewed as a business problem in that obviously the gaming operator wants to maximize their profits from the gaming machine and thus if you allow the player to “rig the game” such that the player has a more favorable advantage (or not as favorable as the case may be) the operator will either go bankrupt or run afoul of certain gaming laws in their jurisdiction. As such, there is a business reason for said limitations, but because Applicant used the words “technical problem” in their specification and arguments does not make it factually a technical problem. If such were the case, merely adding the words “technical problem” to any patent applications would overcome any potential 101 rejection. Such is not supported by the present statutes and case law related to 35 USC 101.
Applicant cites to various cases that they believe are analogous to the present claims. However, none of these cases deal with wagering game rules which are specifically mentioned in the MPEP as to be abstract ideas (2106.04(a)(II)(A). As such, even though these cases may follow rules and may be found to be eligible they are not analogous to the present case which is specifically about wagering game rules. Applicant’s arguments that the present claims are not like In Re Smith (Arguments, pages 11-12) have been considered, but in light of the current case law and PTAB decisions, and MPEP, cannot be found to be convincing.
Applicant then makes the argument that the abstract idea recited by the claims is not presented as being well understood, routine, or conventional (See Arguments, pages 12-13). Applicant seems to misunderstand how rejections based upon 35 USC 101 work. The requirement for finding elements routine or conventional is to those parts of the claims that are not found to be part of the abstract idea. As these parts of the claims ARE found to be the abstract idea, such a showing is not required.
Applicant’s arguments related to a particular machine, (See Arguments, pages 13-14) have been considered but are not found to be convincing. As shown, the elements of the machine are well-known, routine, or conventional in the art and as such the claims are merely adding an abstract idea to something that is already well-known. Thus, Applicant is merely applying an abstract idea to a technological environment, which the MPEP states is not sufficient to bring the claims into patent eligibility (2106.04(d)).
Applicant’s reminder to consider the memorandum has been considered, but does not overcome the reasoning set forth in the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jay Liddle whose telephone number is (571)270-1226. The examiner can normally be reached M-F 9-5.
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/Jay Trent Liddle/Primary Examiner, Art Unit 3715
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