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 .
Applicant’s submission of a Response
Applicant’s submission of a response was received on 05/06/2026. Presently, claims 1-20 are now pending.
Response to Arguments
Applicant's arguments filed 05/06/2026 have been fully considered but they are not persuasive. Claims have overcome each and every objection and 112(b) rejection previously set forth in the Office Action mailed 02/10/2026. Applicant’s representative asserts that the amended claims limitations are not met. However, the rejection under 35 U.S.C 101 of claims 1-20 is maintained as presented below.
Applicant’s representative alleges the following:
In regards to the rejection of Claims 1-20 under 35 U.S.C. 101, “Applicant respectfully submits that ‘a technical explanation of the asserted improvement is present in the specification, and . .. the claim reflects the asserted improvement,’ which is sufficient to establish a practical application. MPEP § 2106.05(a).” and “that it is not well-understood, routine, or conventional in the art at least to perform the steps of Claim 1 of the present application, as representative example” (Page 12 of Remarks).
In regards to the rejection under 35 U.S.C. 102, “Applicant respectfully submits that Johnson does not describe or suggest at least the above recitations of Claim 1.” (Page 13 of Remarks).
Regarding point (1), the examiner respectfully disagrees.
Applicant’s representative argues that “For instance, improved computer (e.g., electronic gaming device) capabilities are provided herein in order to achieve a designated/target RTP when no amount is wagered. As some example technical solutions to achieve a target RTP when no amount is wagered: i) an average wager amount across a plurality of plays associated with a player account may be determined and an RTP associated with the average wager amount may be utilized for a play where no amount wagered is provided; ii) an average wager amount across a plurality of plays associated with a player account where secondary currency is provided may be determined and an RTP associated with the average wager amount may be utilized for a play where no amount wagered is provided; or iii) wager amounts of plays where secondary currency is provided to a player account may be stored as being associated with the secondary currency such that when the secondary currency is spent, an RTP associated with a wager amount when the secondary currency was provided is utilized (e.g., 'first in, first out').” (Page 10-11 of Remarks)
In response to the arguments above, applicant is quoting ways managing data through the use of a computer, but there is no mention of an improvement to the computer. For example: applicant mentions that “certain pay tables and/or lookup tables may be utilized to determine RTP based on an amount wagered” (Page 10 or Remarks), which is a way to manage data with computers. This is not an improvement to the computer; a computer already implements video games and manages data with lookup tables and/or other variants. Applicant must point to an improvement and specify how it is different from a computer and the tools it already uses. (See 101 Rejection below)
Regarding point (2), arguments are convincing.
Applicant’s representative argues that “while Johnson describes Bonus Bucks being provided and spent, Applicant respectfully submits that Johnson does not describe Bonus Bucks being stored as being associated with an input amount (of a different input/output (I/O) type than the Bonus Bucks) inputted when the Bonus Bucks are provided such that, when the Bonus Bucks are inputted, RTP for a bonus play is determined based upon the input amount (of the different I/O type than the Bonus Bucks) at which the Bonus Bucks were provided.” (Page 13 of Remarks)
In response to the arguments above, arguments are convincing and thus, rejection under 35 U.S.C. 102 and 103 is withdrawn.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Guidelines (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, 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 Eligibility Guidance
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a system and/or process, which is are statutory categories of invention.
Step 2A-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.
Independent claim 1 recites the following, with the abstract ideas highlighted in bold, including an indication as to the abstract idea grouping(s) to which the indicated limitations belong to, according to the 2019 Revised Patent Subject Matter Guidelines. Independent claims 8 and 15, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
An electronic gaming device comprising: at least one memory with instructions stored thereon; and at least one processor in communication with the at least one memory, wherein the instructions, when executed by the at least one processor, cause the at least one processor to: provide an electronic game, wherein return-to-player (RTP) in the electronic game is controlled by determining output amounts of a primary input/output (I/O) type for the electronic game based at least in part upon input amounts of the primary I/O type for the electronic game; for at least one play of the electronic game where a secondary output amount of a secondary input/output (I/O) type is provided, store the secondary output amount in the at least one memory as being associated with at least one input amount of the primary I/O type used for the at least one play, wherein secondary output amounts of the secondary I/O type are stored in the at least one memory as being associated with different input amounts of the primary I/O type based upon respective input amounts of the primary I/O type at which respective secondary output amounts of the secondary I/O type were provided; receive at least part of the secondary output amount of the secondary I/O type to initiate a bonus play; determine an RTP for the bonus play based at least in part upon the association between the at least one input amount of the primary I/O type used for the at least one play where the secondary output amount of the secondary I/O type was provided stored in the at least one memory; and cause the bonus play to be provided with the RTP for the bonus play.
The limitations in claim 1 (as well as claim(s) 8 and 15) recites an abstract idea included in the groupings of a method for playing a wagering game, connected to technology only through application thereof using generic computing elements (e.g., processor, memory, etc.) and/or insignificant extra-solution activity. According to the 2019 Revised Patent Subject Matter Guidelines:
Certain Methods of Organizing Human Activity include:
1. Fundamental Economic Principles or Practices (including hedging (i.e., wagering), insurance, mitigating risk);
2. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
3. Managing Personal Behavior or Relationships or Interactions Between People (e.g. social activities, teaching, and following rules or instructions). The interaction encompasses both activity of a single person (for example a person following a set of instructions) and activity that involves multiple people (such as a commercial or legal interaction). Thus, some interactions between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within this grouping;
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Wagering (e.g., claims 1, 8, and 15 discloses the use of RTP which is used for wagering games; and that this type of game is used for wagering as disclosed in paragraph 0003”), which is a form of hedging, which is an abstract idea included in the grouping of Fundamental Economic Principles or Practices. These limitations are interpreted as at least Fundamental Economic Principles or Practices insomuch as the claim limitations are directed to performing the Fundamental Economic Principles or Practices while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims.
B. Formation of a gambling contract (i.e., by a player placing a wager the player is entering into a contract with a game operator), which is an abstract idea included in the grouping of Commercial or Legal Interactions. These limitations are interpreted as at least Commercial or Legal Interactions insomuch as the claim limitations are directed to performing the Commercial or Legal Interactions while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims; and/or
C. Following rules and/or instructions, such as including the functions related to the playing of a game, which is an abstract idea included in the grouping of Managing Personal Behavior or Relationships or Interactions Between People. These sets of rules are interpreted as at least certain methods of organized human activity insomuch as the claim limitations are directed to performing or following the set of rules or instructions concerning a game while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity, as set forth in the claims.
Regarding dependent claims 2-7, 9-14, and 16-20:
Each claim is dependent either directly or indirectly from the independent claim 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 claim further describes additional aspects of the abstract idea, i.e., additional aspects to the Fundamental Economic Principles and/or Commercial or Legal Interactions. For example, some dependent claims merely provide additional Fundamental Economic Principles and/or Commercial or Legal Interactions to be performed and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101.
Step 2A-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 1-20 clearly do not improve the functioning of a computer, as they only incorporate generic computing elements, do not effect a particular treatment, and do not transform or reduce a particular article to a different state or thing. Similarly, there is no improvement to a technical field. In addition the claims do not apply the judicial exception with, or by use of a particular machine. The claims do not apply or use the judicial exception in a meaningful way. The claimed invention does not suggest improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05 (a)).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (MPEP 2106.05 (h)). The claimed computer components are recited at a level of generality and are merely invoked as tool to perform the abstract idea. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
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 claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of “processor, memory”, etc. used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility. These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
Further, in order to be eligible the claims would require structure that is beyond generic. See Alice Corp. v. CLS Bank International, 134 S. Ct. at 2358-59. The elements of a processor, a memory are well known conventional devices used to electronically implement a game as evidence by Moody (US 2004/0127280 A1; hereinafter Moody). Moody discloses that a conventional gaming machine comprises computer and computer hardware to control the overall operation of the gaming machine (paragraph 21). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The dependent claims do not add “significantly more” for at least the same reasons as directed to their respective independent claims, at least based on the position, as discussed above, that each of the dependent claims merely provide additional limitations to further expand the abstract idea of the independent claims, without adding anything which would establish eligibility under 35 U.S.C. 101.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE ANGELES whose telephone number is (703)756-5338. The examiner can normally be reached Mon-Fri 8am-5pm.
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/JOSE ANGELES/Examiner, Art Unit 3715
/Jay Trent Liddle/Primary Examiner, Art Unit 3715
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