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 .
Claim Objections
Claim 14 objected to because of the following informalities:
Claim 14, line 2, “he instructions” should read “the instructions”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6, 13, and 19 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation “the RTP” in line 8. It is unclear if applicant is referring to the same ones of “the RTP in the electronic game” of claim 1 from which claim 6 depends or “the RTP for the bonus play” from which claim 6 depends or a different RTP. For purposes of examination, it is assumed that “the RTP” refers to the same ones of “the RTP for the bonus play” found in claim 1.
Claim 13 recites the limitation “the RTP” in line 8. It is unclear if applicant is referring to the same ones of “the RTP in the electronic game” of claim 8 from which claim 13 depends or “the RTP for the bonus play” from which claim 13 depends or a different RTP. For purposes of examination, it is assumed that “the RTP” refers to the same ones of “the RTP for the bonus play” found in claim 8.
Claim 19 recites the limitation “the RTP” in line 7. It is unclear if applicant is referring to the same ones of “the RTP in the electronic game” of claim 15 from which claim 19 depends or “the RTP for the bonus play” from which claim 19 depends or a different RTP. For purposes of examination, it is assumed that “the RTP” refers to the same ones of “the RTP for the bonus play” found in claim 15.
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 for the electronic game based at least in part upon input amounts for the electronic game; for at least one play of the electronic game where a secondary output amount is provided, store the secondary output amount in the at least one memory as being associated with at least one input amount used for the at least one play; receive at least part of the secondary output amount to initiate a bonus play; determine an RTP for the bonus play based at least in part upon the at least one input amount used for the at least one play where the secondary output amount was provided; 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, the claims would require structure that is beyond generic, such as structure that can be interpreted analogous to a general-purpose structure and general-purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims. 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.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 5-6, 8-10, 12-13, 15-16, and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson et al. (US 20140024442 A1; hereinafter Johnson).
Regarding claims 1, 8, and 15, Johnson discloses an electronic gaming device (gaming machine; ¶43 and Fig 3) comprising: at least one memory with instructions stored thereon (memory; ¶43); and at least one processor in communication with the at least one memory (processor; ¶43), wherein the instructions, when executed by the at least one processor, cause the at least one processor to: provide an electronic game (a gaming machine with these components as described in ¶43), wherein return-to-player (RTP) in the electronic game (RTP mechanism is inherent to wagering games when dealing with payouts, pay tables, wagers, etc.; ¶32) is controlled by determining output amounts for the electronic game based at least in part upon input amounts for the electronic game (this is inherent to RTP because the output amount, such as the payout is determined based at least on the input amount, such as the amount being wagered); for at least one play of the electronic game where a secondary output amount is provided (projectiles launched during a primary game or base game to earn Bonus Bucks as a secondary amount; ¶16-17), store the secondary output amount in the at least one memory as being associated with at least one input amount used for the at least one play (inherent because this type of data must be stored in memory to show how many Bonus Bucks the player has accrued on the Bonus Bucks Field 111; see Fig 1A); receive at least part of the secondary output amount to initiate a bonus play (Virtual amusement park can be accessed after a player has accumulated 3000 Bonus Bucks; ¶18); determine an RTP for the bonus play based at least in part upon the at least one input amount used for the at least one play where the secondary output amount was provided (once in the amusement park bonus play, the player can perform various games or activities to win credits, which are part of the RTP; ¶24); and cause the bonus play to be provided (bonus play provided as shown in Fig 1B) with the RTP for the bonus play (inherent to this type of bonus play because there is a pay table associated the base game and the bonus play; ¶32).
Regarding claims 2, 9, and 16, Johnson discloses wherein the bonus play is a bonus play of the electronic game with a bonus feature (the amusement park counts as a bonus feature; ¶18).
Regarding claims 3 and 10, Johnson discloses wherein the bonus play is a play of a bonus game different from the electronic game (amusement park in Fig 1B is different from base game shown in Fig 1A).
Regarding claims 5, 12 and 18, Johnson discloses wherein the instructions further cause the at least one processor to further store the secondary output amount as being associated with a player account (bonus bucks can be stored in a player's account; ¶22).
Regarding claims 6, 13 and 19, Johnson discloses wherein the at least one input amount comprises a plurality of input amounts (bonus bucks can be used to access one or more options which requires the player to use a plurality of input amounts for various games or activities; ¶24), and wherein the instructions further cause the at least one processor to: determine the RTP for the bonus play based at least in part upon the at least one input amount (inherent to this type of bonus play because there is a pay table associated the base game and the bonus play; ¶32) by: determining an average input amount of the plurality of input amounts; and selecting the RTP based at least in part upon the average input amount (determining RTP based on average amounts is both inherent and necessary. Because RTP is defined as Total wins divided by Total wagers, it is mathematically impossible to calculate RTP without taking the average of inputs into account).
Claim Rejections - 35 USC § 103
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.
Claims 4, 11, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson in view of Anderson et al. (US 8840459 B2; hereinafter Anderson).
Regarding claims 4, 11 and 17, Johnson discloses wherein the instructions further cause the at least one processor to: provide the electronic game with a first set of reel strips associated with the RTP in the electronic game (Reel Strips on the base game shown in Fig 1A). Johnson does not explicitly disclose providing the bonus play with a second set of reel strips associated with the RTP for the bonus play.
Anderson focuses on a wagering game that has reel strips and relates to Johnson because they are both wagering games with reel strips that can have a secondary or bonus game. Anderson teaches providing the bonus play with a second set of reel strips associated with the RTP for the bonus play (bonus or second game can be similar to the base game and base game has reel strips, therefore the bonus play or secondary game can also have reel strips; col 1 lines 40-47 and Fig 1).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to implement the teachings of Anderson for the benefit of keeping the core gameplay mechanic intact. With the use of reel strips in the base game, the player already understands how it works. When triggering the bonus or secondary game, the same mechanic of reel strips is used and the player already understands how to read the symbols and paylines.
Claims 7, 14, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson in view of Thomas et al. (US 20130281191 A1; hereinafter Thomas).
Regarding claims 7, 14 and 20, Johnson discloses wherein the instructions further cause the at least one processor to, based upon the secondary output amount satisfying a threshold amount associated with the bonus play (reaching threshold number of 3000 bonus bucks to access amusement park; ¶18), and before the at least part of the secondary output amount is received to cause the bonus play to be provided (with 3000 bonus bucks received, the amusement park will be provided; ¶18). Johnson does not explicitly disclose adjust the RTP in the electronic game from a first RTP in the electronic game to a second RTP in the electronic game, wherein the second RTP in the electronic game is less than the first RTP in the electronic game to account for the bonus play being eligible to be provided.
Thomas focuses on a wagering game with reel strips that has a bonus game feature and RTP implemented, which relates to Johnson because they both implement the same features. Thomas teaches adjust the RTP in the electronic game from a first RTP in the electronic game to a second RTP in the electronic game (payout here represents the RTP and there can be a first RTP focused on the basic game payout and a second RTP focused on the bonus game and they are adjusted in combination; ¶46), wherein the second RTP in the electronic game is less than the first RTP in the electronic game to account for the bonus play being eligible to be provided (RTP for bonus payout can be adjusted to be lower; ¶46).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to implement the teachings of Thomas for the benefit of managing properly the RTP of the overall game that includes the base game and the bonus/secondary game. For example, if the first RTP of the base game has a high RTP, then the second RTP of a bonus game needs to have a lower RTP in order to balance this out. Furthermore, another benefit of lower RTP for a bonus game is that the bonus game can make the player win multiple times, making him feel like he’s making progress, but the RTP is low so he doesn’t get too many credits back.
Conclusion
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
/DMITRY SUHOL/ Supervisory Patent Examiner, Art Unit 3715