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
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 abstract ideas without significantly more. The claims list desired end-results obtainable from operating generic computing devices to select an alternate paytable used to evaluate amounts owed by a casino to a wagering game player. Although high-level descriptions of ideas for determining a cryptographic token associated with a player and modifying a paytable using it are claimed, there are no technical details in the claims that provide evidence of any particular software programming steps, hardware specifications or adaptations required or network architecture used to implement any cryptographic operations. As such the claims are seen as an attempt to patent gaming operations that ultimately determine an amount owed to a player, with a conceived field-of-use in cryptographic operations. This is equivalent to claiming certain methods of organizing human activities, see MPEP § 2106.04(a)(2), subsection II.
Support for classifying the pending claims in this abstract idea grouping is found in In re: Smith, No. 15-1664 (Fed. Cir. 2016). In re: Smith, the Federal Circuit held that, “rules for conducting a wagering game, compare to other “fundamental economic practice[s]” found abstract by the Supreme Court” because “[a] wagering game is, effectively, a method of exchanging and resolving financial obligations based on probabilities” J.A. 15.” The Federal Circuit supported this conclusion by referencing Alice, wherein “the Supreme Court held that a method of exchanging financial obligations was drawn to an abstract idea.” 134 S. Ct. at 2356–57.
The Federal Circuit additionally cited Bilski, wherein “the Court determined that a claim to a method of hedging risk was directed to an abstract idea.” 561 U.S. at 611. The Federal Circuit reasoned that “Here, Applicants’ claimed “method of conducting a wagering game” is drawn to an abstract idea much like Alice’s method of exchanging financial obligations and Bilski’s method of hedging risk. Moreover, our own cases have denied patentability of similar concepts as being directed towards ineligible subject matter. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (finding offer-based price optimization abstract), cert. denied, 136 S. Ct. 701(2015); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir. 2014) (determining that methods of managing a game of bingo were abstract ideas).
The same conclusion is reached in examining pending claims that managing the selection of alternate paytables to determine amounts owed for winning outcomes are abstract ideas.
Because there are no claimed programming operations, particular hardware or system architecture used to modify a paytable as facilitated in some way by cryptographic tokens, this is seen as merely identifying a field of use of the invention. Additionally, a variation on how a paytable used for evaluating an amount owed by a casino is selected can be seen as a new abstract idea for conducting fundamental economic practices. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) notes that "a claim for a new abstract idea is still an abstract idea.”
Because no details are provided in the claims as to how any particular hardware/software are used to implement cryptographic tokens that are “associated with” a paytable, no practical application(s) or inventive concept(s), such as improvements to the function of computers or to the field of wagering or cryptographic operations, are found that could transform the claims into eligible subject matter.
A detailed discussion follows that is based on the guidance provided in the 2019 PEG and Oct. 2019 Update. Steps 1 and 2 of the Alice analysis have been conducted for pending claims 1-20.
Independent claim limitation summaries:
Representative Claim 1 (system):
Preamble: A system
Element [1a]: A processor circuit
[1a] A memory comprising machine readable instructions
Element [2]: the processor is configured to:
[2a] determine a cryptographic token associated with a player;
[2b] modify a paytable from a first to second paytable associated with the cryptographic token;
[2c] receive a wager from a player;
[2d] determine whether an outcome is a winning outcome;
[2e] determine a game award for a winning outcome based on the wager and second paytable;
[2f] award the award to the player;
Parallel claims:
Claim 16: A gaming device with instructions causing the same operations as claim 1.
Claim 20: Method claim mirroring the system/device steps (process).
Dependent claim limitation summaries:
Claims 2 and 17: second paytable comprises a larger RPT than first paytable
Claims 3, 18: second paytable comprises a larger volatility value than first paytable
Claim 4: second paytable comprises larger bonus frequency value than first paytable
Claim 5: second paytable is a unique paytable, first paytable is a standard paytable
Claim 6: second paytable has second set of winning outcomes different from first paytable
Claim 7: each award of second set of awards corresponds to award of first set of awards
Claim 8: second set of awards of claim 6 are different
Claim 9: paytable modification of claim 1 is further based on player meeting a game play threshold
Claim 10: game play threshold of claim 9 comprises a minimum number of games in a predetermined time period
Claim 11: game play threshold of claim 9 comprises a minimum amount wagered per time period.
Claim 12: game play threshold of claim 9 comprises a minimum amount won per time period
Claim 13: game play threshold of claim 9 comprises a minimum amount lost per time period
Claim 14: paytable modification in claim 1 is further based on cryptographic token redemption by the player
Claim 15: the cryptographic token comprises a limit on a number of redemptions
Step 1: In this step of the Alice analysis, it is determined that all of the pending claims fall into statutory categories. The claims meet step 1 as follows:
Claim 1: Machine (system).
Claim 16: Machine (device)
Claim 20: Process (method).
Each claim falls within a statutory category under 35 U.S.C. § 101. Proceed to Step 2A.
Step 2A, Prong 1: In this step of the Alice analysis, judicial exception(s) that fall into abstract idea groupings enumerated in the 2019 PEG are identified and quoted.
The claims recite judicial exceptions:
Certain methods of organizing human activity (2019 PEG, Section I(A)(2)): Paytable modifications and triggering mechanisms for switching paytables are forms of organizing human activity (financial accounting practices).
In re: Smith, the Federal Circuit held that, “rules for conducting a wagering game, compare to other “fundamental economic practice[s]” found abstract by the Supreme Court” because “[a] wagering game is, effectively, a method of exchanging and resolving financial obligations based on probabilities” J.A. 15.” The Federal Circuit supported this conclusion by referencing Alice, wherein “the Supreme Court held that a method of exchanging financial obligations was drawn to an abstract idea.” 134 S. Ct. at 2356–57.
In re Marco Guldenaar, 911 F.3d 1157 (Fed. Cir. 2018) (rules of a dice game abstract); Planet Bingo v. VKGS, 576 F. App’x 1005 (Fed. Cir. 2014) (managing bingo drawings abstract).
And maintaining account balances, processing credits and debits, and determining amounts owed are all fundamental economic practices that are covered abstract ideas, see MPEP § 2106.04(a)(2)(II)(A)
Mathematical concepts (2019 PEG, Section I(A)(1)): RTP percentage and volatility calculations are mathematical operations. The claims determine outcomes based on these calculated values.
Mental processes/information processing (2019 PEG, Section I(A)(3)): Steps such as “selecting,” “determining,” “activating,” “displaying visual outcomes” are results-oriented information processing steps that could, at a high level, be performed conceptually in the mind or by pen-and-paper but are here stated as being executed by a generic processor/display without a claimed technological improvement to the computer itself. See Electric Power Group v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016) (collecting, analyzing, displaying results abstract).
Limitations directed to abstract ideas (illustrative quotes):
Claim 1 [2b], “modify a paytable for a wagering game … from a first paytable to a second paytable”
[2c] “receive a wager … from the player”
[2d] “determine whether an outcome for the wagering game is a winning outcome”
[2e] “determine a game award for the wagering game based on the wager and the second paytable”
[2f] “award the game award to the player”
Device and method claims (Claims 16 and 20) mirror the same abstract steps.
Dependent claims 2-15 and 17-19 recite further particulars of abstract wagering game management in the form of paytable details and variations which establish amounts owed to game players. Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)), if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."); Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)), “the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.”
Claims 1-20 collectively recite wagering game rules that govern evaluating a monetary amount owed by a casino to a game player—falling squarely within abstract idea groupings without additional specificity to a technological improvement.
Step 2A, Prong 2: In this step, any additional elements beyond the identified abstract ideas are identified and evaluated for any integration into a practical application. In particular, any claimed technological improvement is considered.
Additional elements recited in the claims include:
The claims are implemented on a generic computing environment: “a processor circuit”, “a memory”, “a communication interface” (in claim 16), “an input device” (in claim 16). No particular machine architecture is positively recited, especially related to the programming and implementation of a cryptographic token, which appears to be a critical feature of the invention.
Field-of-use limitation: Confining the abstract paytable selection rules to some “cryptographic token” is a field-of-use limitation and does not, by itself, integrate the exception into a practical application (2019 PEG Step 2A Prong 2; Oct. 2019 Update).
The preceding additional elements, considered alone and in the context of the claims, do not integrate the abstract game-rule logic into a practical application that improves computer functionality or another technology.
There is no claimed improvement to computer functionality: The claims do not recite, such as by what particular software instructions and/or using what hardware or architecture, how cryptographic tokens are created or implemented or how a field of cryptography is improved or how the hardware of generic computers of the claims or their data structures have measurable performance improvements as a result of the cryptographic token. Any asserted “technical problems” and “benefits” ascribed to the instant claims are directed to game design outcomes and player experience, not to improving the underlying computer/EGM functioning. The steps remain to select an alternate paytable used to evaluate how much a winning wagering player is owed—mere instructions to apply the abstract idea on a computer.
There is no transformation of an article: Displaying symbols and animations does not transform an article into a different state or thing in the sense contemplated by the integration analysis.
With regard to interpreting results-oriented claim language when performing a 35 USC §101 analysis, see Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024) when "the claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves these results. Claims of this nature are almost always found to be ineligible for patenting under Section 101." See also Interval Licensing LLC v. AOL Inc. (896 F.3d 1335) wherein the court found that claims to a computer software "attention manager" that displays content on unused portions of a screen were result-oriented and invalid under 35 U.S.C. § 101 because they did not recite a specific technological method for achieving the claimed result; Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024): The court held that claims must not only describe desired outcomes but also include a specific process or machinery for achieving that result; In re Killian, 45 F.4th 1373 (Fed. Cir. 2022): The court reaffirmed that claims simply reciting a desired result without specifying how to achieve it are directed to an abstract idea and are ineligible under 35 U.S.C. § 101. The claims at issue were directed to analyzing data from two databases. In the Step Two of the Alice test, the court determined that there was no inventive concept because the additional elements merely involved generic and routine data gathering and analysis steps that could have been performed with or without a computer.
MPEP § 2106.05(f) explains that, “The recitation of claim limitations that attempt to cover any solution to an identified problem with no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it"”.
The pending claims do not include any technical description of mechanisms for accomplishing the claimed results. Instead, the claims use some unspecified computer and unspecified programming to conduct generic, result-oriented steps such as “determine,” “modify”, “receive”, “award” for performing abstract certain methods of organizing human activity. The claims seek to cover any system and any method (such as any programming instructions) for applying the management of a wagering game using cryptographic tokens. As such the claims are found to be directed to ineligible subject matter.
Step 2A Prong 2 concludes in a determination that the additional elements do not amount to a practical application of the claimed abstract ideas.
Step 2B: In this step of the Alice analysis, it is assessed whether additional elements amount to significantly more than abstract ideas. Any well-understood, routine, conventional (“WURC”) activity is also discussed along with evidentiary considerations.
Additional elements: “a processor circuit”, “a memory”, “a communication interface”, “an input device”. These are conventional elements in the art of electronic gaming and generic computing.
WURC (well-understood, routine, conventional) analysis:
Generic computer components (processor, memory, I/O devices) are WURC. See Alice v. CLS Bank, 573 U.S. 208 (2014).
Using paytables to determine game outcomes and payout volatility is conventional in EGMs. The specification itself describes standard EGM architectures (e.g., FIG. 2B a processing circuit, memory device, input device, communication adapter, display devices), supporting WURC. See Planet Bingo (implementing conventional computer to manage bingo outcomes was not significantly more).
“modify a paytable”, “receive a wager”, “determine … a winning outcome,” “award the game award” are routine result-oriented steps.
The CRM claim (Claim 20) merely places abstract instructions on a non-transitory medium; such a “Beauregard”-type claim does not add an inventive concept absent a technological improvement in the medium or execution. See In re Guldenaar; Alice.
There is no particular machine evident that is integral with the invention beyond serving as a field-of-use: The claims do not recite specialized hardware RNG, regulatory interfaces, or unconventional display controllers that would be non-WURC. There are no factual allegations or claim-level recitations of atypical, non-routine computer operations (cf. DDR Holdings or Enfish improvements) are present. There is no particular hardware recited as required to implement the claimed cryptographic token; the absence amounting to mere mention as a field of use of a conventional gaming machine.
Conclusion:
Claims 1-20 are found to be ineligible under 35 U.S.C. § 101. Although step 1 is satisfied (the claims recite manufacture/process/machine), in Step 2A Prong 1, the claims are found to recite an abstract idea—game rules/wagering mechanics, mathematical RNG/probabilistic selections, and information presentation, and do not integrate those exceptions into a practical application nor add significantly more.
Possible Remedies:
To improve subject matter eligibility under 35 USC § 101, it is recommended to anchor the claims to concrete, non-generic technical mechanisms (such as particular software processes or nonobvious system architectures) in a way that there is evidence in the claims of certain improvements to computer or network operations or to another technology. Examples might include to:
Replace high-level “select/determine/activate/display” results-oriented steps with concrete algorithmic operations (e.g., exact table formats, index computation, thresholding functions, pipeline stages) and data structures with constraints that provide a computer-functionality improvement (improved security, faster lookup, reduced cache misses, deterministic scheduling).
Claim a particular software and/or hardware implementation of the claimed cryptographic token operations.
Limit the claims to a specific EGM hardware configuration comprising logic that is integral to, and improves, the operation of that particular machine (not just an arguably improved user experience of game outcomes). The court ruled in International Business Machines Corporation v. Zillow Group, Inc., (CAFC, 17 October, 2022), that "improving a user's experience while using a computer application is not, without more, sufficient to render the claims" patent-eligible. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
Provide specification support (benchmarks, comparative studies, regulatory compliance details) establishing that the recited computer/EGM improvements are not WURC (per Berkheimer), enabling either Step 2A integration or Step 2B “significantly more.”
Recite in the claims a technical solution to a technological problem (e.g., secure hardware-backed attestations, novel protocol flows, improved cryptographic operations, sensor fusion pipelines). Mere mention of the use of some “cryptographic token” in the claims is not equivalent to evidence of improvements in the field of cryptographic operations.
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 1-2, 5, 16-17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2023/0177921 A1 to Mikulich et al.
Re claims 1, 16, 20, Mikulich teaches:
L1: A system comprising: a processor circuit; and a memory comprising machine readable instructions
[0002], [0005] describes that the invention of Mikulich comprises casino property management systems comprising a server coupled to EGM’s that use non-fungible tokens recorded on blockchain systems to modify the operation of gaming machines, including paytables and/or RTP based on the tokens.
[0025] describes contemplated hardware for system 10 that includes processors executing instructions from memory.
L2: that, when executed by the processor circuit, cause the processor circuit to: determine a cryptographic token associated with a player at a gaming device;
[0023] provides an overview of NFT’s and [0024] outlines a customer loyalty program that “generates NFT charms that may be awarded to patrons” wherein the NFG charm transactions are recorded in a blockcian ledger system.
L3: modify a paytable for a wagering game at the gaming device from a first paytable to a second paytable associated with the cryptographic token;
[0002], [0019], [0104]
L4: receive a wager for the wagering game from the player at the gaming device; determine whether an outcome for the wagering game is a winning outcome; in response to a determination that the outcome for the wagering game is a winning outcome, determine a game award for the wagering game based on the wager and the second paytable; and award the game award to the player.
[0034].
Re claims 2, 17, [0002], [0019] and [0104] describe that a player’s NFT charm may adjust a base paytable and RTP. Several examples are given wherein payouts for certain winning combinations are increased.
Re claim 5, [0002], [0019], [0104] of Mikulich discloses changing form a standard to different paytable based on an associated player NFT.
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 3 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Mikulich et al in view of AU 2012216421 A1 to Brosnan et al.
Re claims 3 and 18, Although Mikulich teaches that it was known in the art to modify a gaming machine paytable based on a cryptographic token associated with a player account, Mikulich is silent as to whether paytable modifications can include volatility changes.
Brosnan teaches that it was known in the art that a gaming system can change winnable awards by “(h) changing the volatility” in addition to or as an alternative to “(g) changing the average expected payback percentage” and “(a) increasing one or more of the winnable awards by a designated amount”.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the instant invention that paytable modifications in Mikulich could have included changing the volatility in addition to or instead of changing RTP without causing any unexpected results, as these are well-known casino EGM parameters that operators can use to tailor game performance to needs of the casino and players.
Claims 4, 6-8 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Mikulich et al in view of US 2005/0215311 A1 to Hornik et al.
Re claims 4, 6-8 and 19, Although Mikulich teaches that it was known in the art to modify a gaming machine paytable based on a cryptographic token associated with a player account, Mikulich is silent as to whether paytable modifications can include changing bonus frequency values or changing sets of awards.
Hornik is an analogous prior art casino gaming machine that teaches in [0110] that enhanced play schemes can include “enhancing the frequency of bonus game play”, “enhancing pay table value payouts” (equivalent to providing different sets of awards than non-enhanced payouts).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the instant invention that bonus frequencies could have been modified and/or winning outcomes/awards could have been modified in EGM paytable configurations enhanced by NFT in Milulich’s invention without causing any unexpected results and to provide increased player excitement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/STEVEN J HYLINSKI/Primary Examiner, Art Unit 3715