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 .
Procedural Summary
This is responsive to the claims filed 6/12/2024.
Claims 1-20 are pending.
The Drawings filed 6/12/2024 are noted.
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 non-statutory subject matter.
Step 1:
The claims are drawn to process, apparatus and CRM categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claim 1 is analyzed below, with italicized limitations indicating recitations of an abstract idea, noting that independent Claims 11 & 17 recite substantially similar limitations but being drawn to different statutory classes.
Claim 1: “An electronic gaming device comprising: a memory device for storing instructions; and a game controller comprising at least one processor configured to execute the instructions stored in the memory device, which, when executed by the at least one processor, causes the game controller to: cause a base game to be displayed on a display device including a game matrix, the game matrix including a plurality of symbol positions forming multiple rows and columns within the game matrix, each symbol position for displaying a symbol therein; determine that a trigger condition is met for triggering a feature game based upon a number and type of trigger symbols displayed within the game matrix of the base game; cause the base game to transition to the feature game; randomly determine a set of multiplier values for each row of the game matrix including a multiplier value corresponding to each row of the multiple rows of the game matrix during the feature game; cause the set of multiplier values to be displayed next to the game matrix, wherein each multiplier value of the set of multiplier values is displayed next to the row corresponding to the multiplier value; and determine an award amount based at least in part on the symbols displayed in the game matrix during the feature game and the set of multiplier values.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG1, “certain methods of organizing human activity”, fundamental economic practices and managing interactions between people.
The claims are drawn to a wagering game; a method of exchanging consideration based on probabilities created during the dealing and displaying of outcomes; a fundamental economic practice. Here, the claims involve randomly displaying symbols and determining awards.
Further, to the extent the claims are drawn to how a game is played, this represents interactions between players and a social activity. It also represents following rules/instructions (i.e., rules defining how the game is conducted.)
Prong 2: Does the Claim recite additional elements that integrate the exception into a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations drawn to a computing system with a processor and memory, (a GUI).
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, the prior art relied on in the prior art rejection, infra, shows the conventionality of gaming devices. elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
It is noted that Applicant’s Specifications disclose several differences between general computing devices and electronic gaming machines.2 However, the present claims do not recite any features distinguishing them from general computing devices. Rather, the claims require gaming systems with processors and memory. And, as described above, this only requires GUIs.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they only recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls3:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 102
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.
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, 4, 11 & 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Milosevich (U.S. Pub. No.: 2023/0177911 A1).
Regarding Claims 1, 11 & 17: Milosevich discloses an electronic gaming device comprising, (Abstract): a memory device for storing instructions, (Fig. 2); and a game controller comprising at least one processor configured to execute the instructions stored in the memory device, which, when executed by the at least one processor, (Fig. 2), causes the game controller to: cause a base game to be displayed on a display device including a game matrix, (Fig 3), the game matrix including a plurality of symbol positions forming multiple rows and columns within the game matrix, each symbol position for displaying a symbol therein, (Fig. 5A).
Milosevich discloses determine that a trigger condition is met for triggering a feature game based upon a number and type of trigger symbols displayed within the game matrix of the base game, (Fig. 3, 310, ¶¶ 40-42); cause the base game to transition to the feature game, (Fig. 3, 310); randomly determine a set of multiplier values for each row of the game matrix including a multiplier value corresponding to each row of the multiple rows of the game matrix during the feature game, (¶¶ 37, 42, 44); cause the set of multiplier values to be displayed next to the game matrix, wherein each multiplier value of the set of multiplier values is displayed next to the row corresponding to the multiplier value, (Fig. 7); and determine an award amount based at least in part on the symbols displayed in the game matrix during the feature game and the set of multiplier values, (Fig. 3, 324).
Regarding Claims 3: Milosevich discloses wherein the trigger condition is met when a predesignated number of bonus symbols are displayed in the symbol positions of the game matrix during the base game transitioning the base game to a free spin bonus game, (¶¶ 40-42, 44).
Regarding Claims 4: Milosevich discloses award a number of free spin bonus games corresponding to a total number of bonus symbols displayed in the symbol positions of the game matrix during the base game, (¶¶ 40-42).
Claim Rejections - 35 USC § 103
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 1¶¶03) 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.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5, 6, 10 & 16 are rejected under 35 U.S.C. 103 as being unpatentable over Milosevich (U.S. Pub. No.: 2023/0177911 A1) in view of Bennet (U.S. Patent No.: 6,251,013 B1).
Milosevich discloses the invention substantially but does not make explicit, causing an animation to be displayed that indicates that all symbol positions within a column of the game matrix are transitioned to wild symbols, the animation includes a Phoenix flying over the column being transitioned to wild symbols, and wherein a distinguishing symbol is a Phoenix symbol. However, in a related invention, Bennet teaches a wagering game with animated characters indicating various game conditions including occurrences of wild & trigger symbols, (Bennet, Abstract, Figs. 2, 8-10 and related descriptions).
It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s filing to have applied animating symbols/characters to highlight game events including wilds and triggers, as evidenced by Bennet to be very well-known in the art, in the system of Milosevich, for the purpose of providing an entertaining display thus maintaining player interest. Additionally, it is noted that the character type used in the animation (e.g., a “phoenix”) is an obvious design consideration failing to patentably distinguish over the prior art.
Claims 7, 13 & 19 are rejected under 35 U.S.C. 103 as being unpatentable over Milosevich (U.S. Pub. No.: 2023/0177911 A1) in view of Joshi et al. (U.S. Pub. No.: 2002/0039919 A1).
Milosevich discloses the invention substantially but does not make explicit transitioning the base game to a night frenzy mode. However, in a related invention, Joshi shows that transitioning to a night-themed bonus game is well-known in the art. (Joshi, ¶ 26, Fig. 16).
It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s filing to have applied Joshi’s night-themed bonus mode in Milosevich bonusing system for the purpose of providing an entertaining display thus maintaining player interest.
Claims 8, 14 & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Milosevich (U.S. Pub. No.: 2023/0177911 A1) and Joshi et al. (U.S. Pub. No.: 2002/0039919 A1) as applied to Claims 7, in view of Bennet (U.S. Patent No.: 6,251,013 B1).
Milosevich and Joshi teach the invention substantially but do not make explicit that the animation is a sun moving across the horizon. However, in a related invention, Bennet teaches a wagering game with animated characters moving across the screen, indicating various game conditions including occurrences of triggering symbols, (Bennet, Abstract, Figs. 2, 8-10 and related descriptions).
It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s filing to have applied animations to highlight game events including bonus-triggering symbols, as evidenced by Bennet to be very well-known in the art, in the system of Milosevich and Joshi, for the purpose of providing an entertaining display thus maintaining player interest. Additionally, it is noted that the character type used in the animation (e.g., a “sun moving across a horizon”) is an obvious design consideration failing to patentably distinguish over the prior art.
Conclusion
Additional Relevant References: See 892
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached on M-F, generally 9am-5:30 pm.
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/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 See MPEP 2106
2 Specifications, e.g., ¶¶ 29, 53, 54.
3: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)