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 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 1/27/2026 has been entered.
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 3-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court set forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Svcs. v. Prometheus Labs., Inc., 566 U.S. 66, 75—77 (2012)). The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355—57. If, at the first stage of the Alice analysis, we conclude that the claim is not directed to a patent-ineligible concept, it is considered patent eligible under § 101 and the inquiry ends. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). In other words, the second step is to “search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 566 U.S. at 72—73). The prohibition against patenting an abstract idea “‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (internal citation omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In determining whether a process claim recites an abstract idea, we must examine the claim as a whole, keeping in mind that an invention is not ineligible just because it relies upon a law of nature or mathematical algorithm. Digitech Image Tech. LLC v. Electronics for Imaging Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014). As noted by the Supreme Court, “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Diamond v. Diehr, 450 U.S. 175, 187 (1981). The “directed to” inquiry asks not whether “the claims involve a patent-ineligible concept,” but instead whether, “considered in light of the specification,…‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal citations omitted). In that regard, we determine whether the claims “focus on a specific means or method that improves the relevant technology” or are “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant invention encompasses systems and methods of for pari-mutuel wagering (i.e., machines and processes). However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the invention “is directed to an electronic gaming system for playing a game using historical event data, and, in particular, to an electronic gaming system for playing a game that permits an amusement display and uses historical event data with pari-mutuel wagering.” Spec. ¶ 2. Representative claim 11 recites the following (with emphasis):
11. A method of operating an electronic pari-mutuel gaming system, the method comprising:
displaying at a casino electronic gaming machine an amusement display comprising a plurality of game symbols arranged to define a set of reels having a plurality of paylines;
displaying at the casino electronic gaming machine a plurality of wager options associated with a different plurality of the paylines, each of the wager options divided into a set of player pools;
determining a selection of one of the wager options via the one or more input devices;
a first player pool of the set of player pools of at least one of the wager options associated with a first set of awards and a second player pool of the set of wagers of at least one of the wager options associated with a second set of awards, a wager amount associated with the at least one of the wager options is divided into a first wager associated with the first set of awards having a minimum prize equal to a value of the first wager and a second wager associated with the second set of awards having a minimum prize equal to a value of the second wager, the first and second player pools managed by a server,
determining the first set of awards based on the results of a first plurality of historical events;
determining the second set of awards based on the results of a second plurality of historical events; and
displaying at the casino electronic gaming machine one or more configurations of the game symbols on the set of reels related to the results of at least one of the first and second plurality of historical events, the one or more configurations of game symbols disposed along one or more active paylines.
The underlined portions of claim 11 generally encompass the abstract idea, with substantially identical features found in claim 3. Dependent claims 4-10, 12, and 13 further define the abstract idea (such as by contributing to a progressive prize pool, defining winning conditions, having a minimum prize, using racing data, historical data and prize amounts, number of prizes, etc.).
The claimed abstract idea is similar to abstract ideas identified by the courts, such as:
a method of exchanging financial obligations (e.g., a wagering game, which is effectively a method of exchanging and resolving financial obligations based on probabilities created during the game) as discussed in Alice Corp. v. CLS Bank, Bilski v. Kappos, In re Smith (Fed. Cir. 2016), and In re Marco Guldenaar (Fed. Cir. 2018);
a fundamental economic practice (e.g., rules for conducting a wagering game) as discussed in Alice Corp. v. CLS Bank, In re Smith, and In re Marco Guldenaar; and/or
a method of organizing human activities (e.g., accepting bets from a human player and allowing the human player to play the game according to rules of the game method) as discussed in Bilski v. Kappos and Alice Corp. v. CLS Bank.
The claimed invention resembles the method of exchanging financial obligations in Alice and Bilski, and especially resembles the comparison to the wagering game of Smith which included a method of exchanging and resolving financial obligations based on probabilities created during the game, because it includes a game that may provide an award to one or more players as a result of the random game outcomes. In Smith, the court found that wagering activities, similar to the game features claimed here, are fundamental economic practices, which are in turn abstract ideas recognized in several court decisions including Alice and Bilski. In re Marco Guldenaar reached similar conclusions to those in Smith. Finally, the instant claims manage the financial transactions between humans that take place during games. These features are similar to the risk hedging discussed in Bilski and the shadow accounts of Alice.
Under prong 1, the above analysis demonstrates that the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity. Under prong 2, the instant claims do not integrate the abstract idea into a practical application because they merely provide instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea, add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. Here, the claimed invention is directed to an improvement in the manner of playing a game, but there is no indication that this amounts to an improvement in the underlying computer technology or other relevant field. Such findings are explained in more detail below. Therefore, the claims are directed to the judicially recognized exception of an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception.
The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than: a server and an electronic gaming system comprising a casino electronic gaming machine comprising a display, one or more input devices, and a controller coupled to the display and input device(s).
The above-described casino gaming machine features are purely well-known, routine, and conventional. For example, US 2001/0031659 states, “Many of the details of operating conventional gaming devices such as reel-based slot machines, video-based poker games, coin acceptors, card readers (credit, debit, smart, etc.) are well known and are not important to the teachings of the present invention other than in a functional approach.” US 2002/0043759 teaches that “payoff devices are conventional in the gaming industry and include credit meters, coin-out, tickets, entries on smart cards, etc.” US 6,142,872 teaches that “each player starts the representative slot machine 300 in a conventional manner by providing a form of payment, for example, by depositing one or more coins or bills in a coin/bill acceptor 355, or inserting a credit card, debit card or smart card into a card reader 364.” US 6,146,271 states, “As is conventional in gaming machines of this type, a player wagers one or more coins, tokens, paper currency or credits to activate the game. A coin acceptor or a currency acceptor is provided as is conventional to allow the player to insert coins, tokens or currency to activate the game… Also as is conventional, the screen display can include a credit meter which accrues credits available to the player to play the game and which accrues credits won by the player during the play of the game.”
Moreover, the specification describes the server in generic and functional terms (e.g., “According to certain embodiments, the server(s) 104 may be defined by one or more processors that may be programmed to perform the actions of the server 104. In fact, the server 104 may be defined in part by electrical circuit components and in part by a processor(s) programmed to perform the actions of the server 104. The instructions by which the processor(s) is/are programmed may be stored on a memory associated with the processor, which memory may include one or more tangible non-transitory computer readable memories, having computer executable instructions stored thereon, which when executed by the processor, may cause the one or more processors to carry out one or more actions” in par. 30). Because no particular server or computer technology is disclosed as a requirement to execute the claimed invention, the features relating to the server and its implied network are considered to be purely generic and functional computer components which are well-understood, routine and conventional in the art. See MPEP § 2106 and TLI Commc'ns LLC v. AV Auto., LLC, 823 F.3d 607 (Fed. Cir. 2016) (finding the use of a generic server insufficient to add inventive concepts to an abstract idea). Similarly, adding a server to manage the transactions of wager gaming machines will also not save claims from abstraction. See Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342 (Fed. Cir. 2021) (gaming machines that send game results to a server over a local area network to play a game were found to be ineligible because the claimed invention “merely recites result-oriented uses of conventional computer devices” and that, “[a]t bottom, neither the patent specification, patent owner, or patent owner’s experts articulate a technological problem solved by” the claimed invention).
The claimed elements taken as a whole perform the same functions when taken individually. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
Response to Arguments
Applicant's arguments filed 1/27/2026 have been fully considered but they are not persuasive.
As an initial matter, the previous grounds of rejection under 35 U.S.C. § 102 have been withdrawn in light of the instant amendments. Applicant addresses the grounds of rejection under §101 on pages 7-11 of the Remarks section. Pages 7-8 provide introductory remarks.
On pages 8-10, Applicant provides various arguments relating to the amount of time needed to play a given game. The Examiner respectfully disagrees. Contrary to Applicant’s remarks, the claims do not specify or imply any particular timeframe for playing a game. They merely require that the game is played on a “casino electronic gaming machine.” See e.g., claims 3 and 11. At most, this is an indication of where or what type of machine is used. It does not specify the duration of a game, nor does it indicate whether the outcomes are retrieved from a pregenerated pool or are created on demand. As such, these arguments are not commensurate in scope with the claimed invention.
Applicant asserts on pages 10-11 that the claimed steps could not be performed mentally. The Examiner respectfully disagrees. The claimed steps that allegedly could not be performed mentally are arranging game symbols to define a set of reels, providing wagering options divided into a set of player pools, receiving a selection of one of the wager options, determining a first and second set of awards based on a first a second plurality of historical events, and showing at least one configuration of game symbols on a set of reels related to the results of the first and/or second plurality of historical events. The Examiner finds these steps to be simpler and less time-sensitive than those found abstract by the courts.
For instance, the Federal Circuit found that a claimed method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected power grid was an abstract idea in the form of a mental process. Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). The claim at issue encompassed several complex steps, including receiving a plurality of data streams comprising sub-second, time stamp synchronized phasor measurements collected in real time over a wide geographic areas of electric utilities, detecting an analyzing events in real-time from the data streams based on voltages, power flows, phase angles, damping, and oscillation modes, displaying event analysis results and diagnoses of event, displaying concurrent visualization measurements from the data streams, accumulating and updating the measurements in real time, and deriving a composite indicator of reliability that is an indicator of power grid vulnerability and is derived from a combination of one more real time measurements or computations of measurements from the data streams. Id. at 1352. When the Court analyzed these steps for eligibility, it determined that “merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.” Id. at 1355.
The processing of “sub-second” data (i.e., less than a second) defining electrical parameters of an entire metro area and in real-time was not sufficient to exclude a claimed invention from abstraction as a mental process. Therefore, even assuming that the instant claims were performed in a matter of seconds, this would be a less rigorous process than the mental process of Electric Power Group. As such, the claimed invention is properly construed to encompass an abstract idea in the form of a mental process.
To the extent that Applicant asserts that the claims recite a system that operates in a pari-mutuel way that is allegedly different from playing games or wagering, the Examiner notes that the claims clearly require a pari-mutuel gaming system that uses sets of reels on a plurality of paylines and a plurality of wager options. These elements are simply indistinguishable from both games and wagering, and are therefore properly categorized as certain methods of organizing human activity.
In light of the above analysis, the claimed invention fails to demonstrate patent eligibility.
Conclusion
This is a continuation of applicant's earlier Application No. 16/273758. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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 WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at 571-272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715