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 amendments dated 7/27/26 are hereby 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 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.
Claims 1-20 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being, a method of organizing human activity, and/or the rules of a game.
In regard to Claims 1, 10, and 18, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); claim a fundamental economic practice or principle, which has been as identified by MPEP 2106.04(a)(2)(II)(A) as a method of organizing human activity; and/or claim the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming:
[a] […] method of […] gaming […] the method comprising:
causing display of a plurality of game symbols in a plurality of symbol positions within an active play area and an inactive play area of a base game, the active play area including a plurality of rows and columns of symbol positions, and the inactive play area including a plurality of stacks of symbol positions, each stack of the plurality of stacks corresponding to at least one column of a first subset of columns of the plurality of columns;
causing a bonus game to be triggered when a predetermined number of designated symbols are displayed within the active play area and at least one of the designated symbols is displayed in the inactive play area in a symbol position adjacent to an upper row of the active play area;
as part of the bonus game, causing the active play area to expand upwardly to include at least a portion of the inactive play area to a height equal to a highest symbol position displaying contiguous designated symbols;
causing the expanded play area of the bonus game to become an expanded active play area including a plurality of active symbol positions;
converting each symbol position of the plurality of symbol positions within the expanded play area to include a spinnable [visual] reel;
causing the symbol positions within the expanded play area displaying one of the designated symbols to not spin; and
causing the other symbol positions within the expanded play area to spin.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being, a method of organizing human activity, and/or the rules of a game.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, at least one processor in communication with at least one non-transitory computer readable memory containing instructions that embody Applicant’s abstract idea as computer code, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., at least one processor in communication with at least one non-transitory computer readable memory containing instructions that embody Applicant’s abstract idea as computer code, these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., F1 and 2A in Applicant’s PGPUB.
Response to Arguments
Applicant argues on page 10 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive. Opinions of the PTAB are not precedential legal authority in any prosecution other than the particular application they concern. What is more, Martineau has not been indicated as precedential or informative even by the PTAB upon itself. Also, the 101 rejection made supra follows the standard format for same provided by the Office and substantially similar 101 rejections as to format made by the same Examiner have been affirmed by the PTAB over 40 times. And to the extent that the rejection states at the outset that the claims are directed to an abstract idea and without claiming “significantly more”, the bases for these conclusions are then subsequently provided in the rejection and in detail.
Applicant argues on page 11 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive. The required Berkheimer finding may be made with “[a] citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements…in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a).” MPEP 2106.07(a)(III). Consistent with this MPEP provision, the 101 rejection identifies specific disclosures made by the Applicant in its PGPUB that, by their brevity, are evidence that the elements claimed by the Applicant in addition to its abstract idea must have been well-understood, routine, and conventional at the time of filing. What is more, it is unclear what the intended import is of Applicant’s argument concerning “adapting general purpose computers to function as gaming devices” considering Applicant’s claims do not require anything of the sort but are, instead to directed to, inter alia, an “electronic gaming system comprising…at least one memory…and… at least one processor”. Applicant’s claims are substantially similar in that regard to the representative claim held to be patent ineligible in Savvy Dog Systems (non-precedential), which included the limitations of:
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Id., slip. op., page 4.
Applicant further argues in its Remarks that because it has claimed its game play in greater detail it has thereby claimed patent eligible subject matter. Applicant’s argument is not persuasive because the rules of a game have been repeatedly held by the CAFC to not be patent eligible under the Mayo test. See, e.g., In re Smith, In re Marco Guldenaar, and Savvy Dog Systems (non-precedential).
Applicant argues on page 14 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive. The 101 rejection does not identify the claimed “electronic” aspects of the invention as being part of the abstract idea. And to the extent that Applicant claims a game that involves a certain symbol display, such claims have been held to be patent ineligible by the CAFC as being directed to commercial interactions (gambling games) and/or the rules of a game in, e.g., In re Smith, In re Marco Guldenaar, and Savvy Dog Systems (non-precedential).
Applicant argues that it has claimed a “practical application” and thereby claimed patent eligible subject matter under the Mayo test. Applicant’s argument is not persuasive. The Mayo test is a legal test and “practical application” is not part of the Mayo test but is, instead, a burden placed on examiners by the Office when they are making a 101 rejection employing the Mayo test. In regard to “practical application”, the MPEP provides examples of Supreme Court and CAFC decisions where a claimed invention has been held to be directed to patent eligible subject matter. See MPEP 2106.05(d)(I). Simply invoking “practical application” but without citing specific legal authority in support of Applicant’s argument, such as from these examples, that it has claimed patent eligible subject matter under the two-part Mayo test, therefore, does not provide a proper basis or rationale as to why the 101 rejection being made is allegedly deficient.
Applicant argues on page 14 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive because claiming an electronic gaming system in combination with the rules of a game has been held by the CAFC to not be directed to “significantly more”. See Savvy Dog Systems (non-precedential).
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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