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 8/3/26 are hereby entered.
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.
Claims 4 and 12 are 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.
Claims 4 and 12 include the limitations of “a first random number” and “a second random number” and it is unclear if these are the same as or different from the same limitations in Claims 3 and 11.
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 1-19 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 1-19 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, 9, and 17, 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in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); claim fundamental economic practices or principles which has been as identified by MPEP 2106.04(a)(2)(II)(A) as a method of organizing human activity; and/or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 playing a game], the method comprising:
responsive to [receiving data regarding] a play input […] causing a display [of] an animated game element, a start [area], and a claim prize [area] in a deactivated state;
responsive to a player [touching] the start [area], entering a designated number of player credits from a player credit balance in an initial game round of the […] game in a first game mode having a first small chance of a total loss and a second larger chance of an increase in credits, conducting the initial game round, and [displaying] a result of the initial game round including a total credit prize;
responsive to the initial game round resulting in an increase in credits, transitioning the […] game from the first game mode to a second game mode enabling a continuation input in an absence of entering additional player credits from the player credit balance, wherein transitioning the […] game to the second game mode comprises:
updating […] the start [area] from a game start functionality to a game continuation functionality, and
activating the claim prize [area];
one of:
responsive to a player [touching] the claim prize [area], awarding the displayed total credit prize; and
responsive to a player [touching] the start [area], having the game continuation functionality of the second game mode,
conducting a continuation game round of the […] game in which the total credit prize is risked and no further player credits are debited from the player credit balance, the continuation game round having the first small chance of a total loss and the second larger chance of an increase in credits,
causing […] a display [of] a result of the continuation game round including a new total credit prize; and
responsive to the continuation game round resulting in the total loss, causing the display [of] zero for the total credit prize and […] reverting […] the claim prize […] to the deactivated state of the first game mode.
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, e.g., a gaming machine comprising: a display system, an audio device, a player input device, and at least one electronic controller operatively coupled to the display system, the audio device, and the player input device and configured to execute instructions related to a game; and tangible, non-transitory electronically accessible memory coupled to the at least one electronic controller and containing program code embodying Applicant’s abstract idea and executable by the at least one electronic controller; a user interface, and re-mapping a touchscreen button, 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., a gaming machine comprising: a display system, an audio device, a player input device, and at least one electronic controller operatively coupled to the display system, the audio device, and the player input device and configured to execute instructions related to a game; and tangible, non-transitory electronically accessible memory coupled to the at least one electronic controller and containing program code embodying Applicant’s abstract idea and executable by the at least one electronic controller; a user interface, and re-mapping a touchscreen button, 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., F9-F10 in Applicant’s PGPUB and text regarding same; e.g., F2 and text regarding same specifically regarding the user interface; and, e.g., p41 regarding re-mapping a touchscreen button.
Response to Arguments
Applicant argues on page 9 of its Remarks in regard to the rejections made under 35 USC 101:
PNG
media_image1.png
424
680
media_image1.png
Greyscale
Applicant’s argument is unpersuasive. 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. To the extent that the Applicant cites various MPEP provisions that themselves cite to relevant legal authority, Applicant’s claimed invention in terms of the rules of a gambling game is not, thereby, analogous to an improvement to self-referential database technology (Enfish), nor is it analogous to an improvement to the animation of human facial movements (McRO), nor is it analogous to an improvement to computer memory (Visual Memory), nor is it an improvement to detecting suspicious activity on computer networks (Finjan). And to the extent that Applicant embodies its claimed abstract idea on an electronic gaming machine, the CAFC has held in, e.g., Savvy Dog Systems (non-precedential) that such an embodiment does not render “significantly more”.
Applicant argues on page 10 of its Remarks in regard to the rejections made under 35 USC 101:
PNG
media_image2.png
254
702
media_image2.png
Greyscale
Applicant’s argument is unpersuasive. Applicant’s PGPUB at paragraph 21 provides one sentence of disclosure in regard to how to re-map a touchscreen button from one function to another and the sentence provides any detail in regard to how to make and/or use this function. Such a function must, therefore, have been well-understood, routine, and conventional at the time of filing, otherwise this limited disclosure would not be enabling. Therefore, it does not add “significantly more” to Applicant’s abstract idea. In other words, Applicant’s limited disclosure indicates that it has not invented some improvement to the re-mapping of touchscreen buttons.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
Prosecution Insights