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 .
Claim Objections
Applicant is advised that should claim 7 be found allowable, claim 17 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1 – 20 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.
Claim 1 recites the limitation "the base reels" in lines 5 – 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the plurality of base symbols" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the base reels" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "a presentation assembly" in lines 2 and 4. It is not clear if these are the same element or distinct elements. For clarity, when multiple terms have the same name but are intended to be distinct elements, clearly distinct labels, such as "first element" and "second element" should be used to make the distinct nature clear. Conversely, if the terms are to the same element, a consistent name should be used with “said” or “the” when referring back.
Claim 14 recites the limitation "the plurality of base symbols" in line 2. There is insufficient antecedent basis for this limitation in the claim.
All dependent claims inherit the deficiencies of the claim(s) from which they depend and are similarly rejected for the same reason.
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 an abstract idea without significantly more.
Claims 1 – 20 are all within at least one of the four categories of invention, and have been analyzed to determine whether they are directed to any judicial exceptions.
Step 2A, Prong 1
Each of claims 1 – 20 recites at least one step or instruction for presentation of reels in a gaming machine, which is grouped as a mental process and certain methods of organizing human activity under the 2019 PEG. The claimed limitations involve concepts performed in the human mind, namely observation, evaluation and judgement, which are mental processes and managing personal behavior and following rules or instructions, which are methods of organizing human activity under the 2019 PEG. Accordingly, each of Claims 1 – 20 recites an abstract idea.
Independent Claim 1 recites:
A method of operating a gaming machine, the method comprising the operations of:
presenting, by a presentation assembly, a meter, an array and a plurality of symbol-bearing reels, the symbols comprising base symbols, value- bearing symbols and catalyst symbols;
conducting, by game-logic circuitry, a spin of the reels to land symbols from the base reels in the array;
in response to the landed symbols including a catalyst symbol:
randomly determining, via the game-logic-circuitry, an enhancement to at least one of the landed symbols, wherein the enhancement comprises one of upgrading a base symbol to a value-bearing symbol or upgrading a value-bearing symbol to a more valuable value-bearing symbol;
animating, via the presentation assembly, the enhancement to the at least one of the landed symbols; and
incrementing, by the game-logic circuitry, the meter for each winning combination of symbols in the array according to a paytable.
Accordingly, as indicated above in bold, the above-identified claim (and gaming machine of claim 11) recites an abstract idea. Further, dependent Claims 2 – 10 and 12 – 20 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2
The above-identified abstract idea in each of independent Claims 1 and 11 (and their respective dependent Claims 2 – 10 and 12 – 20) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in independent Claims 1 and 11), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of gaming machine, a meter, reels, game-logic circuitry, presentation assembly as recited in independent Claims 1 and 11 and its dependent claims are generically recited computer elements which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Furthermore, presentation assembly and the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer/computing device. For at least these reasons, the abstract idea identified above in independent Claims 1 and 11 (and their respective dependent Claims 2 – 10 and 12 – 20) are not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application
under 2019 PEG because the claimed system merely implements the above-identified abstract
idea (e.g., mental process) using rules (e.g., computer instructions) executed by a computer (e.g.
gaming machine, a meter, reels, game-logic circuitry, presentation assembly as recited in independent claims 1 and 11). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer/computing device.
Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1 and 11 (and their respective dependent Claims 2 – 10 and 12 – 20) are not integrated into a practical application under the 2019 PEG.
Step 2B
None of the Claims 1 – 20 include additional elements that are sufficient to amount to
significantly more than the abstract idea for at least the following reasons. These claims require the additional elements of: gaming machine, a meter, reels, game-logic circuitry, presentation assembly as recited in the independent claims.
The above-identified additional elements are generically claimed computer components
which enable the above-identified abstract idea(s) to be conducted by performing the basic
functions of automating mental tasks. The courts have recognized such computer functions as
well-understood, routine, and conventional functions when claimed in a merely generic manner
(e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev.
Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015);
and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Like SAP America vs InvestPic, LLC (Fed. Cir. 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
The recitation of the above-identified additional limitations in Claims 1- 20 amounts to
mere instructions to implement the abstract idea on a computer. Simply using a computer or
other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or
transmit data) or simply adding a general purpose computer or computer components after the
fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does
not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing
technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a
technical explanation as to how to implement the invention should be present in the specification
for any assertion that the invention improves upon conventional functioning of a computer, or
upon conventional technology or technological processes. That is, the disclosure must provide
sufficient details such that one of ordinary skill in the art would recognize the claimed invention
as providing an improvement. Here, Applicant’s specification does not include any discussion of
how the claimed invention provides a technical improvement realized by these claims over the
prior art or any explanation of a technical problem having an unconventional technical solution
that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d
1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide
sufficient details regarding the manner in which the claimed invention accomplishes any
technical improvement or solution.
For at least the above reasons, Claims 1 – 20 are directed to applying an abstract idea (e.g., mental process or certain method of organizing human activity) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 1 – 20 provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements
do not provide significantly more. Specifically, when viewed individually, the above-identified
additional elements in independent Claims 1 and 11 (and their dependent claims) do not add
significantly more because they are simply an attempt to limit the abstract idea to a particular
technological environment. That is, neither the general computer elements nor any other
additional element adds meaningful limitations to the abstract idea because these additional
elements represent insignificant extra-solution activity. When viewed as a combination, these
above-identified additional elements simply instruct the practitioner to implement the claimed
functions with well-understood, routine and conventional activity specified at a high level of
generality in a particular technological environment. As such, there is no inventive concept
sufficient to transform the claimed subject matter into a patent-eligible application. As such, the
above-identified additional elements, when viewed as whole, do not provide meaningful
limitations to transform the abstract idea into a patent eligible application of the abstract idea
such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 1 – 20 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a
technical field (as in DDR).
Therefore, none of the claims 1 – 20 amounts to significantly more than the abstract idea
itself.
Accordingly, claims 1 – 20 are not patent eligible and rejected under 35 U.S.C. 101 as
being directed to abstract ideas implemented on a generic computer in view of the Supreme
Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
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 1 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Suda et al. (US Patent No. 10,733,845) in view of Rodgers et al. (US Pub. No. 2005/0164775 A1).
As per claim 1, Suda et al. discloses method of operating a gaming machine, the method comprising the operations of: presenting, by a presentation assembly, a meter, an array and a plurality of symbol-bearing reels, the symbols comprising base symbols, value- bearing symbols and catalyst symbols (see Fig. 1A – B, 2, 3A and 12A – 12D), conducting, by game-logic circuitry, a spin of the reels to land symbols from the base reels in the array (Fig. 9:304 and Fig. 10); in response to the landed symbols including a catalyst symbol (detects an appearance of the collect symbol and at least one credit prize symbol in the outcome and responsively determines an amount of credits associated with the at least one credit prize symbol and provides a bonus award including the determined amount of credits, see Fig. 9:306 – 308) and incrementing, by the game-logic circuitry, the meter for each winning combination of symbols in the array according to a paytable (The credit balance manager module executes a process for decrementing credit balance and incrementing credit balance based on win amount displayed in win meter, see Fig. 10).
Suda et al. does not expressly disclose randomly determining, via the game-logic-circuitry, an enhancement to at least one of the landed symbols, wherein the enhancement comprises one of upgrading a base symbol to a value-bearing symbol or upgrading a value-bearing symbol to a more valuable value-bearing symbol; animating, via the presentation assembly, the enhancement to the at least one of the landed symbols.
Rodgers et al. teaches a gaming device having symbols with transformation probabilities, wherein the gaming device includes a plurality of reels having a plurality of symbols and one or more activator symbols. the activator symbol is displayed, the processor determines the transformation probability of, or associated with, each of the symbols displayed within the display device. The processor then randomly determines which, if any, symbols will be transformed into functional symbols and transforms those symbols into functional symbols (see [0006], [0008], [0041]-[0042]). The transformation is displayed to the player as an animation emanating from the activator symbol: "the activator symbol appears to shoot, or send a ray towards, or provide any other suitable indicator to the symbol 68e on the third reel 34c which is determined to be a wild symbol" (See Fig. 4B and [0043]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modify the method of Suda such that, in response to the landing of the collect symbol in the grid, the processor further randomly determines and animates a transformation of one or more landed standard game symbols into credit prize symbols as taught by Rodgers in order to heightening player anticipation and engagement.
As per claim 2, Suda et al. disclose each of the plurality of symbol-bearing reels is associated with a respective location in the array (See Fig. 4A).
As per claims 3 and 4, Suda et al. does not expressly disclose the enhancement is applied to the symbol at a randomly selected location in the array and the enhancement is applied to all occurrences in the array of a base symbol randomly selected from the plurality of base symbols. Rodgers et al. teaches that the processor randomly determines which of the individual displayed symbol positions is transformed (see [0043], [0046]-[0047] and further describing random determination that the symbol in "the top position of the third reel 34c" or "the bottom position of the second reel 34b" is transformed). Rodgers further teaches that "the transformation probabilities may be associated with one or more locations on the display device" and "may be randomly determined from a potential range of probabilities" (see [0058]), and that "only symbols in certain locations such as in certain rows may be transformed" (see [0061]).
As per claim 5, Suda et al. does not expressly disclose the randomly determining and animating the enhancement steps are repeated within the context of a single spin of the reels.
Rodgers teaches a single display of symbols, "the symbol or symbols chosen to become wild become wild symbols successively," with the activator symbol first sending a ray toward symbol 68e and thereafter toward a second symbol 68a (see [0043]). Further, Rodgers et al. teaches successive transformation of a first symbol 68c into a credit value 73a and thereafter of a second symbol 68h into a credit value 73b within the same displayed outcome (see [0048]; Fig. 8B-8E).
As per claim 6, Suda et al. discloses the spin is initiated in response to a wager (see Fig. 9:302).
As per claim 7, Suda et al. discloses the spin is a free spin in a series of free spins (see Col. 8, line 65 – Col. 9, line 8).
As per claim 8, Suda et al. does not expressly disclose the catalyst symbol is held in place in the array for the entire series of free spins. Rodgers et al. teaches a symbol, once transformed could remain wild for one or more other transformations (see [0061]).
As per claims 9 and 10, Suda et al. discloses the value-bearing symbols bear credit amounts and the value-bearing symbols bear identification of an associated jackpot (each of these symbols have a different rank from each other regarding their value when winning, their rank gradually raises in this order: “9”, “10”, “J”, “Q”, “K”, “A”, “PicE”, “PicD”, “PicC”, “PicB”, “PicA”. A combination of symbols that includes high-ranking symbols when winning, can obtain a larger winning payout compared to a combination of low-ranking symbols when winning, see Col. 9, line 51 – Col. 10, line 5).
As per claims 11 – 20, the instant claims are a gaming machine in which corresponds to the method of claims 1 – 10. Therefore, it is rejected for the reasons set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mark et al. (US Pub. No. 2019/0051097 A1) discloses hold and spin feature game in which configurable symbols bearing credit values and jackpot identifications are held in place during a feature game.
Bolling, JR. et al. (US Pub. No. 2021/0019985) discloses electronic wagering game in which jackpot upgrade symbols are added to one or more reel strips in response to reel upgrade symbols landing.
Penacho et al. (US Pub. No. 2022/0084365 A1) discloses credit-substitution symbol mechanics in which substitution symbols are randomly added to a reel and a credit value is paid in addition to a payline award.
Zoble et al. (US Pub. No. 2017/0365127 A1) discloses value-based symbol replacement and reel modification methods for slot machines.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANKIT B DOSHI whose telephone number is (571)270-7863. The examiner can normally be reached Mon - Fri. ~9 - ~5:30.
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ANKIT B. DOSHI
Primary Examiner
Art Unit 3715
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