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 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, 8, and 14, 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in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); claim the fundamental economic practices or principles, which has been as identified by MPEP 2106.04(a)(2)(II)(A) as a method of organizing human activity;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identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24), in terms of the Applicant claiming: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:
initiating a feature game in response to a trigger condition being met in respect of a base game […]; and
conducting game instances of the feature game until an end condition is met, wherein conducting each feature game instance comprises:
displaying a matrix of symbol positions […];
conducting, in respect of each symbol position of the matrix of symbol positions not occupied by a held symbol, a symbol selection process using: (a) [random symbol selection] and (b) reel strips comprising prize symbols having prize values and at least one prize award symbol;
modifying display of the matrix of symbol positions […] responsive to the symbol selection process, in order to display any selected prize symbol(s) and any selected prize award symbol(s) in addition to each held symbol; and
upon the modified display of the matrix of symbol positions, including at least one new prize award symbol, making an award based on the prize value of each displayed prize symbol.
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 device comprising an electronic display and a random number generator, a processor and a memory storing instructions comprising the Applicant’s abstract idea embodied 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., a gaming device comprising an electronic display and a random number generator, a processor and a memory storing instructions comprising the Applicant’s abstract idea embodied 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., F1-2 in Applicant’s PGPUB and text regarding same.
Claim Rejections - 35 USC § 102
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 1-6 and 8-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PGPUB US 20230162569 A1 by Sanborn et al (“Sanborn”).
In regard to Claim 1, Sanborn teaches a gaming device comprising:
an electronic display;
a random number generator;
a processor; and
a memory storing instructions which, when executed by the processor, cause the processor to:
(F1-2);
initiate a feature game in response to a trigger condition being met in a base game conducted by the gaming device; and
(see, e.g., p97);
conduct game instances of the feature game until an end condition is met, wherein conducting each feature game instance comprises:
displaying a matrix of symbol positions on the electronic display;
(see, e.g., F9 and F11-12);
conducting, in respect of each symbol position of the matrix of symbol positions not occupied by a held symbol, a symbol selection process using: (a) the random number generator; and (b) reel strips comprising prize symbols having prize values and at least one prize award symbol;
(see, e.g., p68 and 97);
modifying display of the matrix of symbol positions on the electronic display responsive to the symbol selection process, in order to display any selected prize symbol(s) and any selected prize award symbol(s) in addition to each held symbol; and
(see, e.g., F11 and F12);
upon the modified display of the matrix of symbol positions, including at least one new prize award symbol, making an award based on the prize value of each displayed prize symbol
(see, e.g., p98).
In regard to Claim 2, Sanborn teaches these limitations. See, e.g., F12, 1205.
In regard to Claims 3-4, Sanborn teaches these limitations. See, e.g., F11, 1105.
In regard to Claim 5, Sanborn teaches these limitations. See, e.g., p97.
In regard to Claim 6, Sanborn teaches these limitations. See, e.g., p98.
In regard to Claim 8-13, see rejection of Claims 1-6.
In regard to Claim 14-19, see rejection of Claims 1-6.
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 7 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sanborn, in view of official notice.
In regard to Claims 7 and 20, the Examiner takes OFFICIAL NOTICE that such end conditions for bonus/feature games were old and well-known at the time of Applicant’s filing its invention. Such functionality allows for the number of feature/bonus games being awarded to have a finite limit. As such it would have been obvious to one of ordinary skill in the art at the time of filing to implement the claimed functionality within the invention of the cited prior art so as to allow for the number of feature/bonus games being awarded to have a finite limit.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
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
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