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 .
Procedural Summary
This is responsive to the claims filed 12/11/2024
Claims 1-20 are pending.
Signed copies of the IDS’ are attached.
The Drawings filed 12/11/2024 are noted.
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 non-statutory subject matter.
Step 1:
The claims are drawn to apparatus categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter.
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claim 11 is analyzed below, with italicized limitations indicating recitations of an abstract idea, noting independent Claims 1 & 16 recite substantially similar limitations:
Claim 11: “A system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: display, by a display device, a play of a game, determine any occurrence of a progressive award triggering event associated with a maintained progressive award, and responsive to an occurrence of the progressive award triggering event: communicate data associated with the maintained progressive award and the occurrence of the progressive award triggering event to a component of an offer system, and responsive to a receipt, from the component of the offer system, of a first limited duration alternative benefit determined based on the maintained progressive award and in association with an occurrence of an alternative benefit offer event: display, by the display device, the first alternative benefit, and for a first predetermined duration associated with the first alternative benefit: enable a user to accept the first alternative benefit, and responsive to the user accepting the first alternative benefit: cause an association of the first alternative benefit with the user, and forgo causing the maintained progressive award to be provided to the user in association with the occurrence of the progressive award triggering event.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG1:
“Mental Processes”: concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
The claimed invention is drawn to offering alternative benefits to players in lieu of paying out a progressive award triggering event. The claimed invention can be practically performed in the human mind. For example, nothing precludes a human from offering alternative payouts in lieu of payment for a progressive triggering event. If the player accepts, then the alternative payout is satisfied. If the player rejects, then the player may partake in the progressive payout. Applicant’s claims implement this mental process using electronics.
“Certain Methods Of Organizing Human Activity”: managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Additionally, offering alternative payouts is managing personal behavior because it represents how an operator designs player payouts. It also represents managing interactions between people, wherein the interactions are with casino gaming devices. Further, to the extent the claims are drawn to how a game is played including offering alternative payouts, this represents interactions between gameplayers and a social activity. It also represents following rules/instructions (i.e., rules defining how the game is conducted and payouts offered.)
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations drawn to a computing system with a processor and memory, (a GUI).
These additional limitations:
Do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a));
Fail to recite an improved way of training a machine learning model that protected the model’s knowledge about previous tasks while allowing it to effectively learn new tasks, and do not recite improvements to computer component or system performance based upon adjustments to parameters of a machine learning model associated with tasks or workstreams2;
Do not apply the exception using a particular machine, (MPEP 2106.05(b)) and
Fail to effect a transformation. (MPEP 2106.05(c)).
Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, see U.S. Pub. No.: 2013/0337902 A1 to Schaefer et al. showing the conventionality of using electronic gaming systems in an offer/acceptance game scheme. These elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Additionally, Applicant’s Specifications acknowledge that generic devices including desktop computers are used to implement the claimed invention.3
It is noted that Applicant’s Specifications disclose several differences between general computing devices and electronic gaming machines.4 However, the present claims do not recite any features distinguishing them from general computing devices. Rather, the claims require gaming systems with processors and memory. And, as described above, this only requires GUIs.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they only recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls5:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-11 & 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Jhanb et al. (U.S. Pub. No.: 2015/0080116 A1) in view of Fitzsimmons et al. (U.S. Pub. No.: 2011/0111845 A1).
Regarding Claims 1, 6, 8 & 11: Jhanb discloses a system (Fig. 3A), comprising: a processor, (Fig. 3B, 1012); and a memory device, (Fig. 3B, 1014), that stores a plurality of instructions, (¶ 131) that, when executed by the processor, cause the processor to: display, by a display device, (Fig. 3B, 1060), an event in association with a play of a game, (Fig 1, 102), determine, based on the displayed event, any occurrence of an alternative benefit offer event, (Fig. 1, 104-110
Jhanb discloses responsive to an occurrence of the progressive award triggering event: communicate data associated with the maintained progressive award and the occurrence of the progressive award triggering event to a component of an offer system; responsive to a receipt, from the component of the offer system, of a first alternative benefit determined based on the maintained progressive award and in association with an occurrence of an alternative benefit offer event: display, by the display device, the first alternative benefit. (Fig. 1, 104-110, 112, 114 and related descriptions).
Jhanb discloses, and for a first time associated with the first alternative benefit: enable a user to accept the first alternative benefit, and responsive to the user accepting the first alternative benefit: cause an association of the first alternative benefit with the user, and forgo causing the maintained progressive award to be provided to the user in association with the occurrence of the progressive award triggering event, (Fig. 1, 112-126 and related descriptions).
Jhanb discloses the invention substantially but does not make explicit that the alternative benefit offer is of a limited duration with an expiration time. However, in a related progressive gaming invention, Fitzsimmons evidences that game offers with expirations are well-known in the art, (Fitzsimmons, ¶ 64).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jhanb’s alternative benefit offer such that it has a limited duration with an expiration, as suggested by Fitzsimmons, for several reasons including advancing and continuing game play. A person of ordinary skill in the art would recognize that an offer cannot be held open indefinitely in perpetuity. This yields predictable and expected results.
Regarding Claims 3 & 13: Jhanb discloses responsive to the user not accepting the first limited duration alternative benefit prior to the expiration of the first predetermined duration, cause the processor to cause the maintained progressive award to be provided to the user in association with the occurrence of the progressive award triggering event, (See discussion of Claim 1, above.)
Regarding Claims 4 & 14: Jhanb discloses responsive to the alternative benefit offer event not occurring, cause the processor to cause the maintained progressive award to be provided to the user in association with the occurrence of the progressive award triggering event, (Fig. 1, 110-114).
Regarding Claims 5 & 15: Jhanb discloses wherein the progressive award triggering event occurs in association with a displayed event that is part of a play of a game, (Fig. 1, 102-110).
Regarding Claim 7: Jhanb discloses, wherein the first limited duration alternative benefit comprises gaming establishment inventory having a displayed value greater than a value of the maintained progressive award, (Fig. 1, 104, 106 and related descriptions).
Regarding Claim 9: Jhanb discloses cause the processor to maintain the progressive award, (¶¶ 9-11).
Regarding Claim 10: Jhanb discloses wherein the memory device stores a plurality of further instructions that, when executed by the processor, cause the processor to determine the occurrence of the progressive award triggering event, (Fig. 1, 106 and related description.)
Examiner’s Note
Claims 2, 12 & 16-20 recite limitations not shown by the prior art. However, due to the outstanding § 101 rejection, these claims are not formally indicated as allowable.
Specifically, the closest prior art, Jhanb et al. (U.S. Pub. No.: 2015/0080116 A1) in view of Fitzsimmons et al. (U.S. Pub. No.: 2011/0111845) fails to disclose, suggest or render obvious, in combination with the other claimed limitations:
Per Claims 2 & 12: a second limited duration alternative benefit, and responsive to the user accepting the second limited alternative benefit prior to an expiration of a second predetermined duration, cause an association of the second limited duration alternative benefit with the user, and cause the maintained progressive award to not be provided to the user in association with the occurrence of the progressive award triggering event
Per Claims 16-20: responsive to a receipt, from the component of the offer system, of data associated with a rejection of the first alternative benefit and an acceptance of a second alternative benefit of the plurality of alternative benefits within a second predetermined duration associated with the second alternative benefit, cause an association of the second alternative benefit with the user, wherein the association results in the maintained progressive award not being provided to the user in association with the occurrence of the progressive award triggering event.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached M-F, generally 9am-5:30 pm.
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/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 See MPEP 2106
2 Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential)
3 Specifications: [0149] In various embodiments, the system includes one or more servers configured to communicate with a personal gaming device—such as a smartphone, a tablet computer, a desktop computer, or a laptop computer—to enable web-based game play using the personal gaming device. In various embodiments, the player must first access a gaming website via an Internet browser of the personal gaming device or execute an application (commonly called an “app”) installed on the personal gaming device before the player can use the personal gaming device to participate in web-based game play. In certain embodiments, the one or more servers and the personal gaming device operate in a thin-client environment. In these embodiments, the personal gaming device receives inputs via one or more input devices (such as a touch screen and/or physical buttons), the personal gaming device sends the received inputs to the one or more servers, the one or more servers make various determinations based on the inputs and determine content to be displayed (such as a randomly determined game outcome and corresponding award), the one or more servers send the content to the personal gaming device, and the personal gaming device displays the content. (Emphasis Added.)
4 Specifications, e.g., ¶¶ 158-177.
5: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)
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