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 .
Response to Amendment
Applicant has amended the claims to further state when the secondary game is unavailable and available. Thus, the double patenting rejection is withdrawn.
Applicant argues that the claims are not abstract under 35 USC § 101 (Remarks 7-8 filed 9/24/2026) because the claims are dissimilar to case law and do not recite the rules for following a game. Applicant’s arguments are not persuasive because they do not address abstract wagering as recited by the Examiner. Applicant likens his claims to the case of Ex Parte Desjardins and argues the claims recite a practical application reflecting an improvement to technology (Remarks 9-10). Applicant contends that the instant claims provide an improvement to the field of electronic gaming by adding excitement to the user experience by giving the player an opportunity to win back their primary game wager. Examiner disagrees. But where is the self-referential table of Enfish; or the custom remote filtering that doesn’t sacrifice local security measures of Bascom; or the ruleset-specific morph weights at specific keyframe insertion times of McRO? Merely winning back one’s money is one or more of an emotional, administrative, logistical, or financial solution but not a technological one.
Of note, in December 2025, the USPTO issued an advance notice that the MPEP will be updated to include Ex Pate Desjardins. (See Advance notice of change to the MPE in light of Ex Parte Desjardins, December 5, 2025). The Ex Parte Desjardins decision analyzed eligibility in terms of whether the claims were directed to an improvement in the functioning of a computer, or an improvement to other technology or technical field under longstanding Federal Circuit precedent in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). See also MPEP §§ 2106.04(d)(l) and 2106.05(a). The MPEP will contain in-part:
the claimed invention was a method of training a machine learning model on a series of tasks. The Appeals Review Panel (ARP) overall credited benefits including reduced storage, reduced system complexity and streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks as technological improvements that were disclosed in the patent application specification…In Step 2A Prong Two, the ARP then determined that the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. Importantly, the ARP evaluated the claims as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the specification. Accordingly, the claims as a whole integrated what would otherwise be a judicial exception instead into a practical application at Step 2A Prong Two, and therefore the claims were deemed to be outside any specific, enumerated judicial exception. (MPEP 2106.04 (d)(III).
According to Applicant’s specification cited by Applicant in para. [0055], the offering of a secondary game following a losing streak can’t be equated with reduced storage, reduced system complexity and streamlining, and preservation of performance attributes to optimize, and thereby improve, how the machine learning model operates while protecting knowledge to address the technological problem of catastrophic forgetting. Examiner deems the claims to lack a practical application.
Applicant’s amendments overcome the art of record. However, Applicant is directed to the disclosure of U.S. Pat. Pub. No. 2015/0080109 to Holsclaw. As for Claim 1, Holsclaw discloses an environmental condition and as for Claim 18, Holsclaw discloses a game play condition, and for Claim 1 and Claim 18, Holsclaw discloses a second paytable based on the primary game wager amount. The second paytable is modified by Phillips so the max award is equal to the primary game wager amount as explained below. Thus, the rejection of the claims is maintained.
Claim Objections
7. Claims 2-8 are objected to because of the following informalities:
Claim 1, Line 8: Change “comprising a first paytable” to -- , and the primary wagering game comprising a first paytable;
Claims 2 thru 8, Line 1 of each: Change “determining that the game play condition associated with the primary game has been met comprises” to – obtaining, by the processor circuit, an electrical signal indicating that a game play condition associated with the primary wagering game has been met comprises --.
Claim 18, Line 9: Change “comprising a first paytable” to -- , and the primary wagering game comprising a first paytable;
Appropriate correction is required.
Claim Rejections - 35 USC § 101
8. 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.
9. Claims 1-8 and 17-22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
10. Step 1
Claims 1-8 and 17-22 are directed to a method meeting the requirements for Step 1.
11. Step 2A Prong 1
In independent Claim 1 and similarly for Claim 18, recite abstract mental processing to determined that a game condition has been met and abstract wagering which are both certain methods of organizing human activity. For the purposes of the 101 analysis they are combined into a single abstract idea of wagering.
12. Step 2A Prong II
The abstract idea is not integrated into a practical application. According to MPEP 2106, a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
13. Here, a processor circuit and gaming device are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. Applicant’s Specification does not disclose that the processor or gaming device are directed to a technological solution to a technological problem that “overcome some sort of technical difficulty.” (Citing ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 768 (Fed. Cir. 2019)).
14. Applicant’s specification does not suggest that the processor circuit or gaming device are improved from a technical perspective, or that they would operate differently than they otherwise could but instead where:
“FIG. 2B is a block diagram that illustrates logical and functional relationships between various components of a gaming device 100. It should also be understood that components described in FIG. 2B may also be used in other computing devices, as desired, such as mobile computing devices for example. As shown in FIG. 2B, the gaming device 100 may include a processing circuit 12 that controls operations of the gaming device 100. Although illustrated as a single processing circuit, multiple special purpose and/or general-purpose processors and/or processor cores may be provided in the gaming device 100. For example, the gaming device 100 may include one or more of a video processor, a signal processor, a sound processor and/or a communication controller that performs one or more control functions within the gaming device 100. The processing circuit 12 may be variously referred to as a "controller," "microcontroller," "microprocessor" or simply a "computer." The processor may further include one or more application-specific integrated circuits (ASICs).” [0038]
15. Consequently, these elements are viewed as nothing more than an attempt to generally
link the use of the judicial exception to the technological environment of a computer or as a means to automate the steps. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
16. There does not appear to be any extra-solution activity but for the above devices employed as tools to execute the wagering steps. Even when the limitations are viewed in combination, the additional elements in this claim do no more than automate the steps needed to be performed, using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Latric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality). Accordingly, each claim, as a whole, does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. Thus, Claim 1 lacks the eligibility requirements of Step 2 Prong II.
17. Step 2B
According to MPEP 2106, in addition to the considerations discussed in Step 2A, an additional consideration indicative of an inventive concept (aka “significantly more”) is the addition of a specific limitation other than what is well-understood, routine, conventional activity in the field (MPEP 2106.05(d)). Conversely, an additional consideration not indicative of an inventive concept is simply appending well-understood, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
18. There are no elements evaluated under Step 2A as extra-solution activity but for the devices used as tools. Thus, Claims 1 and 18 do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. Thus, Claims 1 and 18 are ineligible.
19. Dependent Claims 2-8, 11-17, and 19-22
Claims 2-8 recite additional abstract details for the determining step. Claims 11-17 and Claims 19-22 recite additional abstract wagering game steps in more detail. Thus, none of Claims 2-8, 11-17, and 19-22 provide a practical application to the abstract idea.
Claim Rejections - 35 USC § 103
20. 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.
21. 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.
22. 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.
23. Claims 1-2, 11, 13-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. No. 2015/0080109 to Holsclaw in view of U.S. Pat. Pub. No. 2008/9214266 to Phillips.
In Reference to Claim 1, 15, 17, and 18
Holsclaw discloses a method (Fig. 1), comprising:
operating, by a processor circuit, a gaming device in a first state in which a primary
wagering game is provided and a secondary wagering game is unavailable to a player (Fig. 4A gaming machine 1110a has processor 1012 and memory 1014 (Fig. 3B) in a first state in which a primary game 220a is provided (Fig. 2A) and a secondary wagering game wheel 200 (Fig. 2A [0025]) is unavailable until an activator symbol has been awarded (Fig. 2D, [0026, 0036]);
obtaining a signal indicating that a game play condition associated with the primary wagering game has been met (Fig. 2A selection of button 220a);
obtaining a wager input by the player at the gaming device (“receives a wager” [0033], see also, no wager needed for the secondary game [0144]), the wager comprising a primary wager amount (“5 credits” [0033]) for the primary wagering game, the primary wagering game comprising a first paytable 230a (Fig. 2B);
obtaining after obtaining the wager, a signal indicating that an environmental {game play} condition has been met (“the award indicator activation events or any other variables may be” based on an environmental condition such as “(18) based on time (such as the time of day))” [0077]; game play condition “(10) determined based on at least one play of the game” [0077]);
when the condition is met, operating the gaming device in a second state in which the secondary wagering game is available to the player (Fig. 2B-2D during or after the game of Jacks or Better executes award activator 210a becomes active making the wheel bonus available to the player [0036]):
based on said primary wager amount, said determination that the game play condition has been met, and said gaming device is in the second state (above), executing the secondary wagering game (Fig. 2Q spin of bonus wheel [0055-0056]) comprising a second paytable based on the primary wager amount (Fig. 2R wheel indicia is the paytable and award message 280, bonus game determined by primary game wager amount (denomination of primary game determines award indicator at the same denomination level [0061], see also games are unique to bet levels [0017]);
based on a result of said secondary wagering game indicating a winning result, awarding a secondary game award of the secondary wagering game based on the second paytable (Fig. 2R);
executing said primary wagering game and based on a result of the primary wagering game indicating a winning result, awarding a primary game award based on the first paytable.(the claim does not constrain the secondary game to be resolved before the primary game as this limitation can be reasonably, logically performed prior to the bonus game play, given this, Holsclaw resolves the primary game 220a in Fig. 2D and then resolves the bonus wheel spin in Fig. 2R, note that not all four primary games need to be played, but any of four can be played [0025], Alternatively, if Applicant argues or amends Claim 1 to recite a specific order as in Claims 17 and 18 where the primary game is executed “after” awarding the secondary game, Holsclaw has something to say about that too. According to Holsclaw, “[i]n other embodiments, at least one processor of the gaming system randomly determines when to provide one or more plays of one or more secondary games, in one such embodiment, no apparent reason is provided for the providing of the secondary game. In this embodiment, qualifying for a secondary game is not triggered by the occurrence of an event in any primary game or based specifically on any of the plays of any primary game. That is, qualification is provided without any explanation or, alternatively, with a simple explanation. In another such embodiment, the gaining system determines qualification for a secondary game at least partially based on a game triggered or symbol triggered event such as at least partially based on play of a primary game.” [0142] Examiner understands this to support a circumstance where a player begins a primary game 220a in the first state and a secondary game is randomly activated and the player is qualified based on a play of the game in a second state. Thus, alternatively, the secondary game award precedes the primary game award, the primary game award of Fig. 2D).
Holsclaw discloses the invention substantially as claimed. However, the reference does not explicitly disclose wherein a maximum award of the second paytable is equal to the primary wager amount. One of skill in the art would be aware of the teachings of Phillips.
Phillips teaches of wagering games (Fig. 1) where a player can select an additional number (Fig. 2 "Determine a Winning Number" 210, "Determine an Additional Winning Number" 220). According to Phillips, "[i]n an embodiment of the presently described technology, wagers on numbers 130 that are additional winning numbers 130 are treated as "mulligans." That is, if a player wagers on a number 130 that is an additional winning number 130, that player does not win any additional amount, but instead is given his/her wager back. In this way, the wager is treated similar to a "push" in blackjack. This embodiment therefore provides players with free plays (a non-loss of a wager and return of wager, for example) when their wagers are associated with non-winning numbers 130 but that are associated with an additional winning number 130." [0034].
The Supreme Court in KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way; and
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Here, it would require only routine skill in the art to modify the maximum award of Holsclaw with the free play of Phillips where if a player does not achieve Jacks or Better in the primary game, a player will still activate the award marker 210a (Fig. 2D) but the wheel payouts are modified to be equal to a return of the players primary game wager to achieve the predicable result of providing a free play to a player in the event of a primary game loss to further game play time and profits for the gaming establishment and mitigate a player from becoming discouraged. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
In Reference to Claims 2 and 22
Holsclaw discloses determining that the primary wager amount for the primary wagering game comprises a maximum wager amount for the primary wagering game ([0003, 0112]).
In Reference to Claims 11 and 20
Holsclaw discloses an environmental condition comprises a time range ([0077]).
In Reference to Claims 13 and 14
Holsclaw discloses the award indicator 210a as activated in Fig. 2D by displaying an indication on a display device that the secondary wagering game is in an active state (Fig. 2DD, [0036]).
In Reference to Claim 16
Holsclaw discloses based on receiving the wager, allocating, by the processor circuit, a predetermined portion of the primary wager amount to a secondary game award pool, wherein the secondary game award is paid from the secondary game award pool (“20) determined based on an amount of coin-in accumulated in one or more pools” [0077] which Examiner deems would be in reference to the primary game and bonus game.
In Reference to Claim 19
Holsclaw discloses a virtual wheel 200 (Fig 2D), wherein the secondary game award comprises a maximum payout (wheel showing a max payout 200c and when modified by Phillips the number displayed would be the amount of the primary game wager), and display of a depiction of a pointer of the virtual wheel pointing to a virtual representation of the maximum payout (pointer 210a when activated).
24. Claims 3-5, 7-8, 12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Holsclaw, Phillips, further in view of U.S. Pat. Pub. No. 2013/0252734 to Gilliland.
Holsclaw discloses the invention substantially as claimed. However, the reference does not explicitly disclose a day range/range of dates, or wherein losing a predetermined amount within a predetermined previous amount of time {previous number of primary games}; or losing a predetermined number of previous primary games; has wagered a predetermined amount within a predetermined previous amount of time, or has played a predetermined number of previous primary games.
Gilliland teaches of gaming machines wherein play is determined based on one or more designated events (Titl.) to establish specific criteria and conditions to be satisfied for play of a primary game ([0091]) over a designated period of time/day {range} ([0091] (cc)) and any suitable combination of conditions ([0091] (hh)) where a player has lost a predetermined amount (lost initial deposit (y) or credits (m); has lost a predetermined amount (y, m) within a predetermined number of previous primary games (m, j); has lost a predetermined number of previous primary games (r); and has wagered a predetermined amount (initial deposit lost (y), and has played a predetermined number of previous primary games (j). Gilliland provides this as part of his invention because players play at substantially different wagering amounts or levels and at substantially rates of play ([0004]) and most gaming content is static and predictable ([0006]).
Here, it would require only routine skill in the art to modify the conditions of play of Holsclaw with the various conditions of Gilliland to increase the robustness of the games and conditions of game play to make games exciting for a wide range of players. The Courts have held that combining prior art elements according to known methods to yield predictable results is indicia of obviousness.
25. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Holsclaw, Phillips, in view of U.S. Pat. Pub. No. 2014/0287812 to Fieldman.
Holsclaw discloses the invention substantially as claimed. However, the reference does not explicitly disclose a predetermined player status level.
Friedman teaches of establishing conditions of player game play based on player status level where a multiple dimension expanding wild symbols game triggering event occurs based upon gaming system operator defined player eligibility parameters stored on a player tracking system (such as via a player tracking card or other suitable manner). Specifically, where the gaming system determines the player tracking level of the player and defines minimum bet levels required for such events or conditions to occur based on the player's card level. ([0171]).
Here, one of skill in the art is aware of player tracking systems and game conditions tuned to player status to modify the game bonus systems of Holsclaw with the identification of player tracking level of Fieldman to achieve the predictable result of making the game more engaging based on the status of the player. The Courts have held that applying a known technique to a known device (method, or product) ready for improvement to yield predictable results is indicia of obviousness.
Conclusion
26. 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.
27. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
28. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
29. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached on (571) 270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/ Primary Examiner, Art Unit 3715
