Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 101
Overview:
Claims 1-18 are rejected under 35 U.S.C. 101 because the invention is directed to activities the courts have recognized as abstract ideas, without a practical application or inventive concept. The claims are focused on the fundamental human practice of inviting someone to join an activity (a game of chance). Inviting others to join activities long predates the digital era and was traditionally accomplished orally or through mailed invites. Social activities and interactions among human beings (including interactions among humans and computers) fall under the enumerated grouping of abstract ideas of ‘certain methods of organizing human activity,’ see MPEP 2106.04(a)(2)(II).
The claims fail to reveal any specific technical solutions to an existing technical problem in the electronic casino gaming machine art arising from the practice of the claimed steps. The claims recite a high-level overview of an idea for sending invitations to join a game of chance. The claims state result-oriented outcomes (“communicate,” “detect,” “transmit”) allegedly achieved by some generic system but with no details of how the system achieves the outcomes. Although claims 1-18 purport to use computers including a “server”, this server is claimed as having unknown hardware, software, or architecture. The server operates in accordance with unknown program logic, control flow, or input or output processing. And although claims 10-18 are method claims, there are no step limitations to explain to a reader of the claim how any of the communicating, detecting, or transmitting step outcomes are to be achieved.
There is no technical description in the claims of how computers are configured or operated that could serve as evidence of computers being tangibly improved through enabling human beings to be invited to play chance games. Using computers in an “apply it” scenario to practice abstract activities in a generic technological context is evidence of a lack of significantly more. And providing new or different types of information to human beings via a display or applying activities that are equivalents of organized human interaction in a generic computing environment are not evidence of an improvement to the function of a computer.
Case law supports that claims must not only describe desired outcomes but also include a description of specific technological methods for achieving claimed outcomes. When "the claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves these results. Claims of this nature are almost always found to be ineligible for patenting under Section 101." Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024, precedential). The pending claims contain these fatal flaws and the same conclusion of ineligibility is reached.
Detailed Analysis
The following detailed analysis is based on the subject matter eligibility examination guidelines provided in the MPEP at https://www.uspto.gov/web/offices/pac/mpep/s2106.html
Steps 1 and 2 of the Alice analysis have been conducted for the pending claims.
Step 1 (See MPEP 2106.03): In this step, it is determined whether the pending claims are directed to at least one of the four statutory categories of subject matter. Here it is determined that all of the pending claims fall into statutory categories. The claims meet step 1 as follows:
Claims 1-9 machine (system)
Claims 10-18: process (method)
Step 2A, Prong 1 (MPEP 2106.04(I)): In this step of the Alice analysis, judicial exception(s) that fall into abstract idea groupings enumerated by the courts are identified and quoted.
The claims recite the following judicial exceptions:
In independent claim 1:
detect an invitation for participation in a game of chance; presenting the invitation, presenting a game of chance.
Inviting someone to participate in a game and conducting games of chance are fundamental social human interactions of immeasurably antiquity that long predate the digital era. Managing interactions among human beings including social interactions have been held by the courts to belong to the enumerated grouping of “Certain methods of organizing human activity”, see MPEP 2106.04(a)(2). To the extent generic computers are used to apply this abstract idea, MPEP § 2106.04(a)(2)(II) explains that “certain activity between a person and a computer … may fall within the "certain methods of organizing human activity" grouping.”
The determination that the instant claims are directed to abstract ideas can be validated by considering four “well settled indicators of abstractness” articulated by the court in Beteiro v. DraftKings, No. 2022-2275 (Fed. Cir. June 21, 2024, precedential), which is found to be especially relevant because it, too, occupies the regulated electronic wagering art. In this decision to affirm the district court's ruling that the asserted claims are patent ineligible, the Federal circuit references four "well-settled indicators of abstractness":
1. The claims recite generic steps, such as "detecting information," "generating and transmitting a notification based on the information," "receiving a message," "determining ... and processing information," which are of a kind frequently held to be abstract.
2. The claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves those results.
3. The claims are analogous to those deemed abstract in Federal Circuit precedents.
4. The claims can be persuasively analogized to longstanding "real-world" ("brick and mortar") activities.
The pending claims include all these indicators. They recite generic steps describing outcomes such as “communicate with at least one gaming machine,” “detect…an invitation,” and “transmit game data”. The claims are drafted entirely using result-focused functional language. There are no technical specifications attributed to any of the hardware or software or any detailed step limitations that could reveal to a reader of the claim how any of the outcomes are to be carried out. The precedents to the pending claims include Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015) which claimed methods for managing behavior between people and computers comprising communicating a notification to users via a device. Also in Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 126 USPQ2d 1498 (Fed. Cir. 2018), the Federal Circuit found the social activity of voting and submitting votes was a "fundamental activity that forms the basis of our democracy" and has been performed by humans for hundreds of years. 887 F.3d at 1385-86, 126 USPQ2d at 1504-05. And the pending claims to generically automated game invitation is rooted in fundamental human activity long predating the existence of computers.
Step 2A, Prong 2 (MPEP § 2106.04(d)): In this step, any additional elements beyond the identified abstract ideas are identified and evaluated for any integration into a practical application. Any claimed technological improvement is considered.
Claims 2-18 describe ideas of outcomes for conducting generic data transactions used to apply the abstract idea of claim 1. As in claim 1, the dependent claims comprise result-focused language that merely states desired outcomes desired to be achieved by operating computers of unknown hardware or software without any description of how the outcomes are to be achieved. For example, claim 2 describes streaming or emailing the game data, claim 4 describes transmitting an acceptance, claim 7 describes facilitating communications, claim 13 describes transmitting an invitation and detecting an acceptance and claim 16 describes facilitating communications among devices. The balance of dependent claims comprise similar statements of generic data transaction outcomes used to apply the abstract idea of the independent claims. There are no details claimed of what hardware, software, or architecture are used or how they are programmed or particularly configured to accomplish the stated outcomes such as “facilitating”, “transmitting” or the like.
As explained in MPEP § 2106.05(f), a mere “apply it” scenario exists when the additional elements of claims recite only ideas of a solution or outcome – in other words, when the claims fail to recite details of how a solution to a problem is accomplished. Here it is noted that “The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".” In support, the MPEP references Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015).
The generic data transactions including “transmitting the invitation”, “transmitting the acceptance,” “streaming the game data,” “facilitating communications,” and the like attempt to cover any method of transmitting, streaming or facilitating such as by any hardware, any system architecture, any data outputs, or any software control flow or logic.
The claims as well as the instant disclosure lack any evidence of any particular computer hardware or software being tangibly improved as a direct result of the claimed abstract idea and generic data transactions being used to provide it in a generic technological context.“[T]he invocation of ‘already-available computers that are not themselves plausibly asserted to be an advance … amounts to a recitation of what is well-understood, routine, and conventional.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020).
The use of a computer or other machinery in its ordinary capacity (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 does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirectTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)
And in TLI Communications, 823 F.3d at 612, 118 USPQ2d at 1747, the court found that claimed steps of recording, administration and archiving of digital data wherein a client device and server were merely used as tools to execute the abstract idea did not add significantly more to the abstract idea because they were simply applying the abstract idea on a computer network without any recitation of details of how to carry out the abstract idea. The same conclusion is reached in the instant application, that the claims to a generic computing context for allowing a game invitation to be sent, received and accepted do not add significantly more to the abstract idea.
The additional elements comprising generic data transactions in claims 2-18 do not integrate the abstract fundamental human social interaction of claim 1 into a practical application that improves computer functionality or another technology.
There is no evidence of concrete improvement(s) to computer functionality. The claims do not recite how technical aspects of computer processors, memory or displays are improved, nor do they recite any novel data structures or hardware configurations that enhance computer performance. A hypothetical improvement in a game player’s customer experience (by providing mechanisms to invite other players) is not an improvement to computers themselves or to computer technology, but at best, an improvement to a human user’s experience while using a computer application.
MPEP 2106.05(a) notes that “To show that the involvement of a computer assists in improving the technology, the claims must recite details regarding how a computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.”
None of the examples provided by the courts for improving computer functionality are found in the instant claims. The instant claims are similar to examples the courts have not found to be enough to qualify as “significantly more”, including mere instructions to implement an abstract idea on a computer e.g., a limitation indicating that a particular function such as creating and maintaining electronic records for applying a commonplace business practice is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984.
“A patent-eligible technical improvement requires solving an actual problem.” See McRO v. Bandai Namco Games Am 837 F.3d at 1314. McRo involved a specified, automated rules-based process for facial animation that previously could only be performed subjectively by humans and as such, the improvement to computer animation were self-evident. And in Data Engine Techs., 906 F.3d at 1007–08, a claimed method was not found to be abstract where it “provide[d] a specific solution to then-existing technological problems in . . . prior art electronic spreadsheets,” and those pre-existing problems — that users of three-dimensional spreadsheets had to “master many complex and arbitrary operations” — were taught by the specification); cf. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1347 (Fed. Cir. 2018) (rejecting an asserted improvement where “Interval Licensing [did] not allege that computer display devices were previously unable to display information from more than one source”).
The pending claims for sending and accepting an event invitation and presenting a game of chance using unknown hardware or software using generic data transactions stands in stark contrast to the McRO and Data Engine Techs examples. It would be impossible to conclude computers or a technical field are being improved by the claimed ideas.
There is no transformation of an article: Sending, receiving and confirming an invitation and presenting a game using generic computers does not transform an article into a different state or thing in the sense contemplated by the integration analysis.
The pending claims functionally recite desired end results without any accompanying technical details explaining how the results are achieved. MPEP § 2106.05(f) explains, “The recitation of claim limitations that attempt to cover any solution to an identified problem with no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it"”. Case law supporting a conclusion that result-oriented claim language is a hallmark of claims lacking significantly more includes:
Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024). In this case involving electronic wagering, the court held that when "the claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves these results. Claims of this nature are almost always found to be ineligible for patenting under Section 101."
See also Interval Licensing LLC v. AOL Inc. (896 F.3d 1335) wherein the court found that claims to a computer software "attention manager" that displays content on unused portions of a screen were result-oriented and invalid under 35 U.S.C. § 101 because they did not recite a specific technological method for achieving the claimed result.
Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024): The court held that claims must not only describe desired outcomes but also include a specific process or machinery for achieving that result.
In re Killian, 45 F.4th 1373 (Fed. Cir. 2022): The court reaffirmed that claims simply reciting a desired result without specifying how to achieve it are directed to an abstract idea and are ineligible under 35 U.S.C. § 101. The claims at issue were directed to analyzing data from two databases. In Step Two of the Alice test, the court determined that there was no inventive concept because the additional elements merely involved generic and routine data gathering and analysis steps that could have been performed with or without a computer.
The pending claims do not include any technical description of mechanisms for accomplishing the claimed results. Instead, the claims use some unspecified computer and unspecified programming to conduct generic, result-oriented steps such as “facilitate,” “transmit”, “communicate, and “detect”. The claims seek to cover any system and any method (such as any processor programmed in any way) for sending and receiving game invitations. As such the claims are found to be directed to ineligible subject matter.
Step 2A Prong 2 concludes in a determination that the additional elements do not amount to a practical application of the claimed abstract ideas.
Step 2B: (MPEP § 2106.05) In this step of the Alice analysis, it is assessed whether additional elements amount to an inventive concept. Any well-understood, routine, conventional (“WURC”) activity is considered.
Additional elements: a processor, a social gaming server, a user device. These are conventional elements in the art of electronic gaming and generic computing. As there are no technical specifications or detailed functional requirements in the claim needed to satisfy the limitation of “social gaming server”, a broadest reasonable interpretation is that this is a generic server. This interpretation is supported by the specification.
WURC (well-understood, routine, conventional) analysis:
Generic computer components (processor, memory, display) are WURC. See Alice v. CLS Bank, 573 U.S. 208 (2014).
Transmitting and receiving data and “facilitating” communications are commonplace activities in computing, including casino EGM computing. The specification itself admits that the casino gaming environment including gaming machines and servers are wholly generic. See [0045], “The game server 104 may be any computing hardware typically used for network servers” and [0047], “The processor can be any microprocessor”].
There is no particular machine evident that is integral with the invention beyond serving as a field-of-use: The claims do not recite specialized hardware, regulatory interfaces, or unconventional display controllers that would be non-WURC. There are no factual allegations or claim-level recitations of atypical, non-routine computer operations (cf. DDR Holdings or Enfish improvements) that are present.
Conclusion:
Claims 1-18 are found to be ineligible under 35 U.S.C. § 101. Although step 1 is satisfied (the claims recite manufacture/process/machine), in Step 2A Prong 1, the claims are found to recite an abstract idea—fundamental human social interactions, and do not integrate those exceptions into a practical application nor add significantly more.
Possible Remedies:
To improve subject matter eligibility under 35 USC § 101, it is recommended to anchor the claims to concrete, non-generic technical mechanisms (such as particular software processes or nonobvious system architectures) in a way that there is evidence in the claims of certain improvements to computer or network operations or to another technology. Examples might include to:
Replace high-level result-oriented steps with concrete descriptions of hardware or system architecture configurations or adaptations or computer programming logic or control flow or data structures with constraints that provide a computer-functionality improvement (e.g., improved security, faster lookup, reduced cache misses, deterministic scheduling).
Limit the claims to a specific server and/or EGM hardware configuration comprising logic that is integral to, and improves, the operation of that particular machine, as opposed to attempting to hinge patentability on a subjective improvement or an improvement to human experiences using the computers.
Provide specification support (benchmarks, comparative studies, regulatory compliance details) establishing that the recited computer/server/EGM improvements are not WURC (per Berkheimer), enabling either Step 2A integration or Step 2B “significantly more.”
Recite in the claims a technical solution to a technological problem (e.g., secure hardware-backed attestations, novel protocol flows, improved cryptographic operations, sensor fusion pipelines).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claims 1-18 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by US 7,828,661 B1 to Fish et al.
Re claim 1, Fish teaches a social gaming system
The abstract of Fish describes an instant messaging system comprising a social contact list that enables users to invite participants to play an online game.
comprising: at least one gaming machine configured to present a game of chance
Fig. 10, the system of the invention of the disclosure comprises a plurality of client terminals 1010, each of which is communicatively coupled with server 1030 enabling an online gaming application 1018, which may include an online poker game application; see Fig. 2 depicting an option for a player to join a poker game, Fig. 17A-17B illustrates a screen shot of a Texas Holdem game.
and a social gaming server configured to communicate with the at least one gaming machine; detect, from the at least one gaming machine, an invitation for participation in the game of chance;
Fig. 10 illustrates server no. 1030 which is communicatively coupled to each client terminal 1010. The disclosure notes that “1030 also includes an on-line game application 1018 that supports game sessions to which participants may be invited”
Fig. 2 shows a screen shot of a scenario wherein a user “IM Sender” selects “Buddy 2” and selects “Invite – Join Poker Game #2564”. Regarding server-enabled implementation of this invite, Fig. 10 shows that server 1030 comprises an application module “Invite participants” no. 1016A.
and transmit game data to a user device corresponding to the invitation, the game data configured to be processed to present, at the user device, a reproduction of at least a portion of the game of chance as presented at the at least one gaming machine
As there is no technical description in the claim of what computer graphics processing goes into “a reproduction” of the game or what characteristics of a reproduction are, any graphical depiction of a shared game, such as that viewed on a terminal of a player joining an existing game, meets the limitation of being a reproduction. See Figs. 17A-17B.
Re claims 2-3, 11-12, 3:25-35 describes, “transmitting, over a computer network from a game provider system to a first client system associated with a first potential player, a game application capable of enabling an session of an on-line game. Transmission information related to progress of transmission of the game application to the first client system associated with the first player is accessed. The data transmission information is provided, over the computer network to a second client system that is remote from the first client system and associated with a second potential player of the game.” This is a functional description of streaming. And any progress information meets the limitation of being “further game data”.
Re claims 4-6, 13-15, see Fig. 3, “Game invite. Accept?”
Re claims 7, 16, see Figs. 17A-B
Re claims 8, 17, Fig. 17B illustrates that players of a poker game each have corresponding monetary account balances. Player accounts comprising monetary balances teach award distribution methods. There are no structural or step limitations in the claims specifying what makes up a bonus award, so any monetary award can be interpreted as such – any win of any amount is a bonus for the player.
Re claims 9, 18 because parent claim 1 is an apparatus claim, which must distinguish over the prior art in terms of structure not merely function, and because there is no technical description of what graphics or functionality or processing steps make up “a bonus game feature”, a broadest reasonable interpretation of this limitation is that it encompasses a decorative graphical feature, which is interpreted as nonfunctional descriptive material and is not further limiting.
Re claim 10, refer to the rejection of claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN J HYLINSKI whose telephone number is (571)270-1995. The examiner can normally be reached Mon-Fri 10-530.
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/STEVEN J HYLINSKI/Primary Examiner, Art Unit 3715
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