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 § 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. The limitation “a relative position in the second plurality of display positions” in claims 1, 8 and 14 renders the claims indefinite. “Relative” is a comparative term that only has meaning when compared to or measured or judged against some other thing or amount. No other thing or amount is defined as a point of comparison in the claim (such as some global location on a reel array, e.g. a center position of a middle reel) such that the scope of a “relative position” could be ascertained. Appropriate correction is required.
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 8-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 8 recites a “method of a gaming machine” which makes it unclear which statutory category of subject matter the claims are directed to – a process or an article of manufacture.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to activities that the courts have recognized belong to groupings of abstract ideas—new rules for playing a wagering game, without significantly more.
Overview:
Although the claims to gaming machine symbol selection have been drafted so as to avoid reciting “wagering” or financial accounting practices, Applicant’s specification confines the field of the invention to regulated casino EGM devices that issue monetary payouts based on the claimed symbol outcome presentation and population. The claims interpreted in light of the specification as per a broadest reasonable interpretation (BRI) thus encompass “Certain methods of organizing human activity” including wagering game rules that dictate payouts owed and accounting practices. There are no embodiments in the specification that enable the claimed symbol selection and displaying as being used in a context that does not involve casino wagering and accounting.
In support of this interpretation: refer to the specification at [0003], which describes that the invention occupies the field of currency-operated slot machines having rotating reels that pay prizes based on winning outcomes, and [0008] and [0027], which describe that the game of the instant invention is played on mechanical reel, video reel or wheel spinning type base/bonus games wherein awards are paid to players in accordance with game outcomes.
Claiming new rules for playing a game, wherein the game is played by one or more persons interacting with a computer is equivalent to claiming certain methods of organizing human activities, see MPEP § 2106.04(a)(2), subsection II. In order for claims to a computerized device applying abstract ideas to be patent eligible, there would have to be evidence of a practical application of such abstract ideas, for example, through claimed technical improvements to the function of a computer, to a computer network, or to a technical field. Providing new or different types of information to human beings via a display or conducting a wagering game wherein payouts are evaluated in potentially new ways are not evidence of an improvement to the function of a computer. Further details of this conclusion follow.
Neither the claims nor specification attempt to hinge patentability on any new or nonobvious computer hardware, software or system architecture – the claims are focused on result-oriented language describing symbol selection without any technical description of how the results are achieved. And as defined in the specification, the claimed symbol selection results are used for determining payouts in a wagering context. As such, the pending claims are found to represent an attempt to claim new rules for operating existing casino slot machines, without any practical application(s) or inventive concept(s).
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 all of 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 1-7: manufacture (gamine machine)
Claims 8-13: process (method)
Claims 14-20 manufacture (computer-readable medium).
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 claims 1, 8 and 14, “present, in a first plurality of display positions … a first symbol outcome… populate, in a second plurality of display positions, a second quantity of a second symbol…”
The above limitations fall into the enumerated grouping of “Certain methods of organizing human activity” through one or more persons interacting with a computer to play a wagering game that concludes in determining amounts owed. Although the claims have been drafted so as to avoid reciting wagering or financial transactions, the claimed game rules, when read in light of the specification to establish BRI, are solely enabled for use in a casino wagering context for determining amounts owed by a casino to a player. In re: Smith, the Federal Circuit held that, “rules for conducting a wagering game, compare to other “fundamental economic practice[s]” found abstract by the Supreme Court” because “[a] wagering game is, effectively, a method of exchanging and resolving financial obligations based on probabilities” J.A. 15.” The Federal Circuit supported this conclusion by referencing Alice, wherein “the Supreme Court held that a method of exchanging financial obligations was drawn to an abstract idea.” 134 S. Ct. at 2356–57.
Regarding computerized implementation of a wagering game being directed to an organized human activity, MPEP § 2106.04(a)(2)(II) explains that “the sub-groupings [of organized human activity] encompass … activity of a single person (for example, a person following a set of instructions or a person signing a contract online) … and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping.” The pending claims to a conducting a random symbol outcome determination game that, as defined in the specification is used to determine and resolve award credits (fundamental economic practices), accomplished through activities with a computer, is a covered method organizing human activity.
In re Marco Guldenaar, 911 F.3d 1157 (Fed. Cir. 2018), the Federal Circuit found that placing a wager, rolling dice and paying a payout are conventional activities that are analogous to using playing cards to determine outcomes in in re Smith. Additionally, the Federal Circuit found that die markings are printed matter and thus outside the scope of § 101; It is notable that the pending claims are focused on the appearance of displayed symbols which, too, are printed matter and ineligible for patent protection.
In Planet Bingo v. VKGS, 576 F. App’x 1005 (Fed. Cir. 2014), the Federal Circuit found that adding a computer to perform data storage and tracking to manage otherwise abstract play of a bingo game was abstract.
Determining an amount owed to a party is a “fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class”, Bilski v. Kappos, 561 U.S. 593, 611, 95 USPQ2d 1001, 1010 (2010). And an arguably improved process for determining an amount owed in a wagering game is still directed to this grouping of abstract ideas - Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) notes that "a claim for a new abstract idea is still an abstract idea.”
The determination that the pending 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), 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":
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.
The claims are drafted using largely (if not entirely) result-focused functional language, containing no specificity about how the purported invention achieves those results.
The claims are analogous to those deemed abstract in Federal Circuit precedents.
The claims can be persuasively analogized to longstanding "real-world" ("brick and mortar") activities.
The pending claims include all of these indicators. They recite generic steps such as “present, in a first plurality of display positions … a first symbol outcome,” and “populate, in a second plurality of display positions, a second quantity of a second symbol…”. Dependent claims recite further generic steps including to “populate”, “allocate” and “update”. 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 details of how the “present”, “populate”, “allocate”, or “update” outcomes are to be carried out. The precedents to the pending claims include in re Smith in which game operation particulars that ultimately exist to resolve any financial obligations to a user by a game operator were held to be abstract, and which are rooted in real-world, pre-digital activities. Random indicia selection games culminating in accounting practices of determining and resolving amounts owed are rooted in human activity and represent “fundamental economic practice long prevalent in our system of commerce” and that is a “building block of our modern economy” as in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 219-20, 110 USPQ2d 1981-82 (2014). And "The category of abstract ideas embraces ‘fundamental economic practice[s] long prevalent in our system of commerce,’ … including ‘longstanding commercial practice[s]’" Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313, 120 USPQ2d 1353, 1356 (Fed. Cir. 2016).
The following limitations of dependent claims are also directed to abstract ideas;
Claims 2-7, 9-13, 15-20 recite additional rules of wagering game play that affect symbol selection and prize determination. Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)), if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."); Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)), “the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.”
Details of displayed indicia in wagering games has also been found by the Federal Circuit in In re Marco Guldenaar, 911 F.3d 1157 (Fed. Cir. 2018) to be an issue of printed matter, which does not belong to a statutory class of invention.
Step 2A, Prong 2 (MPEP § 2106.04(d)): In this step, any additional elements are identified and evaluated for any integration into a practical application. In particular, any claimed technological improvement is considered.
Additional elements recited in the claims include:
A generic computing environment: In claim 1, “A gaming machine, comprising: one or more display devices; and a game controller configured to execute instructions…”. In claim 14, “A non-transitory computer readable medium…”. No particular machine architecture (e.g., hardware RNG module, specialized RNG conversion engine, regulatory instrumentation, secure entropy sources, or real-time pipeline constraints) is positively recited.
The graphical appearance of visual outcomes/indicators (claims 2-7, 9-13, 15-20, all of the details of game machine operation focus on appearances of displayed indicia). In addition to being a form of nonfunctional descriptive material (“printed matter”) that does not affect the scope of claims, how wagering game outcomes are depicted to a human observer is a matter of insignificant post-solution activity. As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). In Flook, the Court reasoned that “[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.”
Field-of-use limitations: Confining the abstract rules to “a gaming machine” is a field-of-use limitation and does not, by itself, integrate the exception into a practical application MPEP 2106.05(h) instructs that, “As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.”
The preceding additional elements, considered alone and in the context of the claims, do not integrate the abstract game-rule logic 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 memory or displays are improved, nor do they recite any novel data structures or hardware configurations that enhance computer performance. The specification in [0045]-[0050] reveals that the hardware and network used to practice the invention are generic and found in the prior art.
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.”
MPEP 2106.05(f) describes that “Use of a computer .. in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer … does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016).
There is no transformation of an article: Displaying symbols in certain ways does not transform an article into a different state or thing in the sense contemplated by the integration analysis. Particulars of how symbols are displayed can also be interpreted as extra-solution activity associated with the abstract game logic rather than a technological application.
The claims functionally recite desired end results without any accompanying technical details explaining how the results are achieved.
As discussed above, the court in Beteiro LLC v. DraftKings Inc., (Fed. Cir 2024) 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;
in 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 the 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.
MPEP § 2106.05(f) explains that, “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"”.
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 for managing and conducting a wagering game having a sole utility described in the specification for determining a payout owed to a player. The claims seek to cover any system and any method (such as any programming instructions) for applying the management of a wagering game. 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 generic processor, memory, display, and instruction execution (claims 1, 8, 13); and the appearance of visual outcomes/indicators (claims 2-7, 9-12, 15-20). These are conventional elements in the art of electronic gaming and generic computing.
WURC (well-understood, routine, conventional) analysis:
Generic computer components (processor, memory, display) are WURC. See Alice v. CLS Bank, 573 U.S. 208 (2014).
Using RNGs and pay/weighted tables to determine game outcomes and payout volatility is conventional in EGMs. The specification itself describes standard EGM architectures (e.g., [0045]-[0050]). Planet Bingo is instructive that implementing conventional computers to manage bingo outcomes was not significantly more.
“causes the game controller to: present, in a first plurality of display positions…”, “populate, in a second plurality of display positions…” are routine result-oriented steps.
The CRM claim (Claim 14) merely places abstract instructions on a non-transitory medium; such a “Beauregard”-type claim does not add an inventive concept absent a technological improvement in the medium or execution. See In re Guldenaar; Alice.
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 RNG, 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) are present.
Conclusion:
Claims 1-20 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—game rules/wagering mechanics and information presentation, that as supported by the specification are solely used to resolve financial obligations to players, 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 “select/determine/activate/display” results-oriented steps with concrete algorithmic operations (e.g., exact table formats, index computation, thresholding functions, pipeline stages) and data structures with constraints that provide a computer-functionality improvement (improved security, faster lookup, reduced cache misses, deterministic scheduling).
Claim a particular RNG hardware/software pipeline, such as by including detailed algorithmic steps and data structures (e.g., bounded-weight lookup tables with constraints).
Limit the claims to a specific EGM hardware configuration comprising logic that is integral to, and improves, the operation of that particular machine, as opposed to just an arguably improved user experience of game outcomes. The court ruled in International Business Machines Corporation v. Zillow Group, Inc., (CAFC, 17 October, 2022), that "improving a user's experience while using a computer application is not, without more, sufficient to render the claims" patent-eligible. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
Provide specification support (benchmarks, comparative studies, regulatory compliance details) establishing that the recited computer/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 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 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,976,016 to Moody et al (“Moody”).
Re claim 1, Moody teaches: A gaming machine, comprising: one or more display devices; and a game controller configured to execute instructions stored in a memory,
1:65-2:4 discloses that the symbol replication feature for a video slot machine of Moody can be implemented on programmed electronic video slot machines comprising displays.
wherein execution of the instructions causes the game controller to: present, in a first plurality of display positions of the one or more display devices, a first symbol outcome comprising a first quantity of a first symbol;
Fig. 1 illustrates a first symbol outcome that has occurred and been displayed along the symbol positions comprising “line 1”.
and populate, in a second plurality of display positions, a second quantity of a second symbol that equals the first quantity such that each second symbol has a relative position in the second plurality of display positions that matches a relative position of a corresponding instance of the first symbol in the first plurality of display positions.
Fig. 2 illustrates a hold feature wherein “star” symbols held from the first plurality of symbol positions are populated in the same quantities and in the same relative alignment that occurred in the first symbol outcome.
Re claims 8 and 14, refer to the rejection of claim 1.
Re claims 2, 9, 15, refer to Figs. 1-2 of Moody which provide evidence that populated second “star” symbols occurred in response to holding “star” symbols that occurred in the first symbol outcome (on the first line.)
Re claims 3-6, 10-13, and 16-19, certain of the second symbol positions (located in lines 2-5 in Moody) are updated pursuant to the selection of held symbols. Consider Figs. 2-3 which shows second symbol positions 324-325, 334-335, 344-345, and 354-255 being updated to receive randomly selected symbols. And note that from Figs. 2-3, the second symbols (star symbols) that were replicated from the first symbols are locked (not replaced, changed, or updated) due to their status as “held”. With respect to the claimed “allocate a second quantity of updates of the second plurality of display positions in response to an update…”, in Figs. 2-3, one quantity update occurs in response to the “star” symbols having been added to second symbol display positions.
Re claims 7, 14 and 20, the abstract of Moody discloses that, “A player makes a wager for each pay line on a slot machine that the player wishes to play. On a first pay line of the slot machine, a first row of symbols is displayed to the player. The player selects none, one or more of the symbols from the first pay line as symbols to be held. The symbols that are held are duplicated from the first pay line into all of the other pay lines on which the player has wagered.”. In other words, a threshold of one held symbol must occur for any such symbol to be replicated into second symbol positions.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN J HYLINSKI/ Primary Examiner, Art Unit 3715
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