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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 21, 2025 has been entered.
Response to Arguments
Applicant’s arguments, see remarks, filed April 21, 2025, with respect to clarity objections and rejections under 112b have been fully considered and are persuasive.
Applicant's arguments filed April 21, 2025 with respect to patent eligibility and prior art have been fully considered but they are not persuasive.
Applicant argues that the presence of smart contracts on a distributed ledger, which require processors and computers on a network, renders the claims patent eligible. Examiner disagrees and notes that this reasoning is not supported by the patent eligibility guidance in MPEP section 2106. The presence or absence of these elements is not dispositive of patent eligibility and the claims remain ineligible as noted below.
Applicant argues that prior art Cotton fails to disclose real-time monitoring. Applicant cites Cotton’s execution of a smart contract through the use of result data. Examiner notes that the use of result data does not preclude the claimed “monitors execution” found in claim 1. Applicant appears to have a narrower definition of the limitation “monitors execution” that is inconsistent with the broadest reasonable interpretation of the claims.
Applicant argues that Burns is not combinable with Cotton because Burns discloses physical printouts for wagering. Examiner disagrees and notes that one having ordinary skill in the art would look to the clear advantages of automatic wagering suggestions disclosed by Burns. Because Burns effectuates the wagers in a different manner does not render the teachings incompatible. No aspect of wager effectuation is used from Burn and one having ordinary skill in the art would not have any challenge incorporating the idea of automatic wager generation into Cotton’s invention.
Accordingly, the claims remain rejected.
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 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception. The claims will be analyzed with respect to the Subject Matter Eligibility Test at MPEP§2106.
Subject Matter Eligibility – Step 1 (see MPEP§2106.03)
The claims recite one of the four statutory categories of subject matter.
Subject Matter Eligibility – Step 2A Prong 1 (see MPEP§2106.04(a-c))
The claims recite abstract ideas in the following categories;
Methods of organizing human activity such as fundamental economic principles or practices (including hedging, insurance, mitigating risk) see specifically ii. rules for conducting a wagering game, In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); (MPEP§2106.04(a)(2)II) (hereinafter “MOHA”).
The abstract ideas have been noted in the claims below.
Claim 1, creating one or more games with associated wagers (MOHA – see game rules), executing said one or more games (MOHA – see game rules), and management of the one or more games (MOHA – see game rules), creating a contract without user interaction based on one of more attributes associated with each of said one or more games and one or more rules associated with each of said one or more games (MOHA – see game rules); executing a game selected by a first user from said one or more games (MOHA – see game rules), said executing comprising executing said contract associated with said executing game to determine one or more winners of said executing game (MOHA – see game rules).
Claim 3, the method of claim 1, said method further comprising escrowing at least one wager of said associated wagers indicated by at least one of said one or more attributes and said one or more rules (MOHA – see game rules), wherein said at least one wager would he settled during said executing. (MOHA – see game rules)
Subject Matter Eligibility – Step 2A Prong 2 (see MPEP§2106.04(d))
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements are smart contracts on distributed ledgers, storing game information, generic computer hardware; insignificant extra solution activity such as collecting information, analyzing it, and displaying certain results of the collection and analysis to data; and the use of software to tailor information and provide it to the user on a generic computer. These additional elements individually and in combination provide for limitations that do not integrate the judicial exception into a practical application. These additional elements (1) add “insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g)” (MPEP§2106.04(d)I) and (2) generally link “the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).” (MPEP§2106.04(d)I).
These additional elements individually and in combination are not limitations that provide for “improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);” (MPEP§2106.04(d)I) apply or use the “judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);” (MPEP§2106.04(d)I) implement the “judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);” (MPEP§2106.04(d)I) effect “a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c);” (MPEP§2106.04(d)I) or apply or use “the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).” (MPEP§2106.04(d)I). As such the claims as a whole do not integrate the judicial exception into a practical application.
Subject Matter Eligibility – Step 2B (see MPEP§2106.05)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are well-understood, routine and conventional generic computer hardware and insignificant extra solution activity (see MPEP§2106.05). The claimed additional elements with citations indicating their well-understood, routine and conventional nature are provided below.
Smart contracts and blockchain being well-understood, routine and conventional as noted by U.S. 2019/0122300 see at least para. 5-8.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication 2020/0027315 by Cotton and further in view of U.S. Publication 2013/0196754 by Burns.
Regarding Claim 1, Cotton discloses a computerized wagering method including one or more computer-executable instructions for a game contract engine ("GCE"), for creating one or more games with associated wagers (para. 40-42 – see the game that is created through the wager on the prop bet. Examiner notes that “game” is being read broadly and wagers placed on a sporting event or other event meets this limitation, e.g. a player betting on craps is gaming even if they are not currently rolling the dice. If particular game elements, user actions/options, etc. are required they should be positively recited), executing said one or more games, and management of the games, said one or more computer-executable instructions being executed on a first computing device (fig. 8; para. 73-75 – see the users devices 806-809), said method comprising:
creating, by said first computing device, a smart contract on a distributed ledger without user interaction based on one or more attributes associated with each of said one or more games and one or more rules associated with each of said one or more games, wherein said smart contract monitors execution of said one or more rules during gameplay and selectively stores one or more actions regarding said execution (para. 40-45 – see the smart contract created that is based on the rules and attributes associated with the game, e.g. rules surrounding a sports or gambling outcome and the attributes being scores or other data associated with the sport or gambling outcome. Monitoring of real world data and payment based on the result of the monitored data.);
storing, by said first computing device, said smart contract in a first data store (para. 40-43, 75 – see storage of the smart contract); and
executing, by said first computing device, a game selected by a first user from said one or more games via said first computing device, said executing comprising executing said smart contract on said distributed ledger associated with said executing game to determine one or more winners of said executing game (para. 40-45 – see execution of the smart contract and payout to the winner).
Cotton is silent regarding the contract being created without user interaction. Burns teaches contract that are generated automatically, see para. 30-32. Examiner notes that the language “without user interaction” appears to only have support in the specification at paragraph 22, which states
For example, games or challenges may be created by an individual player for their own use, or for distribution to others, using proprietary "wizard-based" GCE enabled software, or some combination thereof. (See FIGS. 2, 4, and 7). Additionally, each new game or challenge may be automatically assembled from individual game rules set by an existing game, or invented by a game creator, and converted via software libraries and proprietary algorithms into "smart contracts".
This requirement for the game or challenge to be “automatically assembled” is met by Burns’s “suggested wagers” that are generated automatically using underlying user data and preferences.
Because the references are from a similar art and are concerned with a similar problem, i.e. computer managed wagering systems, it would have been obvious to one having ordinary skill in the art at the time of filing to construct Cotton’s smart contract based wagering environment with automatically generated wagers as taught by Burns. One having ordinary skill in the art would have been motivated to do so because automatically generating wagers for individuals allows for increased adoption by users that are less experienced, see Burns at para. 7-10.
Regarding Claim 2, Cotton discloses the method of claim 1, wherein said storing one or more actions comprises storing said game information in at least one of a blockchain, an oracle, and a second data store (para. 73, 74-75 – see data storage via oracle services and blockchain).
Regarding Claim 3, Cotton discloses the method of claim 1, said method further comprising escrowing at least one wager of said associated wagers indicated by at least one of said one or more attributes and said one or more rules, wherein said at least one wager would be settled during said executing (para. 40 – see value held in escrow).
Regarding Claim 4, Cotton discloses the method of claim 1, wherein a second user participates in said executing game via a second computing device, said second computing device being remote with respect to said first computing device (para. 73-74; fig. 8 – see the second user and the second device used by that user).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER J IANNUZZI whose telephone number is (571)272-5793. The examiner can normally be reached M-F 9:30AM-5:30PM EST.
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/PETER J IANNUZZI/ Primary Examiner, Art Unit 3715