DETAILED ACTION
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 Status
After the amendments filed 05/12/2026, claims 2-9 and 24-25 remain pending, of which 2 was amended.
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 2-9 and 24-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Guidelines (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a system and/or process, which is are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Independent claim 2 recites the following, with the abstract ideas highlighted in bold, including an indication as to the abstract idea grouping(s) to which the indicated limitations belong to, according to the 2019 Revised Patent Subject Matter Guidelines:
2. A system to enable a user of a mobile device connected to a gaming service provider, playing electronic games of chance provided by the gaming service provider while shopping at a brick and mortar store having a plurality of points-of-sale (POS), to make a physical bet and pay merchants using a gambling-related value, the system comprising the gaming service provider having at least one processor configured to:
detect a location of the mobile device (Mental Processes); and
only if the mobile device is located where gambling is permitted (Mental Processes):
when the user has chosen an item for purchase (Mental Processes), detect, based on signals transmitted from the mobile device to the plurality of POS and corresponding return signals received by the mobile device from the plurality of POS, among the plurality of (POS) disposed within a predetermined proximity of the mobile device a first of the plurality of POS nearest to the mobile device (Mental Processes), wherein when more than one of the plurality of POS are the nearest to the mobile device, a tie breaking scheme is executed, by the processor, to identify the first of the plurality of POS (Mental Processes);
enable the user to make the physical bet on the electronic games of chance using the gambling-related value that includes one or more retail transactions selected from gaming credits, comp points, merchant-specific points, coupons, and gift certificates, wherein the electronic games of chance are selected at least from virtual casino games, horse racing, and a sports book (Certain Methods of Organizing Human Activity and/or Mental Processes); and
determine probability of a plurality of winning bet outcomes resulting in a desired house advantage from a pay table detailing the plurality of winning bet outcomes achievable by the user (Mental Processes), wherein the physical bet wins if a bet outcome is found in the pay table (Certain Methods of Organizing Human Activity), wherein the cost of the item is selected from one of reduced and free (Certain Methods of Organizing Human Activity), and the registered gaming service provider transfers the amount of the physical bet to the nearest of the plurality of POS.
The limitations in claim 2 recite an abstract idea included in the groupings of Certain Methods of Organizing Human Activity, Mathematical Concepts and/or Mental Processes connected to technology only through application thereof using generic computing elements (e.g., a processor, a gaming service provider, a memory, a communication unit, at least one processor, a mobile device, etc.) and/or insignificant extra-solution activity.
According to the 2019 Revised Patent Subject Matter Guidelines:
Mental Processes include concepts performed in the human mind (including an observation, evaluation, judgement, opinion); and
Certain Methods of Organizing Human Activity include:
1. Fundamental Economic Principles or Practices (including hedging (i.e., wagering), insurance, mitigating risk);
2. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
3. Managing Personal Behavior or Relationships or Interactions Between People (e.g., social activities, teaching, and following rules or instructions). The interaction encompasses both activity of a single person (for example a person following a set of instructions) and activity that involves multiple people (such as a commercial or legal interaction). Thus, some interactions 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 this grouping.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Certain Methods of Organizing Human Activity (i.e., Fundamental Economic Principles/Commercial Interactions): The claims recite enabling a user to place a physical bet on electronic games of chance using specific retail units of value (i.e., gaming credits, comp points, merchant points, coupons, gift certificates) to reduce or eliminate the cost of a physical merchant purchase. Wagering and structuring commercial transactions are fundamental economic principles and commercial interactions, which fall squarely within the Certain Methods of Organizing Human Activity grouping of abstract ideas identified in the 2019 Revised Patent Subject Matter Eligibility Guidance. These limitations are interpreted as at least Fundamental Economic Principles and Commercial or Legal Interactions insomuch as the claim limitations are directed to performing the Fundamental Economic Principles and Commercial or Legal Interactions while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims; and/or
B. Mental Processes (i.e., concepts which can be performed in the mind or using pen and paper): The claims recite detecting locations, evaluating timing data to determine a nearest register, executing a tie-breaking logic rule, and determining probability values from a pay table to structure a desired house advantage. These limitations constitute evaluations and judgements that represent concepts that can modeled as steps performed in the human mind or using pen and paper. These limitations are interpreted as at least Mental Processes insomuch as the claim limitations are directed to performing the Mental Processes while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims.
Regarding dependent claims 3-9 and 24-25:
Each claim is dependent either directly or indirectly from the independent claim identified above and includes all the limitations of said independent claim. Therefore, each dependent claim recites the same abstract idea as identified above. Each of the dependent claim further describes additional aspects of the abstract idea, i.e., additional aspects to the Mental Processes and/or Certain Methods of Organizing Human Activity. For example, some dependent claims merely provide additional Mental Processes and/or Certain Methods of Organizing Human Activity to be performed and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101.
Step 2A-2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
-Applying or using 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 - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Claims 2-9 and 24-25 clearly do not improve the functioning of a computer, as they only incorporate generic computing elements, do not effect a particular treatment, and do not transform or reduce a particular article to a different state or thing. Similarly, there is no improvement to a technical field. In addition, the claims do not apply the judicial exception with, or by use of a particular machine. The claims do not apply or use the judicial exception in a meaningful way. The claimed invention does not suggest improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05 (a)).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (MPEP 2106.05 (h)). The claimed computer components are recited at a level of generality and are merely invoked as tool to perform the abstract idea. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
For the reasons as discussed above, the claim limitations are not integrated to a practical application.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of “a processor, a gaming service provider, a memory, a communication unit, at least one processor, a mobile device”, etc. used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility. These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
Further, the claims would require structure that is beyond generic, such as structure that can be interpreted analogous to a general-purpose structure and general-purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims. See Alice Corp. v. CLS Bank International, 134 S. Ct. at 2358-59. The elements of a processor, a gaming service provider, a memory, a communication unit, at least one processor, a mobile device are well known conventional devices used to electronically implement a game as evidence by US2008/0254854. US 2008/0254854 discloses that a conventional gaming machine comprises a controller with a memory, display, communication units and a processor to control the overall operation of the gaming machine (¶24). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The dependent claims do not add “significantly more” for at least the same reasons as directed to their respective independent claims, at least based on the position, as discussed above, that each of the dependent claims merely provide additional limitations to further expand the abstract idea of the independent claims, without adding anything which would establish eligibility under 35 U.S.C. 101.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
Response to Arguments
Applicant's arguments filed 05/12/2026 have been fully considered but they are not persuasive.
Applicant argues that “encouraging gambling in non-traditional locations (e.g., in a brick-and-mortar store) while enforcing gambling ordinances is a novel approach to computerized gaming…that provides a practical application and thus the claims should be eligible under 35 U.S.C. 101 (See Remarks, pg. 7). The examiner must respectfully disagree. Novelty in a business scheme, gaming concept, or commercial practice des not equate to patent eligibility under 35 U.S.C. 101. The Courts have repeatedly held that an abstract idea does not become paten-eligible merely because it is novel, non-traditional, or commercially advantageous (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223 (2014); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Encouraging gambling in retail settings and controlling that activity according to local legal ordinances are business strategies and legal compliance concepts. They do not constitute an improvement to the computerized gaming technology. Applying standard business logic (i.e., wagering change or points during a retail checkout) to a non-traditional commercial setting, without including additional elements that are sufficient to amount to significantly more than the judicial exception, remains an abstract idea which falls under Certain Methods of Organizing Human Activity (i.e., Fundamental Economic Principles and/or Commercial Interactions) regardless of its commercial novelty.
Applicant argues that under Step 2A, Prong 2 that the claims recite a practical application similar to the content filtering in BASCOM Global Internet Services v. AT&T Mobility, by restricting gambling transactions to non-traditional physical locations where gambling is legal (See Remarks, pg. 7). The examiner must respectfully disagree. In BASCOM, the Federal Circuit found an inventive concept because the claimed architecture installed a customizable filtering tool at a specific, non-conventional location on an ISP server, thus, improving the operation of software filtering technology itself. The instant claims, limiting a wagering transaction to locations where gambling is legal is merely a field of use or legal compliance restriction. Generally linking an abstract idea to a particular technological environment does not integrate the judicial exception into a practical application (See MPEP 2106.05(h)). Furthermore, accepting alternative forms of tender (e.g., comp points, coupons, or gift certificates) for placing a wager merely describes additional financial transaction choices. It does not provide a technical framework or structural integration that overcomes the abstract nature of the underlying business activity.
Applicant argues, citing the USPTO’s Memorandum on “Recent Subject Matter Eligibility Decisions”, that the examiner overgeneralized the claims to their “gist” or core principles rather than considering the claims as a whole under Step 2A (See Remarks, pgs. 7-8). The examiner must respectfully disagree. The examiner has evaluated the claims in their entirety, taking into account every recited structural component (e.g., mobile device, gaming service provider processor, POS, etc.) and procedural step (e.g., signal transmissions, return signals, location checks, tie-breaking procedure logic, pay-table calculations, etc.). Identifying that specific limitations fall within recognized subject matter groupings, specifically Mental Processes and Certain Methods of Organizing Human Activity, does not simplify the claim to a “gist”, rather, it properly categorizes the specific elements recited in the claims under Step 2A, Prong 1.
Applicant argues that, like the invention claimed in McRO, the instant claims recite a specific set of “rules” providing a particular technical solution rather than an abstract idea (See Remarks, pg. 8). The examiner must respectfully disagree. McRo is fundamentally distinct from the instant claims. In McRO, the claimed rules (i.e., lip-synchronization morph weight rules) directly automated a physical, technical process previously performed manually by animators, thereby directly improving 3D computer animation software technology. In contrast, the “rules set forth in the instant claims (e.g., verifying legal location, evaluating signal timing to pick a nearest POS, executing a tie-breaking scheme, etc.) do not improve the operational efficiency or computer related technology of the mobile device, POS terminal or wireless network. Instead, these “rules” constitute business, commercial and financial logic designed to execute an economic transaction. Under MPEP 2106.05(a), claiming a set of rules that merely automates an economic or commercial activity does not constitute an improvement to computer capabilities or technologies.
Applicant argues that adding wager-based gaming to physical retail shopping creates an improvement in the technical field of electronic commerce, improves the shopping experiences, and generates increased revenue. Applicant further asserts that because this concept was unknown prior to filing, it contributes unconventional steps that provide “significantly more” (See Remarks, pg. 8). The examiner must respectfully disagree. An improvement to a business model, marketing scheme, or user shopping preference is no an “improvement in computer related technology” under 35 U.S.C. 101 (See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018), [the focus of the advancement must be an improvement in computer capabilities, not an advance in financial, economic or mathematical realm]). Furthermore, commercial novelty or lack of prior art disclosure does not render an abstract idea patent eligible (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223 (2014); In re Bilski, 545 F.3d 943, 964 (Fed. Cir. 2008)). The technical mechanics used to carry out the transaction, such as standard signal pings and distance evaluations, rely on well-understood, routine, and conventional wireless networking techniques. Applying generic wireless pairing steps to execute a novel shopping/gambling incentive does not provide an “inventive concept” under Step 2B.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON PINHEIRO whose telephone number is (571)270-1350. The examiner can normally be reached M-F 8:00A-4:30P ET.
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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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/Jason Pinheiro/Examiner, Art Unit 3715
/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715
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