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 12/04/2025, claims 10-19 and 22-23 were cancelled, therefore, claims 2-9 and 24-25 remain pending, of which 2 was amended and 24-25 were newly added.
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, 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 in an amount selected from one of equal to or less than a cost of the item, and a difference between an amount of payment and the cost of the item, 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
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, 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. Managing Personal Behavior or Relationships or Interactions Between People (e.g., the claims recite interactions between at least two separate individuals, i.e., the user making a request and the registered service provider fulfilling the request);
B. Wagering (e.g., “enable the user to make the physical bet on the electronic games of chance…”), which is a form of hedging, which is an abstract idea included in the grouping of Fundamental Economic Principles or Practices. These limitations are interpreted as at least Fundamental Economic Principles or Practices insomuch as the claim limitations are directed to performing the Fundamental Economic Principles or Practices 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
C. Formation of a contract (e.g., by a user placing a wager the user is entering into a contract with a game operator), which is an abstract idea included in the grouping of Commercial or Legal Interactions. These limitations are interpreted as at least Commercial or Legal Interactions insomuch as the claim limitations are directed to performing the 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
D. Concepts which can be performed in the human mind (e.g., “detect a location of the mobile device”), which is an abstract idea included in the grouping of Mental Processes. 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 filed12/04/2025 have been fully considered but they are not persuasive.
Applicant argues that since the claims are novel (i.e., there is no art rejection), the claims must be eligible under 35 U.S.C. 101 (See Remarks, pg. 6-7). The Courts have ruled that 35 U.S.C. 101 stands on its own. Thus, novelty and non-obviousness have no bearing on eligibility under 35 U.S.C. 101. While the instant claims may be drawn to a novel abstract idea, they are still drawn an abstract idea without including additional elements that are sufficient to amount to significantly more than the judicial exception.
Applicant argues that the claimed invention integrates the abstract idea into a “practical application” (See Remarks, pg. 6-7). While in a sense, there is a practical application (as there is with all utility patents), there is no “practical application” within the meaning the courts have used the term in conjunction with §101. The courts have made it plain that in order to be considered a “practical application” in the §101 sense, software patents much improve the functioning of a computer as a computer. In short, there must be a technological solution to a technological problem. Applicant’s invention provides a technological solution to a regulatory or business problem. Encouraging gambling where it is legal is not a solution to any technological problem (i.e., it is not a problem or shortcoming of a computer), rather, it is a business or regulatory problem problem. For example, if a person were to gamble at a location where gambling was not legal, there can be negative consequences. Applicant has applied technology to solve this problem.
Applicant argues that the instant claims are similar to those found in BASCOM Global Internet V. AT&T Mobility, LLC, and thus should similarly be eligible under 35 U.S.C. 101 (See Remarks, pg. 6-7). The examiner must respectfully disagree. The claims found in BASCOM included, in addition to the abstract idea, additional elements where were found to be sufficient to amount to “significantly more” than the judicial exception. As discussed with respect to Step 2A Prong Two, the additional elements found in the instant claims amount to no more than mere instructions to apply the exception using a generic computer component and generally linking the use of the judicial exception to a particular technological environment or field of use. The same analysis applies here in step 2B and does not provide an inventive concept. For these reasons, the examiner maintains that the present claims are not patent eligible. Even when viewed as a whole, nothing in the claim adds significantly more to the abstract idea.
Conclusion
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.
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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Jason Pinheiro/Examiner, Art Unit 3715
/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715