DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/19/2026 has been entered.
Status of Claims
Claims 2 and 12 have been amended.
Claims 1, 3, 4, 13 and 14 are cancelled.
Claims 2, 5 – 12 and 15-21 are currently pending.
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.
This subject matter eligibility analysis follows the latest guidance for Patent Subject Matter Eligibility Guidance.
Claims 2, 5 – 12 and 15-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Claims 2 and 5 - 11 are drawn to a method.
Claims 12 and 15 – 21 are drawn to an apparatus.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter.
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Claims 12 and 15 – 21 are exemplary because they require substantially the same operative limitations of the remaining claims (reproduced below.) Examiner has underlined the claim limitations which recite the abstract idea, discussed in detail in the paragraphs that follow.
12. (Currently Amended) An apparatus for predicting revenue for premiere and holdover box office events by a plurality of players using distinct computing devices connected to at least one computer over a network, the at least one computer having at least one processor; communication circuitry; and memory storing instructions, wherein the instructions are executable by the at least one processor to cause the apparatus to:
receive, at a first time prior to commencement of the box office events, from the distinct computing devices of the plurality of players a respective first predictions for variables associated with the box office events, wherein the respective first prediction isreceived from each of a plurality of unregistered players and from each of a plurality of registered players;
automatically generate a unique identifier for each of the distinct computing devices without requiring registration by the corresponding player upon receipt of the respective first prediction;
receive, at a second time after the first time and prior to conclusion of the box office events, from the distinct computing devices a respective second prediction for the same variable associated with the box office events, wherein the respective second prediction is received from each of the plurality of unregistered players and from each of the plurality of registered players;
determine an average of predictions by computing an arithmetic means of the respective first prediction and the respective second prediction from both the plurality of registered players and the plurality of unregistered players for the variables associated with the box office events;
after conclusion of the box events, compare the average prediction to an actual measured value of the variable;
after conclusion of the box office events, transmit, via the communication circuitry, a notification including results of the respective first and second predictions to each distinct computing devices;
determine, for each player, a score based on comparison of the actual measured value of the variable for the box office events and the player's respective first and second predictions; and
assign at least one prize to a particular distinct computing devices based on the determined score, wherein only registered players of the plurality of players are permitted to receive the at least one prize, wherein the variables comprises
The claims recite italicized limitations that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG, namely, Certain Methods Of Organizing Human Activity
More specifically, under this grouping, the italicized limitations represent the managing interactions between people (including social activities, teaching, and following rules or instructions). For example, the underlined limitations are directed towards the rules for conducting a game wherein users or players (registered and unregistered) make first and second predictions regarding how much revenue a film event will produce, averaging the predictions, rules for scoring the users prediction and the awarding of a prize in accordance the users achieved score.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations as follow, (emphasis added): using distinct computing devices connected to a computer over network, processors, circuitry, and memory. The claims further require receiving and transmitting data (i.e. predictions) to and from computing devices and additionally displaying data on computing devices.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea. Therefore, since the additional limitations, individually or in combination, are indistinguishable from a computer used as a tool to perform the abstract idea, the analysis continues to Step 2B, below.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional and routine computer implementation and mere instructions for implementing the abstract idea on generic computing devices.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract idea. Applicant has claimed, processors, circuitry, memory and computing devices. Applicant has claimed computer processors, memory, circuitry, communication networks, computing devices . Applicant has also claimed readable media. However, all of these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
As the Alice court cautioned, citing Flook, patent eligibility cannot depend simply on the draftsman’s art. Here, amending the claims with generic computing elements does not (in this Examiner’s opinion), confer eligibility.
Regarding the Berkheimer decision, Applicant’s own specification establishes that these additional elements are generic:
The client devices 113 may include, without limitation, a mobile phone, PDA, pocket PC, personal computer, as well as any special or general purpose client device, such as a slot machine, a video poker machine, video or computer-based versions of table games, e.g., roulette, blackjack, etc. As such, the client device 113 preferably includes a processor122, a memory 123, a display 125, such as a CRT or an LCD monitor, for displaying information and/or graphics associated with the services provided by the system100, and at least one input device, such as a mouse, a touch-sensitive pad, a pointer, a stylus, a trackball, a button, e.g., alphanumeric, a scroll wheel, a touch-sensitive monitor, etc., or a combination thereof, for users to enter commands and/or information relevant to the system's services. With the general purpose type client devices 113, such as the PC or PDA, users may access the services provided by the system 100, e.g., the remote computer 118, with a browser or any other generic application, or with special purpose software designed specifically for accessing and providing the services disclosed herein. (Specification page 3:25-4:7)
Regarding the Berkheimer decision, Cuddy et al (US 2019/0156630) establishes that these additional elements are generic:
[0037] The wager-based elect EGM is well known in the art and offers players an opportunity to place a wager using cash or a cash equivalent in return for an opportunity to receive a cash or cash equivalent award calculated according to posted odds based on a random gaming outcome. EGMs are highly specialized computing and electromechanical devices comprising sophisticated anti-tampering and fraud monitoring devices with comprehensive security means embedded throughout each of the EGM's various subsystems to ensure operation of the machine in a manner consistent with the design of the game(s) it is configured to provide in compliance with all applicable gaming laws and regulations of the jurisdiction in which it is licensed. Due to the fact that EGMs may accept and dispense large quantities of cash or cash equivalents, security is paramount in their design and operation. Although EGMs comprise certain components common to conventional computing components, such as processors, memories, and displays, it should not be construed in any manner as a conventional computing device since it is clearly not configured to perform, and is incapable of performing, many of the routine data manipulation tasks for which conventional computing devices have become ubiquitous. Instead, an EGM is a specifically selected combination of hardware components configured to perform very high-level specialized functions and only a limited subset of conventional computing tasks as a necessary component of its specialized and highly secured wagering game operation. The considerably higher operational standards imposed upon EGMs clearly exceed the scope of conventional computing devices and confers subject matter eligibility upon the EGM and its associated hardware, firmware, and software, including the system and methods disclosed herein.
Therefore, these elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they merely recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit has said in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Response to Arguments
Regarding the rejection of the claims under 35 U.S.C. 101, Step 2A, Prong 2,, the Applicant argues regarding the amended claims the following:
“The claimed invention improves the accuracy of revenue prediction for box office events by collecting from a broader population including both registered and unregistered players. Through expanding the prediction sample size by aggregating predictions, thereby reducing statistical noise. Further, the claimed invention enables the system to detect new information as it emerges by capturing temporally distinct predictions (first prediction before event starts, second prediction during later and before concluding the box office event). As a result, the claimed invention a technical problem of how to incentivize user registration without shrinking the prediction sample base. It also provides a registration incentive awarding prizes only to registered players while leveraging unregistered predictions. This is achieved by automatically generating unique identifiers without requiring registration.
Accordingly, the claimed invention provides a higher level of predictive quality by expanding the base of predictions through allowing unregistered players as well as registered players to play.” (Remarks page 13)
The Examiner respectfully disagrees. The Applicant’s identified problem of “how to incentivize user registration without shrinking the prediction sample base. It also provides a registration incentive awarding prizes only to registered players while leveraging unregistered predictions. This is achieved by automatically generating unique identifiers without requiring registration.” is not a technical problem but more of a business related problem such as how to as the Applicant states “incentivize” user to register for the prediction game versus not registering for the game and thereby not receiving game awards. The generation of unique identifiers for players is akin to a what a human can accomplish when offering prediction game to a population of players wherein players that game is open to make predictions wherein all players are identified by some means such as an identifier or username written down on paper, but only paid users are able to be awarded prizes.
Applicant further states, “Like the invention claimed in McRO, the currently amended claims provide "a particular way to achieve a desired outcome," here, of improving the quality of a prediction of revenue for a box office event. Accordingly, for at least the foregoing reasons, Applicant respectfully submits that under Step 2A, Prong 2, all presently pending claims are directed to a practical application, and Applicant requests that the § 101 rejections be withdrawn.” (Remarks page 9). The Examiner respectfully disagrees. Unlike the claims at issue in McRO wherein the it was found “By incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques. See Morse, 56 U.S. at 113. When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Alice, 134 S. Ct. at 2358 (citing Diehr, 450 U.S. at 177). Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.” (McRO page 27), the Examiner notes the present claims are merely utilizing generic computing technology to automate a human task at a high level of abstraction.
Conclusion
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/RAW/ Examiner, Art Unit 3715
6/22/2026
/KANG HU/ Supervisory Patent Examiner, Art Unit 3715
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