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 .
Status of Claims
Claims 1, 2, 5, 6, 9, 10, 11, 14 - 16, 18 and 20 have been amended.
Claims 1 – 20 are pending
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.
Claim 1 and dependent claims 2 – 9 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.
Independent claim 1 has been amended to recite the limitations of “responsive to the determination being that no sporting event wagers associated with the display device were placed on any outcomes of the sporting event, cause a display, by the display device, of the first content comprising the video data from the second, subsequent period of time. The Examiner notes that this new limitation renders the claim indefinite. The Examiner notes that the claims recite “during a first period of time” wherein “first content” of a sporting event is digitally captured and displayed with second content that is different than the first. The claim goes on to recite “during a second subsequent period of time, in response to an event occurring in the digitally captured sporting event, determine if wagers were placed on outcomes of the sporting event and if so, enable a replay input to be presented and receive an input to replay the first content that comprises the video data from the first period of time, and display “the first content” (i.e. the replay of the first content) simultaneously with third content that is different than the first content. The claim further goes on to include the new limitation of then in response to no sporting event wagers being placed on outcomes of the sporting event, then display “the first content comprising video data from the second, subsequent period of time.” The Examiner has reviewed the claims at length to attempt many different interpretations of the timing of the first and subsequent periods of time with respect to the first, second, and third displays of “content”, but notes that the claims do not recite or claim a second subsequent period of time displaying the first content video data. The only first content video data that is displayed during the “second subsequent period of time” is the replay of “first content comprising the video data from the first period of time”. It is thus not clear from the newly introduced limitation as to how during the “second subsequent period of time” the display device is displaying “the first content comprising video data from the second, subsequent period of time” when the first content comprising video data is only every displayed during the first period of time. The metes and bounds of the claims cannot be reasonable determined since the entirety of the claim depends on these various sequential timings of the first and second periods of time with respect to what content (i.e. first, second, third and replay of first content) is being displayed upon the display.
Claim 10 and dependent claims 11 – 14 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.
Regarding independent claim 10, the claim have been amended to include at least the limitations of “responsive to the determination being that no sporting event wagers associated with the display device were placed on any outcomes of the sporting event, cause a display, by the display device, of the first content comprising the video data from the second, subsequent period of time.” Examiner notes that these claims are rejected in view of reasoning that is similar to the above 112 rejection of independent claim 1 as the newly added limitation highlighted above, namely, “the first content comprising the video data from the second, subsequent period of time” renders the claim indefinite as the first content comprising is not ever displayed during the second subsequent period of time but rather what is only displayed is a display of the “pausing” of the first content comprising the video data. The metes and bounds of the claim cannot be determined as it is not clear what content the applicant is attempting specify as being displayed during this second subsequent period of time.
Claim 15 and dependent claims 16 – 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.
Regarding independent claim 15, the claims have been amended to include at least the limitations of “responsive to the determination being that no sporting event wagers associated with the display device were placed on any outcomes of the sporting event, cause a display, by the display device, of the video data digitally captured from the sporting event from the second, subsequent period of time;” and “responsive to the determination being that no sporting event wagers associated with the display device were placed on any outcomes of the sporting event, cause a display, by the display device, of the video data digitally captured from the sporting event from the second, subsequent period of time” Examiner notes that these claims are rejected in view of reasoning that is similar to the above 112 rejection of independent claim 1 and 10 as the newly added limitation highlighted above, namely, “the video data digitally captured from the sporting event from the second, subsequent period of time;” renders the claim indefinite as the video data digitally captured is only captured during the first period of time. Thus, it is not clear how the further limitations necessitating that the display device displaying the video data captured during a second subsequent period of time, when the video data is only every captured from the first period of time. The metes and bounds of the claim cannot be determined as it is not clear what content the applicant is attempting claim is displayed and when it is displayed. Clarification is needed to interpret the full complete claims of independent claims 1, 10 and 15 and their respective dependent claims.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Claims 1 – 20 are drawn to a system.
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 1 - 9 are exemplary because they require substantially the same operative limitations of the remaining claims of 10 – 20 (reproduced below.) Examiner has underlined the claim limitations which recite the abstract idea, discussed in detail in the paragraphs that follow.
Claim 1 (currently amended): A system comprising:
a processor; and
a first memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
during a first period of time:
cause a display, by a display device, of first content comprising video data that is digitally captured from a sporting event and stored by a second memory device associated with a server operating independent of the processor and received, via a communication interface to a remote communication link, from the server, and
cause a display, by the display device and simultaneously with the display of the first content comprising the video data, of second content that is different from the first content, and
during a second, subsequent period of time, responsive to a determination of an occurrence of an event occurring within the sporting event digitally captured as the first content
determine if any sporting event wagers associated with the display device were placed on any outcomes of the sporting event,
responsive to the determination being that a sporting event wager associated with the display device was placed on an outcome of the sporting event:
enable an input to replay the first content and
responsive to a receipt of data associated with the input to replay the first content:
cause a display, by the display device, of the first content comprising the video data from the first period of time, and
cause a display, by the display device, simultaneously with the display of the first content comprising the video data from the first period of time, of third content that is different from the first content and responsive to the determination being that no sporting event wagers associated with the display device were placed on any outcomes of the sporting event, cause a display, by the display device, of the first content comprising the video data from the second, subsequent period of time.
The claims recite italicized limitations that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG, namely, Mental Processes
More specifically, under this grouping, the italicized limitations represent concepts performed in the human mind (including an observation, evaluation, judgment, opinion). For example, the italicized limitations are directed towards the displaying of different types of content or data wherein content is related to a related to a sporting event and further content or data that is different. The displaying of various pieces or portions of content related to not related to a sporting event can be done via manual means such as an observer utilizing pen and paper to generate reports about game events, statistics and/or game highlights.
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): first and second memory, processors, servers and display 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, server, memory, and displays. 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, 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.
Regarding the Berkheimer decision, Morin (US 2019/0139361) establishes that these additional elements are generic:
[0151] Turning initially to FIG. 1, in a typical embodiment of the gaming system 10, a central server 12 is provided which includes a main processor 14, a memory 16 storing programming thereon for execution by the processor, and a main display 18 for communicating information to the users of the system. The central server typically includes a random number generator 19 used for producing random number output that is used in execution of the game and determination of various outcomes of the game.
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
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
Regarding the rejection of the claims 1 – 20 under 35 U.S.C. 101, the Applicant argues essentially that the claim are not directed towards an abstract idea of concepts that can be performed in the human mind. Applicant states:
“In accordance with MPEP §2106.04(a)(2)(III), these processor- implemented elements cannot practically be performed in the human mind or by a human using a pen and paper. For example, neither a human mind nor a human using a pen and paper can cause any display, by a display device, of first content comprising video data that is digitally captured from a sporting event and stored by a second memory device associated with a server operating independent of the processor and received, via a communication interface to a remote communication link, from the server. As such, the system of independent Claim 1 is not directed to the abstract idea of concepts performed in the human mind (Remarks page 10 – 11)
The Examiner respectfully disagrees and notes that barring the usage of well known, generic and conventional computing elements, the claims are directed towards an abstract idea such as a human presenting multiple game events (content) occurring simultaneously via pen and paper, wherein the content is video data such as descriptions of video metadata, and responsive to wagers and replay events cause different content such as “replay” content to be displayed via pen and paper while second and third content is also displayed. The Examiner maintains the rejection.
When evaluating the claims as a whole, Applicant respectfully submits that representative independent Claim 1, as a whole, is directed to a practical application of the alleged exception by providing a system that overcomes certain of the technical limitations of prior systems that enabled wagering on a sporting event and displaying that sporting event while also displaying other content. Specifically, due to the relative limited amount of display area available to display content, relevant content of the wagered on sporting event was missed in certain instances of these prior systems due to the display of the other content. That is, such prior systems were unable to differentiate when to display which content and lacked the display real estate to display all content which resulted in certain relatively high-value content pertaining to certain wagered on sporting events being missed (to the frustration of users). In solving these technical limitations while still operating without the display real estate to display all content at all time, the claimed systems utilize the placement of a sporting event wager to differentiate which content to display and when. Such an improvement qualifies as a practical application of the alleged exception.
The Examiner respectfully disagrees and notes that the Applicant recites the problem that is being addressed as related to the technical limitations of display real estate limitations. However, the claims fails to recite a specific hardware architecture or implementation that specifically address physical display constraints. The claims fails to provide an improvement to the display rendering that is indicative of a practical application. The solution that the Applicant describes is more related to a decisional solution, such as the deciding on what to display and when in terms of events that may be important to a user operating the game system as dictated by what they choose to wager upon. The deciding of which content to display and when fails to provide an improvement that is indicative of a practical application. The Examiner maintains the rejection.
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 ROSS A WILLIAMS whose telephone number is (571)272-5911. The examiner can normally be reached Mon-Fri 8am - 4pm.
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, Kang Hu can be reached at (571)270-1344. 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.
/Ross A Williams/Examiner, Art Unit 3715 4/23/2026
/KANG HU/Supervisory Patent Examiner, Art Unit 3715
Prosecution Insights