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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 23rd, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for not requiring separate submission of an enrollment security code when a QR code is scanned(submitted) by the user device and described the user submission (presentation) of the UCSL device to the cashier to be scanned and purchased (Specification Paragraphs [0224], [00229]-[00231]), it does not reasonably provide enablement for an enrollment security code to validate the user configurable subscription lottery device explicitly without submission of the enrollment security code by the user. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
The applicant’s amendment and accompanying remarks propose that the user is not required to submit an enrollment security code, however as reflected in the cited portion of the applicant’s specification the security code is entered when the user scans the QR code (and the same is validated) and accordingly while the user is not required to separately enter the security code the still submits the security code with the scanning of the QR code (Specification Paragraphs [00229]-[00231]). Further even in the case where the user submits/presents the device to a cashier who then scans the device (Specification Paragraph [0224]), the user is disclosed as performing an act of presenting/submitting the device to the cashier and the absence of this submission would not allow the subsequent scanning to take place by the cashier and the user is still required to additionally submit the enrollment code for validation (Specification Paragraphs [00229]-[00231]). This feature is not supported in the context of the application’s original disclosure and contradicts the process described therein
Considering the In re Wands factors, including state of the technology, the level of one of ordinary skill and the lack of working examples provided by the specification, and level of predictability in the art it is unclear how a user is both not required to submit an enrollment security code as claimed and at the same time submit the security code through the scanning of the QR code containing the security code as such is contradictory in nature. Based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As summarized in the 2019 Patent Subject Matter Eligibility Guidance, subject matter eligibility is determined based on a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant application includes claims concerning a processing system (i.e., a machine) in claims 21-40.
In Prong 1 of Step 2A, it must be determined whether the claimed invention recites an Abstract Idea, Law of Nature or a Natural Phenomenon.
In particular exemplary presented claim 1 includes the following underlined claim elements:
21. A user configurable subscription lottery plan processing system comprising:
a processor comprising a computer-readable medium storing instructions configured to cause the processor to:
receive information related to a purchaser's selection of a user configurable subscription lottery device, wherein the user configurable subscription lottery device is manufactured and configurable for loading onto an electronic wallet, comprises an enrollment security code, which is configured to (i) validate the user configurable subscription lottery device without submission of the enrollment security code by a user and (ii) be used in accessing a user-portal for the user configurable subscription lottery device, wherein the subscription lottery device is configured for purchase at a point of sale of a retailer, configured for transfer to the user different than a purchaser of the user configurable subscription lottery device; and wherein the user configurable subscription lottery device must be activated to allow the user to enroll in a user configurable subscription lottery plan;
determine validity of the information;
update one or more records associated with the user configurable subscription lottery device;
allow the user to access to the user configurable subscription lottery plan;
provide options to the user for user configurable lottery-play criteria; and
enter the user in one or more lotteries.
The claim elements underlined above, concern the court enumerated abstract ideas of Certain Methods of Organizing Human Activity including commercial or legal interactions in the form of sales activates and business relations as well as managing personal behavior or relationships including following rules or instructions because the claims set forth the interactions involving one or more parties in the context of a game interface.
As the exemplary claim recites an Abstract Idea, Law of Nature or a Natural Phenomenon it is further considered under Prong 2 of Step 2A to determine if the claim recites additional elements that would integrate the judicial exception into a practical application. Wherein the practical applications are set forth by MPEP §2106.05(a-c,e) are broadly directed to: the improvement in technology, use of a particular machine and applying or using the judicial exception in a meaningful way beyond generally linking the use thereof to a technology environment. Limitations that explicitly do not support the integration of the judicial exception in to a practical application are defined by MPEP 2106.05(f-h) and include merely using a computer to implement the abstract idea, insignificant extra solution activity, and generally linking the use of the judicial exception to a particular technology environment or field of use.
With respect to the above the claimed invention is not integrated into a practical application because it does not meet the criteria of MPEP §2106.05(a-c,e) and although it is performed on a processor, a computer-readable medium and a user configurable subscription lottery device it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonable include other network connected devices such as generic personal computers, smart phones, game consoles, and the like. Accordingly, the claims limitations are not indicative of the integration of the identified judicial exception into a practical application, and the consideration of patent eligibility continues to step 2B.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional element(s) or combination of elements in the claim(s) other than the abstract idea(s) per se including a processor, a computer-readable medium and a user configurable subscription lottery device amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structures that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry per the applicant’s description (Applicant’s specification Paragraphs [0002]-[0003], [0007], [0076], [0088], [0115]-[0123], [0193], [0214]-[0216]). Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Accordingly, as presented the claimed invention when considered as a whole amounts to the mere instructions to implement an abstract idea [i.e. software or equivalent process steps] on a generic computer [i.e. controller or processor] without causing the improvement of the generic computer or another technology field.
The applicant’s specification is further noted as supporting the above rejection wherein neither the abstract idea nor the associated generic computer structure as claimed are disclosed as improving another technological field, improvements to the function of the computer itself, or meaningfully linking the use of an abstract idea to a particular technological environment (Applicant’s specification Paragraphs [0002]-[0003], [0007], [0076], [0088], [0115]-[0123], [0193], [0214]-[0216])). In particular the applicant’s specification only contains computing elements which are conventional and generally widely known in the field of the invention described, and accordingly their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art per the requirements of 37 CFR 1.71. Were these elements of the applicant’s invention to be presented in the future as non-conventional and non-generic involvement of a computing structure, such would stand at odds with the disclosure of the applicant's invention as found in their specification as originally filed.
“[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301). In this case, the claims recite a generic computer implementation of the covered abstract idea.
The remaining presented claims 22-40 incorporate substantially similar abstract concepts as noted with respect to the exemplary claim 21, while the additional elements recited by the additional claims including one or more of a processor, a computer-readable medium and a user configurable subscription lottery device as respectively presented that when considered both individually and as a whole in the respective combinations of the additional claims are not sufficient to support patent eligibility under prong 2 of step 2A or step 2B for the reasons set forth above with respect to the exemplary claim 21 and further present substantially similar abstract concepts as noted with reflection to exemplary claim 21 above and therefore are similarly directed to or otherwise include abstract ideas.
Therefore, the listed claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed March 23rd, 2025 have been fully considered but they are not persuasive.
Commencing on pages 9-10, the Applicant proposes the rejection of claims under 35 U.S.C. §112(a) or 35 U.S.C. §112 First paragraph is improper in view of the disclosure of paragraph [0224] because the same reflects that the user provides UCSL device to a cashier for scanning and purchase and therewith would be readily understood to support the claimed feature of an enrollment security code to validate the user configurable subscription lottery device without submission by the user.
Responsive to the preceding, it is respectfully noted that the cashier involvement as described in paragraph [0224] of the application specification is not involved in a validation process and this process occurs with the user interactions as separately described in paragraphs [0229]-[0231] wherein the same explicitly describes the users actions to perform a validation step. Further even with the interpretation that the validation process occurs during purchase (an interpretation that is not explicitly supported by Pargarph [0224] and conflicts with the explicit discussion of validation presented in [0231]) the user must submit/present the lottery subscription device to the cashier such that they can then subsequently be entered into the POS terminal.
In view of the preceding disclosure and further consideration, the Applicant’s remarks of this section are respectfully non-persuasive.
Continuing on pages 10 through 27 the Applicant repeats arguments that are nearly identical to previously presented arguments originally presented in the Applicant remarks dated February 26th, 2025 and directed to the rejection of claims under 35 U.S.C. §101, that have been previously addressed on pages 19-21 of the Final Office action dated March 24th, 2025.
The Applicant arguments of this section are non-persuasive for the reasons presented on pages 18-22 of the Final Office action dated March 24th, 2025 which is respectfully maintained and incorporated herein by reference.
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E MOSSER whose telephone number is (571)272-4451. The examiner can normally be reached M-F 6:45-3:45.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715
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