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 .
Procedural Summary
This is responsive to the claim amendments filed 1/8/2026.
Claims 1, 3-5, 9-11, 13-15, 19-24 and 26-27are pending.
Applicant’s Remarks/Arguments dated 1/8/2026 are noted.
Response to Arguments and Amendment
Applicant’s arguments have been fully considered but are not persuasive.
Applicant contends that the example cited in MPEP 2106.05(a)(II) is controlling1. This is found unpersuasive. The Federal Circuit in Trading Techs noted that the claimed invention was drawn to a specific improvement to the way computers operate”. 2 However, in the instant application is silent to any purported improvement to the operation of a computing device, nor is there any discussion of a technological problem and a technological solution to said problem. Rather, the claims, as amended, are drawn to a generic GUI. Indeed, even Applicant’s Specifications make clear that a litany of generic computing devices can implement the claimed invention3.
Rather, and as made clear by Applicant’s amendment, the claimed invention is drawn to using a GUI to display results of a match game to a user. That is, the GUI is simply a tool to render a gaming outcome as opposed to a technical improvement in the functioning of how the GUI operates. Moreover, it cannot be argued that the claimed invention is drawn to an improvement in the technical nature or feature of a display device. As cited above, the Specifications make it clear that any generic computing device can implement the invention.
Applicant further argues that the GUI display is non-generic as it displays “the comparison of the one of more selected numbers to the one or more drawn numbers and an emphasis of the one or more selected numbers, an indication of one or more drawn numbers via one or more graphical icons of the user interface and a display of a variable returns table”. In response, it is noted that the display does NOT improve the functioning of the computed, nor solves any technical problem. It is merely a display of an output/information and is deemed to be “extra-solution” activity. See MPEP 2106.05(a), II, Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48.
It is further argued that the limitation of “determining, in real-time during the timed sporting event, a reward amount by conducting a probabilistic analysis based on the one or more rewarding numbers and a variable returns table, wherein the variable returns table is generated by calculating probabilistic return odds based on the quantity of drawn numbers, the quantity of rewarding numbers, and the one or more selected numbers” cannot be performed in the human mind and is therefore does NOT recite an abstract idea. In response, it is pointed out that the rejection as outlined below identifies said limitation as an abstract idea drawn to the Abstract groupings of: Mathematical concepts; Certain Methods of Organizing human activity. Therefore, applicant’s argument is not found persuasive.
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 1, 3-5, 9-11, 13-15 & 19-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
The claims are drawn to process and apparatus categories.
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?
Representative amended claim 1 is analyzed below, with bolded limitations indicating recitations of an abstract idea:
Claim 1: A system for matching incidents to a list of numbers, comprising: a processor in communication with a user device comprising a display; and a memory storing a module with instruction executed by the processor, the processor operative to: generate a user interface comprising an array configured to be displayed on the display of the user device, the array including a number set, wherein the array corresponds to minutes of a timed sporting event; receive via the user device one or more inputs corresponding to a selection of one or more numbers from the number set (Abstract grouping: Certain Methods of Organizing human activity); define one or more drawn numbers of said number set based on event results of the timed sporting event (Abstract grouping: Mental processes; Certain Methods of Organizing human activity); compare, in real-time during the timed sporting event, said one or more selected numbers to the one or more drawn numbers to identify one or more rewarding numbers (Abstract grouping: Mental processes; Certain Methods of Organizing human activity); determining, in real-time during the timed sporting event, a reward amount by conducting a probabilistic analysis based on the one or more rewarding numbers and a variable returns table, wherein the variable returns table is generated by calculating probabilistic return odds based on the quantity of drawn numbers, the quantity of rewarding numbers, and the one or more selected numbers (Abstract grouping: Mathematical concepts; Certain Methods of Organizing human activity); output to the display of the user device, in real-time during the timed sporting event, the user interface comprising the comparison of the one or more selected numbers to the one or more drawn numbers and an emphasis of the one or more selected numbers and, an indication of one or more drawn numbers via one or more graphical icons of the user interface, a display of the variable returns table, and a display of the reward amount; and credit, in response to determining the one or more rewarding numbers, a user account based on the reward amount according to a variable returns table (Abstract grouping: Certain Methods of Organizing human activity), wherein the variable returns table is generated by calculating probabilistic return odds based on the quantity of drawn numbers, the quantity of rewarding numbers, and the one or more selected numbers (Abstract grouping: Mathematical concepts; Certain Methods of Organizing human activity).
The bolded limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG4, namely, “Mathematical Concepts”, “Mental Processes” and/or “Certain Methods of Organizing Human Activity” as noted above. The limitations are either drawn to fundamental economic principles, managing personal behavior (e.g. following rules or instructions for gaming), concepts capable of being performed in the human mind including observation, evaluation, judgement or opinion and/or concepts which involve mathematical relationships, calculations, formulas or equations. Additionally, when the claims are analyzed as a whole, they are deemed to be drawn to a match game where monetary amount is credited to a user account based on a positive match outcome. Stated differently, the claims as a whole are directed to following/conducting game rules, deemed to recite abstract ideas under 35 USC 101 as relating to “Certain Methods of Organizing human activity”, see MPEP 2106.04(a)(2).
For at least these reasons, the claims are drawn to an abstract idea.
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, as amended, require additional limitations drawn to a user interface with a display, displaying information and data transmission. These additional elements are either directed to generic computer components described at a high level, or directed to extra-solution activity.
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.
As can readily be seen, the claimed invention can be performed by a human without the aid of a computer:
A human can generate an array (i.e., by writing it on a piece of paper) including a number set;
A human can receive one or more inputs corresponding to a selection of one or more numbers from the number set — i.e., a human can listen to a player selecting numbers;
A human can define one or more drawn numbers of said number set based on event results — a human can observe an event and determine a drawn number;
A human can compare said one or more selected numbers to the one or more drawn numbers to identify one or more rewarding numbers — a human can compare numbers; and
A human can credit, in response to determining the one or more rewarding numbers, a user account according to a returns table, said returns table is variable based on one or more parameters — a human can consult a table to determine how much money to pay to a player and give the player the money.
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.
Nor do the dependent claims add “significantly more” to the abstract idea because they are merely additional steps that can be performed by a human or claims that describe the data with more specificity.
Currently, implementation of an abstract idea on generic computers is not patent-eligible without “significantly more.” Neither the abstract idea itself nor parts of the abstract idea can supply “significantly more” than the abstract idea. As written, current claims are drawn to an abstract idea with essentially the words “implement it” on a generic computer appended thereto. As such, the claims are not patent-eligible.
As pointed out above, the claimed invention, as amended, recites additional elements facilitating implementation of the abstract process, namely on a GUI. However, 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.
Regarding the Berkheimer decision, the prior art relied on in the anticipation rejection establishes the conventionality of computing devices and GUIs used to implement wagering.5 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). Additionally, it is noted that Applicant’s Specifications acknowledge that generic devices are used to implement the claimed invention.6
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 of an abstract process.
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 precedent controls7:
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.)
Regarding independent claims 11 and 26 and dependent claims 3-5, 9-10, 13-15 & 19-25 and 27: Independent claims 11 and 26 contain same/similar limitations to claim 1 and are therefore deemed as being directed to an abstract idea. Additionally, each dependent claim (3-5, 9-10, 13-15, 19-25 and 27) either directly or indirectly depends 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. Additionally, each of the dependent claims further describes additional aspects of the abstract idea and/or contains limitations drawn to extra-solution activity and/or generic computer
For these reasons, the claims are not patent-eligible under 35 USC §101.
Conclusion
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 supervisory examiner should be directed to Dmitry Suhol whose telephone number is (571)272-4430.
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/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715
1 Trading Techs. Int’l, Inc. v. CQG, Inc., 675 Fed. App'x 1001 (Fed. Cir. 2017).
2 Trading Techs, Page 9.
3 ¶ 84: [0084] Specifically, the cloud computing system 1500 includes at least one client computer 1501, such as computer system 1400. Client computer 1501 may be any device through the use of which a distributed computing environment may be accessed to perform the methods disclosed herein, for example, a traditional computer, portable computer, mobile phone, personal digital assistant, tablet to name a few. The client computer 1501 includes memory such as random access memory (RAM), read-only memory (ROM), mass storage device, or any combination thereof. The memory functions as a computer usable storage medium, otherwise referred to as a computer readable storage medium, to store and/or access computer software and/or instructions. (Emphasis Added).
4 See MPEP 2106
5 Office action dated 11/27/2024, Page 5, U.S. Pub. No.: 20020006821to inventor Park.
6 ¶ 84: [0084] Specifically, the cloud computing system 1500 includes at least one client computer 1501, such as computer system 1400. Client computer 1501 may be any device through the use of which a distributed computing environment may be accessed to perform the methods disclosed herein, for example, a traditional computer, portable computer, mobile phone, personal digital assistant, tablet to name a few. The client computer 1501 includes memory such as random access memory (RAM), read-only memory (ROM), mass storage device, or any combination thereof. The memory functions as a computer usable storage medium, otherwise referred to as a computer readable storage medium, to store and/or access computer software and/or instructions. (Emphasis Added).
7 : Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)
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