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 Notice of Allowance being retracted on 03/23/2026.
Claims 1-3 and 5-21 are pending.
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 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.
Claims 6, 9 and 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.
Claim 1 introduces “an entity”. Claims 6 and 20 recite “a first entity’" and “a second entity,” and Claim 19 recites “the second entity,” without clear antecedent basis tying them to “an entity” of claim 1. Claim 20's recitation “the first entity and the second each comprise[s] at least one of” is grammatically unclear. Clarification is required.
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 and 5-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. Each of Claims 1-3 and 5-21 has been analyzed to determine whether it is directed to any judicial exceptions.
The examiner follows the two step-analysis, as described in MPEP 2106 (available at https://www.uspto.gov/web/offices/pac/mpep/s2106.html). The following diagram is an overview of the steps involved.
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Step 1
Step 1 of the two step-analysis considers whether the claims fall into one of the four statutory categories of invention such as a process, machine, manufacture, or composition of matter. The instant invention claims a system in Claims 1, and 3-10, a method in Claims 11-15, and 21 and a device in Claims 16-20. As such, the claimed invention falls into the broad statutory categories of invention. However, claims that fall within one of the four statutory categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas.
Step 2A
Step 2A has been further divided into two prongs as shown in the following diagram.
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Step 2A, Prong 1
Under prong 1 of step 2A, the examiner considers whether the claim recites an abstract idea, law of nature or natural phenomenon. The term “abstract idea” is not interpreted as a layperson might. Instead, the term “abstract idea” is interpreted as described in legal opinions by courts.
According to MPEP 2106.04(a):
the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Representative Independent Claim 1 (and similarly recited Claims 11 and 16) recites “1. (Currently Amended) A system configured to monitor a virtual element associated with a virtual gaming environment, the system comprising:
a processor circuit; and
a memory coupled to the processor circuit, the memory comprising machine-readable instructions that, when executed by the processor circuit, cause the system to perform operations comprising:
determining that an entity interacted with the virtual element within the virtual gaming environment;
storing an indication that the entity interacted with the virtual element; and
subsequent to determining that the entity interacted with the virtual element, receiving a request to perform an action associated with the entity and/or the virtual element; and
determining whether to perform the action based on the indication that the entity interacted with the virtual element.”
As indicated above, the italicized portions of representative Independent Claim 1, and similarly recited Independent Claims 11 and 16, generally encompass the abstract ideas, for example as, steps, instructions or rules for providing a game, namely, following rules, which is one of certain methods of organizing human activity under the 2019 PEG. Further, the "determining whether to perform the action based on the indication" step is additionally a mental evaluation or a mental process.
Further, the dependent Claims include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed. Accordingly, each of Claims 1-3 and 5-21 recites an abstract idea.
Step 2A, Prong 2
Under prong 2 of step 2A, the examiner considers whether the additional elements in the claims integrate the abstract idea into a practical application. Here, the abstract idea is not integrated into a practical application. According to 2019 PEG, a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
Claims 1, 11, and 16 further recite at least a processor circuit, memory, and "XR device, yet these are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
The determining, and storing, steps of the game are deemed to be data gathering and data presentation for the use of the judicial exception and similarly are recited at a high level of generality. Thus, these limitations are a form of insignificant extra-solution activity (See MPEP 2106.05(g), See also selecting a particular source and type of data to be manipulated where “Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)).
Even when the limitations are viewed in combination, the additional elements in this claim do no more than automate the organizing activities needed to be performed, using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Latric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality). Furthermore, the additional elements do not serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Accordingly, Claims 1, 11, 16, and their dependent claims as a whole does not integrate the recited judicial exception into a practical application and these claims are directed to the judicial exception. Thus, Claims 1-3 and 5-201lack the eligibility requirements of Step 2 Prong II.
Step 2B
Finally, under step 2B, the examiner evaluates whether the additional elements:
add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present (MPEP 2106.05(d)); or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018).
Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
Independent Claims 1, 11, and 16 do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. As discussed above with respect to the lack of a practical application, the additional elements in the claim amounts to no more than mere instructions to apply the exception using generic computer components used as tools. These additional elements (i.e. at least a processor circuit, a memory device, and an XR device) are generically claimed computer components which enable a game to be conducted by performing the basic functions of: (i) receiving, processing, and storing data, (ii) automating mental tasks and (iii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. Further, under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be reevaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
Here, the determining steps of the claims are deemed to be following rules of game, data gathering and data presentation extra-solution activity. Court decisions cited in MPEP 2106.05(d)(II) indicate that these limitations are well-understood, routine, and conventional function when it is claimed in a merely generic manner (as they are here). See storing and retrieving information in memory (MPEP 2106.05(d)(II)(iv) and then to present or display said information is well known as in presenting offers and gathering statistics (MPEP 2106.05(d)(II)(iii). Accordingly, a conclusion that the step is well-understood, routine, conventional activity is supported under Berkheimer. Therefore, these limitations remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Thus, Claims 1, 11, 15, and their dependents remain ineligible.
The dependent claims recite further extra-solution activities and further define the abstract idea of the independent claims.
Claims 2-10 inherit the same abstract idea as Claim 1.
Claims 12-15, and 21 inherit the same abstract idea as Claim 11.
Claims 17-20 inherit the same abstract idea as Claim 16.
In addition, the dependent Claims are also ineligible and lack a practical application.
AIA Notice
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 and 5-21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2009/0117994 A1 to Kelly in view of U.S. Patent Application Publication 2003/0003997 A1 to Vuong et al.
Regarding Claim 1 and similarly recited Claim 11, (Currently Amended) Kelly discloses a system configured to monitor a virtual element associated with a virtual gaming environment, the system comprising:
a processor circuit (fig. 17, paras. [0164], [0276]); and
a memory coupled to the processor circuit, the memory comprising machine-readable instructions that (fig. 17, paras. [0164], [0276]), when executed by the processor circuit, cause the system to perform operations comprising:
determining that an entity interacted with the virtual element within the virtual gaming environment (figs. 2-4A, paras. [0143]-[0147);
storing an indication that the entity interacted with the virtual element (paras. [0124]-[0126]).
However, Kelly does not explicitly disclose:
subsequent to determining that the entity interacted with the virtual element, receiving a request to perform an action associated with the entity and/or the virtual element; and
determining whether to perform the action based on the indication that the entity interacted with the virtual element.
In a related invention, Vuong discloses:
subsequent to determining that the entity interacted with the virtual element, receiving a request to perform an action associated with the entity and/or the virtual element (paras. [0061]-[0062]); and
determining whether to perform the action based on the indication that the entity interacted with the virtual element (paras. [0061]-[0062]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply Vuong's monitoring-and-authorization of wager actions to Kelly's virtual-play-piece gaming environment, in order to gate wagering actions based on monitored prior interactions and maintain game integrity.
Regarding Claim 2, (Original) Kelly in view of Vuong discloses the system of Claim 1, wherein determining that the entity has interacted with the virtual element comprises determining at least one of:
that the entity has taken possession of the virtual element;
that the entity has given up possession of the virtual element; and
that the entity has used the virtual element as part of a virtual game in the virtual gaming environment (Kelly, figs. 1-4A).
Regarding Claim 3, (Currently Amended) The system of Claim 1, wherein determining that the entity has interacted with the virtual element comprises receiving the indication that the entity has interacted with the virtual element from an extended reality ("XR") device (The Examiner takes official notice that AR/VR head-mounted gaming displays were well known before the effective filing date. (See, 2014/0121015 A1 to Massing et al. figs. 1A-1B, fig. 3, depicts gaming eyewear 130 used by a player, para. [0026]-[0027], [0079] discloses gaming eyewear 130 can show virtual content related to the wagering game).
Regarding Claim 5, and similarly recited Claim 12, (Currently Amended) Kelly in view of Vuong discloses the system of Claim [[4]]1, wherein the virtual element comprises a virtual currency,
wherein receiving the request to perform the action comprises receiving a request to place a wager using the virtual currency (Kelly, paras. [0110], [0116]), and
wherein determining whether to perform the action comprises determining not to place the wager based on the indication that the entity interacted with the virtual element (Kelly, paras. [0110], [0116]).
Regarding Claim 6, and similarly recited Claim 21, (Currently Amended) Kelly in view of Vuong discloses the system of Claim 5, wherein the entity is a first entity that is unauthorized to place the wager,
wherein determining that the entity interacted with the virtual element within the virtual gaming environment comprises determining that the first entity provided the virtual currency to a second entity (Vuong, paras. [0057]-[0059]),
wherein receiving the request to place [[a]] the wager using the virtual currency comprises receiving the request to place the wager by the second entity using the virtual currency from the second entity (Vuong, paras. [0057]-[0059]), and
wherein determining whether to perform the action comprises determining not to place the wager based on the first entity having provided the virtual currency to the second entity (Vuong, paras. [0057]-[0059]).
Regarding Claim 7, (Currently Amended) Kelly in view of Vuong discloses the system of Claim 1, the operations further comprising:
generating a report associated with the virtual element and/or the entity based on the indication (Kelly, paras. [0125], [0370], Vuong, paras. [0049]-[0051]),
wherein generating the report comprises generating a chain-of-custody report associated with the virtual element (Kelly, paras. [0125], [0370], Vuong, paras. [0049]-[0051]).
Regarding Claim 8, and similarly recited Claim 13, (Currently Amended) Kelly in view of Vuong discloses the system of Claim 1, the operations further comprising:
generating a report associated with the virtual element and/or the entity based on the indication, wherein generating the report comprises generating a list of taxable events associated with the entity (Vuong, paras. [0049]-[0051]).
Regarding Claim 9, and similarly recited Claims 14 and 20, (Currently Amended) Kelly in view of Vuong discloses the system of Claim 1, wherein the entity comprises at least one of:
a user of the XR an extended reality ("XR") device;
a dealer of a virtual game in the virtual gaming environment (Kelly, figs. 1-4A, 17);
an opponent of the user of the XR device;
a friend of the user of the XR device; and
an operator of the virtual gaming environment (Kelly, fig. 17).
Regarding Claim 10, and similarly recited Claims 15 and 20, (Original) Kelly in view of Vuong discloses the system of Claim 1, wherein the virtual element comprises at least one of:
a virtual card (figs. 1-10);
a virtual die;
a virtual chip;
a virtual table;
a virtual electronic gaming machine ("EGM"); and
a virtual avatar.
Regarding Claim 16, (Currently Amended) Kelly discloses: an extended reality ("XR") device configured to display a virtual element of a virtual gaming environment, the XR device comprising:
a processor circuit (fig. 17, paras. [0164], [0276]); and
a memory coupled to the processor circuit, the memory comprising machine-readable instructions that (fig. 17, paras. [0164], [0276]), when executed by the processor circuit, cause the XR device to perform operations comprising:
determining that an a first entity has interacted with the virtual element within the virtual gaming environment while the virtual element was assigned to a second entity that is different from the first entity (figs. 2-4A, paras. [0143]-[0147).
However, Kelly does not explicitly disclose:
transmitting an indication that the first entity has interacted with the virtual element to a remote device associated with the virtual gaming environment.
In a related invention, Vuong discloses transmitting an indication that the first entity has interacted with the virtual element to a remote device associated with the virtual gaming environment (Vuong, paras. [0012]-[0013], [0056]-[0058]).
The recitation of an "extended reality (XR) device" with a head-worn image-output device is met by well-known augmented/virtual-reality head-mounted display technology; Official Notice is taken that AR/VR head-mounted gaming displays were well known before the effective filing date. (See figs. 1A-1B, fig. 3, depicts gaming eyewear 130 used by a player, para. [0026]-[0027], [0079] discloses gaming eyewear 130 can show virtual content related to the wagering game).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply Vuong's monitoring-and-authorization of wager actions to Kelly's virtual-play-piece gaming environment, in order to gate wagering actions based on monitored prior interactions and maintain game integrity.
Regarding Claim 17, (Currently Amended) Kelly in view of Vuong discloses the XR device of Claim 16, the operations further comprising:
subsequent to determining that the first entity has interacted with the virtual element, updating a log associated with the virtual element that is stored locally (Vuong, paras. [0012]-[0013], [0056]-[0058]); and
wherein transmitting the indication to the remote device comprises responsive to a triggering event, transmitting information associated with the log to the remote device (Vuong, paras. [0012]-[0013], [0056]-[0058]).
Regarding Claim 18, (Original) Kelly in view of Vuong discloses the XR device of Claim 17, the operations further comprising:
responsive to transmitting the indication, deleting a portion of the log (Kelly, paras. [0406]).
Regarding Claim 19, (Currently Amended) Kelly in view of Voung discloses the XR device of Claim 16, wherein determining that the first entity has interacted with the virtual element comprises determining at least one of:
that the first entity has taken virtual possession of the virtual element; and that the second entity has given up possession of the virtual element (Kelly, fig. 65, paras.[0019], [0277], [0459]); and
that the entity has used the virtual element as part of a virtual game in the virtual gaming environment (Kelly, fig. 65, paras.[0019], [0277], [0459]).
Reopening of Prosecution / Status
The Notice of Allowance mailed 03/23/2026 is hereby withdrawn, and prosecution is reopened. Upon further consideration of the application, the Examiner has determined that the claims are not in condition for allowance for the reasons set forth above. This Office Action is made non-final. The previously withdrawn rejection under 35 U.S.C. § 101 is reinstated, and new grounds of rejection under 35 U.S.C. § 103 are entered. Applicant's prior amendments and arguments have been fully reconsidered; to the extent the Examiner previously indicated subject matter to be allowable, that indication is withdrawn for the reasons stated herein.
Conclusion
Claims 1-3 and 5-21 are examined above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAUNA-KAY HALL whose telephone number is (571)270-1419. The examiner can normally be reached M-F 9:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.N.H/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
Prosecution Insights