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 .
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 1-2, and 4-13 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 recites the limitations "a plurality of gaming devices", “each gaming device”, “said gaming device”, “at least one gaming device” in claim 1. The references to the subsets of “a plurality of gaming devices” is inconsistent and it is not immediately clear if the applicant intends for these subsets of “each gaming device”, “said gaming device”, and “at least one gaming device” are intended to co-reference the same device, or both possibly different or possibly similar subsets of devices all selected from the original plurality of gaming devices.
Claims 2 and 4-13 are rejected based on claim dependency on claim 1 and/or presentations of “said gaming device” and “said at least one gaming device”.
For the purposes of examination these references have been understood as intended to reference a common sub group of “at least one gaming device”.
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 1-2, 4-13, and 15-18 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 MPEP § 2106, 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 system (i.e., a machine) in claims 1-2, 4-13, and 15-18.
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:
1. A system for tracking casino game asset interests and allocating earnings associated therewith comprising:
a plurality of gaming devices configured to present wagering games, each gaming device having an associated gaming device identifier and outfitted with a communication interface communicatively coupled to an electronic communications network, each gaming device configured to output, via said communication interface thereof, information reflecting earnings associated with wagers placed at said gaming device; and
at least one external server in communication with the plurality of gaming devices via said electronic communications network comprising a processor, a memory and machine-readable code stored in said memory and executable by said processor to cause said server to:
generate a unique token identifier which identifies a game asset interest associated with at least one gaming device of the plurality of gaming devices, including said associated gaming device identifier of said at least one gaming device;
create a record regarding said game asset interest, said record comprising an initial block having said unique token identifier which identifies said game asset interest and first time information associated therewith;
transmit information regarding said initial block to at least one other computing device for decentralized storage;
receive said information from said at least one gaming device via said electronic communications network regarding earnings associated with said game asset interest during a period of time;
create a second block for said record, said second block having said information regarding said earnings and second time information associated therewith;
transmit information regarding said second block to said at least one other computing device;
determine a payment amount based upon said earnings;
create a third block for said record, said third block having said information regarding said payment amount and third time information associated therewith; and
transmit information regarding said third block to said at least one other computing device.
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes including observation, evaluation, and judgement because the claims are directed to series of steps for observing earnings associated a game asset over a period of time and judging/determining an amount of a payment amount based thereon as well as Certain Methods of Organizing Human Activity including commercial or legal interactions including agreements in the form of contracts, legal obligations because the claims set forth the calculation of payments associated with gaming activity and the recordation of the same.
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 at least one external server, a processor, a memory, at least one other computing device, a plurality of gaming devices, a communication interface, and electronic communications network it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonably include other networked devices such as generic computers, smart phones, servers, PDAs laptops 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 at least one external server, a processor, a memory, at least one other computing device, a plurality of gaming devices, a communication interface, and electronic communications network 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 [0015]-[0016], [0025], [0053]). 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 [0015]-[0016], [0025], [0053]). 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 2, 4-13, and 15-18 incorporate substantially similar abstract concepts as noted with respect to the exemplary claim 1, while the additional elements recited by the additional claims including one or more of at least one external server, a processor, a memory, at least one other computing device, a plurality of gaming devices, a communication interface, electronic communications network and a gaming table 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 1 and further present substantially similar abstract concepts as noted with reflection to exemplary claim 1 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 June 30th, 2025 have been fully considered but they are not persuasive.
On pages 8-18 of the applicant above dated remarks, the Applicant presents various arguments against the rejection of claims under 35 U.S.C. § 101 for being directed to non-statutory subject matter including:
i) That the claimed invention does not fall under the enumerated grouping of abstract idea of Mental Processes because the invention involves computer processor and network operations that cannot be performed in or by the human mind (Remarks Pages 8-11);
ii) That the claimed invention solves the technical problem of allowing players to take the “other” or house side of a bet or contest and participate as the game operator resulting in a long-term disadvantage to the user and that this is accomplished through the transfer of a digital tokenize transferable interest in a game asset that cannot be performed in a human mind (Remarks Pages 11-12);
iii) That the claimed invention does not fall under the enumerated grouping of Organizing Human Activity because there is no manual process for creating gaming asset interests and the ability to create, securing, and transferring something that didn’t previously exist (Remarks Page 12);
iv) That the claimed invention integrates any abstract idea recited therein into a practical application because the claim when considered as a whole provides for the transfer of a digital tokenize transferable interest in a game asset as noted in previous argument summarized herein above (Remarks Pages 12-14);
v) That the rejection must identify the additional elements of the claimed invention beyond the recited judicial exception and explain why the same do not add more to the abstract idea and that the framework of the recited claim must necessarily be more than commercial or legal interactions, or legal obligations as alleged (Remarks Page 14);
vi) that the claimed non-conventional and non-generic arrangement of known pieces provides significantly more than an abstract idea similar to considerations addressed by the court in BASCOM Global Internet Services v. AT&TMobility LLC, 827 F .3d 1341 (Fed. Cir. 2016) (Remarks Page 15);
vii) That additional court decisions in DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245, 113 U.S.P.Q.2d 1097 (Fed. Cir. 2014) & Cosmokey Sols. GmBH & Co. KG v. Duo Sec., 15F.4th 1091, 1096(Fed. Cir.2021) support the position that a claimed invention when considered as a whole may support eligibility based on reflected improvements in existing technology (Remarks Page 16); and
viii) that Examples 21 and 42 from the 2015 Subject Matter Eligibility Guidance Update supports patent eligibility of inventions that provide a solution to a problem rooted in computer technology and by extension would support the eligibility of the claimed invention that creates an entire new game object ( a game asset interest) as a secure and transferrable token in an electronic environment (Remarks Pages 17-18).
Responsive to the Applicant remarks the following is respectfully noted in corresponding order and enumeration as the identified above:
i.a) The court enumerated grouping of a Mental Processes includes Abstract ideas performed on a computer (See MPEP 2106.04(a)(1) Sub III.C) and according the inclusion of a computer and hardware elements of the same does not in of itself remove the claimed invention from falling under this enumerated grouping of abstract ideas or make the claimed invention incapable of being performed by a human mind as proposed.
ii.a) The ability of the player to take the role of the house side of a bet or contest and participate as the game operator describes the concern and address of abstract game rules that is not tied to technical problems/limitations of the underlying hardware but instead utilizes the recited technology/hardware merely as a tool to implement the abstract idea. In an analogous consideration, In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016) recognized that game rules even when implemented on a generic computer are not sufficient to support patent eligibility. Accordingly absent a technical problem, the claimed invention cannot provide a technical solution for the same as proposed and this consistent with analogous considerations of the courts as cited as well as the criteria of MPEP 2106.04(d)(1) & 2106.05(a).
iii.a) The claimed invention falls under the enumerated grouping of Certain Organizing Human Activity including commercial or legal interactions including agreements in the form of contracts, legal obligations because the claims set forth the calculation of payments associated with gaming activity and the recordation of the same. The Applicant’s proposal that there is no manual process for creating an abstract idea embodying gaming asset interests and the ability to create, securing, and transferring the same is respectfully non-persuasive for at least the reason that the creation of contracts in both verbal and written form existed prior to the filing of the instant application and further because it is not immediately clear on what basis the absence of a manual process would evidence a process being non-abstract as proposed.
iv.a) The rejection of record considers the claimed elements both individually and as a whole in determining that the claimed invention including transfer of digital tokenized transferable interest in game assets, as particularly claimed, does not support practical application of the recited abstract idea in a manner consistent with the criteria of MPEP 2106.04(d)(1) & 2106.05(a) as noted herein above.
v.a) The rejection of record identifies the additional non-abstract element of the claimed invention including at least one external server, a processor, a memory, at least one other computing device, a plurality of gaming devices, a communication interface, and electronic communications network and explains why the same does not support patent eligibility when considered under step 2B in view of the cited portions of the applicant’s specification and the drafting requirements of the same as set forth by 37 CFR 1.71.
vi.a) In BASCOM Global Internet Services v. AT&TMobility LLC, the court agreed that the additional elements were generic computer, network, and Internet components that did not amount to significantly more when considered individually, but explained that the district court erred by failing to recognize that when combined, an inventive concept may be found in the non-conventional and non-generic arrangement of the additional elements. Specifically, when considered as an ordered combination the court identified the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user as representing a non-conventional and non-generic arrangement of the additional elements wherein such merged the benefits of remote based filtering tools and personal based filtering tools to create a unique beneficial arrangement that was not separately available with either of these known arrangements for filter tools previously. With relation to the preceding the presented arguments do not identify how the claimed invention when considered as an ordered combination provides significantly more than a conventional or generic arrangement of known hardware executing algorithm or how such provide for a unique beneficial arrangement that was not separately available with the claimed elements previously and in a manner that would separate the claimed invention from the specific arrangement as cautioned against in Alice, “[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).
vii.a) In DDR Holdings, LLC v. Hotels.com, L.P. & Cosmokey Sols. GmBH & Co. KG v. Duo Sec. the court determined that the claimed invention were patent eligible because they recite a specific improvement to a particular computer-implemented technique because the departed from the routine and conventional methods to solve a computer specific problem. In the instant case as noted in the previous section of this response the claimed invention does not address a technology/computer specific problem and accordingly does not match the criteria relied upon in either of the cited decisions or MPEP 2106.05(a).
viii.a) As noted in sections ii.a & vii.a of this response, while solutions to technical problems may support patent eligibility of the claimed invention, the problem identified by the instant application is not technical problem and accordingly does not support the patent eligibility of the claimed invention as proposed. Additionally, the Applicant’s argument is not persuasive because the features Applicant identifies as the inventive concept (game object / electronic token) are part of the abstract idea itself; as such, these features cannot constitute the “inventive concept.” See Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.”); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”).
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
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 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