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 .
Response to Argument/Amendment
Applicant argues that certain prior attempts to offer streaming services encountered technical limitations in transferring an asset to a client device to solve the technical problem of increasing the activity of and interactions with devices in a streaming environment. (Remarks 8-9 filed 10/14/2025). Applicant supports his contention with [0022] which says in short – have the system determine a benefit for the user. Examiner is not persuaded. It is still unknown what the “technical difficulties” are; that offering opportunities to receive an asset is not a technical solution; and increasing streaming traffic is not a technical problem but more likely an administrative, financial, or logistic one.
Applicant has amended Claim 10, this the objection to the claim is withdrawn.
As best as Examiner can process Applicant’s argument as to Chan (Remarks 9-10), it appears that the amendment and arguments are meant to indicate a) Chan does not disclose the remote game server, however Examiner cites it is computer 211b where 211b “broadcasts video to streaming platform 220” that “captures video of gameplay in real-time and transmits captured video to streaming platform.” [0049], and b) Chan determines the reward for computing device 212b not 211b. Examiner believes the claim calls for the asset to be transferred to the client i.e., 212b and that “determined for the streaming device” is new matter. To advance prosecution Examiner has cited portions of Chan disclosing as a result of the streaming and gameplay transfers from computer 212b to 211b ([0055, 0058]).
Examiner appreciates Applicant’s mention that the claims are not directed to an electronic gaming machine. Examiner contines to reply on Guinn as to the transfer of assets in the context of wagering games.
6. Applicant’s request to hold resolution of the double patenting rejection to be held in abeyance is granted.
Claim Rejections - 35 USC § 101
7. 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.
8. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
9. Step 1
Claims 1-11 are directed to an apparatus/system meeting the requirements for Step 1.
Claims 12-20 are directed to a method meeting the requirements for Step 1.
10. Under Step 2A Prong 1
In independent Claim 1 and similarly in Claims 10 and 12, the following bolded steps recite an abstract idea of abstract idea of data collection, recognition, and storage and italicized steps recite abstract wagering. Claim 1 is selected as representative of Claims 10 and 12.
Claim 1. A live streaming platform server comprising:
a processor; and
a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
receive, from a remote game server, data associated with a play of a wagering game being displayed at a streaming device,
communicate, independent of the remote game server, to a client device, data associated with a live stream that is at least partially based on the data communicated from the remote game server, and
responsive to a receipt of data of a transfer event occurring in association with the streaming device, cause an asset to be transferred to the client device.
Claim 10. A live streaming platform server comprising:
a processor; and
a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
receive, from a remote game server, data associated with a play of a wagering game being displayed at a streaming device,
communicate, to a client device, data associated with a live stream that is at least partially based on the data communicated from the remote game server, and
following a decrease, based on a wager placed on the play of the wagering game, of an account associated with a user of the streaming device and responsive to a transfer event occurring in association with the streaming device prior to an increase, based on an award from the play of the wagering game being displayed at the streaming device, of the account associated with the user of the streaming device:
communicate, to the remote game server, data that results in the remote game sever not associating the award with the streaming device, and
communicate, to the remote game server, data that results in the remote game server associating the award with the client device based on a free play of the wagering game not displayed at the streaming device.
Claim 12. A method of operating a live streaming platform server, the method comprising:
receiving, from a remote game server, data associated with a play of a wagering game being displayed at a streaming device,
communicating, independent of the remote game server, to a client device, data associated with a live stream that is at least partially based on the data communicated from the remote game server, and
responsive to a receipt of data of a transfer event occurring in association with the streaming device, causing by a processor, an asset to be transferred to the client device.
As explained in the MPEP and the October 2019 Update, in situations like this where a series of steps recite judicial exceptions, examiners should combine all recited judicial exceptions and treat the claim as containing a single abstract idea for purposes of further eligibility. See MPEP 2106.04 and 2106.05(II). Thus, for purposes of further discussion, this example considers the abstract ideas collectively as a single abstract idea of data collection, recognition, and storage. The aspects concerning play of a wagering game will be considered an application of data processing to the field of gambling.
As background, this streaming system bears similarity to the claims at issue in In re TLI Communications LLC, 823 F.3d 607 (Fed. Cir. 2016} where the Federal Circuit found that, unlike Enfish, the inventor here was not faced with a technological problem with a technical solution. Although the invention was related to digital images taken and classified on a smartphone, and then automatically stored according to the classification information, the court felt this was an administrative as opposed to technical issue. As background, Claim 17 of TLI states:
17. A method for recording and administering digital images, comprising the steps of:
recording images using a digital pick up unit in a telephone unit,
storing the images recorded by the digital pick up unit in a digital form as digital images,
transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,
receiving the data by the server,
extracting classification information which characterizes the digital images from the received data, and
storing the digital images in the server, said step of storing taking into consideration the classification information.
The patent specification at issue in TLI disclosed prior art telephones with voice, data, and image capability but "[w]hen a large number of digital images are recorded and are to be archived in a central computer unit, then the organization of the data base becomes a problem.” Col. I, ll. 43-45. "In particular, the problems of locating the data of an image data file increase as the number of images to be archived increases." Col. 1 Il. 46-48. The invention sought to solve this problem "by providing for recording, administration and archiving of digital images simply, fast and in such way that the information therefore may be easily tracked.” Col. 1 1. 64-66. The invention teaches manually or automatically assigning “classification data,” such as a date or timestamp, io digital images and sending those images io a server. The server then extracts the classification data and stores the digital images, “taking into consideration the classification information.” Col. 2 ll. 35-45. Hence, addressing an administrative not a technical issue.
Here, there is an equivalence between TLI and the instant claims:
TLI:
Recording and storing steps using a digital pick up unit in a telephone unit
Transmitting data including at least digital images and classification information to a server and extracting steps equivalent to the communicating and determining streps
Storing the digital images in the server, said step taking into consideration the classification information as the responsive storing steps
Application for Sharing Events:
Receiving data from a remote game server
Communicating data to a client device
Transferring, responsive to receipt of data, cause an asset to be transferred to the client device, the steps aided by a processor and memory
Thus, Claim 1, as drafted, to receive, communicate, and transfer asset data, like Claim 17 of TLI, under its broadest reasonable interpretation, covers performance of the limitations according to the abstract idea of data collection, recognition, and transfer {storage} to address an administrative issue. The data itself being related to the technological field of wagering.
11. Step 2A Prong II
The recited claims fail to recite any elements that provide a practical application. As in TLI, it is well-settled that recitation of concrete, tangible components alone is insufficient to confer patent eligibility to otherwise abstract data. The components must involve more than the performance of well-understood, routine, and conventional activities previously known in the industry (Alice, 134 S. Ct. at 2359).
Here, Applicant's specification does not disclose new ways to stream data, new ways to communicate data, or new ways to transfer assets but discloses only known technologies used in their customary ways. Specifically, Examiner finds in the specification, the streaming device and client device is a personal gaming device [0027] such as a mobile device or personal computer [0028]. Streaming can occur via conventional phone line or other transmission line [00109]. Processor is any suitable processing device [00112], memory includes RAM, EPROMs, configured to store gaming software information via any suitable magnetic, optical, and semiconductor memory [00113], and computer program code by conventional procedural programming languages [00116]. Thus, the elements provide a generic environment to carry out the abstract idea.
Even when these limitations are viewed in combination, the additional elements in this claim do no more than automate the abstract data processing steps needed to be performed in 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 computer 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. Thus, Claim 1 lacks the eligibility requirements of Step 2 Prong II.
12. Step 2B
According to the 2019 PEG, in addition to the considerations discussed in Step 2A, an additional consideration indicative of an inventive concept (aka “significantly more”) is the addition of a specific limitation other than what is well-understood, routine, conventional activity in the field (MPEP 2106.05(d)). Conversely, an additional consideration not indicative of an inventive concept is simply appending well-understood, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea (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. Claim 1 does 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 a generic computer components. The same analysis applies here, i.e., mere instructions to apply an exception using generic computer component(s) cannot provide an inventive concept in Step 2B.
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. No steps have been construed as extra-solution activity but have been viewed as part of the abstract data, communication, and transfer. Thus, Claim 1 is ineligible. Independent Claims 10 and 12 inherit the same abstract idea as Claim 1 and are similarly ineligible. It is noted that with respect to Claim 10 there are two additional communication of data steps which are deemed to be more abstract data steps applied to the field of gambling to modify a wager balance.
13. Dependent Claims
Claims 2-7 and 13-18 recite insignificant extra-solution activity on the particulars of the data received, communicated or transferred, e.g., type of assets, asset transfer rules, credit balances, and account balances. Claims 8-9, 11, and 19-20 is extra solution displaying, receiving inputs, updating accounts.
Claim Rejections - 35 USC § 112
14. 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.
15. Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant has amended the claims to recite that “cause an asset determined for the streaming device” yet Examiner has reviewed the specification and asks Applicants assistance to locate support. Examiner has located in [0003’ “cause the processor to cause an asset to be transferred to the client device: See also [0005]. But nothing of any attribution of the asset. To advance prosecution Examiner has cited to where Chan transfers assets to a client device. Appropriate attention is required.
Claim Rejections - 35 USC § 103
16. 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.
17. 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, 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.
18. 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.
19. Claims 1-4, 6-9, 12-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. No. 2020/0197816 to Chan in view of U.S. Pat. Pub. No. 2014/0094277 to Guinn.
In Reference to Claims 1 and 12
Chan discloses a live streaming platform server (Fig. 2 220 streaming platform as server [0051]), comprising:
a processor (Fig. 2 222, Fig. 4 410); and
a memory device that stores a plurality of instructions that, when executed by the processor (Fig. 2 does not depict memory however Fig. 4 420 [0064] interpreted a processor and memory construct “performing all aspects” [0064] where processing is claimed), cause the processor to:
receive, from a remote game server (Fig. 2 211b streaming a stream of game play [0057]), data associated with a play of a video game ([0003]) being displayed ([0049]) in association with the streaming device (Fig. 2 211b, 241) wherein the streaming device is distinct from the processor (Fig. 2 211b distinct from 222),
communicate, independent of the remote game server (Fig. 2 212b independent of 222) and to a client device (Fig. 2 viewer client 212b, 242), data associated with a live stream that is at least partially based on the data communicated from the remote game server (generates content for live streaming video [0051]), and
responsive to a receipt of data of a transfer event (reward [0057]) occurring in association with the streaming device (211b high score [0057]), cause an asset to be transferred to the client device (user flair [0057], see also transfers that occur between computer 212b to 211b ([0055, 0058]).
Chan discloses the invention substantially as claimed. However, the reference does not explicitly disclose a wagering game which is construed as non-functional descriptive matter. However, One of skill in the art would be aware of Guinn.
One of skill in the art would be aware of the gifting between players in the gaming of Guinn (Titl.). According to Guinn, gifting can occur in the use of wagering gaming machines (Fig. 4a, slot machines, video poker [0003, 0037]) where gift values may be transferred from a first player to a second player (Abstr.).
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way; and
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
It would require only routine skill in the art to modify the video games of Chan with the wagering games of Guinn to achieve the predictable result of increasing revenues that can be generated. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
In Reference to Claims 2 and 13
Chan discloses that a player can earn a reward ([0057]). Guinn also teaches awards as a result of the outcome of gameplay ([0080]) of gift values ([0067, 0072]).
In Reference to Claims 3-4 and 14-15
Chan discloses that when a player achieves a high score ([0057]) rather than award player at 211b a reward of a user flair is transferred to client 212b thereby bypassing from being associated with the streaming device (211b) and is associated with client (212b) ([0057]). For the game to be played at 211b a player may begin by making a wager ([0043]) and with a high game receive a reward in lieu of an award ([0057]).
In Reference to Claims 6 and 17
Chan discloses that the transfer of a user flair transfers from the streaming device to an account of a client device (Fig. 2 236, 238 [0057]).
In Reference to Claim 7 and 18
Guinn teaches of a bonus game asset which is an opportunity to win an award ([0067]).
In Reference to Claims 8 and 19
Guinn teaches the display of a recommendation to share information with friends to receive $100 (Fig., 6b).
In Reference to Claims 9 and 20
Chan discloses that player Kara may input to the streaming platform that she wishes to donate a shirt to Ryan ([0040])
In Reference to Claims 10 and 11
See rejections of Claims 1, 2, 3, and 4.
Double Patenting
20. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969
21. A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
22. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
23. Claims 1-2, 7-8, 12-13, and 18-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-2, 5-6, 12-13, and 16-17 of U.S. Patent App. No. 18/188,174. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims merely express equivalent terminology e.g. streaming device and remote game sever or phraseology e.g., distinct from the processor vs. independent of the remote game server. For brevity, only claims 1 and 12 will be shown. Dependent claims contain identical language.
18/188,174
18/188,197
Claim 1 A live streaming platform server comprising:
a processor; and
a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
receive, from a streaming device, data associated with a play of a wagering game being displayed in association with the streaming device, wherein the streaming device is distinct from the processor,
communicate, to a client device, data associated with a live stream that is at least partially based on the data communicated from the streaming device, wherein the client device is distinct from the processor, and
responsive to a receipt of data of a transfer event occurring in association with the streaming device, cause an asset associated with the streaming device to be transferred from the streaming device to the client device.
Claims 2, 5, 6, 12, 13, 16, and 17.
Claim 12 A method of operating a live streaming platform server, the method comprising:
receiving, from a streaming device, data associated with a play of a wagering game being displayed in association with the streaming device, wherein the streaming device is distinct from the live streaming platform server,
communicating, to a client device, data associated with a live stream that is at least partially based on the data communicated from the streaming device, wherein the client device is distinct from the live streaming platform server, and
responsive to a receipt of data of a transfer event occurring in association with the streaming device, causing, by a processor, an asset associated with the streaming device to be transferred from the streaming device to the client device.
Claim 1 A live streaming platform server comprising:
a processor; and
a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
receive, from a remote game server, data associated with a play of a wagering game being displayed at a streaming device,
communicate, independent of the remote game server and to a client device, data associated with a live stream that is at least partially based on the data
communicated from the remote game server, and
responsive to a receipt of data of a transfer event occurring in association with the streaming device, cause an asset to be transferred to the client device.
Claims 2, 7, 8, 12, 13, 18 and 19.
Claim 12 A method of operating a live streaming platform server, the method comprising:
receiving, from a remote game server, data associated with a play of a wagering game being displayed at a streaming device,
communicating, independent of the remote game server and to a client device, data associated with a live stream that is at least partially based on the data communicated from the remote game server, and
responsive to a receipt of data of a transfer event occurring in association with the streaming device, causing, by a processor, an asset to be transferred to the client device.
Conclusion
24. THIS ACTION IS MADE FINAL. 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 extension fee 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.
25. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
26. 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.
27. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached on (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/Primary Examiner, Art Unit 3715