Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Continued Examination under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 March 2026, has been entered.
The following is a Non-Final office action on the merits in response to the communications filed on 16 March 2026. Claims 2-12 are currently pending. The rejection under 35 USC § 101 directed to non-statutory subject matter is maintained. The rejections are as stated below.
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 2-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
Claim 2 (exemplary) recites a series of steps for reporting and reconciling taxable events and liabilities.
The claim is directed to a machine, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception.
Independent apparatus claims 2, recites the limitations of receiving an allocation specification of tax treaties among a plurality of horizontally-related tax jurisdictions of players and gaming operators, wherein the allocation specification comprises a plurality of human readable instruction; receiving real time gaming activity information indicating a payout amount to a player as the player games with one of the gaming operators; automatically responsive to receiving the real time gaming activity information as the player games, determining, based on the real time gaming activity information and the plurality of human readable instruction of the allocation specification, whether the payout amount is above a threshold amount and the payout amount is taxable at two different tax rates in at least two respective ones of the plurality of horizontally-related tax jurisdictions; when the payout amount is determined to exceed the threshold amount as the player games, transmitting a request for the player to provide tax-related identification information; transmitting a request for the player’s signature on at least one tax-related paperwork; receiving the tax-related identification information and the player’s signature; based on the tax-related identification information received and the plurality of human readable instructions of the allocation specification, computing a taxable amount owed by the player; withholding the taxable amount from the payout amount; and automatically responsive to determining from, given real time gaming activity information received that an account of the player in which the taxable amount is withheld is closed by the player, providing the taxable amount, wherein the allocation specification is stored representing relationships among the plurality of horizontally-related tax jurisdictions and their tax treaties, and wherein determining whether the payout amount is taxable at two different tax rates comprises querying based on the real time gaming activity information to identify and apply applicable tax rates.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation covers steps directed to organizing human activity, namely a fundamental economic practice of reporting and reconciling taxable events and liabilities based on income generated by gambling. Certain methods of organizing human activity, including a fundamental economic practice, represent an abstract idea. See MPEP § 2106.04(a)(2). In addition to raising the abstract recitation of “‘organizing human activity,’ the claims recite “mental processes”. Claim 2, includes steps that reasonably can be performed by a human (pen and paper). For example, by using accounting evaluation techniques, an accountant or bookkeeper can perform the steps recited above in claim 2: “compute that a player has won an amount above a threshold amount in which the amount won is taxable at two different tax rates in at least two respective ones of the plurality of horizontally-related tax jurisdictions,” “request ... the player to provide tax related identification information,” “request ... the player’s .. . signature on at least one tax- related paperwork,” “receive … the tax-related identification information and the player’s... signature,” and “withhold ... the taxable amount from the amount won by the player.”, “Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion)” also constitute an abstract idea. The above recitations, and the claim as a whole, recite an abstract idea involving mental processes.
Therefore, it is clear that exemplary independent claim 2 recites limitations that fall under the category of abstract ideas related to “certain methods of organizing human activity” and/or “mental processes”. See MPEP § 2106.04(a)(2).
Accordingly, independent claim 2 recites an abstract idea.
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitation of at least one processor, a memory of a computer gaming system, a communication network, a remote mobile computing device the use of electronic signature and a relational data structure to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data (see Applicant’s specification ¶¶ 0055-0061). This generic computer limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(h). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a server (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the server at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. See MPEP 2106.05(h).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claim 2. Furthermore, dependent claims 3-12 do not add limitations that meaningfully limit the abstract idea.
Claims 3-12 recite that the payout amount comprises an aggregate of wins and losses over a period of time, the tax- related identification information comprises a social security number or a taxpayer identification number, receiving a request by the player to remain anonymous, withholding taxes from the taxable amount at a highest applicable rate, the taxes that are withheld are stored in an escrow account that fluctuate throughout a tax period, computing, at an end of the tax period, a total amount that remains in the escrow account, transmitting in real time as the player games, a report of a player's win/loss information, the payout amount is taxable in at least one of the plurality of horizontally- related tax jurisdictions and nontaxable in at least one of the plurality of horizontally related tax and jurisdictions and receiving a query about a tax liability of the player. These limitations further define the abstract idea. Therefore, they are rejected under the same rational of claim 2 above.
dependent claims 3-12, add the additional elements (a communication network, a remote mobile computing device), which is addressed above under integration to a practical application and inventive concept. The additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
Accordingly, claims 2-12 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
Examiner respectfully disagrees. Claims 2-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Examiner incorporates herein the response to arguments from the previous office actions.
The proposed amendments do not overcome the 35 U.S.C. 101 rejection. Applicant amended the claims to include the above-mentioned steps. The same updated analysis applies to the newly added claimed limitations as discussed above and in the previous office action rejections.
Moreover, the Examiner respectfully disagrees with Applicant’s assertion that “… claim 2 recites significant limitations that are not merely related to “reporting and reconciling taxable events and liabilities” or mental processes. Applicant claims and specification are directed to “… reporting and reconciling taxable events and liabilities, to preparing a tax or information return or other tax filing, and to a computer system that records, transmits, transfers, or organizes data related to such filing …” (see Applicant’s specification, paragraph [0002]. Furthermore, the claims are not rejected under mental processes, the claims do recite subject matter that “falls within “certain methods of organizing human activity” of the groupings of abstract ideas. See MPEP § 2106.04(a)(2).
The claims here do not recite an improvement in computers. The claims do not improve the functioning of the computer, or solve any technological problem. Rather, the claim simply “includes instructions to implement an abstract idea on a computer” and “does no more than generally link the use of a judicial exception to a particular technological environment or field of use”. The claim uses generic computer components and generic computer functionality to manage trades. The claims merely use instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Here, the additional limitations do not integrate the judicial exception into a practical application.
Examiner respectfully disagrees, we determine whether the claims recite a practical application of the recited judicial exception. For example, (1) any additional elements of the claims reflect an improvement in the functioning of a computer or to another technological field, (ii) an application of the judicial exception with, or by use of, a particular machine, (iii) a transformation or reduction of a particular article to a different state or thing (iv) or a use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55; See also MPEP § 2106.05(a){(c), (e}(h).
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f). The instant claims do not attempt to solve an unconventional technological solution. Using the processor as a tool to implement the abstract idea and the way the information is processed and displayed does not make it less abstract. The claimed use of computer elements recited at a high level of generality is an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
As found by the courts “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly . . . .” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Content Extraction, 2013 WL 3964909, at *12 (“the mere use of a computer to more quickly and efficiently . . . accomplish a given task does not create meaningful limitation on an otherwise abstract and wide-ranging concept”).
Examiner respectfully disagrees, the claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
In contrast, the instant claims provide a generically computer-implemented solution to a business-related or economic problem and are thus incomparable to the claims at issue in the court cases from the USPTO Guidelines. The computers, networks, and displays are functioning as designed and known to persons having ordinary skill in the art.
Examiner notes that the processor limitations and the claim as a whole do not add significantly more than the abstract idea itself, because the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment. A generic recitation of a processor/device performing its generic computer functions does not make the claims less abstract.
In making the determination of if the claimed idea is significantly more, the Court gave examples, which included an improvement to another technology or technical field; improvement to the function of the computer itself; or some other meaningful limitation beyond generally linking the use of an abstract idea to a particular technological environment. Such as in Diamond v. Diehr, the claims were found statutory in which the Arrhenius equation is used to improve a process of controlling the operation of a mold in curing rubber parts.
As mentioned previously, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer. Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
Lastly, dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully Submitted
/HANI M KAZIMI/Primary Examiner, Art Unit 3691
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