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 § 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 1-20 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 1-10, a non-transitory computer readable medium (i.e. a manufacture) in claims 11-15, and a method (i.e., a process) in claims 16-20.
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, comprising:
a memory; and
at least one computing device in communication with the memory, wherein the at least one computing device is configured to:
responsive to receiving an input to a user interface from a user:
modify a current credit meter based on a bet amount;
generate an outcome of a wagering game; and
determine an accrued hand count based on the input;
subsequent to generating the outcome, receive a request, comprising an input to the user interface, to perform a payout event of the current credit meter;
determine a first payout amount based on a value of the current credit meter and preconfigured unit value for a first payment type;
initiate a first payout of the first payment type of the first payout amount wherein the first payout amount comprises a predetermined multiple of the accrued hand count; and
initiate a second payout of a second payment type of a remainder amount based on the value of the current credit meter less the first payout amount.
The claim elements underlined above, concern the court enumerated abstract idea Certain Methods of Organizing Human Activity including managing personal behavior including interactions between people including social activities and following rules or instructions because the claims set forth the interactions involving one or more parties in the context of a game and cashout processing interface.
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 a memory and at least one computing device 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 devices such as generic computers, smart phones, game consoles, 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 a memory and at least one computing device 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 [0008], [0018], [0038], [0079]-[0081], [0087]-[0089]). 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 [0008], [0018], [0038], [0079]-[0081], [0087]-[0089]). 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 2-20 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 a memory, at least one computing device and a ticket as respectively presented in certain claims that when considered both individually and as a whole in the respective combinations of each of the additional claims are not sufficient to support patent eligibility under prong 2 of step 2A or step 2B because they each present substantially similar abstract concepts as noted with reflection to exemplary claim 1 above and accordingly for the same reasons set forth above with respect to the exemplary claim 1 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.
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, 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.
Claims 1-3, and 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Saffari et al (US 2015/0243122) in view of Meister-Gronau et al (US 2020/0302743)
Claim 1: The combination of Saffari et al and Meister-Gronau et al teaches a system, comprising:
a memory (Saffari Paragraph [0068], [0318]); and
at least one computing device in communication with the memory(Saffari Paragraph [0068], [0318]), wherein the at least one computing device is configured to:
responsive to receiving an to a user interface input from a user:
modify a current credit meter based on a bet amount (Saffari Figure 14; Paragraphs [0241]-[0242], [0292]; element 714);
generate an outcome of a wagering game (Saffari Abstract; Figure 14; Paragraphs [0242], [0292]; elements 704, 714); and
determine an accrued hand count based on the input;
subsequent to generating the outcome, receive a request, comprising an input to the user interface, to perform a payout event of the current credit meter (-cashout- Saffari Figure 15 & Meister-Gronau Paragraphs [0005]-[0007], [0013]);
determine a first payout amount based on a value of the current credit meter and preconfigured unit value for a first payment type (-wherein the first payout amount is a cash amount based on the current value after subtraction of the lottery ticket cost- Saffari Figure 24; Paragraphs [0255]-[0256], [0275]);
initiate a first payout of the first payment type of the first payout amount (Saffari Figure 23A; Paragraphs [0255]-[0256], [0280]; element 814), wherein the first payout amount comprises a predetermined multiple of the accrued hand count (Meister-Gronau Paragraphs [0005]-[0007], [0013]); and
initiate a second payout of a second payment type of a remainder amount based on the value of the current credit meter less the first payout amount (-equivalent to describing the ticket price and printing of the ticket- Saffari Figures 24, 25; Paragraphs [0255]-[0256]; Element 812).
Saffari teaches the invention as presented above including the use of the same and including applicability with various game types such as Poker and Blackjack (Saffari Paragraph [0117]). While Saffari does not explicitly teach tracking an accrued hand count and limiting the provided payout amounts based on the hand count, the analogous prior art reference of Meister-Gronau is noted as teaching these features before the earliest effective filing date of the claimed invention (Meister-Gronau Paragraphs [0005]-[0007], [0013]). It would have been obvious to one ordinary skill in the art before the earliest effective filing date of the claimed invention to have incorporated the tracking of hand count and limiting of payouts based thereon as taught by the analogous prior art reference of Meister-Gronau into the invention of Saffari et al, in order to provide the predictable and expected result of encouraging continued player engagement to cashout acquired awards.
.
Claim 2: The combination of Saffari et al and Meister-Gronau et al teaches the system of claim 1, wherein initiating the second payout comprises printing a lottery ticket (Saffari Figures 24, 25; Paragraphs [0255]-[0256]; Element 812).
Claim 3: The combination of Saffari et al and Meister-Gronau et al teaches the system of claim 2, wherein the at least one computing device is further configured to calculate the remainder amount by rounding, to a unit value of the second payment type, the value of the current credit meter less the first payout amount (-understood as equivalent to describing subtraction of the ticket price from the balance- Saffari Figures 24, 25; Paragraphs [0255]-[0256]; Element 812).
Claim 6: The combination of Saffari et al and Meister-Gronau et al teaches the system of claim 2, wherein the at least one computing device is further configured to activate at least one of:
the lottery ticket or a ticket batch comprising the lottery ticket (Saffari Paragraphs [0270]-[0274]).
Claim 7: The combination of Saffari et al and Meister-Gronau et al teaches the system of claim 2, wherein the at least one computing device is further configured to process the lottery ticket to determine a third payout amount (Saffari Paragraphs [0289]-[0291]).
Claim 8: The combination of Saffari et al and Meister-Gronau et al teaches the system of claim 7, wherein the at least one computing device is configured to:
scan a portion of the lottery ticket to obtain an identifier (Saffari Figure 27C; Paragraph [0274], [0295], [0299]-[0300]); and
determine the third payout amount based on the identifier (Saffari Figure 27C; Paragraph [0274], [0295], [0299]-[0300]).
Claim 9: The combination of Saffari et al and Meister-Gronau et al teaches the system of claim 8, wherein the at least one computing device is further configured to:
transmit the identifier to a remote computing environment (Saffari Figure 27C; Paragraph [0274], [0295], [0299]-[0300]); and
in response to transmitting the identifier, receive, from the remote computing environment, the third payout amount (Saffari Figure 27C; Paragraph [0274], [0295], [0299]-[0300]).
Claim 10: The combination of Saffari et al and Meister-Gronau et al teaches the system of claim 9, wherein the at least one computing device is further configured to initiate a third payout of the first payment type in the third payout amount (Saffari Figure 23A; Paragraphs [0255]-[0256], [0280]; Element 814).
Claim 11: The combination of Saffari et al and Meister-Gronau et al teaches a non-transitory computer-readable medium embodying a program that, when executed by at least one computing device (Saffari Paragraph [0011]), causes the at least one computing device to:
receive a request, as an input to a user interface to perform a payout event of a current credit meter (-cashout- Saffari Figure 15 & Meister-Gronau Paragraphs [0005]-[0007], [0013]);
determine a first payout amount based on a value of the current credit meter and preconfigured unit value for a first payment type (-wherein the first payout amount is a cash amount based on the current value after subtraction of the lottery ticket cost- Saffari Figure 24; Paragraphs [0255]-[0256], [0275]);
initiate a first payout of the first payment type of the first payout amount (Saffari Figure 23A; Paragraphs [0255]-[0256], [0280]; element 814), wherein the first payout amount comprises a predetermined multiple of an accrued hand count (Meister-Gronau Paragraphs [0005]-[0007], [0013]); and
initiate printing of at least one lottery ticket for a remainder amount based on the value of the current credit meter less the first payout amount (-equivalent to describing the ticket price- Saffari Figures 24, 25; Paragraphs [0255]-[0256]; Element 812).
Saffari teaches the invention as presented above including the use of the same and including applicability with various game types such as Poker and Blackjack (Saffari Paragraph [0117]). While Saffari does not explicitly teach tracking an accrued hand count and limiting the provided payout amounts based on the hand count, the analogous prior art reference of Meister-Gronau is noted as teaching these features before the earliest effective filing date of the claimed invention (Meister-Gronau Paragraphs [0005]-[0007], [0013]). It would have been obvious to one ordinary skill in the art before the earliest effective filing date of the claimed invention to have incorporated the tracking of hand count and limiting of payouts based thereon as taught by the analogous prior art reference of Meister-Gronau into the invention of Saffari et al, in order to provide the predictable and expected result of encouraging continued player engagement to cashout acquired awards.
Claim 12: The combination of Saffari et al and Meister-Gronau et al teaches the non-transitory computer-readable medium of claim 11, wherein the at least one lottery ticket is instant type (-also known as scratch off tickets- Saffari Abstract; Paragraph [0013], [0302]-[0303]).
Claim 13: The combination of Saffari et al and Meister-Gronau et al teaches the non-transitory computer-readable medium of claim 11, wherein the at least one lottery ticket is draw type (Saffari Figures 21, 23A 27C; Paragraphs [0270], [0280], [0285]-[0286]).
Claim 14: The combination of Saffari et al and Meister-Gronau et al teaches the non-transitory computer-readable medium of claim 11, wherein the program that, when executed by at least one computing device, further causes the at least one computing device to:
determine a second payout amount based on the at least one lottery ticket(Saffari Paragraphs [0289]-[0291]); and
initiate a second payout of the first payment type of the second payout amount (Saffari Paragraphs [0289]-[0291], [0294]).
Claim 15: The combination of Saffari et al and Meister-Gronau et al teaches the non-transitory computer-readable medium of claim 11, wherein the program further causes the at least one computing device to initiate a wagering game in response to receiving an input comprising an identifier associated with the at least one lottery ticket subsequent to initiating the printing of the at least one lottery ticket (-Describing the initiation of game play following the receipt of the printed ticket wherein the tickets include readable bar-codes utilized for verification- Saffari Paragraph [0274], [0294]).
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Luciano, JR, et al (US 2008/0119284) in view of Meister-Gronau et al (US 2020/0302743).
Claim 16: The combination of Luciano, JR, et al and Meister-Gronau et al teaches a method, comprising:
generating, via at least one computing device, a plurality of outcomes of a wagering game (-play sequence- Luciano Paragraph [0027], [0033]; Figure 3; Element 300);
receiving, via the at least one computing device, a request as an input to a user interface, to perform a payout event of a current credit meter (Luciano Figure 3; Element 302 & Meister-Gronau Paragraphs [0005]-[0007], [0013]);
determining, via the at least one computing device, a first payout amount based on a value of the current credit meter and preconfigured unit value for a first payment type(-lottery tickets- Luciano Paragraphs [0027], [0033]; Figure 3; Element 306);
performing, via the at least one computing device, a first payout of the first payment type of the first payout amount(-dispense lottery tickets- Luciano Figure 3; Element 306), wherein the first payout amount comprises a predetermined multiple of an accrued hand count (Meister-Gronau Paragraphs [0005]-[0007], [0013]); and
performing, via the at least one computing device, a second payout of a second payment type of a remainder amount based on the value of the current credit meter less the first payout amount (-credits- Luciano Abstract; Paragraphs [007] Figure 3; Element 304, 306).
Luciano, JR, et al teaches the invention as presented above. While Luciano, JR, et al does not explicitly teach tracking an accrued hand count and limiting the provided payout amounts based on the hand count, the analogous prior art reference of Meister-Gronau is noted as teaching these features before the earliest effective filing date of the claimed invention (Meister-Gronau Paragraphs [0005]-[0007], [0013]). It would have been obvious to one ordinary skill in the art before the earliest effective filing date of the claimed invention to have incorporated the tracking of hand count and limiting of payouts based thereon as taught by the analogous prior art reference of Meister-Gronau into the invention of Luciano, JR, et al, in order to provide the predictable and expected result of encouraging continued player engagement to cashout acquired awards.
Claim 17: The combination of Luciano, JR, et al and Meister-Gronau et al teaches the method of claim 16, further comprising:
determining a count of the plurality of outcomes generated during a session of the wagering game (-“Tix”- Luciano Paragraph [0027]; Table 1B); and
modifying, via the at least one computing device, the first payout based on the count of the plurality of outcomes generated during the session of the wagering game (-“Tix”- Luciano Paragraph [0027]; Table 1B).
Claim 18: The combination of Luciano, JR, et al and Meister-Gronau et al teaches the method of claim 17, wherein modifying the first payout comprises:
determining a payout limit by multiplying the count of the plurality of outcomes generated by a predetermined value(-describing limiting the amount of tickets distributed by the number of game outcomes “Tix”- Luciano Paragraph [0027]; Table 1B); and
modifying the first payout to not exceed the payout limit (-“Tix”- Paragraph [0027]; Table 1B).
Claim 19: The combination of Luciano, JR, et al and Meister-Gronau et al teaches the method of claim 16, further comprising:
determining, via the at least one computing device, a count of the plurality of outcomes generated during a session of the wagering game(including both specific “Tix” outcomes and coin/credit outcomes- Luciano Paragraph [0027]; Table 1B), wherein the accrued hand count comprises the count of the plurality of outcomes generated during the session of the wagering game (Meister-Gronau Paragraph [0005]); and
modifying, via the at least one computing device, the second payout based on the count of the plurality of outcomes generated during the session of the wagering game (-Paying out both the ticket and coin/credit outcomes according to their number of respective occurrences- Luciano Paragraph [0027]; Table 1B; Figure 3; Element 306).
Claim 20: The combination of Luciano, JR, et al and Meister-Gronau et al teaches the method of claim 16, wherein the second payment type comprises a plurality of lottery prizes and the method further comprises:
based on the remainder amount, determining at least one available lottery prize of the plurality of lottery prizes (-understood o encompass the use of remining credits to purchase lottery tickets beyond those wone during gameplay- -lottery tickets- Luciano Paragraphs [0027], [0033]; Figure 3; Element 306); and
printing a lottery ticket corresponding to the at least one available lottery prize(-dispense tickets from printer- Luciano Figure 3; Element 306).
Response to Arguments
Applicant's arguments filed November 10th, 2025 have been fully considered but they are not persuasive.
Commencing in Section 1 as presented on pages 6 through 8 of the Applicant’s above dated response, the Applicant presents that the claimed invention meets the subject matter eligibility requirements of 35 USC §101 for the reason that the court’s decision in In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160-61, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018) as reflected in MPEP 2106.04(a)(2) Subsection II should be understood to limit Certain Methods of Organizing Human Activity to instance wherein a computer is not involved in game play. Additionally the applicant proposes that the claimed invention even if directed to an abstract idea, incorporates an improvement in player retention through the use of a first and second payout and would integrate any recited judicial exception recited therein in to a practical application based thereon.
Responsive to the preceding the cited MPEP 2106.04(a)(2) Subsection II, the Court’s decision in In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160-61, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018), and the Court’s decision in In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016) do not support the Applicant’s proposal that Certain Methods of Organizing Human Activity would exclude inventions that are practiced on a computer. Specifically, the decision in In re Smith (as cited MPEP 2106.04(a)(2) Subsection II.A), was notable performed with use of a computer and determined by the court to be ineligible while additionally MPEP 2106.05(f) notes that the mere use of a computer as tool is not sufficient to support patent eligibility as proposed.
Applicant’s argument regarding the improved game rules supporting the integration of a practical application is not persuasive because the features Applicant identifies as the inventive concept 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.”).
Continuing in Section 2 as presented on pages 8 through 9 of the Applicant’s above dated response, the Applicant presents that the previously applied reference of Saffari does not tech the newly amended claim limitations as previously presented.
Responsive to the preceding, the prior art refence of Meister-Gronau et al has been applied in combination with Saffari et al and Luciano, JR, et al respectively to address the newly introduced claim features. Applicant proposal that these features were previously presented do not reflect the previously presented and examined set of claims. Additionally, in light of the shared applicant and inventor between the instant application and the newly applied reference of Meister-Gronau et al (US 2020/0302743), the Applicant is respectfully reminded of the importance of the Duty of Disclosure such that each individual associated with the filing and prosecution of a patent application, supplemental examination, or patent reexamination has a duty to disclose to the Office all information known to that individual to be material to patentability as described by MPEP §2000-2005.
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