DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claims states “14. (New) The machine-readable non-transitory medium of claim 13, in which the instructions, when executed by the at least one processor, further control to:” but fails to provide any further limitation to the claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
This subject matter eligibility analysis follows the latest guidance for Patent Subject Matter Eligibility Guidance.
Claims 1 - 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
Initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter.
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Claims 7-12 are exemplary because they require substantially the same operative limitations of the remaining claims (reproduced below.) Examiner has underlined the claim limitations which recite the abstract idea, discussed in detail in the paragraphs that follow.
7. (New) An apparatus comprising:
at least one processor; and
at least one memory having instructions stored thereon which, when executed by the at least one processor, control to:
facilitate play of a first round of a luck-based game by a first player, in which outcomes of the luck-based game are based on a random event determination;
facilitate play of a second round of the luck-based game by a second player;
allocate to a jackpot at least one of: a portion of each of a first wager by the first player in the first round and a second wager by the second player in the second round and winnings of the first player from the first round and the second player from the second round;
determine an outcome of the first round and an outcome of the second round based on respective random event determinations;
determine a current first location of the first player and a current second location of the second player;
determine the outcome of the first round qualifies the first player to play a skill-based game;
determine that the outcome of the second round qualifies the second player to play the skill-based game, in which outcomes of the skill-based game are based on skill of players playing the skill-based game;
determine if more players are required or not to play the skill-based game;
transmit a notification to the first player and the second player that includes a notification of a time period in which the players can play the skill-based game;
facilitate play of a round of the skill-based game by the first player and the second player at the notified time period in response to the (i) determination of a proximity of the current first location and the current second location, (ii) determination that more players are not required to play the skill-based game, (iii) determination that the outcome of the first round qualifies the first player to play the skill-based game and (iv) the determination that the outcome of the second round qualifies the second player to play the skill-based game, in which the round includes a round played by the first player against the second player; determine a winner of the round of the skill-based game from among the first player and second player based on skill of each of the first player and the second player exercised in play of the round of the skill-based game; and
award at least a part of the jackpot to the winner in response to determining the winner.
8. (New) The apparatus of claim 7, in which the instructions, when executed by the at least one processor, further control to: provide an interface to each of the first and second player through which each of the first and second player may play the round of the skill-based game against one another when facilitating play of the round of the skilled-based game.
10. (New) The apparatus of claim 7, in which the instructions, when executed by the at least one processor, further control to, when facilitating play of the skill-based game, render, on a display screen of the first player's device, a graphical user interface indicating at least one action of the second player; and render, on a display screen of the second player's device, a graphical user interface indicating at least one action of the first player.
The claims recite italicized limitations that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG, namely, Certain Methods of Organizing Human activity
More specifically, under this grouping, the italicized limitations represent fundamental economic principles or practices, and managing interactions between people. For example, the italicized limitations are directed towards rules for wagering and this represents a fundamental economic practice, namely, exchanging consideration based on odds and outcomes. The latter also falls under the grouping of managing interactions between people, i.e., gaming rules for providing a wagering game.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations as follow, (emphasis added): a processor, memory, a display screen, device and graphical user interface.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea. Therefore, since the additional limitations, individually or in combination, are indistinguishable from a computer used as a tool to perform the abstract idea, the analysis continues to Step 2B, below.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional and routine computer implementation and mere instructions for implementing the abstract idea on generic computing devices.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract idea. Applicant has claimed computer a processor, memory, a display screen, device and graphical user interface. However, all of these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
As the Alice court cautioned, citing Flook, patent eligibility cannot depend simply on the draftsman’s art. Here, amending the claims with generic computing elements does not (in this Examiner’s opinion), confer eligibility.
Regarding the Berkheimer decision, Applicants own specification establishes that these additional elements are generic:
[0068] It will be readily apparent to one of ordinary skill in the art that the various processes described herein may be implemented by, e.g., appropriately programmed general purpose computers, special purpose computers and computing devices. Typically a processor (e.g., one or more microprocessors, one or more microcontrollers, one or more digital signal processors) will receive instructions (e.g., from a memory or like device), and execute those instructions, thereby performing one or more processes defined by those instructions. Instructions may be embodied in, e.g., one or more computer programs, one or more scripts.
[0069] A “processor” means one or more microprocessors, central processing units (CPUs), computing devices, microcontrollers, digital signal processors, or like devices or any combination thereof, regardless of the architecture (e.g., chip-level multiprocessing / multi-core, RISC, CISC, Microprocessor without Interlocked Pipeline Stages, pipelining configuration, simultaneous multithreading).
[0070] Thus a description of a process is likewise a description of an apparatus for performing the process. The apparatus that performs the process can include, e.g., a processor and those input devices and output devices that are appropriate to perform the process.
[0071] Further, programs that implement such methods (as well as other types of data) may be stored and transmitted using a variety of media (e.g., computer readable media) in a number of manners. In some embodiments, hard-wired circuitry or custom hardware may be used in place of, or in combination with, some or all of the software instructions that can implement the processes of various embodiments. Thus, various combinations of hardware and software may be used instead of software only.
[0072] The term “computer-readable medium” refers to any medium, a plurality of the same, or a combination of different media that participate in providing data (e.g., instructions, data structures) which may be read by a computer, a processor or a like device. Such a medium may take many forms, including but not limited to, non-volatile media, volatile media, and transmission media. Non-volatile media include, for example, optical or magnetic disks and other persistent memory. Volatile media include dynamic random access memory (DRAM), which typically constitutes the main memory. Transmission media include coaxial cables, copper wire and fiber optics, including the wires that comprise a system bus coupled to the processor. Transmission media may include or convey acoustic waves, light waves, and electromagnetic emissions, such as those generated during radio frequency (RF) and infrared (IR) data communications. Common forms of computer-readable media include, for example, a floppy disk, a flexible disk, hard disk, magnetic tape, any other magnetic medium, a CD-ROM, DVD, any other optical medium, punch cards, paper tape, any other physical medium with patterns of holes, a RAM, a PROM, an EPROM, a FLASH-EEPROM, any other memory chip or cartridge, a carrier wave as described hereinafter, or any other medium from which a computer can read.
[0073] Various forms of computer readable media may be involved in carrying data (e.g., sequences of instructions) to a processor. For example, data may be (i) delivered from RAM to a processor; (ii) carried over a wireless transmission medium; (iii) formatted and / or transmitted according to numerous formats, standards or protocols, such as Ethernet (or IEEE 802.3), SAP, ATP, Bluetooth, and TCP/IP, TDMA, CDMA, and 3G; and / or (iv) encrypted to ensure privacy or prevent fraud in any of a variety of ways well known in the art.
[0074] Thus a description of a process is likewise a description of a computer-readable medium storing a program for performing the process. The computer-readable medium can store (in any appropriate format) those program elements which are appropriate to perform the method.
[0239] FIG. 2 shows apparatus for playing the game. There is a plurality of player units 40-1 to 40-n which are coupled via a communication system 41, such as the Internet, with a game playing system comprising an administration unit 42, a player register 43, and a game unit 45. Each unit 40 is typically a personal computer with a display unit and control means (a keyboard and a mouse).
[0249] In some embodiments, a game machine that may enable play of such a first game may include a server based gaming device, a client device, a standalone gaming device, and so on. Some example devices may include gaming servers, client devices, computing devices, mobile devices, iPhones, iPads, tablet computers, cell phones, processors, blades, devices in a computing cloud, laptops, slot machines, kiosks, card readers, tables, interactive table game devices, surface computers, and so on. For example, in some embodiments, a mobile device may allow play of a first game. The mobile device may receive information about the play of the game (e.g., random events, outcomes) from a server that generates such information. The mobile device may display information about such information and enable input to play such games. In other embodiments, a mobile device may produce outcomes and enable play without input from a server device.
Therefore, these elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they merely recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit has said in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1 – 13 and 15 – 16 is/are rejected under pre-AIA 35 U.S.C. 102 (b) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over Cannon et al (US 2002/0039923).
As per claim 1, Cannon discloses:
facilitating, by a computing device, play of a first round of a luck-based game by a first player, in which outcomes of the luck-based game are based on a random event determination; (Cannon discloses a first game that is a luck based game based upon random outcomes) (Cannon 0037, 0038, 0040)
facilitating, by the computing device, play of a second round of the luck-based game by a second player; (Cannon discloses multiple players utilizing game machines in a specific location that each play a round of a primary game to qualify for play of a tournament game, thus the disclosing of first and second rounds playable by each respective player) (Cannon 0039, 0040)
allocating to a jackpot, by the computing device, at least one of:
a portion of each of a first wager by the first player in the first round and a second wager by the second player in the second round and winnings of the first player from the first round and the second player from the second round; (Cannon discloses the allocation of a portion of wagers from a primary game to a winnable progressive jackpot in the tournament game)(Cannon 0043, 0048)
determining, by the computing device, an outcome of the first round and an outcome of the second round based on respective random event determinations; (Cannon discloses the determination of primary outcomes by multiple players of game machines) (Cannon 0038 – 0040)
determining, by the computing device, a current first location of the first player and a current second location of the second player; (Cannon discloses the determination of a game machine locations such as within a state, jurisdiction, or venue, wherein the tournament is selectively enabled for) (Cannon 0039)
determining, by the computing device, that the outcome of the first round qualifies the first player to play a skill-based game; (Cannon discloses a primary game outcome that qualifies a use for a tournament game (Cannon 0038, 0057), wherein the tournament game may be a skill based game (Cannon 0037)
determining, by the computing device, that the outcome of the second round qualifies the second player to play the skill-based game, (Cannon discloses a primary game outcome that qualifies a use for a tournament game (Cannon 0038, 0057), wherein the tournament game may be a skill based game (Cannon 0037)
in which outcomes of the skill-based game are based on skill of players playing the skill-based game; (Cannon discloses wherein the tournament game may be a skill based game_ (Cannon 0037)
determining, by the computing device, if more players are required or not to play the skill-based game; (Cannon discloses the use a multiplayer tournament game wherein player compete for tournament jackpots, and by the very nature of a tournament, wherein a tournament is a competition between multiple players, the system in order to provide the tournament would need to determine if at least one more player is needed to execute the tournament) (Cannon 0045, 0050)
transmitting, by the computing device, a notification to the first player and the second player that includes a notification of a time period in which the players can play the skill-based game; (Cannon disclose the transmission of dialog box that informs a player when the next tournament will take place) (Cannon 0039)
facilitating, by the computing device, play of a round of the skill-based game by the first player and the second player at the notified time period in response to the (i) determination of a proximity of the current first location and the current second location, (ii) determination that more players are not required to play the skill-based game, (iii) determination that the outcome of the first round qualifies the first player to play the skill-based game and (iv) the determination that the outcome of the second round qualifies the second player to play the skill-based game, in which the round includes a round played by the first player against the second player; (Cannon discloses the determination of game machine location or proximity of the multiple players (Cannon 0039), determining if the tournament has the needed players to execute (inherent to a tournament) (Cannon 0045, 0050), determining if the players qualify to play the tournament (Cannon 0037, 0038, 0057)
determining, by the computing device, a winner of the round of the skill-based game from among the first player and second player based on skill of each of the first player and the second player exercised in play of the round of the skill-based game; and (Cannon discloses determining a winner of the tournament) (Cannon 0041 – 0045)
awarding, by the computing device, at least a part of the jackpot to the winner in response to determining the winner. (Cannon 0041 – 0045)
In the event that it can be argued that Cannon does not specifically disclose:
determining, by the computing device, if more players are required or not to play the skill-based game; and (ii) determination that more players are not required to play the skill-based game,
The Examiner notes that these features would be obvious in view of Cannon. Cannon discloses a tournament that is played by between multiple players. By the very nature of the tournament, the tournament must have at least two players that compete with one another to thus make it a tournament. It would be obvious to one of ordinary skill in the art, at the time of invention, to modify Cannon to specifically discloses or make a specific determination that one or more players are needed to play the tournament or determine that the tournament has enough players to be performed and executed as a tournament such as the one Cannon discloses is a multiplayer tournament and requires at least 2 players to perform the tournament and if the player number requirement is not met the tournament would not be able to be carried out.
As per claim 2, in which facilitating play of the round of the skill- based game includes: providing an interface to each of the first and second player through which each of the first and second player may play the round of the skill-based game against one another. (Cannon discloses the first and second players having a game machine interface to play against one another) (Cannon 0050)
As per claim 3, in which facilitating play of the round of the skill- based game includes: receiving indications of actions taken by the first player in the round of the skill-based game and presenting the actions to the second player. (Cannon discloses the receiving of indications of actions such as the number of points other players have achieved as a result of their game actions within the tournament on each players and others displays) (Cannon 0050).
As per claim 4, rendering, on a display screen of the first player's device, a graphical user interface indicating at least one action of the second player; and rendering, on a display screen of the second player's device, a graphical user interface indicating at least one action of the first player. (Cannon discloses the receiving of indications of actions such as the number of points other players have achieved as a result of their game actions within the tournament on each players and others displays) (Cannon 0050).
As per claim 5, in which the luck-based game includes: a single player game; and at least one of a slot game or a casino game. (Cannon 0040)
As per claim 6, in which the skill-based game includes: a multiplayer game; and at least one of a first person shooter, a board game, and strategy game. (Cannon discloses the primary game may be a skilled game (Cannon 0037) and that the tournament game may be the same game as the primary game (Cannon 0056) thus having skill involved and comprising a game of strategy such as poker (Cannon 0056).
Independent claim(s) 7 and 13 is/are anticipated and/or made obvious by the Cannon based on the same analysis set forth for claim(s) 1, which are similar in claim scope.
Dependent claim(s) 8 and 15 is/are anticipated and/or made obvious by the Cannon based on the same analysis set forth for claim(s) 2, which are similar in claim scope.
Dependent claim(s) 9 and 16 is/are anticipated and/or made obvious by the Cannon based on the same analysis set forth for claim(s) 3, which are similar in claim scope.
Dependent claim(s) 10 - 12 is/are anticipated and/or made obvious by the Cannon based on the same analysis set forth for claim(s) 4-6, which are similar in claim scope.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROSS A WILLIAMS whose telephone number is (571)272-5911. The examiner can normally be reached Mon-Fri 8am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at (571)270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAW/ Examiner, Art Unit 3715
5/14/2026
/KANG HU/ Supervisory Patent Examiner, Art Unit 3715
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