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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 12th, 2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on October 23rd, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application No. 18/481,733 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 1-3, 5-7, 9-11, 13-15, 17, and 19-20 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 method for implementing an instant lottery ticket game (i.e., a process) in claims 1-3, 5-7, 9-11 and an instant lottery ticket game system (i.e., a machine) in claims 13-15, 17, 19-20.
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 method for implementing an instant lottery ticket game system played by a plurality of jurisdictions, comprising:
designating a first set of instant lottery tickets in a primary game for each of the jurisdictions wherein the instant lottery tickets are printed scratch-off lottery tickets having a predetermined outcome;
assigning at least one top prize in the primary game;
assigning an independent predetermined prize structure for lesser prizes in the primary game to each of the first sets such that each jurisdiction has an independent prize structure for the lesser prizes;
for each of the first sets, defining an independent number of the instant lottery tickets less than all of the instant lottery tickets in the first set as eligible tickets with a chance to win the top prize in the primary game;
defining a pool of the eligible tickets from all of the first sets; and
randomly assigning the top prize to one of the eligible tickets with the pool to designate a top prize winning ticket to be subsequently printed;
printing the first sets of instant lottery tickets such that within each of the first sets of printed instant lottery tickets:
each instant lottery ticket includes printed indicia indicating a chance to win the top prize whether or not the instant lottery ticket was one of the eligible tickets in the pool;
each instant lottery ticket includes printed play indicia under a scratch-off coating that identifies whether or not the instant lottery ticket is a winner of the top prize:
the method further comprising generating a validation file for each jurisdiction that contains a record for each of the instant lottery tickets in their respective first set that wins a lesser prize, the validation file generated by a lottery service provider and delivered to each jurisdiction, the validation file being void of a record or information that identifies the eligible tickets assigned to their respective first set or the location of the top prize winning ticket within all of the first sets such that the identity and location of the top prize winning ticket secret from the jurisdictions before and during play of the primary game in the jurisdictions.
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes including observation, evaluation, and judgement because the claims are directed to series of steps for arranging data to define a game and assigning game outcomes to players based thereon as well as 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 a set of rules for defining a game and assigning game outcomes to players.
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 sets of instant lottery tickets and associated scratch-off coating it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonably include both virtual(electronically simulated) and physical forms of the tickets (per page 7 of the applicant’s specification) embodied on paper, a generic computer, smart phone, 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 sets of instant lottery tickets including associated scratch-off coating 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 Pages 7-9, 13). 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 Pages 7-9, 13). 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 2-3, 5-7, 9-11, 13-15, 17, and 19-20 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 sets of instant lottery tickets and associated coatings, 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.
Response to Arguments
Applicant's arguments entered March 12th, 2026 have been fully considered but they are not persuasive.
Commencing on pages 7-10, Section A of the Applicant’s above dated remarks, the Applicant presents the following arguments to support the proposed patent eligibility of the claimed invention including:
i) That the claimed invention solves the concern of individual jurisdictions determining that no more top tier prizes are available in the jurisdiction by not informing the jurisdiction of what top tier prizes are available without effecting the ability of the tickets to be associated with lower jurisdictional prizes (Applicant’s remarks pages 8 & 9);
ii) That the USPTO issues patents based on unique lottery tickets that implement different types of games and cites USP 8,308,162 in support (Applicant’s remarks page 9);
iii) That while both scratch off lottery tickets the use of validation files are well known and/or conventionally known elements, that the claimed invention does not permit a jurisdiction from determining what quantity of tickets are predetermined winners of top tier prizes in their respective jurisdictions (Applicant’s remarks page 9); and
iv) That decision in In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016) have upheld the patent eligibility of inventions that combine new rules with game elements as reflected in the claimed invention (Applicant’s remarks page 10).
Responsive to the preceding the following is respectfully noted in corresponding heading and order as the applicant’ presented arguments are summarized herein above:
i.a) Improvement to game rules themselves even when practiced with/on conventional elements, are not patent eligible as demonstrated in In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016).
The Applicant’s argument is not persuasive because the features Applicant identifies as the inventive concept (improvements to the game rules) 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.”).
ii.a) The examination of applications is performed on a case-by-case basis consistent with applicable law and standards as reflected by published office guidance and judicial rulings as applicable. Barring specific circumstances,(e.g. a precedential court decision involving the same), the prosecution history of other non-related applications is not a consideration during the examination of a specific application for at least the reason that the examination of each application reflects the presentation of respectively materially different fact patterns including specification, claims, definitions, and/or evidence. Additionally, consistent with MPEP 1701, office personnel are not to express opinion on validity, patentability, expiration date, or enforceability of patent wherein such refusal should not be considered discourteous or an expression of opinion as to validity, patentability or enforceability.
iii.a) as noted above in section (i.a) Improvements to game rules themselves are not patent eligible because are a noneligible abstract idea as demonstrated in In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016). While the use of conventional elements does not prohibit a claimed invention from as a whole reciting patent eligible subject matter the mere inclusion of the same it does not in of itself support the presence of patent eligible subject matter as proposed.
iv.a) The court’s decision in In re Smith, 815 F.3d 816, 118 U.S.P.Q.2d 1245 (Fed. Cir. 2016) found a claimed invention that combining new game rules with conventional game elements to be patent ineligible and as such does not support the patent eligibility of the claimed invention as proposed.
In view of the preceding the rejection of claims is respectfully maintained as presented herein above.
Conclusion 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.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at 571-272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715
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