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 Arguments
Applicant's arguments filed May 27, 2026 have been fully considered but they are not persuasive.
Applicant argues that the claims are merely based on or involve a mathematical concept and does not recite those concepts. Examiner disagrees and notes that the claims positively recite mathematical calculations. While these recitations are generic, it does not act as an underlying principle.
Applicant argues that the limitation “artificial intelligence” renders the claim limitations outside of what can be performed in the human mind. Examiner disagrees and notes that the generic recitation of artificial intelligence does not exclude actions that can be performed in the human mind. As recited in the claims and disclosed in the specification, artificial intelligence is used broadly and recited in a functional manner. The use of the phrase “artificial intelligence” in this instance functions in a similar fashion to the word abracadabra at a magic show. They both act as a cover for action that is shielded from the observer and do not provide for an enabling disclosure. As currently recited, artificial intelligence does not exclude any mental processes and Applicant’s arguments are not persuasive for those reasons.
Applicant argues that the claimed invention provides for an improvement to the functioning of a computer and cites claimed abstract concepts. Examiner disagrees and notes that Applicant’s arguments fail to provide for any particular improvement to a technical field. Applicant does not indicate what technical field that is improved and does not recite the standard for improvement that is required by the MPEP. Accordingly, Applicant’s arguments are not persuasive.
Claim Rejections - 35 USC § 112(a)
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.
Claims 9-10 and 12-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 9 recites “calculating a plurality of probabilities on an action related to the simulated game situation, wherein the action is an occurrence in a sporting event and the probabilities are generated by artificial intelligence (AI)” (emphasis added) without providing for any clear guidance or explanation as to how artificial intelligence is to be applied to the problem. The current functional relationship between the elements provides for little guidance as to how one of ordinary skill in the art would implement the claimed invention and poses an undue experimentation burden. Accordingly, the claims lack enablement.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-10 and 12-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The phrase “true simulation” recited in claim 9 does not provide for clear metes and bounds regarding what is and is not a “true simulation”, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 9, 10 and 12-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception. The claims will be analyzed with respect to the Subject Matter Eligibility Test at MPEP§2106.
Subject Matter Eligibility – Step 1 (see MPEP§2106.03)
The claims recite one of the four statutory categories of subject matter.
Subject Matter Eligibility – Step 2A Prong 1 (see MPEP§2106.04(a-c))
The claims recite abstract ideas in the following categories;
Mathematical concepts including mathematical relationships, formulas, equations or calculations (MPEP§2106.04(a)(2)I) (hereinafter “Math”).
Mental processes (MPEP§2106.04(a)(2)III) (hereinafter “MP”).
The abstract ideas have been noted in the claims below.
Regarding claim 9,receiving situational game data from past live events (MP – see collecting/observing data); performing a plurality of simulations of a game situation based on the situational game data, wherein true simulations are provided without predetermined outcomes (MP – see predicting a game outcome, e.g. they are going to pass it this play; Math – see generic calculations that may be associated with the abstraction of a real life event, e.g. half the time they pass); calculating a plurality of probabilities on an action related to the simulated game situation, wherein the action is an occurrence in a sporting event and the probabilities are generated by artificial intelligence (AI) (MP – see predicting a game outcome, e.g. they are going to pass it this play; Math – see generic calculations that may be associated with the abstraction of a real life event, e.g. half the time they pass); periodically updating the situational game data based on at least one known outcome of an action of the past live events (MP and Math – see the above mental probability assessment or mathematical calculations as the game situation is continually updated).
Regarding claims 10 and 12-20, these claims recite additional MP and Math regarding selecting mathematical variables for calculation/inclusion and also remembering what is important in historical gameplay, selecting salient information as a mental process or part of mathematical calculation/equation construction, and the above mental probability assessment or mathematical calculations as the game situation is continually updated and compared to historic gameplay.
Subject Matter Eligibility – Step 2A Prong 2 (see MPEP§2106.04(d))
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements are a display, generic computer hardware; insignificant extra solution activity such as collecting information, analyzing it, and displaying certain results of the collection and analysis to data; and the use of software to tailor information and provide it to the user on a generic computer. These additional elements individually and in combination provide for limitations that do not integrate the judicial exception into a practical application. These additional elements (1) add “insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g)” (MPEP§2106.04(d)I) and (2) generally link “the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).” (MPEP§2106.04(d)I).
These additional elements individually and in combination are not limitations that provide for “improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);” (MPEP§2106.04(d)I) apply or use the “judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);” (MPEP§2106.04(d)I) implement the “judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);” (MPEP§2106.04(d)I) effect “a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c);” (MPEP§2106.04(d)I) or apply or use “the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).” (MPEP§2106.04(d)I). As such the claims as a whole do not integrate the judicial exception into a practical application.
Subject Matter Eligibility – Step 2B (see MPEP§2106.05)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are well-understood, routine and conventional generic computer hardware and insignificant extra solution activity (see MPEP§2106.05). The claimed additional elements with citations indicating their well-understood, routine and conventional nature are provided below. Examiner is taking official notice of generic displays and can provide myriad examples of generic display hardware.
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 PETER J IANNUZZI whose telephone number is (571)272-5793. The examiner can normally be reached M-F 9:30AM-5:30PM EST.
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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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/PETER J IANNUZZI/ Primary Examiner, Art Unit 3715
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