DETAILED ACTION
This action is in response to the amendment filed on May 21, 2026. The Examiner acknowledges that claim 1 was amended and claims 2-20 remain as originally filed. Claims 1-20 are currently pending and examined herein.
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 is directed to an abstract idea without significantly more. The claims recite a method of managing contributions to awards, escrowing of funds pertaining to the award, and distributing of funds pertaining to the award (disguised as system). This is purely a basic accounting process (akin to a fundamental economic practice – a “method of organizing human activity) that can be performed by a human using pen and paper. This judicial exception is not integrated into a practical application because:
(a) It does not improve the functioning of a computer or to any other technology or technical field;
(b) Applying the judicial exception does not effect a particular treatment or prophylaxis for a disease or medical condition;
(c) Do not apply the judicial exception with, or by use of a particular machine;
(d) It does not effect a transformation or reduction of a particular article to a different state or thing;
(e) It does not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the exception to a particular technological environment such that the claims as a whole are more than a drafting effort designed to monopolize the exception.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the accounting process is performed by a generic computer over a generic network using generic servers. This is clear from Applicant’s specification:
[0091] In certain embodiments in which the system includes an EGM (or personal gaming device) in combination with a server, the server is any suitable computing device (such as a server) that includes at least one processor and at least one memory device or data storage device. As further described herein, the EGM (or personal gaming device) includes at least one EGM (or personal gaming device) processor configured to transmit and receive data or signals representing events, messages, commands, or any other suitable information between the EGM (or personal gaming device) and the server. The at least one processor of that EGM (or personal gaming device) is configured to execute the events, messages, or commands represented by such data or signals in conjunction with the operation of the EGM (or personal gaming device). Moreover, the at least one processor of the server is configured to transmit and receive data or signals representing events, messages, commands, or any other suitable information between the server and the EGM (or personal gaming device). The at least one processor of the server is configured to execute the events, messages, or commands represented by such data or signals in conjunction with the operation of the server. One, more than one, or each of the functions of the server may be performed by the at least one processor of the EGM (or personal gaming device). Further, one, more than one, or each of the functions of the at least one processor of the EGM (or personal gaming device) may be performed by the at least one processor of the server.
It appears that Applicant’s system can be a generic computer with a processor and memory storing instructions that are executable by the processor to perform the judicial exception. Furthermore, Applicant does not describe any specialized software and/or hardware that the systems can be or use. It appears that Applicant has not invented any such software or hardware. Applicant’s disclosure suggests the software and hardware is simply the software and hardware normally used in the industry. Therefore any future arguments concerning such software and hardware will only carry weight if Applicant can show how the current invention modifies this software or hardware to improve the functioning of the computer as a tool.
It appears clear from Applicant’s disclosure and from the claims (where the limitations have been analyzed both individually and as a whole) that Applicant’s invention is essentially a method of accounting that uses a computer as a tool and does not improve the ability of a computer to be a tool. As the CAFC ruled in the precedential case Electric Power Group v Alstom SA, 830 F3d 1350 (2016):
Reflecting those points, we have described the first-stage inquiry as looking at the “focus” of the claims, their “‘character as a whole,’” and the second-stage inquiry (where reached) as looking more precisely at what the claim elements add—specifically, whether, in the Supreme Court’s terms, they identify an “‘inventive concept’” in the application of the ineligible matter to which (by assumption at stage two) the claim is directed. See Enfish, 822 F.3d at 1335–36; Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); cf. Bascom, 2016 WL 3514158, at *5 (“basic thrust”).
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335–36; see Alice, 134 S. Ct. at 2358– 59.
In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335–36; see Bascom, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. (Emphasis added.)
Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information. That is so even as to the claim requirement of “displaying concurrent visualization” of two or more types of information, ’710 patent, col. 31, line 37, even if understood to require time-synchronized display: nothing in the patent contains any suggestion that the displays needed for that purpose are anything but readily available. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are “insufficient to pass the test of an inventive concept in the application” of an abstract idea. buySAFE, 765 F.3d at 1353, 1355; see, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); Internet Patents, 790 F.3d at 1348–49; Content Extraction, 776 F.3d at 1347–48. (Emphasis Added.)
It is positioned that from the claims and the Electric Power Group ruling that Applicant’s claims do not rise to the level of patentability under 35 USC §101. Applicant can amend the claims to show some improvement to a computer as a tool or show some other technical solution to a technical problem. The problem must be a technical problem. If Applicant cannot meet the requirements of items (a) or (e) above as to why this judicial exception is not integrated into a practical application in future amendments, Applicant may not overcome this rejection. Examiner urges Applicant to amend the claims to meet one of these requirements if the specification will support such amendments.
Response to Arguments
Applicant’s amendment has overcome the previously presented 35 U.S.C. 112 rejection, therefore the rejection is withdrawn.
Applicant's arguments filed May 21, 2026 with respect to the previously presented 35 U.S.C. 101 rejection have been fully considered but they are not persuasive.
The rejection is maintained because the claims remain directed to a certain method of organizing human activity, such as an accounting/escrow scheme for funding awards and allocating proceeds, which is an abstract idea, and the additional elements (e.g. processor, memory, generic “system”, etc.) do not integrate that abstract idea into a practical application or provide an inventive concept.
Applicant cites Enfish to argues that software claims are not “inherently abstract” and that it is improper to describe the claims at a high level of abstract. The USPTO agrees that not every software claim is abstract and that claims should not be over-generalized. However, Enfish explained claims directed to a “specific improvement to the way computers operate” (in Enfish, a particular self-referential table that improved data storage and retrieval) are not abstract, whereas claims using a computer merely as a tool to perform an otherwise abstract process remain ineligible, as is presently the case with respect to claims 1-20 as currently pending.
Here, considering the claim language as a whole, the focus of exemplary claim 1 (similarly applicable to the other independent claims) is on implementing a contribution, escrow, and award-funding scheme that allows users to contribute items of value towards another value, escrowing an amount, and upon an award triggering event, providing the contributed item to a player while retaining and distributing portions of the escrowed amount. This is a fundamental economic or financial arrangement and, therefore, a “certain method of organizing human activity” under MPEP 2106.04(a)(2). The processor and memory are recited at a high level of generality, without any specific data structure, storage mechanism, or improvement to how the computer itself operates, unlike the self-referential table in Enfish. Accordingly, Enfish is distinguishable and does not compel a finding of eligibility with respect to claims 1-20 as currently pending.
Under MPEP 2106.04(a)(2), abstract ideas include both “certain methods of organizing human activity” (such as a fundamental economic practice) and “mental processes”. The limitations in exemplary claim 1 recite enabling a user to contribute items towards an award, escrowing amounts, and splitting escrow into portions define a financial arrangement for funding and distributing awards, which falls within fundamental economic practices or commercial interactions.
Applicant relies on MPEP 2106.04(a)(2)(III) and SRI Int’l, Inc v. Cisco Systems Inc. to argue the claims cannot practically be performed in the human mind, and therefore does not recite a mental process. Even assuming arguendo that the claims do not fall into the mental processes category, the Office need only identify that the claims recite at least one abstract idea grouping to proceed under Step 2A, Prong One, and as noted above, the claims recite a fundamental economic practice and therefore remain directed to abstract ideas under the “certain methods of organizing human activity” category, independent of any mental-process analysis.
Nonetheless, Applicant’s assertion that it is “impossible” for a human to “cause at least one contributed item to be provided” or “cause a second portion of the escrowed amount to be provided” is not persuasive, because the “causing” here is simply implementing the financial arrangement. For instance, choosing a recipient, transferring an item, and paying out funds, which are activities that can be, and routinely are, carried out with human decision-making, paper records, and ordinary financial tools and techniques. The MPEP clarifies that mental processes including concepts that can be performed in the human mind or with aid of pen and paper, and that using a computer merely as a tool does not remove a claim from the mental process or abstract idea categories.
Applicant also argues that even if an abstract idea is present, the claims integrate it into a practical application by solving “technical limitations” concerning individuals’ abilities to back awards and dispose of unwanted items, allegedly enabling individuals to bankroll awards “in a way not previously technically achieved”. Applicant characterizes this as a “specific improvement in technology”. However, MPEP 2106.04(d) pertaining to integration into a practical application requires that the additional elements apply or use the abstract idea in a manner that (for example) improves the functioning of a computer or another technology or technical field, users a particular machine integral to the claim, effects a transformation, or otherwise imposes a meaningful limit on the judicial exception (as detailed in the rejection).
The alleged “problem” identified by the Applicant of a lack of ability for individuals to back awards or dispose of unwanted items is a business problem, not a technical problem in computer technology. The “solution” described is likewise economic including defining who can contribute which items, how escrow is funded, distributions, etc. These are changes in business logic and allocation of risk/reward, not improvements to computer operation or any other technical field.
The claims do not recite any particular machine beyond “processor” and “memory”. No technical implementation details in any manner are cited. Under MPEP 2106.04(d), adding generic computer components to perform an otherwise abstract financial scheme, without more, does not integrate the judicial exception into a practical application. Applicant’s statements about the system being “more lucrative” or providing an “avenue” for individuals to dispose of items are merely economic advantages, not technical improvements and thus do not evidence a practical application in the sense required by the UPSTO guidance.
The MPEP also explains that merely implementing an abstract idea using a generic computer, or reciting generic computer components that perform conventional functions (e.g. receiving, storing, processing, transmitting data, etc.), does not supply an inventive concept. Applicant’s response does not identify any non-conventional hardware, software architecture, or specified ordered combination of elements that depart from routine computer implementation, and rather instead reiterates the business advantages of the financial arrangement.
Lastly, the Federal Circuit has held in cases such as Alice and similar post-Alice decision (including Electrical Power Group, recited in the rejection above) that claims implementing economic or accounting schemes using generic computers and networks do not provide “significantly more” than the abstract idea. The pending claims are of the same character of automating a business arrangement without improving how the computer itself functions or using a particular machine in an unconventional way.
For at least these reasons, the Examiner must respectfully maintain the 35 U.S.C. 101 rejection of claims 1-20 as set forth above.
Conclusion
THIS ACTION IS MADE FINAL. 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 MILAP SHAH whose telephone number is (571)272-1723. The examiner can normally be reached Monday - Friday, 9:30-6PM.
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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.
/MILAP SHAH/Primary Examiner, Art Unit 3715
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