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 § 112
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 1-9 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.
Claim 1 recites “enable a user to contribute an item having a first value that is less than the first value” which is unclear as to how the contributed item has a first value that is less than the first value, that is, if the contributed item has a first value, how can the first value be less than itself.
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 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited (PTO-892).
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/MILAP SHAH/Primary Examiner, Art Unit 3715