DETAILED ACTION
In the response filed December 8, 2025, the Applicant amended claims 1 and 13. Claims 1-20 are pending in the current application, claims 9-12 have been withdrawn and claims 1-8 and 13-20 are examined herein.
Notice of 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
The drawings were objected to for informalities. Examiner thanks the Applicant for revising and amending the disclosure and hereby withdraws the objection from the previous Office action.
Applicant’s arguments for claims 1-8 and 13-20 with respect to the 35 U.S.C. 101 rejection have been considered but are unpersuasive. Applicant argues that the claims integrate the abstract idea into a practical application. Examiner respectfully disagrees. Here, under broadest reasonable interpretation, the steps describe or set-forth providing an award to a player responsive to user based events, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). The identified claim limitations “following an occurrence of an award triggering event associated with an award,” is a part of the identified abstract idea. These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
The steps and limitations as claimed is executed by and involves “a system comprising: a processor; and a memory device that stores a plurality of instructions to an online retail platform,” (claim 1); “an online retail platform that is operating independently of the system,” (claims 1 and 13); “an online auction platform,” (claims 2 and 14); “a system,” (claim 13). The requirement to execute the claimed steps/functions using “a system comprising: a processor; and a memory device that stores a plurality of instructions to an online retail platform,” (claim 1); “an online retail platform that is operating independently of the system,” (claims 1 and 13); “an online auction platform,” (claims 2 and 14); “a system,” (claim 13), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See § MPEP 2106.05(f). Applicant argues there is an improvement in computer technology wherein the claims establish “a bridge between these non-integrated computing systems.” Examiner respectfully disagrees. The claims do not recite nor mention any “bridges” and merely recites communications between computer systems and retail platforms. This is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See § MPEP 2106.05(f)
Applicant argues the amended claims provide a solution to the problem of providing unwanted or unneeded items to individuals as awards as well as sellers of items on online retail platforms being unable to connect with buyers who want those items. Examiner respectfully disagrees. Here, the alleged improvements are non-technical subjective/abstract improvements, not technical improvements to computers or technological processes, but addresses a business challenge regarding the providing of items to individuals as awards. Providing better options to customers or targeting items customers wish to obtain is directed to, if anything, a business “improvement” (e.g., efficient methods and ways to sell goods to a consumer). The idea of providing items that are more desirable to customers is not a patent eligible “improvement.” That a computer is used to execute this abstract idea serves merely to implement the abstract idea on a generic computer.
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Applicant’s arguments remain unpersuasive. The 35 U.S.C. 101 rejection is hereby maintained.
Applicant’s arguments for claims 1-8 and 13-20 with respect to the 35 U.S.C. 102/103 rejections have been considered but are moot because the arguments do not apply to the combination of references being used in the current rejection.
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 1-8 and 13-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-8 are drawn to a machine and claims 13-20 are drawn to a process, each of which is within the four statutory categories (e.g., a process, a machine). (Step 1: YES).
Step 2A – Prong One: In prong one of step 2A, the claims are analyzed to evaluate whether they recite a judicial exception.
Claim 1 (representative of claim 13) recites/describes the following steps:
“following an occurrence of an award triggering event associated with an award,…communicate, …, data associated with a request to determine an availability of an item having a value corresponding to a value of the award, wherein communicating…occurs responsive to the occurrence of the award triggering event”
“responsive to a receipt of data associated with the availability of the item, communicate, …, data that results in a purchase of the item, and cause the purchased item to be made available to a player associated with the occurrence of the award triggering event.”
These steps, under broadest reasonable interpretation, describe or set-forth providing an award to a player responsive to user based events, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A – Prong One: YES).
Each of the depending claims 2-8 and 14-20 likewise recite/describe these steps (by incorporation - and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims are therefore determined to recite an abstract idea under the same analysis. Any elements recited in a dependent claim that are not specifically identified/addressed by the Examiner under step 2A (prong two) or step 2B of this analysis shall be understood to be an additional part of the abstract idea recited by that particular claim.
Step 2A – Prong Two:
The claims recite the additional elements/limitations of: “a system comprising: a processor; and a memory device that stores a plurality of instructions to an online retail platform,” (claim 1); “an online retail platform that is operating independently of the system,” (claims 1 and 13); “an online auction platform,” (claims 2 and 14); “a system,” (claim 13).
The requirement to execute the claimed steps/functions using “a system comprising: a processor; and a memory device that stores a plurality of instructions to an online retail platform,” (claim 1); “an online retail platform that is operating independently of the system,” (claims 1 and 13); “an online auction platform,” (claims 2 and 14); “a system,” (claim 13), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See § MPEP 2106.05(f).
Remaining dependent claims 2-8 and 14-20 either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claims are directed to an abstract idea (Step 2A – Prong two: NO).
Step 2B:
As discussed above in “Step 2A – Prong 2,” the requirement to execute the claimed steps/functions using “a system comprising: a processor; and a memory device that stores a plurality of instructions to an online retail platform,” (claim 1); “an online retail platform that is operating independently of the system,” (claims 1 and 13); “an online auction platform,” (claims 2 and 14); “a system,” (claim 13), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more.” See MPEP § 2106.05(f).
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer.
Remaining dependent claims 2-8 and 14-20 either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claims amount to significantly more than the abstract idea identified above (Step 2B: NO).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-6, 8, 13, 16-18, and 20, are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nguyen et al. (US 2003/0199320 A1), hereinafter Nguyen.
Regarding claim 1, Nguyen discloses a system comprising: a processor; and a memory device that stores a plurality of instructions that (Par. [0028], [0030], processor, memory), when executed by the processor
following an occurrence of an award triggering event associated with an award (Par. [0052], if a specific prize has been won or if credits have been accumulated by a player, player tracking unit 120 can provide an option for the player to redeem the prize and/or credits), cause the processor to:
communicate, to an online retail platform that is operating independently of the system (Par. [0029], The prize fulfillment sites 134 can be retail entities such as Internet retail entities that are not part of or controlled by the casino), data associated with a request to determine an availability of an item having a value corresponding to a value of the award (Par. [0056], the player's choices are limited to prizes that generally correspond to the value of the prize won or credits earned, and these choices are downloaded and displayed by the prize fulfillment site), wherein communicating the data to the online retail platform occurs responsive to the occurrence of the award triggering event (Par. [0052]),
responsive to a receipt of data associated with the availability of the item, communicate, to the online retail platform, data that results in a purchase of the item, and cause the purchased item to be made available to a player associated with the occurrence of the award triggering event (Par. [0056], The prize fulfillment site 134 then delivers the one or more prizes to the player according to any prize fulfillment information provided by the player to the prize fulfillment site).
Regarding claim 4, Nguyen discloses wherein the item is selected by the player associated with the occurrence of the award triggering event (Par. [0052], if a specific prize has been won or if credits have been accumulated by a player, player tracking unit 120 can provide an option for the player to redeem the prize and/or credits; Par. [0056], the player's choices are limited to prizes that generally correspond to the value of the prize won or credits earned, and these choices are downloaded and displayed by the prize fulfillment site).
Regarding claim 5, Nguyen discloses wherein the item is associated with the award prior to the occurrence of the award triggering event (Par. [0052], if a specific prize has been won or if credits have been accumulated by a player, player tracking unit 120 can provide an option for the player to redeem the prize and/or credits).
Regarding claim 6, Nguyen discloses wherein the purchased item is made available to the player via the online retail platform (Par. [0056], the player's choices are limited to prizes that generally correspond to the value of the prize won or credits earned, and these choices are downloaded and displayed by the prize fulfillment site).
Regarding claim 8, Nguyen discloses wherein the item has the value corresponding to the value of the award responsive to the value of the item being within designated range of the value of the award (Par. [0056], the player's choices are limited to prizes that generally correspond to the value of the prize won or credits earned, and these choices are downloaded and displayed by the prize fulfillment site).
Regarding claim 13, Nguyen discloses a method of operating a system (Par. [0028], [0030], processor, memory), the method comprising:
following an occurrence of an award triggering event associated with an award (Par. [0052], if a specific prize has been won or if credits have been accumulated by a player, player tracking unit 120 can provide an option for the player to redeem the prize and/or credits), cause the processor to:
communicating, to an online retail platform that is operating independently of the system (Par. [0029], The prize fulfillment sites 134 can be retail entities such as Internet retail entities that are not part of or controlled by the casino), data associated with a request to determine an availability of an item having a value corresponding to a value of the award (Par. [0056], the player's choices are limited to prizes that generally correspond to the value of the prize won or credits earned, and these choices are downloaded and displayed by the prize fulfillment site), wherein communicating the data to the online retail platform occurs responsive to the occurrence of the award triggering event (Par. [0052]),
responsive to a receipt of data associated with the availability of the item, communicating, to the online retail platform, data that results in a purchase of the item, and cause the purchased item to be made available to a player associated with the occurrence of the award triggering event (Par. [0056], The prize fulfillment site 134 then delivers the one or more prizes to the player according to any prize fulfillment information provided by the player to the prize fulfillment site).
Regarding claim 16, Nguyen discloses wherein the item is selected by the player associated with the occurrence of the award triggering event (Par. [0052], if a specific prize has been won or if credits have been accumulated by a player, player tracking unit 120 can provide an option for the player to redeem the prize and/or credits; Par. [0056], the player's choices are limited to prizes that generally correspond to the value of the prize won or credits earned, and these choices are downloaded and displayed by the prize fulfillment site).
Regarding claim 17, Nguyen discloses wherein the item is associated with the award prior to the occurrence of the award triggering event (Par. [0052], if a specific prize has been won or if credits have been accumulated by a player, player tracking unit 120 can provide an option for the player to redeem the prize and/or credits).
Regarding claim 18, Nguyen discloses wherein the purchased item is made available to the player via the online retail platform (Par. [0056], the player's choices are limited to prizes that generally correspond to the value of the prize won or credits earned, and these choices are downloaded and displayed by the prize fulfillment site).
Regarding claim 20, Nguyen discloses wherein the item has the value corresponding to the value of the award responsive to the value of the item being within designated range of the value of the award (Par. [0056], the player's choices are limited to prizes that generally correspond to the value of the prize won or credits earned, and these choices are downloaded and displayed by the prize fulfillment site).
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 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2, 7, 14, and 19, are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US 2003/0199320 A1) in view of Arezina et al. (US 2016/0225233 A1), hereinafter Arezina.
Regarding claim 2, Nguyen teaches the system of claim 1. Nguyen does not explicitly disclose wherein the online retail platform comprises an online auction platform. Arezina teaches wherein the online retail platform comprises an online auction platform (Par. [0158], auction exchange available to users). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the award system of Nguyen to include the auction platform abilities of Arezina as a need exists to improve gaming enhancements that will attract frequent play through enhanced entertainment value to the player (Arezina, Par. [0004]). Since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 7, Nguyen teaches the system of claim 1. Nguyen does not explicitly disclose wherein the award comprises a progressive award. Arezina teaches wherein the award comprises a progressive award (Par. [0067], progressive jackpot). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the award system of Nguyen to include the auction platform abilities of Arezina as a need exists to improve gaming enhancements that will attract frequent play through enhanced entertainment value to the player (Arezina, Par. [0004]). Since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 14, Nguyen teaches the system of claim 13. Nguyen does not explicitly disclose wherein the online retail platform comprises an online auction platform. Arezina teaches wherein the online retail platform comprises an online auction platform (Par. [0158], auction exchange available to users). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the award system of Nguyen to include the auction platform abilities of Arezina as a need exists to improve gaming enhancements that will attract frequent play through enhanced entertainment value to the player (Arezina, Par. [0004]). Since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 19, Nguyen teaches the system of claim 13. Nguyen does not explicitly disclose wherein the award comprises a progressive award. Arezina teaches wherein the award comprises a progressive award (Par. [0067], progressive jackpot). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the award system of Nguyen to include the auction platform abilities of Arezina as a need exists to improve gaming enhancements that will attract frequent play through enhanced entertainment value to the player (Arezina, Par. [0004]). Since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claims 3 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US 2003/0199320 A1) in view of Arezina (US 2016/0225233 A1) and Harding et al. (US 2007/0214066 A1), hereinafter Harding.
Regarding claim 3, Nguyen and Arezina teach the system of claim 2. Nguyen and Arezina do not explicitly disclose wherein the availability of the item is based on a rating of a seller of the item. Harding teaches wherein the availability of the item is based on a rating of a seller of the item (Par. [0045], In step 804, if the seller's availability for the item exceeds an availability threshold established by the facility, then the facility continues in step 805, else the facility continues in step 807. The facility may establish a variety of different availability thresholds, such as available in four or fewer days. In step 805, if the seller's score exceeds a seller score threshold established by the facility, then the facility continues). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the award system of Nguyen and Arezina to include the seller rating abilities of Harding since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 15, Nguyen and Arezina teach the system of claim 14. Nguyen and Arezina do not explicitly disclose wherein the availability of the item is based on a rating of a seller of the item. Harding teaches wherein the availability of the item is based on a rating of a seller of the item (Par. [0045], In step 804, if the seller's availability for the item exceeds an availability threshold established by the facility, then the facility continues in step 805, else the facility continues in step 807. The facility may establish a variety of different availability thresholds, such as available in four or fewer days. In step 805, if the seller's score exceeds a seller score threshold established by the facility, then the facility continues). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the award system of Nguyen and Arezina to include the seller rating abilities of Harding since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
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.
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/Patrick Kim/Examiner, Art Unit 3628
/NATHAN C UBER/Supervisory Patent Examiner, Art Unit 3626