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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 26th, 2026 has been entered.
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, 10-19, and 21-22 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 system (i.e., a machine) in claims 1-8, 10-11, and 21 and a method (i.e., a process) in claims 12-19, and 22.
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 system comprising:
a processor; and
a memory device that stores a plurality of instructions that, when executed by the processor responsive to a receipt, from a computing component of a banking institution operating independent of the processor, of data associated with an authorized purchase transaction at a point-of-sale terminal using an amount of funds maintained in a bank account created on behalf of a user and integrated with a cashless wagering account associated with the user, cause the processor to:
determine a gaming establishment account associated with the user, and
communicate, to a computing component of a gaming establishment system that operates independent of the processor and independent of the computing component of the banking institution and that maintains the gaming establishment account, data associated with the authorized purchase transaction, which results in a benefit being associated with the gaming establishment account wherein any monetary deposited into the cashless wagering account are automatically transferred to the bank account independent of any user inputs such that a requested transfer of funds from the cashless wagering account to a credit balance of an electronic gaming machine comprises a first transfer of funds from the bank account to the cashless wagering account automatically followed by a second transfer of funds from the cashless wagering account to the credit balance of the electronic gaming machine.
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 observing and evaluating purchase transactions using user funds and when a gaming account is associated with the user assigning a benefit for transaction to the gaming account as well as Certain Methods of Organizing Human Activity including commercial or legal transactions involving marketing or sales activities and business relations because the claims set forth user account book keeping the provisioning of a benefit to user gaming account when the corresponding user financial account authorizes a purchase transaction.
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 a processor, a memory device, an electronic gaming machine, and a point-of-sale terminal it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonably include other devices such as generic computers, smart phones, kiosks, cash registers, , 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 a processor, a memory device, an electronic gaming machine, and a point-of-sale terminal 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 Paragraphs [0001]-[0002], [0091]-[0092]). 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 Paragraphs [0001]-[0002], [0091]-[0092]). 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 2-8, 10-19, and 21-22 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 a processor, a memory device, an electronic gaming machine, and a point-of-sale terminal and a ticket 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.
Claim Rejections - 35 USC § 103
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 1-8, 10-19, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sanford et al (US 2017/0011372) in view of Ellis et al (US 2020/0410820), herein after referenced as Sanford’372 & Ellis respectively.
Claim 1: The combination of Sanford’372 & Ellis teaches a system comprising:
a processor (Sanford’372 Paragraphs [0007], [0067], [0082]); and
a memory device (Sanford’372 Paragraphs [0007], [0067], [0082]) that stores a plurality of instructions that, when executed by the processor responsive to a receipt, from a computing component of a banking institution operating independent of the processor, of data associated with an authorized purchase transaction at a point-of-sale terminal using an amount of funds maintained in a bank account created on behalf a user and integrated with a cashless wagering account associated with the user (Sanford’372 Paragraphs [0032], [0034], [0035], [0062], [0063]; & Ellis Paragraphs [0010], [0024], [0037], [0074], [0239]; Claims 15-16; Figures 28, 46-48), cause the processor to:
determine a gaming establishment account associated with the user (Sanford’372 Paragraphs [0007], [0041], [0042], [0059]), and
communicate, to a computer component of a gaming establishment system that operates independent of the processor and independent of the computing component of the banking institution and that maintains the gaming establishment account, data associated with the authorized purchase transaction, which results in a benefit being associated with the gaming establishment account (Sanford’372 Paragraphs [0042], [0059], [0062]-[0063]; Figure 7) wherein any monetary funds deposited into the cashless wagering account are automatically transferred to the bank account independent of any user inputs (Ellis Paragraphs [0037], [0239]; Claims 15-16; Figure 28) such that a requested transfer of funds from the cashless wagering account to a credit balance of an electronic gaming machine comprises a first transfer of funds from the bank account to the cashless wagering account automatically followed by a second transfer of funds from the cashless wagering account to the credit balance of the electronic gaming machine (-describing the movement of funds from stored value account to gaming account and then to gaming credits- Sanford’372 Figure 7A; Paragraphs [0052], [0057]-[0058] & Ellis Paragraphs [0010], [0024], [0037], [0074], [0239]; Claims 15-16; Figures 28, 46-48).
Sanford’372 teaches the invention including the use of transaction utilizing funds from financial accounts maintained by financial institutions utilizing debit cards as cited above. While Sandford’372 does not explicitly identify the accounts as bank account created on behalf a user (personal bank account) or that funds are automatically moved from the cashless wagering account to the bank account independent of user inputs, Ellis teaches that these were known features usable in environments with manual payment features in an analogous invention (Ellis Paragraphs [0010], [0024], [0037], [0074], [0239]; Claims 15-16; Figures 28, 46-48). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have incorporated a bank account created on behalf a user (personal bank account) or that funds are automatically moved between the cashless wagering account to the bank account independent of user inputs as taught by Ellis in the invention of Sandford’372 because such would have provided the predictable and expected result of moving player funds according to player activity and/or governing regulations without requiring human intervention.
Claim 2: The combination of Sanford’372 & Ellis teaches the system of Claim 1, wherein the gaming establishment account comprises a player tracking account (Sanford’372 Paragraphs [0041], [0060]-[0063]).
Claim 3: The combination of Sanford’372 & Ellis teaches the system of Claim 2, wherein the benefit comprises a quantity of player tracking points (Sanford’372 Paragraphs [0062]-[0063]).
Claim 4: The combination of Sanford’372 & Ellis teaches the system of Claim 1, wherein the gaming establishment account comprises the cashless wagering account (Sanford’372 Paragraphs [0026], [0037]).
Claim 5: The combination of Sanford’372 & Ellis teaches the system of Claim 4, wherein the benefit comprises at least one of a quantity of non-cashable credits and a quantity of promotional credits (Sanford’372 Paragraphs [0042], [0064]-[0065]).
Claim 6: The combination of Sanford’372 & Ellis teaches the system of Claim 1, wherein the communicated data associated with the authorized purchase transaction comprises the benefit to be associated with the gaming establishment account (Sanford’372 Paragraphs [0062]-[0063]).
Claim 7: The combination of Sanford’372 & Ellis teaches the system of Claim 1, where the purchase transaction is initiated in association with a debit card associated with the bank account integrated with the cashless wagering account (Sanford’372 Paragraph [0046] & Ellis Paragraphs [0037]).
Claim 8: The combination of Sanford’372 & Ellis teaches the system of Claim 1, wherein a transfer of an amount of funds associated with the purchase transaction occurs responsive to a settlement event (Sanford’372 Paragraphs [0028], [0032], [0065]).
Claim 10: The combination of Sanford’372 & Ellis teaches the teaches a system comprising:
a processor (Sanford’372 Paragraphs [0007], [0067], [0082]); and
a memory device (Sanford’372 Paragraphs [0007], [0067], [0082]) that stores a plurality of instructions that, when executed by the processor responsive to a receipt, from a computing component of a banking institution, operating independent of the processor, of data associated with an authorized purchase transaction initiated in association with a debit card associated with a checking account linked to cashless wagering account, (Sanford’372 Paragraphs [0030], [0032], [0034], [0035], [0046], [0062], [0063] & Ellis Paragraphs [0010], [0024], [0037], [0074], [0239]; Claims 15-16; Figures 28, 46-48) cause the processor to:
determine a benefit associated with the authorized purchase transaction (Sanford’372 Paragraphs [0062]-[0063]), and
communicate, to a component of a gaming establishment system that operates independent of the processor and independent of the computing component of the banking institution and that maintains a gaming establishment account, data associated with the determined benefit (Sanford’372 Paragraphs [0042], [0059], [0062]-[0063]; Figure 7), wherein any monetary funds deposited into the cashless wagering account are automatically transferred to the bank account independent of any user inputs (Ellis Paragraphs [0037], [0239]; Claims 15-16; Figure 28).
Sanford’372 teaches the invention including the use of transaction utilizing funds from financial accounts maintained by financial institutions utilizing debit cards as cited above. While Sandford’372 does not explicitly identify the accounts as bank account including a checking accounts created on behalf a user (personal bank account) or that funds are automatically moved from the cashless wagering account to the bank account independent of user inputs, Ellis teaches that these were known features in an analogous invention (Ellis Paragraphs [0037], [0239]; Claims 15-16; Figures 28, 92) such that a requested transfer of funds from the cashless wagering account to a credit balance of an electronic gaming machine comprises a first transfer of funds from the checking account to the cashless wagering account automatically followed by a second transfer of funds from the cashless wagering account to the credit balance of the electronic gaming machine (-describing the movement of funds from stored value account to gaming account and then to gaming credits- Sanford’372 Figure 7A; Paragraphs [0052], [0057]-[0058] & Ellis Paragraphs [0010], [0024], [0037], [0074], [0239]; Claims 15-16; Figures 28, 46-48).
Sanford’372 teaches the invention including the use of transaction utilizing funds from financial accounts maintained by financial institutions utilizing debit cards as cited above. While Sandford’372 does not explicitly identify the accounts as bank account created on behalf a user (personal bank account) or that funds are automatically moved from the cashless wagering account to the bank account independent of user inputs, Ellis teaches that these were known features usable in environments with manual payment features in an analogous invention (Ellis Paragraphs [0010], [0024], [0037], [0074], [0239]; Claims 15-16; Figures 28, 46-48). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have incorporated a bank account created on behalf a user (personal bank account) or that funds are automatically moved between the cashless wagering account to the bank account independent of user inputs as taught by Ellis in the invention of Sandford’372 because such would have provided the predictable and expected result of moving player funds according to player activity and/or governing regulations without requiring human intervention.
Claim 11: The combination of Sanford’372 & Ellis teaches the system of Claim 10, wherein the gaming establishment account comprises a player tracking account and the benefit comprises a quantity of player tracking points credited to the player tracking account (Sanford’372 Paragraphs [0041], [0060]-[0063]).
Claim 12: The combination of Sanford’372 & Ellis teaches a method of operating a system, the method comprising:
responsive to a receipt, from a computing component of a banking institution operating independent of a processor of the system, of data associated with an authorized purchase transaction at a point-of-sale terminal using an amount of funds maintained in a bank account created on behalf of a user and integrated with a cashless wagering account associated with the user (Sanford’372 Paragraphs [0032], [0034], [0035], [0062], [0063] & Ellis Paragraphs [0037], [0239]; Claims 15-16; Figure 28):
determining, by the processor of the system (Sanford’372 Paragraphs [0007], [0067], [0082]), a gaming establishment account associated with the user (Sanford’372 Paragraphs [0007], [0041], [0042], [0059]), and
communicating, to a computer component of a gaming establishment system that operates independent of the processor and independent of the computing component of the banking institution and that maintains the gaming establishment account, data associated with the authorized purchase transaction which results in a benefit being associated with the gaming establishment account (Sanford’372 Paragraphs [0042], [0059], [0062]-[0063]; Figure 7), wherein any monetary funds deposited into the cashless wagering account are automatically transferred to the bank account independent of any user inputs (Ellis Paragraphs [0037], [0239]; Claims 15-16; Figure 28), such that a requested transfer of funds from the cashless wagering account to a credit balance of an electronic gaming machine comprises a first transfer of funds from the bank account to the cashless wagering account automatically followed by a second transfer of funds from the cashless wagering account to the credit balance of the electronic gaming machine (-describing the movement of funds from stored value account to gaming account and then to gaming credits- Sanford’372 Figure 7A; Paragraphs [0052], [0057]-[0058] & (Ellis Paragraphs [0010], [0024], [0037], [0074], [0239]; Claims 15-16; Figures 28, 46-48).
Sanford’372 teaches the invention including the use of transaction utilizing funds from financial accounts maintained by financial institutions utilizing debit cards as cited above. While Sandford’372 does not explicitly identify the accounts as bank account created on behalf a user (personal bank account) or that funds are automatically moved from the cashless wagering account to the bank account independent of user inputs, Ellis teaches that these were known features usable in environments with manual payment features in an analogous invention (Ellis Paragraphs {0010], [0037], [0239]; Claims 15-16; Figures 28, 46-48). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have incorporated a bank account created on behalf a user (personal bank account) or that funds are automatically moved between the cashless wagering account to the bank account independent of user inputs as taught by Ellis in the invention of Sandford’372 because such would have provided the predictable and expected result of moving player funds according to player activity and/or governing regulations without requiring human intervention.
Claim 13: The combination of Sanford’372 & Ellis teaches the method of Claim 12, wherein the gaming establishment account comprises a player tracking account (Sanford’372 Paragraphs [0041], [0060]-[0063]).
Claim 14: The combination of Sanford’372 & Ellis teaches the method of Claim 13, wherein the benefit comprises a quantity of player tracking points (Sanford’372 Paragraphs [0062]-[0063]).
Claim 15: The combination of Sanford’372 & Ellis teaches the teaches the method of Claim 12, wherein the gaming establishment account comprises the cashless wagering account (Sanford’372 Paragraphs [0026], [0037]).
Claim 16: The combination of Sanford’372 & Ellis teaches the method of Claim 15, wherein the benefit comprises at least one of a quantity of non-cashable credits and a quantity of promotional credits (Sanford’372 Paragraphs [0042], [0064]-[0065])
Claim 17: The combination of Sanford’372 & Ellis teaches the method of Claim 12, wherein the communicated data associated with the authorized purchase transaction comprises the benefit to be associated with the gaming establishment account (Sanford’372 Paragraphs [0062]-[0063]). .
Claim 18: The combination of Sanford’372 & Ellis teaches the method of Claim 12, where the purchase transaction is initiated in association with a debit card associated with the bank account integrated with the cashless wagering account (Sanford’372 Paragraphs [0046] & Ellis Paragraphs [0037], [0239]; Claims 15-16; Figure 28).
Claim 19: The combination of Sanford’372 & Ellis teaches the method of Claim 12, wherein a transfer of an amount of funds associated with the purchase transaction occurs responsive to a settlement event (Sanford’372 Paragraphs [0028], [0032], [0065]).
Claim 21: The combination of Sanford’372 & Ellis teaches the system of Claim 1, wherein the memory device stores a plurality of further instructions that, when executed by the processor responsive to a receipt of data associated with a balance inquiry of the cashless wagering account, cause the processor cause a display, by a display device, of a balance of the bank account as a balance of the cashless wagering account (-Current Balance/Available Credit Line- Ellis Figures 41, 44, 45, 92).
Sanford’372 teaches the invention including the use of cashless wagering accounts and bank accounts as cited above. While Sandford’372 does not explicitly teach the display of account balances including bank account balances on a display, Ellis teaches that the display of account balances associated with players accounts including bank accounts were known features in an analogous invention (Ellis Figures 41, 44, 45, 92). It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to have incorporated the display of account balance as taught by Ellis in the invention of Sandford’372 because such would have provided the predictable and expected result of notifying the player of their currently available funds and/or debts.
Claim 22: The combination of Sanford’372 & Ellis teaches the method of Claim 12, further comprising, responsive to a receipt of data associated with a balance inquiry of the cashless wagering account, displaying, by a display device, a balance of the bank account as a balance of the cashless wagering account (-Current Balance/Available Credit Line- Ellis Figures 41, 44, 45, 92).
Response to Arguments
Applicant's arguments filed August 26th, 2026 have been fully considered but they are not persuasive.
Commencing on pages 7-11 of the Applicant’s above dated remarks, the Applicant presents the following arguments concerning the rejection of claims under 35 USC 101 for being directed to a judicial exception without significantly more:
that the claimed invention recites steps performed between independently operating computer systems to route funds between a bank account, a wagering account and a credit balance of an electronic gaming machine that reflect a specific technical financial transaction that do not involve social activities or interpersonal interactions and as such would not fall under the enumerated grouping of Certain Methods of Organizing Human Activity (Applicant Remarks Pages 7-8);
that the claimed invention recites a technical solution to the technical problem of utilizing an integrated bank account to hold funds otherwise held in a cashless wagering account to enable the use of outside of a gaming establishment environment while providing safe guards based on the routing of funds through a cashless wagering account prior to the funds arriving at a gaming machine destination and proposes that the same reflects a technical solution to a technical problem rooted in computer technology and not merely observing purchase transactions or electronic book keeping (Applicant Remarks Pages 8-9);
that when considered as a whole the claimed invention any recited abstract ideas are integrated into a practical application by providing the solution to the problem of accessing player funds outside of a casino without requiring the delay of manually transferring those player funds from a cashless wagering account to a bank account and while complying with casino and/or banking regulations (Applicant Remarks Pages 9-10); and
that the claims invention including the abstract steps describing the transfer of funds between accounts as particularly claimed should be understood as an ordered combination of technical elements that provides the technical improvement of enabling the access of funds across regulatory environments without requiring multiple transfers analogous to conisderations addressed in BASCOM Global Internet Services v. AT&TMobility LLC, 827 F .3d 1341 (Fed. Cir. 2016) (Applicant Remarks Pages 10-11)
Responsive to the preceding Applicant arguments as summarized above, the following is noted in corresponding order and enumeration:
i.a) The claimed limitations reflect the enumerated grouping of a Mental Processes including observation, evaluation, and judgement because the claims are directed to series of steps for observing and evaluating purchase transactions using user funds and when a gaming account is associated with the user assigning a benefit for transaction to the gaming account. As the accounting/bookkeeping operations recited by the claimed invention are performable by the human mind with the benefit of pencil and paper they appropriately fall under this grouping. While it is noted that the claimed invention utilizes a computer in the implementation of recited mental process, and as such automates certain steps performed therein, such does not exclude the claimed invention from falling under this grouping as per MPEP 2106.04(a)(2) Subsection III.C.
ii.a) the utilization of funds between different accounts is not a technical limitation of the underlying technology but instead relates to concerns of electronic book keeping and/or improvements in accounting rules themselves to meet regulatory requirements and not technical limitations of the underlying technology, accordingly while the claimed invention is practiced on a computer merely utilize the same as a tool and does not support the presence of an improvement in technology as proposed. “[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).
iii.a) The Applicant proposed practical applications based on providing the solution to the problem of accessing player funds outside of a casino without requiring the delay of manually transferring those player funds from a cashless wagering account to a bank account and while complying with casino and/or banking regulations reflects an improvement in the abstract method itself but do not improve the functional capability of the underlying technology 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.”).
Additionally, the automation of funds transfers is noted as being taught by the applied prior art (Ellis Paragraphs [0037], [0239]; Claims 15-16; Figure 28) making it unclear how the same would support an unconventional improvement as proposed, within the meaning set forth by MPEP §2106.04(d)(1) & 2106.05(a).
iv.a) In BASCOM Global Internet Services v. AT&TMobility LLC, the court agreed that the additional elements were generic computer, network, and Internet components that did not amount to significantly more when considered individually, but explained that the district court erred by failing to recognize that when combined, an inventive concept may be found in the non-conventional and non-generic arrangement of the additional elements. Specifically, when considered as an ordered combination the court identified the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user as representing a non-conventional and non-generic arrangement of the additional elements wherein such merged the benefits of remote based filtering tools and personal based filtering tools to create a unique beneficial arrangement that was not separately available with either of these known arrangements for filter tools previously. With relation to the preceding the presented arguments do not identify how the claimed invention when considered as an ordered combination provides significantly more than a conventional or generic arrangement of known hardware executing algorithm or how such provide for a unique beneficial arrangement that was not separately available with the claimed elements previously and in a manner that would separate the claimed invention from the specific arrangement as cautioned against in Alice, “[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).
Further continuing on pages 11-14 of the Applicant;’s above dated remarks, the Applicant presents that the rejection of claims based on the combination of Sanford (US 2017/00121372) & Ellis et al (US 2020/0410820) as applied under 35 USC §103 is improper based the proposal that Sanford’s utilization of a manual transfer process teaches away from the use of an automated transfer process as taught by Ellis and that even if modifiable, the automation of transfer is Ellis is directed only to the transfer of funds from a bank account into a cashless wagering account whereas the claimed invention automatically transfer the funds into a bank account from the cashless wagering account. Additionally, the Applicant presents that the teachings of Sanford & Ellis commonly lacks any teaching of utilizing a bank account to fund a gaming device.
Responsive to the preceding, Sanford’372’s utilization of a manual transfer process does criticize, discredit, or otherwise discourage the use of an automated transfer and according does not support the proposed teaching away merely because it is disclosed as utilizing an alternative manual transfer process.
The combination of Sanford’372 & Ellis teaches the transfer of player funds between stored value accounts, gaming accounts, and gaming device credit meters responsive to both manual and automatic transactions as cited herein above. While Sandford’372 does not explicitly identify the accounts as bank account created on behalf a user (personal bank account) or that funds are automatically moved from the cashless wagering account to the bank account independent of user inputs, Ellis teaches that these were known features usable in environments with manual payment features in an analogous invention (Ellis Paragraphs [0010], [0024], [0037], [0074], [0239]; Claims 15-16; Figures 28, 46-48). The Applicant’s proposal that the automating of manual process as taught by Ellis would be limited to only certain manual transfers in the applied prior art combination and not others is respectfully non-persuasive because the direction of the transfer would not impede the automation of the same and further because the mere automating of known manual activities has been long recognized as insufficient to separate a claimed invention from the prior art (See In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958)).
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/Primary Examiner, Art Unit 3715
Prosecution Insights