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 § 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 abstract idea without significantly more.
The claim(s) recite(s) “A system comprising: a processor circuit; and a memory coupled to the processor circuit, the memory comprising machine-readable instructions that, when executed by the processor circuit, cause the processor circuit to: divide a value of a physical gaming asset into a plurality of cryptographic tokens that represent an ownership share of the physical gaming asset; transfer ownership of one of the plurality of cryptographic tokens to a first player; and transfer revenue value that corresponds to revenue that is generated by the physical gaming asset and the one of the plurality of cryptographic tokens” (Claim 1); “A gaming device comprising: a processor circuit; and a memory coupled to the processor circuit, the memory comprising machine-readable instructions that, when executed by the processor circuit, cause the processor circuit to: divide a value of a physical gaming asset into a plurality of cryptographic tokens that each represent an ownership share of the physical gaming asset; determine that a user is eligible to own one of the plurality of cryptographic tokens; transfer, for value, one of the plurality of cryptographic tokens to the user via a decentralized and distributed digital ledger comprising blocks; automatically determine a revenue amount that is generated by the physical gaming asset; determine a revenue value that corresponds to the revenue amount and a quantity of the plurality of cryptographic tokens owned by the user; and transfer the revenue value to the user.” (Claim 18); and “A method comprising: providing, by a processor circuit, a primary wagering game at a physical gaming asset to a first player; dividing, by the processor circuit, a value of the physical gaming asset, into a plurality of cryptographic tokens that each correspond to an ownership share of the physical gaming asset; transferring one of the plurality of cryptographic tokens to the first player via a blockchain; determining gaming revenue that is generated by the physical gaming asset; determining a share portion of the gaming revenue based on a quantity of cryptographic tokens and the shared portion of the gaming revenue; and automatically transferring the share portion of the gaming revenue to the first player” (Claim 20). Each of the above underlined portions are related to an abstract idea of Certain Methods of Organizing Human Activity particularly fundamental economic principles or practices (including hedging, insurance, mitigating risk) and managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions for dividing a value of a physical gaming asset into tokens/shares, determining eligibility of a user to own one of the tokens/shares, transferring ownership of the token/share to a first player/user, transferring revenue value that corresponds to gaming revenue that is generated by the physical gaming asset and one of the plurality of tokens/shares. Such steps pertaining to organizing human activity.
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (particularly the technological environment of a gaming device and/or gaming system) (MPEP 2106.05 (h)).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. The recited slot machine interface board is well known in the art. Snow (US 2020/0042988) discloses that blockchain is conventional (¶ 91), Khan (WO 2021209837 A1) teaches that cryptographic tokens can be created using conventional blockchain (¶ 42), and Janse van Rensburg (US 8,607,067 B1) teaches “Generation, issuance, authentication and revocation of cryptographic tokens are well known in the art” (Col. 15:34-36). Additionally, the recitations of utilization of a “system”, “processor circuit”, “memory”, “cryptographic token”, “electronic gaming machine”, “online gaming system”, “blockchain” and/or “gaming device”) are recited at a level of generality and are merely invoked as tool to perform the used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility (the use of a computing device and/or generic components is merely illustrating the environment in which the abstract idea is practiced). These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. Taking the physical elements individually and in combination, the computer-based components perform purely generic computer-based functions that are silent in regards to clearly indicating how a computer aids the board and/or method to which a computer performs/implements the board and/or method. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer, ’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
It is settled law that adding physical elements to an abstract idea will not amount to an “inventive concept" if the physical elements are well-known, routine and conventional elements and they perform their well-known, routine and conventional functions. TLI Communications LLC v. AV Automotive, L.L.C. (Fed Cir 2016):
Turning to the second step in our analysis, we find that the claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294). We agree with the district court that the claims’ recitation of a “telephone unit,” a “server”, an “image analysis unit,” and a “control unit” fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability. (Emphasis added by Examiner.)
On the question of preemption, the Federal Circuit has stated in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of DNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
Nor do the dependent claims 2-17 and 19 add “significantly more” since they merely add to the claimed concepts relating to fundamental economic principles or practices (including hedging, insurance, mitigating risk) and/or managing personal behavior or relationships or interactions between people including following rules or instructions (particularly, game rules or instructions) under the grouping of Certain Methods of Organizing Human Activity. The dependent claims failing to place the claimed invention into a practical applicant or additional generic components of the dependent claims failing to amount to “significantly more” for the same reasons noted above.
Consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claim are not patent-eligible under 35 USC §101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see attached PTO-892.
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/TRAMAR HARPER/Primary Examiner, Art Unit 3715