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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/617256 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. Both sets of claims are directed to systems and methods for funds transfers between gaming and financial systems. More particularly, both sets of claims encompass causing a first transfer of the amount of funds to the gaming establishment account, and causing a second transfer of the amount of funds from the gaming establishment account to a balance of a gaming establishment device, and responsive to a determination that the user associated with the financial institution account is not associated with any gaming establishment accounts maintained by the gaming establishment fund management system: activate an electronic funds transfer funding pathway comprising causing, independent of any wagering account transfers associated with the gaming establishment device, a transfer of the amount of funds to the balance of the gaming establishment device, and responsive to a determination to associate a bonus event with the activated electronic funds transfer funding pathway, communicate data that results in a delivery of the bonus event.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/617233 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. Both sets of claims are directed to systems and methods for funds transfers between gaming and financial systems. More particularly, both sets of claims encompass causing a first transfer of the amount of funds to the gaming establishment account, and causing a second transfer of the amount of funds from the gaming establishment account to a balance of a gaming establishment device, and responsive to a determination that the user associated with the financial institution account is not associated with any gaming establishment accounts maintained by the gaming establishment fund management system, activate an electronic funds transfer funding pathway comprising causing, independent of any wagering account transfers associated with the gaming establishment device, a transfer of the amount of funds to the balance of the gaming establishment device, wherein the activated electronic funds transfer funding pathway is associated with a transfer limit imposed independent of the gaming establishment fund management system.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/616597 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. Both sets of claims are directed to systems and methods for funds transfers between gaming and financial systems. More particularly, both sets of claims encompass responsive to a wagering account transfer funding pathway being available, route the amount of funds from the financial institution account to a balance of a gaming establishment device along the wagering account transfer funding pathway, responsive to each of the wagering account transfer funding pathway and an electronic funds transfer funding pathway being available, route the amount of funds from the financial institution account to the balance of the gaming establishment device along the wagering account transfer funding pathway, and responsive to the wagering account transfer funding pathway being unavailable, route the amount of funds from the financial institution account to the balance of the gaming establishment device along the electronic funds transfer funding pathway.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 they are directed to non-statutory subject matter.
The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform 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 invention meets Step 1 because it encompasses systems. However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, “the systems and methods of the present disclosure enable a transfer of funds from an external account to a gaming establishment device in which a funding pathway is determined based on one or more attributes of a user associated with the external account.” Spec. ¶ 1.
Representative claim 1 recites the following (with emphasis):
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 of data associated with an approval of an amount of funds transferred from a financial institution account maintained, independent of any gaming establishment, in association with a financial institution, cause the processor to:
responsive to a determination that a user associated with the financial institution account is associated with a gaming establishment account maintained by a gaming establishment fund management system, activate a wagering account transfer funding pathway comprising:
causing a first transfer of the amount of funds to the gaming establishment account, and
causing a second transfer of the amount of funds from the gaming establishment account to a balance of a gaming establishment device, and
responsive to a determination that the user associated with the financial institution account is not associated with any gaming establishment accounts maintained by the gaming establishment fund management system, activate an electronic funds transfer funding pathway comprising causing, independent of any wagering account transfers associated with the gaming establishment device, a transfer of the amount of funds to the balance of the gaming establishment device.
The underlined portions of claim 1 generally encompass the abstract idea, with similar features in claims 10 and 12. Dependent claims 2-9, 11, and 13-20 further define the abstract idea (e.g., by defining business relationships, publishing data, using various funding instruments, charging fees, etc.) or are directed to implementation steps for the abstract idea (e.g., using an electronic gaming machine).
The claimed abstract idea may be viewed, for example, as:
a method of exchanging financial obligations (e.g., transfers between bank accounts and casino accounts) as discussed in Alice Corp. v. CLS Bank and Bilski v. Kappos;
a fundamental economic practice (e.g., transferring funds between accounts) as discussed in Alice Corp. v. CLS Bank; and/or
a method of organizing human activities (e.g., financial transactions between parties) as discussed in Bilski v. Kappos and Alice Corp. v. CLS Bank.
Under prong 1, the above analysis demonstrates that the claimed invention encompasses an abstract idea in the form of certain methods of organizing human activity. Under prong 2, and as discussed in further detail below, the instant claims do not integrate the abstract idea into a practical application because they merely provide instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea, add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. Here, the claimed invention is directed to the manner of transacting between a financial institution (e.g., bank) environment and a casino environment (e.g., slot machine), but there is no indication that the claims encompass an improvement in the underlying computer technology. Therefore, the claims are directed to the judicially recognized exception of an abstract idea.
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 per se amount(s) to no more than: a gaming establishment system, a processor, and memory device to carry out financial transactions such as between a financial institution and an electronic gaming machine. Such features are merely amount to an instruction to apply the abstract idea on generic, functional, and conventional components well-known in the art of wager gaming.
The specification and claims define the various financial management systems in generic and/or functional terms. The claims provide only generic computer components, such as a processor and memory to carry out such transactions, along with an indication that the gaming establishment device being a generic electronic gaming machine. The specification does not require any particular type of computer or gaming machine.
The claimed elements taken as a whole perform the same functions when taken individually. 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. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at 571-272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715