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 .
Response to Amendment
Applicant has amended the claims and argues the claimed processes as amended are not mental processes but recite proper accounting of fund data associated with independently operating systems (Remarks pages 7-10 filed 3/36/2026). Examiner disagrees as the manner in which the data is accessed, though being stored electronically, is not defined, and as such visual inspection of data printed out or displayed on a computer screen involve mental processes. Applicant further argues that the claims concern the activation of a market and the transfer of funds for accounting purposes. Examiner disagrees that this changes the abstact nature of the claims where the claims, according to Applicant, still involve operations for proper accounting of transfers of funds which are compared and result in an audit report which in abstract moving of money, abstract comparing, which are a combination of mental steps and financial matters which is a certain manner of organizing human activity, followed by extra-solution generation of an audit report.
Applicant has amended the claims to recite first and second databases which are independently maintained (Remarks page 10-11). Higgins has a plurality of databases and because it is unknown what independently maintained means, the issue is documented below under 35 USC § 112.
Applicant further argues that Higgins nor U.S. Pat. No. 8,597,116 incorporated by reference does not include comparison of data associated with activation of a marker and data associated with a transfer of an amount of funds transferred with the activated marker nor to generation of any audit reports based on the comparison Remarks page 11). Examiner disagrees because Higgins discloses account (auditing services Col. 3, ll. 18-23, where auditor software tracks all payments in, payments out, Col. 32, ll. 9-18; account reconciliation services for transfers to and from network) all of which encompasses all movement of money. Applicant provides a spurious allegation that Examiner has indicated that Higgins lacks specific audit functionality (Remarks page 11). Examiner disagrees. Higgins explicitly incorporates by reference U.S. Pat. No. 8,597,116 disclosing audit practices which is an indication that Higgins in fact includes specific audit functionality.
Claim Rejections - 35 USC § 101
5. 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.
6. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
7. Step 1
Claims 1-11 are directed to an apparatus/system meeting the requirements for Step 1.
Claims 12-20 are directed to a method meeting the requirements for Step 1.
8. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 10 and 12), a marker can be activated manually as part of a credit system followed by metal steps of accessing data from a first database, second database, comparing the data, and issuing an audit report. These steps comprise several abstract mental processes as well as certain methods of organizing human activity (See response to arguments).
9. Step 2A Prong II
The recited claims fail to recite any elements that provide a practical application. The processor, memory, and gaming establishment account are recited at a high level of generality such that meaningless limitations are imposed on the abstract ideas. See Applicant spec. [0078, 0081] and servers in communication with banks and other financial institutions [0013].
10. Step 2B
Claim 1 does not recite extra-solution activity. Thus, Claims 1, 10, and 12 are ineligible.
11. Dependent Claims
Claims 2-9, 11, and 13-20 recite generic databases, account types, characteristics of the data associated with accounts and transfers, repayment of the marker which can be performed manually, and details about the audit report and requests. Claims 2-9, 11, and 13-20 do not supply a practical application or inventive concept sufficient to transform the abstract nature of the claim into a patent-eligible application. Claims 2-9, 11, and 13-20 are ineligible.
Claim Rejections - 35 USC § 112
12. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
13. Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Applicant has amended the claims to recite first and second databases, the latter being independently maintained but it is unknown what independently maintained means. Are they physically separate or integrated? Are they each repaired or serviced or not? Are the databases remote from one another? It remains unknown what is meant by independently maintained. To advance prosecution, the claims access a first database and a second database. Appropriate attention is required.
Claim Rejections - 35 USC § 102
14. 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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.
15. Claims 1-7, 10 and 12-18 are rejected under 35 U.S.C. § 102 (a1)(a2) as being anticipated by U.S. Pat. Pub. No. 2019/0043307 to Higgins.
In Reference to Claims 1 and 12
Higgins discloses a system and method, comprising:
a processor ([0185]; and
a memory device that stores a plurality of instructions that, when executed by the processor ([0185]) following an activation of a marker from a gaming establishment credit system (Fig. 1B 152 to 156) and a transfer of an amount of funds associated with the activated marker to a gaming establishment account maintained by a component of a gaming establishment fund management system (Fig. 1 B 150 with transfer completed 160), cause the processor to:
access, from a first database, data electronically stored in the first database and associated with the activation of the marker from a first database (Fig. 1B 158 account, credit system 104 to establish in the fund management system account via one or more lines of credit [0017], see also credit account database [0038]),
access, from a second database maintained independent of the first database, data electronically stored in the second database and associated with the transfer of the amount of funds associated with the activated marker to the gaming establishment account (transferring funds from player accounts maintained at banks and other financial institutions [0019], to one or more other accounts [0030], for example player database [0237], see also server or storage device of the game provider….if these data need to be accessed (e.g., if there is an audit of the player's gaming activities, Col. 44, ll. 51-56, citing U.S. Pat. No. 8,597,116 incorporated by reference.)
compare the data associated with the activation of the marker and the data associated with the transfer of the amount of funds associated with the activated marker to the gaming establishment account (auditing services Col. 3, ll. 18-23, where auditor software tracks all payments in, payments out, Col. 32, ll. 9-18; account reconciliation services for transfers to and from network devices of financial institutions Col. 33, LL. 15-24, ‘116 patent incorporated by reference), and
generate an audit report based on the comparison (accounting servers 270 [0163, 0237], see game provider 805 may also provide account reconciliation services, periodic reports or gaming wins and losses, etc., in connection with financial institution 885 Col. 33, ll. 20-24, ‘116 patent incorporated by reference).
In Reference to Claims 2 and 13
Higgins discloses wherein the first database comprises a marker transaction store ((Fig. 1B 158 account, credit system 104 to establish in the fund management system account via one or more lines of credits [0017], see also credit account database [0038]).
In Reference to Claims 3 and 14
Higgins discloses wherein the second database comprises a {distinct} gaming establishment account transaction store (accounting and gaming information includes player database [0237], see also server or storage device of the game provider….if these data need to be accessed (e.g., if there is an audit of the player's gaming activities, Col. 44, ll. 51-56, citing U.S. Pat. No. 8,597,116 incorporated by reference.).
In Reference to Claim 10
See the rejection of Claims 1, 2, and 3.
In Reference to Claims 4 and 15
Higgins discloses wherein the gaming establishment account comprises a cashless wagering account ([0020, 0021, 0022]).
In Reference to Claims 5-7 and 16-18
Examiner deems the data content and associations are non-functional descriptive matter
as the data gathered is not claimed to affect any subsequent operation of the claim one way or the other whether the data discusses transfers, repayment, or identifies discrepancies. Nonetheless, Higgins further discloses as to claims 5-7 and 16-18 below:
In Reference to Claims 5 and 16
Higgins discloses wherein the data associated with the activation of the marker comprises data associated with an identified user over a period of time and the gaming establishment account is associated with the identified user (credit system to issue the player a line of credit or marker in association with the player's gaming establishment fund management account. [0029], personal identification number [0166] over a period of time (audit functions logs information for tax requirements under IRS Pub. 529 to include the gaming establishment, host device by number and date Col. 32, ll. 9-18 see ‘116 patent incorporated by reference).
In Reference to Claims 6-7 and 17-18
Higgins discloses data associated with a particular gaming device (audit functions logs information for tax requirements under IRS Pub. 529 to include the gaming establishment, host device by number and date Col. 32, ll. 9-18 see ‘116 patent incorporated by reference) and data associated with transfers and repayments (as part of the audit function the system captures transfers and repayments (payments in, payments out) for tax requirements under IRS Pub. 529 (Col. 32, ll. 9-18 see ‘116 patent incorporated by reference).
Claim Rejections - 35 USC § 103
16. 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.
17. 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.
18. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
19. Claims 8-9, 11, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. No. 2019/0043307 to Higgins in view of U.S. Pat. Pub. No. 2008/0242403 to Weiss.
In Reference to Claims 8, 11, and 19
Examiner deems the content of an audit report as non-functional descriptive matter as the contents of the audit report is not claimed to affect any subsequent operation of the claim one way or the other whether the content discusses discrepancies of not.
Nonetheless, Higgins discloses the invention substantially as claimed. However, the reference does not explicitly disclose an audit report that comprises any discrepancies. One of skill in the art would be aware of the cashless gaming system and markers of Weiss.
According to Weiss, markers dates, numbers, amounts, deposits and authorizations are tracked ([0121-0128]) and monitors if a player account “is in good standing and has no problems” ([0199]) where there, for example, may be a suspended account because of problems associated with the account such as non-payment of markers ([0200], Marker payment [0255-0270]).
It would require only routine skill in the art to modify audit report of Higgins with the discrepancies identified by Weiss to achieve the predictable result of taking the appropriate action when a player account is not in good standing and has problems. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
In Reference to Claims 9 and 20
Weiss also teaches accountability reports can be request by activation of a reports button by an operator at a workstation computer 42, and more broadly of additional reports functions, to include a list of various reports to include returned item listing of markers and checks [0277].
Conclusion
20. THIS ACTION IS MADE FINAL. 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 extension fee 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.
21. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul A. D’Agostino whose telephone number is (571) 270-1992.
22. 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.
23. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached on (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-270-2992.
/PAUL A D'AGOSTINO/Primary Examiner, Art Unit 3715
Prosecution Insights