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
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/14/2026 has been entered.
Response to Amendment
3. Applicant has amended the claims to be understood that the databases do not have direct access to one another. Thus, the rejection under 35 USC § 112 is withdrawn.
4. Under 35 USC § 101, Applicant argues (Remarks 8-13 filed 7/14/2026) both that the present claims are abstract and in the alternative that there is a practical application due to an unconventional architecture. Examiner has tried to consolidate and incorporate several of Applicant’s positions while trying to make his own to maintain the rejection.
5. Applicant contends the audit system does not pertain to methods of organizing human activity as argued by Examiner. Without agreeing or disagreeing, Examiner has clarified the dual-abstract nature of the claims to be both mental processes as to the comparison of the databases and financial economic processes as to the merits of the content and steps of the claims which are fundamental economic practices.
6. Applicant argues that because the databases are architecturally inaccessible, the comparison cannot be a mental process as no human could view both datasets. Examiner disagrees as this position conflate the claimed steps. While the data is in separate databases, once data associated with the activation of the marker and the data associated with the transfer of the amount of funds associated with the transfer are available for comparison, the comparison can be performed mentally or with the help of pen and paper.
7. Applicant further argues the claims are not abstract because they are directed to an audit system that is a “specific technical solution to a technical problem” i.e., separate databases are subject to manufactured data or lost data due to software defects or insider attacks (Remarks 11) and by limiting accessibility of certain data by certain independently operating systems results in a particular technical configuration in system architecture (Remarks 10-11) – an architecture that is an unconventional arrangement (Remarks 12). Examiner disagrees. First, the claim is not specific as to what the “certain” data is beyond that it is “associated with the activation of the marker” and “associated with the transfer amount of funds”. Second, but for each database’s inaccessibility {independence} followed by a comparison and audit report, nothing in the claim suggests anything on par with the custom filters of Bascom; the automated lip synching with unique rule sets of McRO; or the self-referential tables of Enfish. Examiner contends that the claims are a recitation of financial features coupled with ordinary safeguards {rules} to preserve the integrity of financial data and economic activity. Examiner finds the claims recite features that are embedded in fundamental economic practice and that the claims contain no architecture that is a technological solution to a technical problem on par with Bascom, McRO, and Enfish. There are only conventional computer components accessing unspecified marker data in separate databases and auditing (comparing and reporting) the data representing policy improvements to a financial auditing activity but not a technical solution to a technological problem.
8. Examiner notes, The Patent Trial and Appeal Board (PTAB) has opined on and affirmed the rejection of similar financial claims of Applicants in 2024 (See Ex parte Kevin Higgins and Jeffrey Shepherd Appeal 2022-004307 March 28 2024). When opining on similar accounting claims ostensibly based on particular architectures to transfer funds between accounts, the PTAB stated “these features are embedded in the fundamental economic practice of transacting a purchased that can be funded by plural financial accounts” and “the use of well-known computer components to facilitate financial transactions does not render the claims any less abstract” (Id. At 10). Further to counter Appellant’s assertions of providing transparent access to financial accounts, the Board stated “Appellant does not, however, explain how its invention provides transparency. Insofar as the computer implementation affords this transparency, the use of well-known computer components to facilitate financial transaction does not render the claims any less abstract.” (Id.). Lastly, the Board did not find any advantage to the claims that a cashless gaming wallet and a cashless retail wallet can be associated with a common wallet where “This advantage, however, at most, is an improved aspect of the fundamental economic practice of transacting a purchased that can be funded by plural financial accounts.” (Id.).
9. Lastly, Applicant argues the prior art fails to teach or suggest the claimed inventions (Remarks 12). Examiner disagrees as this is not the test for eligibility under 35 USC § 101.
10. Applicant argues that Higgins nor U.S. Pat. No. 8,597,116 to Nguyen (incorporated by reference) does not include any component between the credit account database and the cashless wagering database or that neither Higgins nor Nguyen do not generate an audit report or the comparison of specifically claimed comparison of activation of a marker and a transfer amount of funds associated with the transfer of the marker. Examiner disagrees. Higgins discloses account (auditing services {reporting} Col. 3, ll. 18-23, where auditor software tracks all payments in, payments out, Col. 32, ll. 9-18; account reconciliation services {comparing} for transfers to and from network) all of which encompasses all movement of money from all negotiable instruments and accounts. In light of the amended claims Applicant is directed to U.S. Pat. No. 2010/0016068 to White for his consideration of audit and data migration functions separating independent databases.
Claim Rejections - 35 USC § 101
11. 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.
12. Claims 1-22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
13. Step 1
Claims 1-3, 5-14, and 16-22 are directed to an apparatus or method meeting the requirements for Step 1.
14. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 10 and 12), recites comparing data associated with access to separate databases which can be performed in the human mind and as such is an abstract mental process. Additionally, the claim as a whole is directed towards a marker audit system which is a financial operation which is an abstract fundamental economic practice. These two abstract ideas are merged, for the purpose of examination, into a single abstract fundamental economic practice. See MPEP 2106.04 and 2106.05(II).
15. Step 2A Prong II
The abstract idea is not integrated into a practical application. According to MPEP 2106, a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
Here, the processor, memory, and databases are recited at a high level of generality such that represent no more than mere instructions to apply the judicial exception on a computer. Applicant’s specification does not disclose that the processor, memory, set of instructions are directed to a technological solution to a technological problem that “overcome some sort of technical difficulty.” citing ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 768 (Fed. Cir. 2019).
According to Applicant’s specification:
Processor and memory:
“The at least one processor is any suitable processing device or set of processing devices, such as a microprocessor, a microcontroller-based platform, a suitable integrated circuit, or one or more application-specific integrated circuits (ASICs),” [0075]. Memory can be “[a]ny other suitable magnetic, optical, and/or semiconductor memory may operate in conjunction with the component of the system, the component of the gaming establishment system, and/or the gaming establishment device disclosed herein.” [0076].
Programming:
The program ma y be “[c]omputer program code for carrying out operations for aspects of the present disclosure may be written in any combination of one or more programming languages” [0080]. And databases are “[i]n certain embodiments, in association with the activation of an amount of funds via a marker, the system (e.g., the gaming establishment credit system) logs certain data associated with such an activation in one or more durable stores, such as one or more relational databases, to enable the subsequent accounting and/or auditing of such a transaction.” [0049, 0059].
Databases:
“It should be appreciated that in certain embodiments in which different databases are separately and distinctly maintained by different entities, the system provides the marker audit function service access to the various stores or provides a copy of the required data to the marker audit function service. For example, as seen in Fig. 1B, since the cashless wagering system maintains the cashless wagering account transaction store and the marker service maintains the marker transaction store, the system provides the marker audit function service access to each of these stores (or provides a copy of the required data from one or more of these stores) to enable the marker audit function service to perform various audit functions. In certain such embodiments, access to the data could be via an SQL Server linked database server that provides a communication path for one database querying the data of another database as if they are one instance of a database. In these embodiments, once the data is query-able, the marker audit function service can perform one or more audit functions against the data and cause one or more reports to be generated.” [0061]
Consequently, these devices and programming are viewed as nothing more than an
attempt to generally link the use of the judicial exception to the technological environment of a computer or as a means to automate the steps. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
What remains is the generation of an audit report which is extra-solution activity as a result of using the devices as tools.
Even when the limitations are viewed in combination, the additional elements in this claim do no more than automate the steps needed to be performed, using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Latric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality).
Accordingly, each claim, as a whole, does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. Thus, Claim 1, and similarly Claims 10 and 12, lack the eligibility requirements of Step 2 Prong II.
16. Step 2B
According to the 2019 PEG, in addition to the considerations discussed in Step 2A, an additional consideration indicative of an inventive concept (aka “significantly more”) is the addition of a specific limitation other than what is well-understood, routine, conventional activity in the field (MPEP 2106.05(d)). Conversely, an additional consideration not indicative of an inventive concept is simply appending well-understood, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea (MPEP 2106.05(d) and Berkheimer Memo, April 20, 2018). Thus, the additional elements evaluated under Step 2A are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field.
The extra-solution activity of generation of an audit report is deemed to be a form of performing repetitive calculations (MPEP 2106.05(d)(II)(ii)), electronic recordkeeping (MPEP 2106.05(d)(II)(iii), and presenting offers and gathering statistics (MPEP 2106.05(d)(II)(iii). Thus, Claims 1, 10, and 12 are ineligible.
17. Dependent Claims
Claims 2-3, 5-6 and 13-14, and 16-17 recite particulars of the financial system databases and data content of a marker transaction store, account store, user accounts, identification of the user, devices. Claims 7-9, 11, and 18-22 recite additional extra-solution details of the comparisons and discrepancies of the audit report. None of the claims supply a practical application or inventive concept sufficient to transform the abstract nature of the claim into a patent-eligible application. Claims 2-3, 5-9, 11, 13-14, and 16-22 are ineligible.
Claim Rejections - 35 USC § 112
18. 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.
19. Claims 21 and 22 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. The claim is indefinite because it is directed towards a drawing a legal conclusion of potential embezzlement. In particular, it is unknown where to draw the line in the data to suspect a theft let alone embezzlement. Further, potential embezzlement suggests there is a form of theft involving someone who has legal access to funds and misappropriates the funds for personal gain. Must the data suggest personal gain as well? What if it isn’t? If the data suggests a discrepancy when does it turn into potential embezzlement versus an accounting error? On the flip side, if the data is “associated with potential embezzlement” then isn’t every discrepancy potential embezzlement? There are just too many unknowns to draw a conclusion of potential embezzlement. To advance prosecution, the claim limitation is construed as identifying discrepancies.
Claim Rejections - 35 USC § 103
20. 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.
21. 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.
22. 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.
23. Claim 1-3, 5-7, 10, 12-14, 16-18, and 21-22 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. No. 2010/0016068 to White.
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 cashless wagering account maintained by a server of a gaming establishment cashless wagering system (Fig. 1B 150 with transfer completed 160, cashless wagering system [0012, 0020, 0021, 0024, 0035, 0057, 0059, 0066-0067, 0082, 0088-0100, 0104-0111]), cause the processor to:
access, from a first database, maintained in associated with the gaming establishment credit system, 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 separate from of the first database, and in association with the gaming establishment cashless wagering system, 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 cashless wagering 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 Nguyen.
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 cashless wagering account (Examiner construes “associated with” reasonably broadly such that any data such as the name on the marker or cashless gaming account or a status, or an address or an amount of the liability or credit or payments are all “associated with” the respective accounts. Higgins provides 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 citing Nguyen, 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, citing Nguyen.
Higgins discloses the invention substantially as claimed to include tracking activity for marker activations from a credit system and money transfers associated with the activated marker in a cashless gaming system and then comparing and auditing the data. However, the reference does not disclose that each database is inaccessible by the other. Examiner construes these limitations as a processor having access to the “associated” data where the credit system and cashless system are not in direct communication. One of skill in the art would be aware of the security and auditing measures of White.
According to White, Fig. 1 teaches that separate databases 106a through 106e are not in direct communication and further that for auditing purposes there is an intermediary Expense Accounting 102 controlling auditing 110 and reporting 114 assisted by a Migration 104 capability. This architecture “saves time and human resources by automating the balancing and auditing of casino financial activity; improves accuracy of casino financial activity by minimizing human involvement; consolidates data from multiple casino area management systems” [0155].
“The Migration Service module 104 may be used to extract data from the area systems 106 and normalize the data in an Auditing database 110. Data may be archived in an Archive database 112, and reports may generated and stored in a Reports database 114. The migration service module 104 may be available to transition data from a variety of originating systems into a single accounting system. This may allow a gaming operation to have multiple sources, such as a Bingo or Table Game systems, yet perform auditing, accounting and performance analysis through a common interface. Additionally, for multi-site gaming groups, a single source may be available for consolidated operations.” [0157]. “By example, the following types of data may be sent from the data extraction service to the Enterprise Accounting module 102: Site configuration data; Asset configuration data; Raw meter data; Event data; Voucher data; Progressive data; System Status data; Cash Data; Jackpot Data; Electronic Transfer Data; and Cashier Data.” [0158]. Additionally, security is enhanced with a firewall 204 ([0161, 0164]) but will allow communication with external accounts 222. [0163] and cashier operations [0245, 0246] See also data extraction [0192, 0198].
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way; and
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Here, it would require only routine skill in the art to implement safeguards such as the separation of databases, data extraction, consolidation into a single accounting system for the auditing and reporting of White into the system of Higgins to achieve the predictable result of improving the security and accuracy of casino accounting. The Courts have held that the use of a known technique to improve similar devices (methods, or products) in the same way to be indicia of obviousness.
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 citing Nguyen.
In Reference to Claim 10
See the rejection of Claims 1, 2, and 3.
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 citing Nguyen).
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 Nguyen 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 citing Nguyen.
In Reference to Claims 21 and 22
Nguyen discloses data that suggests stolen cash or loss of revenue (Col. 8, ll. 30-39).
24. Claims 8-9, 11, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Higgins, White further 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].
No Double Patenting with Co-pending Application 18/624,883
25. Examiner determines that there is no double patenting with co-pending application 18/624,883 at this time because the instant claims are directed to a distinct species.
Conclusion
26. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
27. 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.
28. 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.
29. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached on (571) 270-1344. 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
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