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 .
Response to Amendment
This is in response to the amendments/arguments filed on 4/14/26. Claims 1, 9, 12, 13, 15, and 18 have been amended and claims 10, 11, 16, and 17 have been cancelled, and claims 21 – 24 have been added. Claims 1 – 9, 12 – 15, and 18 – 24 are now pending in the current application.
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 – 9, 12 – 15, and 18 – 24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1: It must be determined whether the invention falls in one of the four statutory categories of invention. Claims 1 – 8 are directed towards a method, (process), and claims 9, 12 – 15 and 18 – 24 are directed towards a machine and system, (machine),which are a statutory categories of invention.
Step 2a:
Prong 1: It must be determined whether the invention is directed to judicially recognized exception. Claim 1 is analyzed below with limitations indicating recitations of an abstract idea.
A method for operating an Automated Teller Machine (ATM), the method comprising: initiating, by a processor of the ATM, a withdrawal transaction with a user of the ATM, wherein the withdrawal transaction is associated with a fee having a pre-defined value; receiving, by the processor of the ATM, through an input device, information related to an identity of the user; identifying, by the processor of the ATM, the user based on the received information related to the identity of the user; verifying, by the processor of the ATM, an age of the user based on identifying the user ;in response to verifying the age of the user, providing, by the processor of the ATM, to the user, through a display device of the ATM, a prompt indicating an option to execute an electronic game on the ATM; determining, by the processor of the ATM, whether the user has accepted the option to execute the electronic game on the ATM; in response to determining the user has accepted the option to execute the electronic game on the ATM, initiating, by the processor of the ATM, execution of the electronic game on the ATM; determining, by the processor of the ATM, a result of execution of the electronic game on the ATM; and in response to determining the result of execution of the electronic game on the ATM is a win result, adjusting, by the processor of the ATM, the pre-defined value of the fee associated with the withdrawal transaction.
The abstract idea is defined by the underlined portions exemplary claim 1, with substantially similar features found in claims 9 and 15. Dependent claims 2 – 8, 12 – 14, and 18 - 24, further define the abstract idea or relate to the implementation of the abstract idea. The abstract idea is defined in at least the following grouping below:
Certain methods of organizing human activity (fundamental economic practice)
Mental processes (observation, evaluation, judgment)
The claims are directed towards an abstract idea of a fundamental economic practice which falls into the category of organizing human activity, (See MPEP 2106/04(a)(2)(II)(C)). More specifically, the claimed invention recites an ATM machine wherein a use may initiate a withdrawal transaction for a fee, wherein after verifying the age of the user, the ATM machine provides the user an option to play a wagering game on the ATM machine, wherein the transaction fee may be adjusting if the wagering gaming outcome is a winning outcome. Controlling a system that gives a user an option to participate in a wagering game, wherein a player may win an award represents a fundamental economic practice, wherein such transactions are akin to the sort of organizing human activities, (e.g. risk hedging), discussed in Bilski and Alice, (See Bilski V. Kappos, 561 U.S. 593 (2010) and Alice Corp. V. CLS Bank). Furthermore, the claims are drawn to how a game is played, which represents following rules/instructions that define how the game is conducted.
The claims are also directed towards a series of steps which can practically be performed by one or more human, which fall into the category of mental processes, (See MPEP 2106.04(a)(2)(III)). More specifically, the claimed invention recites an ATM machine wherein after a user makes withdrawal transaction for a fee and after verifying the age of the user, the ATM machine provides the user an option to play a wagering game on the ATM machine, wherein after initiation of the wagering game, the ATM machine determines a result of the game, and based on said result, the ATM machine will adjust the fee that was associated with the withdrawal transaction. The claims recite instructions for controlling an ATM machine with these features. Here, a human can observe that a gaming option was offered after age verification, and observe that a wagering game has been initiated after choosing the option to participate. A human can then make a determination of a next step to make based on the state of the wagering game. Therefore, since the claimed invention can practically be performed in the human mind, it represents an ineligible abstract mental process.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
The claims recite a generic processor and display along with instructions that allows a user to make ATM transactions and also generates and presents a game to a user and determine the result of plays of the game, which is viewed as no more than instructions to implement a judicial exception.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2b: It must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception.
The claim language does recite a processor and display elements, however, viewed as a whole, these additional elements are indistinguishable from conventional computing elements known in the art, (See 9,076,299 regarding an offer/acceptance game scheme as known in the art ). Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Viewing the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 – 9, 12 – 15, and 18 – 24 are rejected under 35 U.S.C. 103 as being unpatentable over White (U.S. 2008/0191006) in view of LeMay et al. (U.S. 2003/0176213).
Regarding claims 1, 9, and 15, White discloses a method for operating an ATM, (“The ATM may include a user interface, a communication interface connected to an ATM network, and a processor. The user interface may be adapted to receive account information from an ATM card, receive input from the user, and present information to the user”, par. 0004), the method comprising, initiating, by a processor of the ATM, (“The processor may include instructions to receive account information from an ATM card associated with a user”, par. 0005), a withdrawal transaction with a user of the ATM, (“the financial transaction may be a withdrawal request”, par. 0029), wherein the withdrawal transaction is associated with a fee having a pre-defined value, (“ATM operators or ATM network operators may charge fees”, par. 0046), receiving, by the processor of the ATM, through an input device, information related to an identity of the user, (“Keypad 306 may be used to receive input from the customer, such as a personal identification number (PIN) associated with the customer's financial account”, par. 0028, wherein the Examiner views the system receiving input from a customer such as a PIN number, as being equivalent to receiving information related to an identity of the user). White further discloses identifying, by the processor of the ATM, the user based on the received information related to the identity of user, (“The user is authenticated 410. Authentication may require input from the user and/or communication through the ATM network 108 to a financial institution”, par. 0032, wherein the Examiner views the system authenticating the user as being equivalent to identifying the user). White further discloses verifying, by the processor of the ATM, an age of the user based on identifying the user, (“Any gambling used on the ATM must meet the requirements of federal, state and/or local laws or the appropriate foreign law depending on the jurisdiction within which the ATM is located”, par. 0033, wherein the Examiner views White’s teaching of any gambling used to ATM meeting state and federal laws as being equivalent to verifying the age of the user). White further discloses, in response to verifying the age of the user, providing, to the user, through a display device of the ATM, (fig. 3, part 304), a prompt indicating an option to execute an electronic game on the ATM, (“Upon completion of the transaction 415, the user is asked if they wish to play a game”, par. 0032), determining whether the user has accepted the option to execute the electronic game on the ATM, (“if the user accepts, the user is asked to make a wager”, par. 0032), in response to determining the user has accepted the option to execute the electronic game on the ATM, initiating execution of the electronic game on the ATM, (“Once the wager is received 435, the system confirms that the funds wagered are available 440. The game is then played”, par. 0034), determining a result of execution of the electronic game on the ATM, (“If the user loses 450, funds in the amount of the wager are removed from the user's account 455. If the user wins 450, funds in the amount of the wager are placed in the user's account”, par. 0034), and in response to determining the result of execution of the electronic game on the ATM is a win result, adjusting, the pre-defined value of the fee associated with the withdrawal transaction, (“In one embodiment, if the user wins, the ATM may waive a transaction fee or provide a nominal compensation”, par. 0047).
White, however, is silent on disclosing tracking activity of a user and disclosing a wireless communication interface. In a related art, LeMay discloses a method for operating an ATM machine, (“the virtual gaming peripheral process may be a virtual ATM process that uses at least a key pad, a card reader, a display screen and a touch screen to provide ATM services”, par. 0017), wherein a player may participate in playing a game, (“In addition, the virtual gaming peripheral process may be a virtual lottery machine process that uses at least a touch screen, a display screen and a ticket printer to provide a lottery ticket purchase”, par. 0017), wherein LeMay further discloses tracking the activity of a user, (“the first virtual gaming peripheral process may be a virtual player tracking unit process that uses at least a card reader, a display screen and a key pad to provide a player tracking service”, par. 0016), and a wireless communication interface that allows communication with a mobile device of a user, (“The remote gaming device may be connected to the host computer via a network of some type such as a local area network, a wide area network, an intranet or the Internet. The remote gaming device may be a portable gaming device such as but not limited to a cell phone, a personal digital assistant, and a wireless game player”, par. 0051).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the player tracking and wireless communications of LeMay into the art disclosed by White in order for a gaming system to recognize player tier levels instantly to offer promotions, (player tracking), which provide extra perks to returning players and to enable instant over the air services and updates for greater convenience for players.
Regarding claim 2, White discloses wherein the electronic game comprises a game of chance, (“present the user with a game of chance”, par. 0005).
Regarding claim 3, White discloses wherein the electronic game comprises a skills-based game, (“The user may place the wager on any type of legal gambling. For example, an electronic card game may be played where the user bets on the outcome of a hand of blackjack or poker”, par. 0033, wherein the Examiner views poker and blackjack as skills-based games).
Regarding claims 4 – 8 and 20, White discloses wherein adjusting the pre-defined value of the fee associated with the withdrawal transaction comprises decrementing the pre-defined value of the fee associated with the withdrawal transaction, (“if the user wins, the ATM may waive a transaction fee or provide a nominal compensation”, par. 0047).
Regarding claim 12, White discloses wherein providing the prompt indicating the option to execute the electronic game on the ATM is performed based on a number of times the user has accepted the option to execute the electronic game on the ATM in a predefined period of time, (“Upon completion of the transaction 415, the user is asked if they wish to play a game”, par. 0032, wherein the Examiner views the player being prompted to play a game after the completion of a financial transaction as being equivalent to providing the prompt to play after a predefined period of time).
Regarding claim 13, White wherein providing the prompt indicating the option to execute the electronic game on the ATM is performed based on a number of losing results in the electronic game in a predefined period of time, (“If the user loses 450, funds in the amount of the wager are removed from the user's account 455. If the user wins 450, funds in the amount of the wager are placed in the user's account 460. After playing, the user is asked if they wish to play again 470. If they wish to play again, the system starts over by asking the user to make a wager”, par. 0034, wherein the Examiner if the user loses and being asked to play again as being equivalent to the prompt indicating the option to play the game based on a losing result).
Regarding claims 14 and 18, White discloses a wireless communications interface, wherein the instructions further cause the processor to communicate with a mobile device of the user through the wireless communications interface, and wherein providing the prompt indicating the option to execute the electronic game on the ATM is performed based on information received from the mobile device, (“The term "machine-readable medium" includes, but is not limited to portable or fixed storage devices, optical storage devices, wireless channels”, par. 0057).
Regarding claim 19, White discloses wherein the electronic game comprises a game played between a plurality of players, (“The game of chance may be a lottery and the processor includes instructions to enter the user into a lottery”, par. 0005).
Regarding claim 21, White, as cited above, discloses a prompt that is provided to a user, but is silent on disclosing wireless communications, however, this is disclosed by LeMay, (“The remote gaming device may be connected to the host computer via a network of some type such as a local area network, a wide area network, an intranet or the Internet. The remote gaming device may be a portable gaming device such as but not limited to a cell phone, a personal digital assistant, and a wireless game player”, par. 0051), wherein this is viewed in combination with White, as meeting the claim limitation of the prompt being provided to the user through a mobile device.
Regarding claim 22, White discloses wherein the prompt is provided through the display device, (fig. 8a, part 840).
Regarding claim 23, White discloses wherein the electronic game is executed on the system, (fig. 9e and fig. 9f).
Regarding claim 24, White discloses wherein an indication of a result of the electronic game is provided, (fig. 9f), however, as stated above, White is silent through the mobile device of the user disclosing wireless communications, however, this is disclosed by LeMay, (“The remote gaming device may be connected to the host computer via a network of some type such as a local area network, a wide area network, an intranet or the Internet. The remote gaming device may be a portable gaming device such as but not limited to a cell phone, a personal digital assistant, and a wireless game player”, par. 0051), wherein this is viewed in combination with White, as meeting the claim limitation of indication a result of the game is provided through a mobile device.
Response to Arguments
Applicant's arguments filed 4/14/26 have been fully considered but they are not persuasive. Regarding the 101 rejection of claims 1 – 9, 12 – 15, and 18 – 24, Applicants state the previous office action “seems to indicate that claim 9 must include significantly more than the alleged abstract idea”, and regarding the remaining claims, since independent claims 1 and 15 include essentially the same recitations of claim 9, the other independent and their respective dependents must also include significantly more than the alleged abstract idea. The Examiner respectfully disagrees. In response to this, the Examiner does admit that omitting claim 9 from the 101 rejection in the previous office was done in error, and that error has now been corrected in this current office action, wherein all pending claims, 1 – 9, 12 – 15, and 18 – 24, are now properly rejected under 35 USC § 101 for reasons stated above.
Regarding the 102 rejection, Applicants argue that “White does not disclose, expressly or inherently, receiving information related to an identity of the user, verifying an age of the user based on identifying the user, and in response to verifying the age of the user, providing a prompt indicating an option to execute an electronic game on the ATM as recited in independent claim 1”. The Examiner respectfully disagrees. As disclosed above, (“Keypad 306 may be used to receive input from the customer, such as a personal identification number (PIN) associated with the customer's financial account”, par. 0028), wherein the Examiner views the system receiving input from a customer such as a PIN number, as being equivalent to receiving information related to an identity of the user. White further discloses identifying, by the processor of the ATM, the user based on the received information related to the identity of user, (“The user is authenticated 410. Authentication may require input from the user and/or communication through the ATM network 108 to a financial institution”, par. 0032), wherein the Examiner views the system authenticating the user as being equivalent to identifying the user. White further discloses verifying, by the processor of the ATM, an age of the user based on identifying the user, (“Any gambling used on the ATM must meet the requirements of federal, state and/or local laws or the appropriate foreign law depending on the jurisdiction within which the ATM is located”, par. 0033), wherein the Examiner views the system meeting federal and state gambling laws as being equivalent to verifying age, wherein it is known that verifying age is a mandatory first step in following gambling laws. Therefore, the Examiner maintains that White discloses at least this claim limitation.
Applicants further argue that White is silent on disclosing player tracking and communicating with a mobile device, the Examiner agrees with this, however, these limitations are taught by secondary reference LeMay cited above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC M THOMAS whose telephone number is (571)272-1699. The examiner can normally be reached 9:00am - 5:00pm.
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.
/E.M.T/ Examiner, Art Unit 3715
/JUSTIN L MYHR/ Primary Examiner, Art Unit 3715
Prosecution Insights