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
The examiner acknowledges applicant’s arguments in the Response dated November 24, 2025 directed to the Non-Final Office Action dated August 28, 205. Claims 1-9 and 14-20 are pending in the application and subject to examination as part of this office action.
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 and 14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The determination of subject matter eligibility under 35 USC 101, relies on the Mayo/Alice two-step analysis.
In step 1 of the analysis, the claims are evaluated to determine whether they fall within one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter). In the present case, claims 1-9 are directed to a lottery gaming system (i.e., a machine) and claim 14-20 is directed to a method (i.e., a process). The claims are, therefore directed to one of the four statutory categories.
Under prong 1 of step 2A, the examiner is directed to determine whether the claim recites a judicial exception. The claims are compared to groupings of subject matter that have been found by courts as abstract ideas. These groupings include
(a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Claim 1 recites (the abstract idea is underlined) a lottery gaming system for printing a plurality of different lottery tickets in a plurality of different geographic areas, the lottery gaming system comprising:
a lottery server comprising a lottery server processor and a lottery server storage device;
a plurality of lottery ticket printers, each lottery ticket printer in one of the different geographic areas;
a plurality of lottery terminals in communication via a data network with the lottery server and in communication with the plurality of lottery ticket printers, each lottery terminal in one of the different geographic areas, each lottery terminal comprising:
a lottery terminal processor; and
a lottery terminal memory device that stores a plurality of instructions, that when executed by the lottery terminal processor, cause the lottery terminal processor to:
for a play of a lottery game, for one of the plurality of different lottery tickets:
determine one of a plurality of different geographic areas to be a selected geographic area for the lottery ticket, the selected geographic area comprising one of the plurality of different geographic areas that is predicted to be the geographic area where a winning lottery ticket for the play of the lottery game is purchased, wherein the selected geographic area is the geographic area where the lottery ticket is purchased or any one of the other different geographic areas,
generate the lottery ticket comprising an indication of the selected geographic area,
send data to the lottery server to enable the lottery server to store data associated with the lottery ticket,
cause the lottery ticket printer in the geographic area in which the lottery ticket is purchased to print the lottery ticket on lottery ticket paper, and
cause the printed lottery ticket to be provided to a player, the lottery ticket comprising a selected geographic area portion comprising the indication of the selected geographic area for the play of the lottery game; and
wherein the lottery server processor, after a draw time for the play of the lottery game at which a quantity of winning draw symbols that are randomly drawn by the lottery server and selected for the play of the lottery game by the lottery server, determine one of a plurality of different awards for the play of the lottery game based on a quantity of one of the geographic areas being the selected geographic area.
Claim 14 recites (the abstract idea is underlined) a method for operating a lottery gaming system for printing a plurality of different lottery tickets in a plurality of different geographic areas, the lottery gaming system comprising a lottery server and a plurality of lottery terminals in the different geographic areas and a plurality of lottery ticket printers in the different geographic areas, each of the geographic areas including one of the plurality of lottery terminals and one of the plurality of lottery ticket printers, said method comprising:
for a play of a lottery game, for each of the plurality of different lottery tickets:
determining one of a plurality of different geographic areas as a selected geographic area for said the lottery ticket, the selected geographic area comprising any one of the plurality of different geographic areas that is predicted to be the geographic area where a winning lottery ticket is purchased, wherein the selected geographic area is the geographic area where the lottery ticket is purchased or any one of the other different geographic areas,
generating the lottery ticket comprising an indication of the selected geographic area,
storing data associated with the lottery ticket,
printing on lottery ticket paper the lottery ticket via the lottery ticket printer in the geographic area in which the lottery ticket is purchased, and
causing the printed lottery ticket to be provided to a player, the lottery ticket comprising a selected geographic area portion comprising the indication of the selected geographic area for the play of the lottery game; and
after a draw time for the play of the lottery game, randomly determining, via the lottery server, a quantity of winning drawn symbols that are for the play of the lottery game, determining one of a plurality of different awards for the play of the lottery game, the award being based on a quantity of one of the geographic areas being the selected geographic area.
Claims 1-9 and 14-20 are directed to a method for operating a lottery gaming system. These steps fall under the category of certain methods of organizing human activity. Specifically, they are directed to the sub-category of fundamental economic practices and principles because the claims are directed to rules for conducting a wagering game. Games of chance are highly regulated in jurisdictions by regulatory bodies, thereby falling into the sub-category of commercial or legal interactions. Additionally, claims 1-9 and 14-20 fall into the sub-category of managing personal behavior or relationships or interactions between people because the claims recite rules for conducting a game of chance. Claims 1-9 and 14-20 also fall into the category of mental processes because the determining steps can be performed in the human mind, or by a human using a pen and paper. Therefore, claims 1-9 and 14-20 recite an abstract idea.
Under prong 2 of Step 2A, the examiner considers whether additional elements integrate the abstract idea into a practical application. To do so, the examiner looks to the following exemplary considerations, looking at the elements individually and in combination:
• an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
• an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (not considered relevant to the present claims);
• an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
• an additional element effects a transformation or reduction of a particular article to a different state or thing; and
• an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
The additional elements in the present claims are a lottery server, a lottery server processor, a lottery server storage device, lottery ticket printers, lottery terminals comprising a lottery terminal processor and a lottery terminal memory device, a data network, a plurality of lotter tickets, lottery ticket paper, and a display device. The additional elements do no integrate the judicial exception into a practical application. In particular, the additional elements do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. The additional elements do not implement a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim. The additional elements do not effect a transformation or reduction of a particular article to a different state or thing. The additional elements do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they does not impose any meaningful limits on practicing the abstract idea.
Under step 2B, the examiner evaluates whether the additional elements amount to significantly more than the judicial exception itself. The examiner considers if the additional elements:
• add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The present claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements (a processor, a memory device, and a plurality of lotter tickets) are well-understood, routine, or conventional:
a lottery server, a lottery server processor, a lottery server storage device (Smith, US 2009/0138401 A1, a server is well known in the art and ordinarily comprises a processor, area main memory, hard disk memory and a power source [0035]);
a data network (Stockham et al., US 7,785,183 B1, it is also well-known that multiple gaming devices may be linked via a central computer or server to create a wide area gaming network [C2:66-C3:3]);
lottery ticket printers (Gray et al., US 2004/0229677 A1, point of sale terminal is capable of printing gaming tickets upon a player's request; point of sale terminal may include equipment and programming as is well known in the art, including a keyboard for entering wager requests, a screen or display for displaying wagering requests and gaming information, a microprocessor for processing wager requests and gaming information, a printer for printing gaming information on gaming tickets, and a modem or other communications device for communicating digitally or otherwise with central gaming processor 120 to transmit wagering requests and wagering information and to receive wager verification information [0012]);
lottery terminals comprising a lottery terminal processor and a lottery terminal memory device (Inoshita et al., US 4,558,412, terminal systems having a central processor (CPU), a memory subsystem and a number of peripherals are well-known [C1:27-37]);
a display device (Tedesco et al., US 2008/0248865 A1, for gaming devices, common output devices include a cathode ray tube (CRT) monitor on a video poker machine, a bell on a gaming device (e.g., rings when a player wins), an LED display of a player's credit balance on a gaming device, an LCD display of a personal digital assistant (PDA) for displaying keno numbers [0120]); and
a plurality of lotter tickets, lottery ticket paper (Lavoie et al., US 2016/0339734 A1, lottery tickets are well known and widely sold and typically comprise a sheet material of paper or card stock on which is printed lottery information and various indicia for the playing of one or more games [0004]).
Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
As a result, claims 1-9 and 14-20 are not directed to patent eligible subject matter.
Prior Art or Record
There are currently no prior art rejections against claims 1-9 and 14-20.
The closest prior art of record includes: Jones, US 2018/0330571 A1 (hereinafter Jones); Frick et al., US 2011/0195769 A1 (hereinafter Frick 769); Frick et al., US 2012/0299241 A1 (hereinafter Frick 241).
Jones discloses a geographically based lottery game is described where prizes are allocated based on the geographic location or residence of the lottery player (Jones [Abstract]). The lottery terminal determines the player's residence and sets parameters for the lottery ticket, such as the count of symbols to be picked and the range of the symbols (Jones [Abstract]). Prizes are then awarded within the geographic area (Jones [Abstract]). Jones displays a sample screen shot of a game setup (Jones [0018] and [Fig. 5]). Jones makes clear that while the lottery system can determine a geographic location of a player (e.g., where player resides or purchases the lottery ticket, and while Jones uses the geographic location of the player to determine certain lottery game parameters, Jones is silent as to, at least, using the determined geographic location as a prediction of where a winning lottery ticket will be purchased. Accordingly, Jones fails to teach or suggest "determine one of a plurality of different geographic areas to be a selected geographic area, the selected geographic area comprising one of the plurality of different geographic areas that is predicted to be one of the plurality of geographic areas where a winning lottery ticket for a first award is purchased”.
Frick 769 teaches a game of chance prize liability limitation system (Frick 769 [0022]). A lottery typically calculates an estimated prize payout for a particular lottery game, which is a projected amount of prizes, typically expressed as a percentage of total expected sales revenue for such game, that the lottery will offer to winners for the expected life of a particular lottery game, or over a given period of time (Frick 769 [0004]). Frick 769 teaches a prize structure with offered prizes (Frick 769 [0040]). The prize structure with offered prizes is a game of chance parameter utilized by the game management processor (Frick 769 [0040]). A number of cash prize fields indicates the number of offered cash prizes (Frick 769 [0040]). Further, an odds field indicates the odds of winning a prize (Frick 769 [0040]). In addition, a prize value field indicates the value of the prize (Frick 769 [0040]). Using this information, the total cash prize payout can be calculated and may potentially be ten million dollars if all the cash prizes are won and redeemed (Frick 769 [0040]). As a larger portion of the cash prizes than non-cash prizes are typically redeemed, the overredemption guarantee is provided only for the non-cash prizes, not for the cash prizes (Frick 769 [0040]). The determination is useful in setting up the lottery game. Frick 769 fails to teach or suggest, at least, "determine one of a plurality of different geographic areas to be a selected geographic area, the selected geographic area comprising one of the plurality of different geographic areas that is predicted to be one of the plurality of geographic areas where a winning lottery ticket for a first award is purchased”.
Frick 241 teaches a process that generates, with a lottery machine apparatus, a predetermined quantity of unique combinations of a set of game indicia (Frick 241 [Abstract]). Further, the process prints, with a lottery ticket printer, a set of lottery tickets for a lottery game such that each of the lottery tickets in the set of lottery tickets distinctly corresponds to one of the unique combinations of the set of game indicia (Frick 241 [Abstract]). In addition, the process distributes a subset of the set of lottery tickets in a plurality of lots (Frick 241 [Abstract]). The process also determines a maximum prize winner by selecting a winning unique combination from a subset of the predetermined quantity of unique combinations of the first set of game indicia that is associated with the subset of the set of lottery tickets (Frick 241 [Abstract]). Frick 241 fails to teach or suggest, at least, "determine one of a plurality of different geographic areas to be a selected geographic area, the selected geographic area comprising one of the plurality of different geographic areas that is predicted to be one of the plurality of geographic areas where a winning lottery ticket for a first award is purchased”.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-9 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.11,983,997 B2; claims 1-20 of U.S. Patent No.11,222,511 B2; and claims 1-20 of U.S. Patent No. 11,682,268 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the wording has been slightly modified.
Response to Arguments
Applicant's arguments filed November 24, 2025 have been fully considered but they are not persuasive.
Applicant states:
Applicant respectfully submits that these elements, as amended, cannot be considered mental processes because such random determinations by the lottery server cannot be made in the mind of a human being. (Response [p. 9])
The following steps from claim 1 can be performed in the human mind, or by a human using a pen and paper:
determine one of a plurality of different geographic areas to be a selected geographic area for the lottery ticket, the selected geographic area comprising one of the plurality of different geographic areas that is predicted to be the geographic area where a winning lottery ticket for the play of the lottery game is purchased, wherein the selected geographic area is the geographic area where the lottery ticket is purchased or any one of the other different geographic areas,
determine one of a plurality of different awards for the play of the lottery game based on a quantity of one of the geographic areas being the selected geographic area
The similar claim language in claim 14 can also be performed in the human mind, or by a human using a pen and paper. Furthermore, the determining steps recited in claims 3-5 and 16-19 can also be performed in the human mind, or by a human using a pen and paper.
Even if applicant’s argument regarding mental process were considered persuasive (which it is not), the claims would still be rejected under 35 USC 101 because the claims were also identified as falling into the category of certain methods of organizing human activity.
The examiner maintains that the claims, as currently recited, are not directed to patent eligible subject matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WERNER G GARNER whose telephone number is (571)270-7147. The examiner can normally be reached M-F 7:30-15:30 EST.
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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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/WERNER G GARNER/Primary Examiner, Art Unit 3715