Detailed Action
Double Patenting
The nonstatutory double patenting rejection is summarized as follows:
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US 11,562,629 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent and the application are claiming common subject matter, as follows:
18646875 (This application)
US 11,562,629 B2
1. A method comprising: determining, by a computing device, that a mobile device associated with a first player is located in a first location that is designated as a non-monetary, points only wagering area
1. A method comprising: determining, by a computing device, that a mobile device associated with a first player is located in a first location that is designated as a non-monetary, points only wagering area
in response to determining that the mobile device is located in the first location, automatically enabling, by the computing device, points wagering and automatically disabling, by the computing device, monetary wagering from the mobile device while the mobile device remains in the first location
in response to determining that the mobile device is located in the first location, automatically enabling, by the computing device, points wagering and automatically disabling, by the computing device, monetary wagering from the mobile device while the mobile device remains in the first location
receiving, by the computing device from the mobile device, a first selection of race participants such that each race participant in the first selection is most favored to win a respective race; receiving, by the computing device from the mobile device, a second selection of race participants whose odds of winning are above a threshold but are not most favored to win
receiving, by the computing device from the mobile device, a first selection of race participants such that each race participant in the first selection is most favored to win a respective race; receiving, by the computing device from the mobile device, a second selection of race participants whose odds of winning are above a threshold but are not most favored to win
receiving, by the computing device from the mobile device, a third selection of race participants whose odds of winning are below the threshold; forming, by the computing device, a first fantasy racing team for the first player comprising race participants from the first selection, the second selection, and the third selection;
receiving, by the computing device from the mobile device, a third selection of race participants whose odds of winning are below the threshold; forming, by the computing device, a first fantasy racing team for the first player comprising race participants from the first selection, the second selection, and the third selection;
receiving, by the computing device from the mobile device, a challenge by the first fantasy racing team of the first player, in which the challenge identifies an amount of points selected by the first player and a second fantasy team selected by the first player against whom to place the challenge
receiving, by the computing device from the mobile device, a challenge by the first fantasy racing team of the first player, in which the challenge identifies an amount of points selected by the first player and a second fantasy team selected by the first player against whom to place the challenge
in response to receiving the challenge, identifying, by the computing device, the challenge to a second player associated with the second fantasy team; receiving, by the computing device, an acceptance of the challenge from the second player
in response to receiving the challenge, identifying, by the computing device, the challenge to a second player associated with the second fantasy team; receiving, by the computing device, an acceptance of the challenge from the second player
in response to receiving the acceptance, forming, by the computing device, a wager between the first fantasy racing team of the first player and a second fantasy racing team of the second player based on the challenge
in response to receiving the acceptance, forming, by the computing device, a wager between the first fantasy racing team of the first player and a second fantasy racing team of the second player based on the challenge
adjusting, by the computing device, points in an account of a winning player of the challenge in response to determining an outcome of the challenge; determining, by the computing device, that the mobile device is located in a second location that is designated as a monetary wagering area;
adjusting, by the computing device, points in an account of a winning player of the challenge in response to determining an outcome of the challenge; determining, by the computing device, that the mobile device is located in a second location that is designated as a monetary wagering area;
and in response to determining that the mobile device is located in the second location; automatically enabling, by the computing device, said monetary wagering and automatically disabling, by the computing device, said points wagering from the mobile device while the mobile device remains in the second location
and in response to determining that the mobile device is located in the second location; automatically enabling, by the computing device, said monetary wagering and automatically disabling, by the computing device, said points wagering from the mobile device while the mobile device remains in the second location;
Thus, since the ‘629 patent claim 1 subsumes the features of claim 1 of the instant application, claim 1 is rejected under the non-statutory double patenting doctrine.
Claim Rejections - 35 USC § 103
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.
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.
In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. If this application names joint inventors, Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Amaitis et al (US 8,814,664 B2) in view of Butz et al (US 2021/0077909 A1).
Regarding claim 1, Amaitis discloses a method comprising determining, by a computing device, that a mobile device associated with a first player is located in a first location that is designated as a non-monetary, points only wagering area (claim 1), in response to determining that the mobile device is located in the first location, automatically enabling, by the computing device, points wagering and automatically disabling, by the computing device, monetary wagering from the mobile device while the mobile device remains in the first location (claim 1), receiving, by the computing device from the mobile device, a challenge by the first fantasy team of the first player, in which the challenge identifies an amount of points selected by the first player and a second fantasy team selected by the first player against whom to place the challenge (claim 1),in response to receiving the challenge, identifying, by the computing device, the challenge to a second player associated with the second fantasy team (claim 1), receiving, by the computing device, an acceptance of the challenge from the second player (claim 1), in response to receiving the acceptance, forming, by the computing device, a wager between the first fantasy team of the first player and a second fantasy team of the second player based on the challenge (claim 1), adjusting, by the computing device, points in an account of a winning player of the challenge in response to determining an outcome of the challenge (claim 1), determining, by the computing device, that the mobile device is located in a second location that is designated as a monetary wagering area (claim 1), and in response to determining that the mobile device is located in the second location, automatically enabling, by the computing device, said monetary wagering (claim 1) and automatically disabling, by the computing device, said points wagering from the mobile device while the mobile device remains in the second location (claim 1). Butz suggests—where Amaitis does not disclose—receiving, by the computing device from the mobile device, a first selection of race participants (¶ [0057]: motorcycle, drone or automobile racing) such that each race participant in the first selection is most favored to win a respective race (¶ [0058]: top twenty players by ranking at the end of the previous season could be grouped into a first tier), receiving, by the computing device from the mobile device, a second selection of race participants whose odds of winning are above a threshold but are not most favored to win (¶ [0058]: next twenty could be grouped into a second tier), receiving, by the computing device from the mobile device, a third selection of race participants whose odds of winning are below the threshold (¶ [0058]: third twenty into a third tier) and forming, by the computing device, a first fantasy racing team for the first player comprising race participants from the first selection, the second selection, and the third selection (¶ [0057]: a fantasy sports participant selects a set number of real players from each tier to create his/her active roster). It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the invention to combine the disclosures of Amaitis and Butz in order to make the matchups more interesting by using a larger and more diverse number of players.
Conclusion
The prior art considered pertinent to applicant's disclosure and not relied upon is made of record on the attached PTO-892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVE ROWLAND whose telephone number is (469) 295-9129. The examiner can normally be reached on M-Th 10-8. 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 number for the organization where this application or proceeding is assigned is (571) 273-8300. The fax number for the examiner is (571) 270-8844. 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.
Applicant may choose, at his or her discretion, to correspond with Examiner via Internet e-mail. A paper copy of any and all email correspondence will be placed in the appropriate patent application file. Email communication must be authorized in advance. Without a written authorization by applicant in place, the USPTO will not respond via e-mail to any correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122.
Authorization may be perfected by submitting, on a separate paper, the following (or similar) disclaimer:
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Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file.
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See MPEP 502.03 for more information.
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/STEVE ROWLAND/Primary Examiner, Art Unit 3715
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