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 .
Procedural Summary
This is responsive to the claims filed 5/10/2024.
Claims 1-20 are pending.
The Drawings filed 5/10/2024 are noted.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
The claims are drawn to apparatus categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claims 1 & 4 are analyzed below, with italicized limitations indicating recitations of an abstract idea:
Claim 1: “A game system comprising: a central host computer having various ticket specific computer files; a retail establishment having a plurality of lottery tickets and a POS system through which the plurality of lottery tickets are purchased; and a player device, wherein the lottery tickets have at least one play area covered by a scratch off coating and at least one of a website, QR code, and bar code readable by the player device, wherein when the one of the QR code and the bar code is read by the player device or when the website is entered into the player device the player device receives instructions from a server to select avatars and game preferences.”
Claim 4: “A lottery ticket comprising: one of a QR code and a bar code readable by a player device, the one of the QR code and the bar code having game data indicative of winnings associated with the card.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG1, “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) and
managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
For example, the claimed invention is drawn to managing a lottery game. A lottery is a fundamental economic practice insomuch as it is wagering – exchanging consideration based on odds. A system for conducting a lottery and a lottery ticket are both commercial interactions, i.e., exchanging consideration based on ticket purchase and potential winning odds during the lottery. This is also managing personal behavior, i.e., a social game defined by rules established by the lottery operator and gaming jurisdiction.
Prong 2: Does the Claim recite additional elements that integrate the exception into a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations drawn to a computer and electronic device for reading a code.
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:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, the prior art relied on in the anticipation rejection, infra, shows the conventionality of computing devices and code readers used to implement games. These elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Additionally, Applicant’s Specifications acknowledge that generic devices are used to implement the claimed invention.2
Looking at 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. Their collective functions provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they only recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls3:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
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 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.
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.
This application currently names joint inventors. 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. 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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kaye (U.S. Patent No.: 5,709,603) in view of Walker et al., (U.S. Pub. No.: 2011/0059786 A1).
Kaye discloses a lottery ticket and game system (Abstract), comprising: a central host computer having various ticket specific computer files, (Fig. 1); a retail establishment having a plurality of lottery tickets and a POS system through which the plurality of lottery tickets are purchased, (Fig. 4); and a player device, wherein the lottery tickets have at least one play area and at least one of a website, QR code, and bar code readable by the player device, (e.g., Figs. 2, 6, 7).
Kaye discloses the invention substantially but does not make explicit, the tickets have a scratch off coating and wherein when the one of the QR code and the bar code is read by the player device or when the website is entered into the player device the player device receives instructions from a server to select avatars and game preferences. However, in a related invention, Walker teaches a scratch off lottery game with a website portion wherein a player scans a code and customizes a game theme including an avatar, (Walker, e.g., Fig. 5, 6A-6G, ¶¶ 20, 30, 53, 54.) It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s filing to have modified Kaye’s online game portion of Fig. 6 to feature Walker’s redemption game for the purpose of enhancing the entertainment experience.
Conclusion
Additional Relevant References: See 892
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached on M-F, generally 9am-5:30 pm.
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/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 See MPEP 2106
2 Specifications: [0016] FIG. 1 is a view of a game system 1000 in accordance with a nonlimiting example embodiment. As shown in FIG. 1, the game system 1000 includes a central host computer 100 having various ticket specific computer files 10, a retail establishment 200 where lottery tickets 300 may be purchased through a POS system 400, and a player device 500 (for example, a smartphone, tablet, computer). At the time of purchase the lottery tickets 300 are scanned and identified by the central host computer 100. For example, the retail clerk may use a portable scanner to scan a validation code or ticket identifier code and transmit the code to the central host computer 100 which, in one embodiment, identifies the lottery tickets 300 as being legitimately purchased (activated) for play and redemption in a computer file 10 associated with the lottery tickets 300. It is understood this exemplary game system 1000 is not meant to limit the invention as lottery tickets 300 are not required to be validated on an individual basis since the lottery tickets 300 may, in another embodiment, be part of a book of lottery tickets which, as a whole, is validated. (Emphasis Added.)
3: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)