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 .
Claim Rejections - 35 USC § 101
2. 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.
3. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
4. Step 1
Claims 1-11 are directed to an system and Claims 12-20 are directed to a method meeting the requirements for Step 1.
5. Step 2A Prong 1
In independent Claim 1 (and similarly for Claims 10 and 12), the claim recites a “refunding event” and a “balance being available” which are financial in nature and a certain method of organizing human activity.
6. Step 2A Prong II
The abstract idea is not integrated into a practical application. According to 2019 PEG, 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, a processor, memory, plurality of instructions, and display are recited so generically (no details whatsoever are provided other than in name only) that they 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 or display 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 discloses “any suitable processing device [0060] where “[t]hese computer program instructions may be provided to a processor of a general purpose computer” [0066] and memory not limited to RAM, ROM, FLASH, EEPROM, CD-ROM, and “[a]ny other suitable magnetic, optical, and/or semiconductor memory may operate in conjunction with the component of the system and/or the gaming establishment device disclosed herein.” [0061, 0062]. 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 of Claim 1 is recitation of “gaming establishment retail account” and “another gaming establishment account” which are merely labels linking the machinery to the technological field of gaming establishments and of extra-solution “displaying a balance” of account information.
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.
7. 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 displaying is well-known, routine, and conventional activity. (See Appendix 1 to the October 2019 Update: Subject Matter Eligibility Life Sciences & Data Example 46 Claim 1, P. 35 regarding “displayed on the display”. “This limitation represents extra-solution activity because it is a mere nominal or tangential addition to the claim. See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity, for instance the step of printing a menu that was generated through an abstract process in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) and the mere generic presentation of collected and analyzed data in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Accordingly, a conclusion that the step is well-understood, routine, conventional activity is further supported under Berkheimer. Therefore, displaying remains an insignificant extra-solution activity even upon reconsideration, and does not amount to significantly more.
Thus, Claim 1, and similarly Claims 10 and 12, do not recite additional elements, individually or in combination, that amount to significantly more than the abstract idea. Thus, Claims 1, 10 and 12 are ineligible.
8. Dependent Claims 2-9, 11, and 13-20
Claims 2-4 and 13-15 are further abstract rules in effectuating the refunding event of periods of inactivity, intervals of time, points in time. Claims 5-9, 11, and 16-20 are further abstract portions of funds and associations with retail transactions, bulk funding, balances and types of non-gaming establishment accounts and cashless wagering accounts in the technological field of gaming establishments. Additionally, the combination of additional elements adds nothing that is not already present when considered individually where the additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept. Thus, Claims 2-9, 11, and 13-20 are ineligible.
Claim Rejections - 35 USC § 102
9. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
10. Claims 1, 7-9, 10-12, and 18-20 are rejected under 35 U.S.C. § 102 (a1) as being anticipated by U.S. Pat. Pub. No. 2019/0197526 to Higgins (Higgins ‘526).
In Reference to Claims 1, 10, and 12
Examiner construes the limitation of “gaming establishment” account and “another gaming establishment” account as non-functional descriptive matter as the significance of a type of account has no bearing on the subsequent operations of the accounts in the claim. They are just labels. From a standpoint of merely enabling a refund from one account to another, Higgins ‘526 however does disclose a system and method that grants a retail refund from a retail (POS) purchase to one or more accounts at a POS terminal 532 pertaining to a casino gaming wallet 504 and displays a balance to the user, a balance of which is available for reuse by the user, comprising:
a processor (Fig.8 controller circuit 802); and
a memory device (Fig. 8 memory 804) that stores a plurality of instructions (program instructions stored in memory [0060]) that, when executed by the processor, cause the processor to:
responsive to an occurrence of a refunding event associated with a gaming
establishment retail account (Fig. 5 POS terminal 532 initiates a retail refund transaction for $100 [0054] funded by a scan or swipe of a card or mobile device of the user [0043]), cause a transfer of an amount of funds from the gaming establishment retail account to another gaming establishment account (Fig. 5 $100 transferred from retail POS system to either retail wallet 506 or casino gaming wallet 504 {another accounts}),
and
communicate data that results in a display device displaying a balance of the other gaming establishment account comprising at least the amount of funds transferred from the gaming establishment retail account (Fig. 5 POS terminal notifies user 530 that the refund is complete, where the display controller 810 controls one or more display devices 812 to display a viewing area and provide information to user [0060]), the balance being available for a transaction made against the other gaming establishment account (Fig. 5 by nature of the $100 going into the casino gaming wallet 504 at step 582, it is available for transactions made against the casino gaming wallet 504 ([0053-0055] where funds are available from the cashless wagering account 204 as opposed to funds returned to the retail wallet 206, 506 [0045]).
In Reference to Claims 7 and 18
When the refund of $100 is all that remains in the account then the refund comprises a balance of the gaming retail account (Fig. 5).
In Reference to Claims 8 and 19
Examiner construes the claim limitation as one of an intended use where prior to the refund funds that are available can be used to transact. Higgins ‘526 Fig. 5 by nature of the $100 going into the casino gaming wallet 504 at step 582, it is available for transactions.
In Reference to Claims 9 and 20
Higgins ‘526 discloses a cashless wagering account {wallet} ([0005]).
In Reference to Claim 11
Higgins ‘526 discloses credit cards which are an other account comprises a non-gaming
establishment account maintained by a component of a financial institution.
Claim Rejections - 35 USC § 103
11. 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.
12. 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.
13. 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.
14. Claims 2 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higgins ‘526 in view of U.S. Pat. Pub. No. 2022/0391907 to Bowdon.
Higgins ‘526 discloses the invention substantially as claimed to include a refunding event including a POS account from POS terminal 532 and a casino gaming wallet 504. However, the reference does not explicitly disclose the refunding event occurs in association with a period of inactivity of transactions against the gaming establishment retail account. One of skill in the art would be aware of the systems and methods of copious asset transfers of Bowdon.
Bowdon teaches methods to deliver payments to payees (Abstr.) {refunding events} wherein to include the return one or more of a payment, paycheck, a refund, securities, IRA account, safety deposit box contents, other personal property, or a deposit ([0009]), dormant account payments, dormant bank balance returns and casino cashouts ([0114]) to an asset owner ([0039]) from dormant account holders ([0035]) where real property has gone. “The dormant account holder may include, without limitation, a former employer, a utility company, a company holding a deposit or refund, or any other entity that is holding an asset of value that has not been returned to the rightful owner.” ([0038]). This is demonstrated in Fig. 3 steps 302 to 310 where in 306 a dormant account record may include a date or a date range during which the asset owner has a relationship with the dormant account holder ([0059]). Subsequently, a refunding event occurs after this period of activity against the dormant account holder resulting in a payment to the account holder ([0061]). Bowdon invents this system and method in order to “automatically return[ing] assets to their rightful owners.” ([0034, 0056]).
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 modify the refunding event of the refund of the $100 from the POS terminal 532 and system 534 to the casino gaming wallet 504 of Higgins ‘526 with the dormant account process of Bowdon to achieve the predictable result of automatically returning assets to their rightful owners. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
15. Claims 3-4 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higgins ‘526 in view of U.S. Pat. Pub. No. 20200152005 to Higgins (Higgins ‘005).
Higgins ‘526 discloses the invention substantially as claimed to include a refunding event including a POS account from POS terminal 532 and a casino gaming wallet 504. However, the reference does not explicitly disclose wherein the refunding event occurs at a designated interval {point} of time. One of skill in the art would be aware of the transfer of funds between gaming establishment accounts and external cryptocurrency accounts after 14 day interval {i.e., the designated point being the 14th day or after the 14th day} of Higgins ‘005 (Abstr., [0035]).
Higgins ‘005 recognizes that such transfers “enable a player to transfer cryptocurrency funds to and from a gaming establishment account benefits players whom hold cryptocurrency funds and wish to deploy such cryptocurrency funds for activities at a gaming establishment, such as wager activities and/or retail activities.” ([0013]). These accounts can include a collection of cryptocurrency accounts (i.e., cryptocurrency wallets), cashless wagering accounts (i.e., cashless wagering wallets), and gaming establishment retail accounts (i.e., gaming establishment retail wallets) associated with or otherwise maintained for a player or user collectively form a resort or enterprise account (i.e., an integrated resort or gaming establishment fund management wallet) that the player or user may access to transfer funds and/or view balance information amongst the various accounts associated with or otherwise maintained for the player or user.” ([0015]). See also gaming establishment retail accounts and retail wallets and POS terminals ([0021]). Higgins ‘005 teaches that “[r]esponsive to the gaming establishment fund management system verifying the provided data (such as by comparing the signature of the provided data against a public key associated with the player's external cryptocurrency account that triggered the transfer), the gaming establishment fund management system completes the transfer (i.e., makes the cryptocurrency funds available to the player in the player's gaming establishment cryptocurrency account). However, if the gaming establishment fund management system is unable to verify the provided data (e.g., if the signature of the provided data does not match the public key associated with the player's external cryptocurrency account), then the player's gaming establishment cryptocurrency account refunds the cryptocurrency funds transferred (such as within a period of time (e.g., within 14 days))([0035]).
Here, it would require only routine skill in the art to modify Higgins ‘526 with the designated 14 days interval {point} of time of Higgins ‘005 to secure the funds when the gaming establishment is unable to verify the provide account data. 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.
16. Claims 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higgins ‘526 in view of U.S. Pat. Pub. No. U.S. Pat. Pub. No. 2020/0013057 to Karantzis.
Higgins ‘526 discloses the invention substantially as claimed to include a refunding event including a POS account from POS terminal 532 and a casino gaming wallet 504. However, the reference does not explicitly disclose wherein at least a portion of the amount of funds transferred from one retail account are associated with a retail return transaction. One of skill in the art would be aware of the methods of processing payments of Karantzis.
Karantzis discloses wherein “[t]he processor 420 selects previous transactions to the merchant 120 from the customer 110 for refund as part of the payout from the merchant 120 to the customer (Abstr.) wherein due to merchant practice usually only a maximum value may be refunded in a given period up to 5% of the month’s rolling processed authorization total [0009].
Here, it would require only routine skill in the art to modify the amount of the refund of Higgins ‘526 to comply with merchant conditions such as refunding only a portion of the amount to be returned to achieve the predictable result of slowly metering out returns to allow time to accurately determine the source of the funds in case they are in question [0010]. The Courts have held that applying a known technique to a known device (method, or product) ready for improvement to yield predictable results to be indicia of obviousness.
17. Claims 6 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higgins ‘526 in view of U.S. Pat. Pub. No. U.S. Pat. Pub. No. 2019/0213596 to Kallugudde.
Higgins ‘526 discloses the invention substantially as claimed to include a refunding event including a POS account from POS terminal 532 and a casino gaming wallet 504. However, the reference does not explicitly disclose wherein a portion of funds returned are associated with a bulk funding of the account. One of skill in the art would recognize the modified payment methods of Kalluguddle.
According to Kalluguddle, digital payments from plastic cards and electronic wallets ([0003]) are more and more prevailent. And “[a]s a result of the long waiting time associated with authorising payment card-based transactions (whether digitised or not), customers tend to depend on stored-value cards or wallets where money is pre-loaded for faster use in transit situations. However, such stored-value cards and wallets are closed-loop solutions, meaning that the customer needs to have multiple stored-value cards or wallets to use with each different merchant or transit system.” ([0005]). This practice of pre-loading {bulk loading] that causes Kalluguddle to teach that “[i]f there are funds remaining in the modified payment token at the end of a predefined period (e.g. each day), the customer may choose to refund the remaining funds back to his/her account or to re-allocate them into a modified payment token for the next period (i.e. the next day). In this case, the customer may instruct the customer electronic device (e.g. via an application) to communicate with the issuer server (optionally via a token requester and/or tokenisation platform) to refund or re-allocate the remaining funds at the end of the period.([0040]). Kalluguddle invents this process in order to clear or settle accounts at a predetermined time such as the end of the day ([0039]).
Here, it would require only routine skill in the art to modify the transfers between accounts of Higgins ‘526 with the return of portions resulting from pre-loading of Kalluguddle to achieve the predictable result of clearing or settling accounts at a predetermined time such as the end of the day. The Courts have held that combining prior art elements according to known methods to yield predictable results to be indicia of obviousness.
Conclusion
18. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is in the Notice of References Cited.
19. 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.
20. 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.
21. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached on (571) 272-7673. 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