DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 05/01/2026. Applicant elected Group II without traverse. Thus, presently, claims 1-14 are pending with claims 1-7 withdrawn.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The present title includes “without placing any bets on the game” and yet right in claim 1, “placing a first bet using a portion of the combine pool.”
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 8-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,127,744; 1-10 of U.S. Patent No. 10,029,033; 1-14 of U.S. Patent No. 11,183,028; and 1-18 of U.S. Patent No. 12,033,475. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the claims in the patents above are when combining claims 1 and 5 are narrower than the present claims and as such read on the present claims.
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 8-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) An apparatus comprising: at least one processor configured to control: receiving, over a communication network, a first amount of funds by a first client from a first broker and a second amount of funds by a second client from a second broker; aggregating the funds from the first broker and the second broker into a combined pool, in which an amount of money in the combined pool is larger than a threshold amount for a given bet in a game; placing a first bet using a portion of the combined pool on an outcome of an event for which a gaming operator takes bets; placing winnings from the first bet into the combined pool; deducting a fee for the first broker and the second broker from the combined pool; distributing, after placing winnings into the combined pool, funds from the combined pool to the first client and to the second client. The underlined portions above are viewed as certain methods of organizing human activity in that they are directly related to certain economic practices including, but not limited to, managing game rules as well as fund transfers. This judicial exception is not integrated into a practical application because the idea is only applied to a technological environment which is not sufficient to bring the claims into patent eligibility. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional limitations are generic computing parts which the Supreme Court in Alice determined is not enough to bring the claims into patent eligibility.
All dependent claims have been analyzed but do not cure the deficiencies of the independent claim.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 8-14 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US Patent Application Publication No. 2005/0215306 to O’Donnell in view of US Patent Application Publication No. 2007/0111770 to Van Luchene.
With regard to claim 8, O’Donnell discloses An apparatus comprising: at least one processor configured to control: receiving, over a communication network, a first amount of funds by a first client from a first broker (0112-0127) and a second amount of funds by a second client from a second broker (0112-0127 this is merely a duplication of parts and as such would have been obvious to one of ordinary skill in the art at the time of the invention); aggregating the funds from the first broker and the second broker into a combined pool, in which an amount of money in the combined pool is larger than a threshold amount for a given bet in a game (0112-0127); placing a first bet using a portion of the combined pool on an outcome of an event for which a gaming operator takes bets (0112-0127); placing winnings from the first bet into the combined pool (0112-0127); distributing, after placing winnings into the combined pool, funds from the combined pool to the first client and to the second client (0112-0127).
O’Donnell does not appear to explicitly disclose a fee. However, such is taught by van Luchene (0180). It would have been obvious to one of ordinary skill in the art at the time the application was filed to combine the teachings of van Luchene with the disclosure of O’Donnell in order to award the players that have set up the pools and bought the tickets for the time they spent doing so.
With regard to claim 9, the limitations of claim 9 are again viewed as merely a duplication of parts and thus, as above, are found to be obvious to one of ordinary skill in the art at the time the application was filed.
With regard to claim 10, O’Donnell discloses placing a second bet using the additional funds from the plurality of brokers (0112-0127 wherein more than one lottery ticket can be purchased).
With regard to claim 11¸this is merely repeated parts of claim 8 and above about putting winnings in a pool, which as discussed above, is disclosed by O’Donnell.
With regard to claims 12-14 these are each seen as intended use as where bet is placed or who places it does not change the apparatus in any patentable way. Additionally, these limitations are seen as a matter of design choice as there is no material advantage to the apparatus that would make it work any better or worse based on the various options given. The specification does not adequately describe what the technical advantage would be to have these various limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jay Liddle whose telephone number is (571)270-1226. The examiner can normally be reached M-F 9-5.
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.
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/Jay Trent Liddle/ Primary Examiner, Art Unit 3715
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