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 .
Claim Note
Claim 8 is missing. Please make the record clear on the status of claim 8. Currently claims 1-7 and 9 are pending.
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 1-7 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,393,296 and claims 1-14 of U.S. Patent No. 12,020,544. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader than the parent 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 1-7 and 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. The claim(s) is/are directed to the abstract idea of a mental processes. The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than mere instructions to implement the idea on a computer, and/or recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. Please see recent Supreme Court decision Alice Corp. Pty. Ltd. V. CLS Bank International for guidance.
Claims 1 and 9 are independent claims directed to an apparatus and a method. Products and Processes fall within statutory categories of invention (Step 1: YES).
The claims are then analyzed to determine whether it is directed to an exception. In this case, the claims are drawn to the abstract idea of a mental process or a concept performed in the human mind (including an observation, evaluation, judgment, opinion). In particular, the process of setting a value of a wager can be done mentally.
monitors user activity and that provides a proposed wager on an outcome of an upcoming action in the live sporting event, contextual data that is generated about the live sporting event (two people watching or monitor a game. The situation of the game is contextual data that they observe.)
receive the contextual data and determine the proposed wager for the upcoming action based on past wager data and contextual data relating to the upcoming action, and the proposed wager is made available on the wagering network when at least some of the contextual data relating to the upcoming action matches contextual data for at least one past wagered action in the past wager data. (An Eagles fan and a Packers fan are watching a game. Eagles have the ball. It is 3rd down with 4 to go on the Packers’ 45 yard line. The Eagles fan offers a $1 bet that the Eagles will make the first down. $1 is the “usual” bet.)
The steps cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting “a wagering network”, nothing in the claim elements precludes the steps from practically being performed in the human mind. The mere nominal recitation of a generic processor does not take the claim limitations out of the mental processes grouping.
Thus, the claim recites a mental process.
(Step 2A, prong one: YES)
The claims are then analyzed to determine whether there are additional element(s) or a combination of elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception.
In this case, the claims recite that “a wagering network” is configured perform the steps.
The processor in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
(Step 2A, prong two: NO)
Viewing the limitations individually,
The claims are then analyzed to determine whether the claims provide an inventive concept, i.e., does the claim recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claim.
The additional element, “a wagering network” is configured perform the steps, in the claims amounts to no more than mere instructions to apply the exception using a generic computer component. The mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Viewing the limitations as a combination, the claim simply instructs the practitioner to implement the concept of an electronic method of determining a setting with routine, conventional activity specified at a high level of generality in a particular technological environment. When viewed either as individual limitations or as an ordered combination, the claim as a whole does not add significantly more to the abstract idea of setting a value of a wager.
(Step 2B: NO). The claim is not patent eligible.
Claims 2-7 have been considered each as whole claim as to the abstract idea and the “significantly more” criterion. While being more specific, the limitations did not make the claims less abstract nor provide “significantly more” to the claims to make them patent eligible.
The parent applications were not rejected under 35 USC 101 because they did not recite actual wagering which is considered to fall under the abstract idea of a fundamental economic practice. The current claims also do not recite wagering. However, the claims have been made so broad that the abstract idea of a mental process or a concept performed in the human mind needed to be addressed.
Claim Rejections - 35 USC § 102
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)(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.
Claims 1-7 and 9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kline et al. (US PG pub 2019/0362601).
Kline et al. shows,
In regards to claims 1 and 9,
A system for setting a value of an upcoming wager on an outcome of an action in a live sporting event, comprising:
a wagering network that electronically monitors user activity (paragraph [0035], “In some embodiments, the bets are offered to all users. Some bets may be tailored to the specific user 204 based on the betting history and the profile of the user 204. Profiles of other users may be analyzed for similarities such as betting trends associated with, for example, teams, players, amounts, or any other betting trends that may be tracked. When similar trends are found the bets offered to the user 204 may also be offered to the users with similar histories stored on the profiles.”) and
that provides a proposed wager on an outcome of an upcoming action in the live sporting event, (paragraph [0045], “In some embodiments, the prop bet can be provided by an automatic system tracking the on-field play such as tracking the ball and the players indicating that a corner kick is imminent and automatically providing a bet which may be customized to the user 204 based on the profile of the user 204 and the location of the user 204. Alternatively or in addition, an oddsmaker may also create betting offers and push them to user 204 viewing the game based on events occurring in the game as they occur in real time.”) and
contextual data that is generated about the live sporting event, (By example above, a corner kick can be considered contextual data about a sporting event.)
wherein the wagering network is configured to receive the contextual data and determine the proposed wager for the upcoming action based on past wager data and contextual data relating to the upcoming action, (paragraph [0047], “In some such embodiments, the bet offer may be pushed to the mobile device 206 of the user 204. For example, when a corner kick scenario occurs as described above, a designated application administrator enters a number of the player performing the kick into the application (e.g. number 8) and the bet is updated and goes live. For example, the user 204 may receive a pop-up notification asking “Will Zusi score on his penalty kick? Bet now!” with options for a $1 bet at 1:2 odds, a $5 bet at 1:1.75 odds, and a $10 bet at 1:1.5 odds.” Paragraph [0048], “The betting offers may update along with a tracked history of the user 204 interactions with the application such that the bets may increase or decrease based on the betting history or the wins and loses of the user 204.”) and
the proposed wager is made available on the wagering network when at least some of the contextual data relating to the upcoming action matches contextual data for at least one past wagered action in the past wager data. (The contextual data is discussed above. For past wagering data, paragraph [0072] shows, “In some embodiments, the user 204 may enter a bet or contest and receive a voucher to play in a similar bet or contest for a future sporting event based on the bet and the profile of the user or betting history.”)
In regards to claim 2,
wherein the proposed wager is displayed when the odds of the proposed wager fall within a predetermined range. (See odds range above shown in paragraph [0047].)
In regards to claim 3,
wherein the past wager data includes historical success of similar wagers of a user. (See historical success of similar wagers above shown in paragraph [0048].)
In regards to claim 4,
wherein the wagering network further comprises a plurality of sensors that are polled by the wagering network to automatically determine results of a wager. (paragraph [0074], “At step 416, the user 204 may receive awards based on the outcome of the bet.”)
In regards to claim 5,
wherein the wagering network further comprises a historical wager database, and the wagering network automatically saves wager data to the historical wager database. (See data store 130 and paragraphs [0033], [0035], [0048], and [0072].)
In regards to claims 6 and 7,
6. The system according to claim 1, wherein the wagering network further uses a similarity threshold to determine if the proposed wager is made available on the wagering network and wherein the wagering network displays a most recent wager of a user which surpasses the similarity threshold. (paragraph [0035], “In some embodiments, the bets are offered to all users. Some bets may be tailored to the specific user 204 based on the betting history and the profile of the user 204. Profiles of other users may be analyzed for similarities such as betting trends associated with, for example, teams, players, amounts, or any other betting trends that may be tracked. When similar trends are found the bets offered to the user 204 may also be offered to the users with similar histories stored on the profiles.” When a “betting trend” has been identified, it has reached the statistical threshold of being a trend, not just random data. The bets offered to the user when the context meets the trend criteria is considered to be the displaying of the wager surpassing the similarity threshold.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A CUFF whose telephone number is (571)272-6778. The examiner can normally be reached Monday - Friday 9-5.
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/MICHAEL A CUFF/Primary Examiner, Art Unit 3715