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 .
2. This communication is in response to Application No. 18/739,694 filed on 11/10/2021.
3. Claims 1-13 are currently pending and have been examined.
Information Disclosure Statement
4. IDS filed on 06/11/2024 is considered.
5. The drawings filed on 06/11/2024 are noted.
6. This application is a continuation of U.S. application No. 17/523,207 filed on 11/10/2021 now U.S Patent 12,014,596 See MPEP 201.07. In accordance with MPEP 609.02 A.2 and MPEP 2001.06 (b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP 2001.06 (b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Patent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP 609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Patent Application is relevant in this application.
Information Disclosure Statement
7. IDSs are considered.
Claim Rejections - 35 USC § 112
8. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
9. Claim limitation “module” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because they use a generic placeholders “module” coupled with functional language “configured to…” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1, 9 and all dependent claims have been interpreted to cover the corresponding structure described in a software that achieves the claimed function, and equivalents thereof.
A review of the specification provides no descriptive definitions or details that separate the claimed “module” described in the claim from functioning as a software.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding software, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 101
10. 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.
11. Claims 1, 9, and all dependent claims are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. For example, claim 1 recites the limitation of: providing informational statistical data on a sports wagering network.
The limitation of providing informational statistical data on a sports wagering network, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, nothing in the claims preclude the steps from practically being performed in the mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claims only recite one additional element using a network to retrieve wagering market status data from an odds database in a cloud; identifying users connected in the cloud; receiving historical wager data from a relationship module in the cloud; receiving information from a trend module and attaching a trend related to the current wagering market to the wager; identifying a cohort of wagers on the wagering network with characteristics similar to a current wagering market to perform the steps of receiving, retrieving, and identifying. The network in the steps is recited at a high-level of generality (i.e., as a generic computer providing informational statistical data on a sports wagering) such that it amounts no more than mere instructions. 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. The claims are directed to an abstract idea.
In the instant case, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of determining, in the cloud, if wagers exceed a predetermined similarity threshold by comparing the characteristics of the cohort of wagers to a notification rules database; and identifying, in the cloud, a trend in the cohort of historical wagers by comparing statistics of the cohort of historical wagers to statistics of a recent subset of wagers in the cohort. Thus, taken alone, the additional element fails to ensure the claims as a whole amount to significantly more than the judicial exception itself. Accordingly, claims 1-10 are ineligible under 35 U.S.C. 101.
Double Patenting
12. 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. See 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
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 1-10 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-13 of U.S. Pat. No.12,014,596. Although the conflicting claims are not identical, they are not patentably distinct from each other. Accordingly, it would have been obvious to those in possession of the invention defined by claims 1-10 to observe that the limitations described in claims 1-10 are already incorporated in claims 1-13 of U.S. Pat. No.12,014,596. Therefore, one of ordinary skill in the art would have realized the omission of the limitation of” receiving a notification from a trend module and delivering the notification to a mobile device” is an obvious expedient since the remaining elements perform the same functions as before. In re Karlson, 136 USPQ 184 (CCPA 1963.
Conclusion
13. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to PIERRE E ELISCA whose telephone number is (571) 272-6706. The Examiner can normally be reached on Monday -Thursday; 6:30AM- 7:30PM. Hoteler.
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, Hu Kang can be reached on 571 270 1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PIERRE E ELISCA/Primary Examiner, Art Unit 3715