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 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 they are directed to non-statutory subject matter.
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.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The claims are directed to articles of manufacturer (e.g. a non-transitory computer readable medium), processes (e.g. information processing method), and machines (e.g. an information process system). Though the claims fall within one of the four subject matter categories, claims may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception.
Independent Claims 1 & 15 recite:
Claim 1: A method for play of a lottery bonus game that provides an opportunity for players in a primary lottery game to win an award in the bonus game, the method comprising: providing lottery tickets in the primary lottery game with a code that entitles a player to receive a game tile for use in play of the bonus game; wherein a plurality of different ones of the game tiles are generated for play in the bonus game, each the different game tiles having different continuous graphic symbol thereon with a first end at a first side of the game tile and a second end at the first side of the game tile or at a second side of the game tile; supplying a generic game board to the player, the game board having a plurality of designated game spaces defined thereon; upon the player scanning the code on the lottery ticket, giving the player the game tile associated with the lottery ticket; providing instructions to the player to place each of the game tiles they receive in any one of the game spaces on the game board and at any orientation desired by the player to create a closed-form shape defined by a continuous connection of the first and second ends of the graphic symbols between adjacent game tiles on the game board; and awarding the award in the bonus game to the player based on a number of game tiles used to complete the closed-form shape.
Claim 15: A system for play of a lottery bonus game that provides an opportunity for players in a primary lottery game to win an award in the bonus game, the system comprising: a plurality of lottery tickets in the primary lottery game, each lottery ticket comprising a code that entitles a player to receive a game tile for use in play of the bonus game; a plurality of game tiles, different ones of the game tiles having a different continuous graphic symbol thereon with a first end at a first side of the game tile and a second end at the first side of the game tile or at a second side of the game tile; wherein the code on each lottery ticket entitles the player to receipt of one of the game tiles; a game board made available to the player, the game board having a plurality of designated game spaces defined thereon; written instructions provided to the player to place each of the game tiles they receive in any one of the game spaces on the game board and at any orientation desired by the player to create a closed-form shape defined by a continuous connection of the first and second ends of the graphic symbols between adjacent game tiles on the game board; and an award structure, wherein the player receives an award in the bonus game based on a number of the game tiles used to complete the closed-form shape.
The underlined portions of the claims 1, 18, & 20 generally encompass the abstract idea. The abstract idea may be summarized methods of organizing human activity.
That is, interactions between humans can perform the abstract idea as underlined above. In regards to claim 1, a first human can provide lottery tickets (written text on paper) with codes that a second human can exchange for a game tile having a graphical symbol thereon (paper with a drawn design), the first human can provide a game board having spaces to the second human (written on paper), the first human can give the game tile to the second human upon the second human reading the code to the first human, the first human can provide game rules and/or instructions to the second human on how to utilize the game tiles to create closed-form shapes on the game board and provide prizes to the second player based on the game rules.
Dependent claims 2-14 & 16-20 further define additional parameters that can equally be performed, where applicable, by the one more humans detailed above. For instance, certain dependent claims are directed to specifics of the graphical design of the game tile (different design written on paper), specificity of the game board layout (how it’s written on paper), and the like, which each pertain to additional organized human activity either capable of being performed by organized activity of the first and/or second human, or certain generically recited computing aspects (e.g. virtual game board, storing tiles in a player account, etc.) that fails to set forth anything beyond using the computer as a tool (detailed below).
The claimed abstract idea may also be viewed, for example, as one or more of:
a fundamental economic practice (e.g., rules associated with conducting a [wagering] game) as discussed in Alice Corp. v. CLS Bank, In re Smith (Fed. Cir. 2016) (cert. denied), and In re Marco Guldenaar (Fed. Cir. 2018);
a method of managing a game, similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC (Fed. Cir. 2014) (non-precedential);
the abstract idea of creating and applying a template of positions of one or more game contents, similar to that of GREE, INC. v. SUPERCELL OY (Fed. Cir. 2020) (non-precedential);
the abstract idea of associating game objects and moving one or more of the objects, similar to that of GREE, INC. v. SUPERCELL OY (Fed. Cir. 2021) (non-precedential); and/or
a method of organizing human activities (e.g., allowing a human player to play the game according to rules of the game) as discussed in Bilski v. Kappos and Alice Corp. v. CLS Bank.
The claimed invention resembles a number of abstract ideas types as defined by the courts, such as a fundamental economic practice, methods of managing a game, and/or methods of organizing human activity. In Smith and Marco Guldenaar, the court found that certain gaming activities are fundamental economic practices or methods of organized human activity, which are in turn abstract ideas recognized in several court decisions including Alice and Bilski. In Planet Bingo, the court found that a method of managing a game of bingo was an abstract idea. In addition, the instant claims set forth player-based game interaction (generation and play of gameplays). These steps are similar to the abstract ideas discussed in Bilski and Alice because they involve directing humans on how to conduct certain fundamental interactions.
Under prong 1, the claimed invention encompasses an abstract idea in the form of certain methods of organizing human activity. The abstract idea pertaining to managing and/or conducting a bonus game of the present claims may be viewed as organizing human activity because it sets out various rules to be applied for one or more players, including game performance and score management (award structures providing bonus awards).
Under prong 2, the rejected claims do not integrate the abstract idea into a practical application because they add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. While certain physical elements (i.e., elements that are not an abstract idea) may be present in the rejected claims, such features do not effect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. In this case, it appears that no explicit computing elements, generic or otherwise are present in the claims.
As such, the abstract idea clearly does not improve the functioning of any generic computer. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (or generic computer components), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to the environment of gaming, such that the claim, as a whole, is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)-(c), (e)-(h).
Accordingly, as claimed, there is no improvement to the functioning of any generic computing components (e.g. there appear to be no generically recited components such as a processor, memory, display, input devices, or the like.) as a result of reciting the abstract idea as being carried out by a generic computer. The courts have repeatedly held that for a claimed invention to be patent-eligible, the claimed invention must “overcome some sort of technical difficulty” and present a “technical solution to a technical problem”.
Therefore, the rejected claims are directed to the judicially recognized exception of an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional element or combination of elements in the claims other than the abstract idea per se amount to no explicit computing elements or any structural aspects on what carries out the method or how the system is technologically an improvement to prior systems. Assuming generic computing was recited, such features would merely amount to an instruction to apply the abstract idea on generic, functional, and conventional computer components well-known in the art. The claims lack any specificity to impart any special technical features, improvements, or advances that lead to any reasonable interpretation that these additional elements are not merely conventional.
As such, the claims do not include something substantially more than the judicial exception. Generic computing elements utilized to automate or conduct an abstract idea that can be performed non-electronically is well-established as non-patent eligible in view of 35 U.S.C. 101.
The claimed elements taken as a whole perform the same functions when taken individually. 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. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014).
Claim Rejections - 35 USC § 112
Claims 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites both “each lottery ticket comprising a code that entitles a player to receive a game tile” and “wherein the code on each lottery ticket entitles the player to receipt of one of the game tiles” at two different instances in the claim, leading to indefiniteness as it appears either redundant or unclear whether the second iteration of the limitation is an attempt to claim scope pertaining to the player being entitled to another game tile for the same code.
Claim Rejections - 35 USC § 103
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Rogers et al. (U.S. Patent Application Publication No. 2016/010352; hereinafter “Rogers”) in view of Tangles – An Abstract Tile-Based Board Game (see PTO-892 citation, Archive.org copy dated May 15, 2022, hereinafter “Tangles”).
Claims 1 & 15: Rogers discloses systems and methods for playing a lottery bonus or second chance game that provides an opportunity for players in a primary lottery game to win an award in the bonus (paragraph 0029), including:
a plurality of tickets that are provided with a code that entitles a player to receive a game element for use in the bonus game(figure 3A-3E and paragraphs 0043-0049, wherein Rogers discloses primary game lottery tickets that have codes thereon entitling players to receive game elements in a bonus game);
a plurality of different game elements that can be provided to the player (figures 3A-3E and paragraphs 0043-0049, wherein Rogers discloses there are a plurality of game elements that players can obtain in association with a code);
a game board is made available to the player for use within the bonus game, the game board having a plurality of designated game spaces defined thereon (figure 3B and paragraphs 0013, 0045);
upon the player scanning the code on the lottery ticket, giving the player a game element associated with the lottery ticket (figures 3A-3E and paragraphs 0043-0049, wherein Rogers discloses a player “scans a code” – reading a code, for example – and enters the code to a website or the like, the player receives a game element, which can be collected and stored in association with a player account; see paragraphs 0014, 0042);
providing a set of rules or instructions governing the specificity of game play utilizing the game board and the game elements within the bonus game, such as the placement of a game element on the game board (figures 3A-3E and paragraphs 0009, 0031, 0043-0049, wherein Rogers discloses the bonus game has its own set of rules and is played separately from any of the primary lottery games); and
an award structure that facilitates the player receiving an award based a number of and the specificity of the collected game elements (paragraphs 3A-3E and paragraphs 0043-0049, wherein Rogers discloses an award structure that provides more entries for more game elements collected).
Thus, Rogers discloses an invention in which players can play bonus or second chance games in which game elements, that are obtained through the use of a code provided on primary or first game lottery ticket, are used to play a different game with a different set of rules to earn an award. Rogers, however, differs in that the bonus game is akin to the well-known Monopoly board game, such that the game board is a Monopoly game board (figure 3B) and that game elements are game symbols pertaining to properties and homes that are stored on the game board and enable players to earn awards such as entries in a drawing or the like.
However, Rogers does not explicitly disclose that:
(i) the game elements are game tiles, where different ones of the game tiles have different continuous graphic symbols thereon with a first end at a first side and of the game tile and a second end at the first side of the game tile or at the second side of the game tile,
(ii) the game rules instruct players to place game tiles on the game spaces of the game board, at any orientation, to create a closed-form shape defined by a continuous connection of the first and second ends of the graphic symbols between adjacent game tiles on the game board; and
(iii) the award structure of the game rules provides players with higher awards in the bonus game based on the number of game tiles used to complete the closed-form shape).
Notably, Rogers does disclose that the bonus game, within the scope and spirit of their invention, could be any other type of bonus game with a different set of rules than the primary lottery ticket games (paragraphs 0009, 0031, 0040, 0065).
The gaming industry has well-established similar types of games that involve game tiles and game rules that Rogers lacks. Tangles discloses one such game in which a player’s objective is to utilize game tiles that have graphics thereon of continuous lines having first and second ends to create a closed-form loop or shape by connecting the first and second ends (see figure and pages 2-3). Players earn points based on the number of tiles used to create the closed-form loop (pages 2).
Given Rogers’ desire on enabling their invention to any type of bonus game, the Examiner positions that it would have required only routine skill in the art to have implemented the Tangles game as the underlying type of game for the bonus game into the Rogers invention to have created an obvious variant in which lottery patrons can purchase lottery tickets that have codes thereon that entitle them to Tangles game tiles in a bonus game, playable on a game board having game spaces and the like, in order to place game tiles in any desired orientations to piece together different game tiles to create closed-form loops. Players would be motivated to continue to purchase primary lottery game tickets to obtain more codes and more game tiles in such an obvious variant, where the award structure resembles the Tangles points structure of higher bonus awards based on the number of game tiles utilized to create a closed-form loop or shape.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Rogers and Tangles to create an obvious variant of Rogers providing lottery game players of primary lottery tickets a second chance at winning an award with exciting and strategic puzzle-based game play that could entice lottery game players to purchase more tickets in an attempt to create larger or longer closed-form loops for larger prizes.
Claims 2, 3, 16, & 17: The combination of Rogers and Tangles discloses that the bonus game is a digital electronic game played by the player on a computer or mobile smart device, the game board and game tiles supplied to the player in digital form and the player has a personalized digital account with a lottery provider, the game board and game tiles stored in the player digital account (Rogers, paragraphs 0013-0014, 0017, 0042, 0049, wherein the Rogers architecture would enable similar functionality with the Tangles-like bonus game in the combination).
Claims 4 & 18: Rogers discloses that the game board contains a grid of the game spaces (figures 3B, 3E).
Claims 5-7 & 19: The combination of Rogers and Tangles discloses that the graphic symbol on each of the game tiles is at least a curved line that extends from the first side to the second side of the game tile and that the curved line is unidirectional such that the first end of a first game tile can connect with the first or second end of a second game tile (Tangles, see figure). The combination does not explicitly discuss directional lines or curved lines such that the first end of a first game tile can only connect with the second end of a second game tile, however, a person of ordinary skill in the art would have possessed the common knowledge to modify the combination to incorporate directional lines to increase the difficulty of the game play while maintaining substantially the same mechanics of providing game tiles that are used to create closed-form loops, such that it would have been obvious in light of ordinary skill in the art before the effective filing date of the claimed invention to have utilized directional lines in place of unilateral lines.
Claims 8-10 & 20: The combination of Rogers and Tangles discloses the invention substantially as claimed except for explicitly disclosing that (i) the game board includes at least one wildcard game space that connects the graphic symbol of any two game tiles at different sides of the wildcard game space, (ii) at least one wildcard game tile is available for possible receipt by the player, wherein the wildcard game tile can be used in any game space on the game board to connect the graphic symbol of any two game tiles, or (iii) the game board includes at least one blocked game space that is unavailable for placement of a game tile therein. Regardless of the deficiencies, the Examiner positions that such design considerations to make the game play of the bonus game more exciting or more challenging are common in the gaming art, such that countless games of different types utilizing wildcard aspects, free spaces, obstacles such as blocked spaces and many other similar minor adjustments to game boards and/or game mechanics in order to provide variations, enhancements, and challenges to players, thereby avoiding boredom with repeated play of the same game style. Those skilled in the art are well aware that providing such modifications help retain game players and increase excitement. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of Rogers and Tangles as detailed above.
Claims 11 & 12: The combination of Rogers & Tangles discloses that the game tile assigned to each lottery ticket is randomly selected from the plurality of different ones of the game tiles upon the code on the lottery ticket being scanned (Rogers, paragraphs 0017, 0049, wherein the Rogers architecture would enable similar functionality with the Tangles-like bonus game in the combination). The combination does not explicitly appear to disclose the game tile assigned to each lottery ticket is predetermined from the plurality of different ones of the game tiles. Regardless of the deficiency, the Examiner again positions that those having ordinary skill in the art would have found such an alternative to randomly assigning game tiles upon codes being scanned or type into the website of Rogers to have been assigned in a predetermined from a finite set to each lottery ticket. It is notoriously commonplace in the art to utilize finite sets in place of randomization, and vice versa, to create different variants of similar game play based on the specific desires of the game designer, such as game mathematics. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of Rogers and Tangles to utilize predetermined assignment of game tiles to lottery ticket codes versus random assignment, as is a well-established alternative for the same purpose in the art.
Claim 13 & 14: The combination of Rogers and Tangles discloses that the award in the bonus game is greater for a greater number of the game tiles used to complete the closed-form shape (i.e. Tangles teaches a point structure of higher points scored for greater number of game tiles used to complete the closed-form shape which translates in the combination to a similar award structure in the bonus game of the combination providing higher awards for using more tiles). The combination fails to explicitly disclose the alternative of the award in the bonus game is greater for a lesser number of game tiles used to complete the closed-form shape. Regardless of the deficiency, similarly to as discussed above with respect to random and predetermined tile assignment, the award structure pertaining to great or lesser number of tiles to create a closed-form shape being a higher award is merely an alternative approach for the same purpose of scoring or providing an award based on the number of game tiles used. Based on the game mathematics and design consideration, the award structure may better suit higher awards for fewer game tiles being used. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of Rogers and Tangles to modify the specificity of the award structure as desired based on certain game mathematic considerations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited (PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MILAP SHAH whose telephone number is (571)272-1723. The examiner can normally be reached Monday - Friday, 9:30-6PM.
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, KANG HU can be reached at 571-270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MILAP SHAH/Primary Examiner, Art Unit 3715