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 Interpretation
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“smart wager module” in claims 1-4 and 9-12.
“arbiter module” in claims 1-2 and 9-10.
“lightning service provider manager” in claims 1 and 6.
“oracle module” in claims 1, 7 and 9.
“user matchmaker module” in claims 2 and 10.
“wager resolution module” in claims 2 and 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-14 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 limitations “smart wager module”, “arbiter module”, “lightning service provider manager”, “oracle module”, “user matchmaker module” and “wager resolution module” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The nature of these modules and manager is never clearly delineated and no clear corresponding structure, material, or acts is defined for these modules and managers. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception. The claims will be analyzed with respect to the Subject Matter Eligibility Test at MPEP§2106.
Subject Matter Eligibility – Step 1 (see MPEP§2106.03)
The claims recite one of the four statutory categories of subject matter.
Subject Matter Eligibility – Step 2A Prong 1 (see MPEP§2106.04(a-c))
The claims recite abstract ideas in the following categories;
Methods of organizing human activity such as fundamental economic principles or practices (including hedging, insurance, mitigating risk) see specifically ii. rules for conducting a wagering game, In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016).
Mental processes (MPEP§2106.04(a)(2)III) (hereinafter “MP”).
The abstract ideas have been noted in the claims below.
Regarding claim 1, a system for facilitating a non-custodial, peer-to-peer wagered event for users (game rules for a wager), the system comprising: an arbiter module configured to facilitate a selection of wagering terms (game rules for conducting the wager; mental process of selecting/identifying wagering terms, e.g. flip a coin?); a smart wager module configured to create and manage smart contracts that comprise the wagering terms (game rules for managing the wager; mental process of noting a wager, e.g. heads I win); a lightning service provider manager module configured to ensure a payment capacity and a liquidity, thereby allowing a settlement of the smart contracts (game rules for ensuring resolution of the wager; mental process of checking if the money to satisfy the wager is there, e.g. do you have that twenty on you right now?); and an oracle module to verify and confirm a validity of the wagered event (game rules for wager resolution; mental process of checking the result, e.g. looks like the coin landed heads pay up).
Regarding claim 2, the system according to claim 1, wherein the arbiter module comprises: a wager advertiser configured to publish available wagers to users via an interface, application programming interface (API), and/or social media applications thereby facilitating the users’ engagement in the wagered event under the wagering terms (game rules regarding how the game is to be displayed/advertised; mental process of telling people about the wager); a user matchmaker module configured to link users according to the users’ selected the wagering terms (game rules; and a wager resolution module configured to interact with the smart wager module when determining a winner settling the wagered event (game rules for wager resolution; mental process of checking the result, e.g. looks like the coin landed heads pay up).
Regarding claim 3, the system according to claim 1, wherein the smart wager module comprises a smart contract creator configured to initiate a smart contract prior to the wagered event and to create a secret, the secret being a private key or a value (game rules regarding the open/private nature of the wager and player validation; mental process of remembering who placed the wager.).
Regarding claim 4, the system according to claim 3, wherein the smart wager module further comprises a smart wager application programming interface (API) having a protocol web hooks and web requests to send and receive notifications about the wagered event (game rules regarding implementation).
Regarding claim 5, the system according to claim 3, wherein the smart contract comprises Discreet Log Contract (DLC), Escrowed Hashed Time-Locked Contract, Escrowed Point Time-Locked Contract; Escrowed (Hold on for Dear Life) HODL Invoice, and Just-in-Time Escrow Contract (game rules regarding implementation).
Regarding claim 6, the system according to claim 1, wherein the lightning service provider manager module comprises: a capacity manager configured to maintain a cryptocurrency node and ensure a sufficient number of channels are available to meet a demand; and a liquidity manager configured to provide a sufficient amount of currency being available on the cryptocurrency node to facilitate payments through the cryptocurrency node (game rules regarding implementation; mental process of making sure that the wager can be covered and paid).
Regarding claim 7, the system according to claim 1, wherein the oracle module comprises an event verifier that determines a validity of the wagered event in an online environment by comparing event actions to anticipated outcomes generated by the wagered event (game rules regarding implementation; mental process of verifying that the event occurred according to the wager terms).
Regarding claim 8, the system according to claim 1, wherein the wagered event is an online game wagering, a sports betting event or a community wagered event (game rules regarding the type of wager; mental process limiting the range of wagers that will play).
Regarding claims 9-14, these claims recite abstract ideas as noted above regarding claims 9-14, mutatis mutandis.
Subject Matter Eligibility – Step 2A Prong 2 (see MPEP§2106.04(d))
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements are generic computer hardware; insignificant extra solution activity such as collecting information, analyzing it, and displaying certain results of the collection and analysis to data; and the use of software to tailor information and provide it to the user on a generic computer. These additional elements individually and in combination provide for limitations that do not integrate the judicial exception into a practical application. These additional elements (1) add “insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g)” (MPEP§2106.04(d)I) and (2) generally link “the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).” (MPEP§2106.04(d)I).
These additional elements individually and in combination are not limitations that provide for “improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);” (MPEP§2106.04(d)I) apply or use the “judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);” (MPEP§2106.04(d)I) implement the “judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);” (MPEP§2106.04(d)I) effect “a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c);” (MPEP§2106.04(d)I) or apply or use “the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).” (MPEP§2106.04(d)I). As such the claims as a whole do not integrate the judicial exception into a practical application.
Subject Matter Eligibility – Step 2B (see MPEP§2106.05)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are well-understood, routine and conventional generic computer hardware and insignificant extra solution activity (see MPEP§2106.05).
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Pub. 2020/0027315 by Cotton.
Regarding claim 1, Cotton discloses a system for facilitating a non-custodial, peer-to-peer wagered event for users (para. 73-76 – see decentralized peer-to-peer wagering), the system comprising: an arbiter module configured to facilitate a selection of wagering terms (para. 77 – see wagering terms); a smart wager module configured to create and manage smart contracts that comprise the wagering terms (para. 77-79 – see the smart wager as operated by the smart contract); a lightning service provider manager module configured to ensure a payment capacity and a liquidity, thereby allowing a settlement of the smart contracts (para. 73-74 – see facilitating payment and transfer of wagering funds); and an oracle module to verify and confirm a validity of the wagered event (para. 76 – see oracles).
Regarding claim 2, Cotton discloses the system according to claim 1, wherein the arbiter module comprises: a wager advertiser configured to publish available wagers to users via an interface, application programming interface (API), and/or social media applications thereby facilitating the users’ engagement in the wagered event under the wagering terms; a user matchmaker module configured to link users according to the users’ selected the wagering terms; and a wager resolution module configured to interact with the smart wager module when determining a winner settling the wagered event (para. 73-76 – see wager offering and agreement between parties and settlement via oracles).
Regarding claim 3, Cotton discloses the system according to claim 1, wherein the smart wager module comprises a smart contract creator configured to initiate a smart contract prior to the wagered event and to create a secret, the secret being a private key or a value (para. 73-76 – see smart contract formation between parties).
Regarding claim 4, Cotton discloses the system according to claim 3, wherein the smart wager module further comprises a smart wager application programming interface (API) having a protocol web hooks and web requests to send and receive notifications about the wagered event (para. 73-79 – see facilitation of payment and notice to payees via payment).
Regarding claim 5, Cotton discloses the system according to claim 3, wherein the smart contract comprises Discreet Log Contract (DLC), Escrowed Hashed Time-Locked Contract, Escrowed Point Time-Locked Contract; Escrowed (Hold on for Dear Life) HODL Invoice, and Just-in-Time Escrow Contract (para. 73-79 – see escrow facilitation).
Regarding claim 6, Cotton discloses the system according to claim 1, wherein the lightning service provider manager module comprises: a capacity manager configured to maintain a cryptocurrency node and ensure a sufficient number of channels are available to meet a demand (para. 8-9 – see the accepted contracts and odds); and a liquidity manager configured to provide a sufficient amount of currency being available on the cryptocurrency node to facilitate payments through the cryptocurrency node (para. 76 – see cryptocurrency transfer).
Regarding claim 7, Cotton discloses the system according to claim 1, wherein the oracle module comprises an event verifier that determines a validity of the wagered event in an online environment by comparing event actions to anticipated outcomes generated by the wagered event (para. 12-14, 76 – see oracle resolution).
Regarding claim 8, Cotton discloses the system according to claim 1, wherein the wagered event is an online game wagering, a sports betting event or a community wagered event (para. 73 – see sports gambling).
Regarding claims 9-14, these claims are rejected by Cotton as noted above regarding claims 1-8, mutatis mutandis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
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/PETER J IANNUZZI/ Primary Examiner, Art Unit 3715