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 .
Response to Arguments
Applicant’s filing of a terminal disclaimer (8/4/2026) overcomes the double patenting rejections.
Regarding § 101, Applicant argues that the claimed solution addresses the particular problem of a sporting event being a passive viewer activity that does not integrate with providing wagering games. (Remarks, 8/4/2026, Pages 6-7.) Examiner respectfully disagrees for several reasons:
First, Alice and its progeny require a technical solution to a technical problem rooted in the art. Here, the issue of coupling the viewing of sporting events like football games to wagering events like poker or slots is not a technical problem. Additionally, prior art relied on to Simon shows a live football game outcome’s affecting poker payouts. Thus the prior art already integrated the concept of viewing a sporting event with chance gaming payouts. Therefore, Examiner cannot agree that the claims provide a technical solution to technical problem arising in the art.
Applicant also argues a specific improvement in technology and cited to Bascom, (Remarks, 8/4/2026, Page 8.) Examiner respectfully disagrees because as explained in the Office action, Applicant is utilizing generic and well-known computing elements to implement a wholly abstract idea. As cited below, the Specifications make clear that generic personal computers are used to implement the claims.
Regarding the prior art, Applicant argues that Simon fails to show a modification that persists across multiple game plays. (Remarks, 8/4/2026, Page 9.) Examiner respectfully disagrees because Simon makes explicit, for example, the QB card accumulates value from passing yards/downs, the values change as the drive progresses, and player continue betting on those values during the drive. And, the QB card is worth points that persist across the wagering round. (See Simon, e.g., ¶ 107.)
Thus, the rejections are respectfully maintained.
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 the claimed invention is directed to non-statutory subject matter.
Step 1:
The claims are drawn to process & apparatus categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claims 1, 10 & 12 are analyzed below, with italicized limitations indicating recitations of an abstract idea:
Claim 1: “A system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: for a period of time after a receipt of data associated with an event occurring during a sporting event, cause a modification of a parameter of a game occurring independent of the sporting event, and for each play of the game during the period of time, cause a determination of a result of that play of the game to be based at least in part on the modified parameter.”
Claim 10: “A system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: for a period of time after a receipt of data associated with an event not occurring during a sporting event, cause a modification of a parameter of a game occurring independent of the sporting event, and for each play of the game during the period of time, cause a determination of a result of that play of the game to be based at least in part on the modified parameter.”
Claim 12: “A method of operating a system, the method comprising: for a period of time after a receipt of data associated with an event occurring during a sporting event, causing, by a processor, a modification of a parameter of a game occurring independent of the sporting event, and for each play of the game during the period of time, causing, by the processor, a determination of a result of that play of the game to be based at least in part on the modified parameter.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG1:
“Mental Processes”: concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
The claimed invention is drawn to systems and methods that modify a parameter of a game based on an event occurring (or not occurring) during an sporting event. The claims recite that for each play of the game during a period of time after receiving data associated with a sporting evet, the game play result is determined based on a modified parameter.
Here, the claimed invention can be practically performed as a mental process in the human mind: The claimed invention reads on a sporting event’s occurrence (or lack thereof) modifying a wagering game. For example, a human can observe a football game and offer doubled payouts on a casino-style game based on a particular team leading at halftime. This requires no machine nor computer implementation.
“Certain Methods Of Organizing Human Activity”: managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
The claims are drawn to managing interactions between people, i.e., player of a game. Managed interactions include how the occurrence (or lack thereof) of an event in a sporting event affect a game played by people. This also represents a social activity and following rules defining how the claimed game is implemented.
The claims also represent a method of exchanging consideration based on probabilities created during the dealing and displaying of outcomes in a wagering game; a fundamental economic practice. Here, the claims involve the occurrence of an event in a sporting event affecting awards during a wagering game.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Does the Claim recite additional elements that integrate the exception into a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations drawn to a gaming system (slot machine) with a processor and memory, (a GUI),
These additional limitations:
Do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a));
Fail to recite an improved way of training a machine learning model that protected the model’s knowledge about previous tasks while allowing it to effectively learn new tasks, and do not recite improvements to computer component or system performance based upon adjustments to parameters of a machine learning model associated with tasks or workstreams2;
Do not apply the exception using a particular machine, (MPEP 2106.05(b)) and
Fail to effect a transformation. (MPEP 2106.05(c)).
Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, Perrie et al. (U.S. Pub. No.: 2001/0031659 A1) shows the conventionality of gaming computing systems including slot machines with GUIs. These elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Additionally, Applicant’s Specifications acknowledge that generic devices including desktop computers are used to implement the claimed invention.3
It is noted that Applicant’s Specifications disclose several differences between general computing devices and electronic gaming machines.4 However, the present claims do not recite any features distinguishing them from general computing devices. Rather, the claims require gaming systems with processors and memory. And, as described above, this only requires GUIs.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they only recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls5:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
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 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6, 8-15, 17, 19 & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Simon (US 2010/0259005) in view of Perrie (US 2001/0031659).
Regarding Claims 1, 10 & 12: Simon discloses a method and system, (¶¶ 15, 18, 23) that, for a period of time after a receipt of data associated with an event occurring during a sporting event6, (¶¶ 10, 11, 14), cause a modification of a parameter of a game occurring independent of the sporting event, (¶ 18), and for each play of the game during the period of time, cause a determination of a result of that play of the game to be based at least in part on the modified parameter, (¶ 18).
Simon discloses the invention substantially but does not make explicit a gaming system with a processor and a memory device that stores a plurality of instructions for implementing games7. In a related invention, Perrie in at least ¶ 31 evidences the conventionality of gaming systems/slot machines with bill acceptors. It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s filing to have provided Simon’s game on a casino-style machine as suggested by Perrie, for several reasons including ensuring that a game satisfies regulatory requirements.
Regarding Claims 2 & 11: See Simon, Abstract.
Regarding Claims 3 & 13-15: See Simon, e.g., Figs. 6A/B and related descriptions.
Regarding Claims 6 & 17: See Simon, Abstract.
Regarding Claims 8, 9, 19 & 20: See Simon, e.g., Figs. 6A/B and related descriptions.
Claims 7 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over Simon (US 2010/0259005) in view of Perrie (US 2001/0031659) as applied to Claim 1, in further view of Walker (US 2006/0040730).
Simon and Perrie show the invention substantially but do not make explicit that the modified parameter of the game persists until an event occurs in the sporting event. However, Walker shows that it is known in the art for video poker games to include persistent game modifiers, (Walker, ¶ 396.) It would have been obvious to a person of ordinary skill in the art at the time of Applicant’s filing to have operated Simon’s game such that a higher value poker card (e.g., any of the cards shown in Simon’s Fig. 6), may persist until the end of the sporting event, as suggested by Walker, for the purpose of creating a bonusing effect, thereby maintaining player interest. As explained above with respect to multipliers, bonusing features are found in numerous casino slot-machine games and their usage yields predictable and expected results.
Conclusion
Additional Relevant References: See form PTO-892.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached on M-F, generally 9am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached on 571-272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 See MPEP 2106
2 Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential)
3 Specifications: [0081] The present disclosure contemplates a variety of different gaming systems each having one or more of a plurality of different features, attributes, or characteristics. A “gaming system” as used herein refers to various configurations of: (a) one or more central servers, central controllers, or remote hosts; (b) one or more electronic gaming machines such as those located on a casino floor; and/or (c) one or more personal gaming devices, such as desktop computers, laptop computers, tablet computers or computing devices, personal digital assistants, mobile phones, and other mobile computing devices. Moreover, an electronic gaming machine (“EGM”) as used herein refers to any suitable electronic gaming machine which enables a player to play, amongst any other games, a game of skill (or a game of partial skill), wherein the EGM comprises, but is not limited to: a slot machine, a video poker machine, a video lottery terminal, a terminal associated with an electronic table game, a video keno machine, a video bingo machine located on a casino floor, a sports betting terminal, or a kiosk, such as a sports betting kiosk.” (Emphasis Added.)
4 Specifications, e.g., ¶¶ 166-185.
5: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)
6 Simon anticipates the event not occurring: for example, if a touchdown is not achieved, card 602 will not award game points for a touchdown, but rather will award game points (if at all) for rushing yards.
7 It is noted that Simon does broadly show computing systems for providing games, e.g., ¶ 23, but in interest of promoting prosecution, Examiner is relying on a traditional casino-style gaming machine as required by Applicant’s Specifications.
