CTNF 18/823,097 CTNF 83306 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Procedural Summary This is responsive to the claims filed 9/30/2024. Claims 1-20 are pending. Signed copies of the IDS’ are attached. The Drawings filed 9/3/2024 are noted. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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 PEG 1 : “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 workstreams 2 ; 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 controls 5 : 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 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 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 event 6 , (¶¶ 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 games 7 . 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 . 07-21-aia AIA Claim s 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 . Double Patenting 08-33 AIA 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-11 of U.S. Patent No. : 11,080,968 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims substantially disclose the pending claim limitations but for being drawn to method claims versus system claims. For example, see the claim chart below: Pending Claims: Patented Claims: 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. 2 . The system of claim 1, wherein the result of the play of the game comprises at least one of a game outcome of the play of the game and an award of the play of the game. 3 . The system of claim 1, wherein the modified parameter of the game comprises a modified component of a paytable associated with the game. 4 . The system of claim 1, wherein the modified parameter of the game comprises at least one of a feature activated in association with the game and an enhancement of an activated feature associated with the game. 5 . The system of claim 1, wherein the sporting event comprises a plurality of sporting events and the event occurring during the sporting event comprises a first event occurring during a first sporting event of the plurality of sporting events and a second event occurring during a second, different sporting event of the plurality of sporting events. 6 . The system of claim 1, wherein the event occurring during the sporting event comprises an outcome of a portion of the sporting event. 7 . The system of claim 1, wherein the memory device stores a plurality of further instructions that, when executed by the processor, cause the processor to cause the modified parameter of the game to persist until another event occurs in association with the sporting event. 8 . The system of claim 1, wherein an attribute of the modification of the parameter is based on an attribute of the event occurring during the sporting event. 9 . The system of claim 1, wherein an attribute of the modification of the parameter is based on an identification of a user associated with that play of the game. 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. 11 . The system of claim 10, wherein the result of the play of the game comprises at least one of a game outcome of the play of the game and an award of the play of the game. 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. 13 . The method of claim 12, wherein the result of the play of the game comprises at least one of a game outcome of the play of the game and an award of the play of the game. 14 . The system of claim 12, wherein the modified parameter of the game comprises a modified component of a paytable associated with the game. 15 . The method of claim 12, wherein the modified parameter of the game comprises at least one of a feature activated in association with the game and an enhancement of an activated feature associated with the game. 16 . The method of claim 12, wherein the sporting event comprises a plurality of sporting events and the event occurring during the sporting event comprises a first event occurring during a first sporting event of the plurality of sporting events and a second event occurring during a second, different sporting event of the plurality of sporting events. 17 . The method of claim 12, wherein the event occurring during the sporting event comprises an outcome of a portion of the sporting event. 18 . The method of claim 12, further comprising causing, by the processor, the modified parameter of the game to persist until another event occurs in association with the sporting event. 19 . The method of claim 12, wherein an attribute of the modification of the parameter is based on an attribute of the event occurring during the sporting event. 20 . The method of claim 12, wherein an attribute of the modification of the parameter is based on an identification of a user associated with that play of the game. 1. A gaming system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: prior to a play of a game and as a result of a game parameter modification event occurring in association with an outcome associated with a sporting event: modify a parameter of the game, and cause a display, by a display device, of the modified parameter, and for the play of the game occurring after the modification of the parameter of the game: determine a game outcome based at least in part on the modified parameter of the game, cause a display, by the display device, of the game outcome, determine, based on the game outcome, a game award, and cause a display, by the display device, of the game award. 2. The gaming system of claim 1, wherein the modified parameter of the game comprises a modified component of a paytable associated with the game. 3. The gaming system of claim 1, wherein the modified parameter of the game comprises a feature activated in association with the game. 4. The gaming system of claim 1, wherein the game is associated with a designated sports team of the sporting event and the game parameter modification event occurs based on the outcome associated with the sporting event occurring in association with that designated sports team of the sporting event. 5. The gaming system of claim 1, wherein the game is associated with a designated sporting event participant of the sporting event and the game parameter modification event occurs based on the outcome associated with the sporting event occurring in association with that designated sporting event participant of the sporting event. 6. The gaming system of claim 1, wherein the outcome associated with the sporting event comprises an outcome of a portion of the sporting event. 7. The gaming system of claim 1, wherein the sporting event is at least one of: a live sporting event, a historic sporting event and an electronic sporting event. 8. The gaming system of claim 1, wherein when executed by the processor, the instructions cause the processor to cause the modified parameter of the game to persist until an event occurs in association with the sporting event. 9. The gaming system of claim 1, wherein an amount of modification of the game parameter is based on the outcome associated with the sporting event. 10. The gaming system of claim 1, further comprising an acceptor, wherein when executed by the processor, the plurality of instructions cause the processor to, responsive to a physical item being received via the acceptor, modify a credit balance based on a monetary value associated with the received physical item, and responsive to a cashout input being received, cause an initiation of any payout associated with the credit balance. 11. A gaming system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: receive data associated with a plurality of events of a sporting event, based on a first event of the plurality of events occurring in association with the sporting event, modify a monetary amount awarded for a potential game outcome of a game, determine, for a play of a game, a game outcome, and based on a determination that the game outcome is the potential game outcome, award the modified monetary amount instead of an original monetary amount associated with the potential game outcome. Conclusion Additional Relevant References: See form PTO-892. 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 you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /OMKAR A DEODHAR/Primary Examiner, Art Unit 3715 Application/Control Number: 18/823,097 Page 2 Art Unit: 3715 Application/Control Number: 18/823,097 Page 3 Art Unit: 3715 Application/Control Number: 18/823,097 Page 4 Art Unit: 3715 Application/Control Number: 18/823,097 Page 5 Art Unit: 3715 Application/Control Number: 18/823,097 Page 6 Art Unit: 3715 Application/Control Number: 18/823,097 Page 7 Art Unit: 3715 Application/Control Number: 18/823,097 Page 8 Art Unit: 3715 Application/Control Number: 18/823,097 Page 9 Art Unit: 3715 Application/Control Number: 18/823,097 Page 10 Art Unit: 3715 Application/Control Number: 18/823,097 Page 11 Art Unit: 3715 Application/Control Number: 18/823,097 Page 12 Art Unit: 3715 Application/Control Number: 18/823,097 Page 13 Art Unit: 3715 Application/Control Number: 18/823,097 Page 14 Art Unit: 3715 Application/Control Number: 18/823,097 Page 15 Art Unit: 3715 Application/Control Number: 18/823,097 Page 16 Art Unit: 3715 Application/Control Number: 18/823,097 Page 17 Art Unit: 3715 Application/Control Number: 18/823,097 Page 18 Art Unit: 3715 Application/Control Number: 18/823,097 Page 19 Art Unit: 3715 Application/Control Number: 18/823,097 Page 20 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) o ne 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.
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