Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continuation
This is a continuation of pre-AIA application 12/020,838.
This parent application since issued as U.S. Patent. No.: 8,246,432 B2.
Response to Arguments/Amendment
This is responsive to the claim amendments filed 8/13/2026.
Claims 2-16 are pending.
Applicant’s arguments regarding the prior art are persuasive. (Remarks, 8/13/2026, Page 7). Specifically, as noted by Applicant, the closest prior art combination of Herbert and Schugar fails to render obvious the amended claim language.
Applicant’s arguments concerning double patenting been fully considered but are moot in view of the new grounds of rejection. Specifically, cancellation of pending claims, and replacement with newly added claims, resulted in a new double patenting rejection.
Regarding Section 101, Applicant argues the newly added claims cannot be practically performed in the human mind and recite more than organizing human activity. (Remarks, 8/13/2026, Page 7.) As explained in the updated grounds of rejection below, Examiner respectfully disagrees because the arrangement of data in a table is merely bookkeeping and a mental process. Or, bookkeeping that happens to use a GUI the latter still being implemented on generic and convetional computing devices.
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 2-16 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, CRM and 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 Claim 12 is analyzed below, with italicized limitations indicating recitations of an abstract idea (noting the claims 2 and 7 mirror this claim but for being drawn to different statutory classes.)
Claim 12: “ An apparatus comprising: a network interface; memory; at least one processor configured to: receive, by the at least one processor, data indicative of one or more bets associated with an event having a plurality of participants and a plurality of intermediate points; generate, by the at least one processor, a prediction matrix in the memory by populating cells of the prediction matrix with predicted positions of participants at the plurality of intermediate points, wherein each column of the prediction matrix indicates an intermediate point of each member of a subset of the plurality of participants during the event and each row of the prediction matrix represents a member of the subset of the plurality of participants, or vice versa; receive, by the at least one processor, actual position data for the plurality of participants at the plurality of intermediate points; compare, by the at least one processor, the predicted positions in the prediction matrix with the actual position data to identify matches; determine, by the at least one processor, a result based at least in part on locations of the identified matches within the prediction matrix; and award, by the at least one processor, a payout based on the determined result.”
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 claims require determining positions of race participants during race events, determining a game outcome based on the positions, determining game actions and providing indications of game actions. The claims require organizing this data in a table.
The claimed steps can be wholly performed in the human mind and are therefore an ineligible mental process. For example, a human can observe positions of participants during a race and use those positions to determine game outcomes. This requires no computing devices. A human can similarly use pencil and paper to create a table of bets, participants and intermediate race points. The human can observe a live race and populate the table.
“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. The interactions include determining positions of race participants, determining game outcomes based on these positions and indicating game outcomes. The claims are also drawn to a social activity, i.e., gaming.
Further, to the extent the claims are drawn to how a game is played, this also represents interactions between players and a social activity. It also represents following rules/instructions (i.e., rules defining how the game is conducted.)
Prong 2: Does the Claim recite additional elements that integrate the exception in to 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 computing system 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, the references relied on in the earlier prior art rejection3 show the conventionality of determining race participant positions during a race and using race positions to determine game outcomes. These references also show the conventionality of implementing such processes using computing devices.
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.4
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.
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 a mental process. 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.
Double Patenting
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.
Claims 2, 4, 5, 7, 9, 10, 12, 14 & 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 10 of U.S. Patent No.: 12,118,856 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. For example, see comparison of pending claims to their patented counterparts, below.
Examiner notes that pending Claim 7 is shown by the patented apparatus and process claims but for the statutory class being on a CRM. However, it would have been obvious to a person of ordinary skill in the art at the time of Applicant’s filing to have performed the patented apparatus and process claims using a memory device for the purpose of storing the executable instructions. This yields predictable results of causing a GUI to output content.
Pending Claim 2:
Patented Claim 10:
2. (New) A method comprising: receiving, by at least one processor, data indicative of one or more bets associated with an event having a plurality of participants and a plurality of intermediate points; generating, by the at least one processor, a prediction matrix in a memory by populating cells of the prediction matrix with predicted positions of participants at the plurality of intermediate points, wherein each column of the prediction matrix indicates an intermediate point of each member of a subset of participants during the event and each row of the prediction matrix represents a member of the subset of participants, or vice versa; receiving, by the at least one processor, actual position data for the participants at the plurality of intermediate points; comparing, by the at least one processor, the predicted positions in the prediction matrix with the actual position data to identify matches; determining, by the at least one processor, a result based at least in part on locations of the identified matches within the prediction matrix; and awarding, by the at least one processor, a payout based on the determined result.
10. A method comprising: receiving, by at least one processor, data indicative of a plurality of bets, each bet received from a customer, each bet corresponding to an intermediate position of a race participant during a race, each bet including a bet amount; determining, via a system platform, a payout criteria for the race; receiving, by at least one processor, data indicative of a selected payout criteria from the customers; selecting, with the system platform, a subset of the race participants, the selected subset of race participants being based on the payout criteria determined by the system platform; generating, by the at least one processor, a matrix in a memory such that each column of the matrix indicates an intermediate point of each member of the subset of race participants during the race and each row of the matrix represents a member of the subset of race participants; populating, by the at least one processor, each cell of the matrix with predicted positions of respective members of the subset of race participants at an intermediate point in the race; receiving, by the at least one processor, data indicating actual positions of the subset of race participants at intermediate points of the race from remote sensors via a network interface; comparing, by the at least one processor, the actual positions from the remote sensor with the predicted positions; identifying, by the at least one processor, matches between the actual positions and the predicted positions; identifying, by the at least one processor, whether a particular number of matches occur consecutively in the matrix; in response to the particular number of matches, awarding the received bet amounts to the customers according to the customers selected payout criteria; and calculating a total amount of the bets received from the customers.
Conclusion
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 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 See Office action 5/13/2026, Page 7.
4 Specifications: [0059] “It will be readily apparent to one of ordinary skill in the art that the various processes described herein may be implemented by, e.g., appropriately programmed general purpose computers, special purpose computers and computing devices. Typically a processor (e.g., one or more microprocessors, one or more microcontrollers, one or more digital signal processors) will receive instructions (e.g., from a memory or like device), and execute those instructions, thereby performing one or more processes defined by those instructions. Instructions may be embodied in, e.g., one or more computer programs, one or more scripts.” (Emphasis Added.)
5: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)
