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 .
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,165,476. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations claimed within the current claims are already covered by the patented claims.
Specifically, both the claims of parent U.S. Patent No. 12,165,476 and the instant claims are directed to the identical underlying electronic tournament gaming architecture. Both claim sets recite a tournament management system (TMS) operably connected to a plurality of electronic gaming machines (EGMs) running in a tournament session, wherein each EGM stores both game code and tournament code. In both instances, the native game code determines base win amounts according to its standard pay-table, the client tournament code intercepts and transmits the win amounts in game result messages to the TMS, the TMS calculates tournament score values by applying a multiplier and the TMS returns score update messages to the EGMs for display via the tournament code.
The primary difference between representative independent claims 1, 8, and 15 of the present application and independent claims 1, 8, and 15 of U.S. Patent No. 12,165,476 is that the parent claims specifically recite that the multiplier applied at the TMS is a time-bounded “first all wins multiplier feature” that is simultaneously activated and deactivated across all participating devices at predetermined times, whereas the instant independent claims omit theses temporal activation and deactivation constraints and claim the broader genus of determining scores by multiplying the win amount by a “base multiplier”.
Omitting a non-critical operational timing limitation from an already patented combination to claim the broader generic concept of server-level multiplier scoring constitutes a broadening that is obvious over the patent claims. Furthermore, the lack of patentable distinction is confirmed, for example, by dependent claims 6, 7, 13, 14, and 20 of the present application, which explicitly re-introduce the simultaneously activated all-wins multipliers mode during a defined time interval, thereby claiming subject matter directly coextensive with the claims of U.S. Patent No. 12,165,476.
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 therefore, 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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without reciting additional elements that are sufficient to amount to “significantly more”.
The claims have been examined following the framework laid out by the 2019 Revised Patent Subject Matter Guidelines and set forth in MPEP 2106.
Step 1: Statutory Subject Matter Category:
Claims 1-20 are directed to subject matter which falls within one or more of the four statutory categories of invention recognized under 35 U.S.C. 101 (i.e., machine, manufacture, or process).
Step 2A, Prong One: Identification of the Judicial Exception:
A claim is directed to an abstract idea if it recites a concept corresponding to one of subject matter groupings set forth in MPEP 2106.04(a): Mathematical Concepts, Certain Methods of Organizing Human Activity, or Mental Processes.
Independent claim 1 (as well as independent claims 8 and 15 which include substantially similar features, and to which the following conclusion is also applicable), is reproduced below with each abstract limitation in bold, accompanied by notations identifying the specific judicial exception grouping recited:
1. A system comprising:
a tournament management system (TMS) comprising:
one or more TMS processors, and
one or more TMS memory devices,
the one or more TMS memory devices store computer-executable instructions which, when executed by the one or more TMS processors, cause the one or more TMS processors to:
receive game result messages from a plurality of electronic gaming machines (EGMs), wherein each game result message indicates a corresponding win amount (Certain Methods of Organizing Human Activity),
generate, for each received game result message, a corresponding tournament mode score amount based on the corresponding win amount for that game result message, wherein each corresponding tournament mode score amount is determined by at least multiplying the corresponding win amount by a base multiplier such that each corresponding tournament mode score amount is different from the corresponding win amount (Mathematical Concepts and/or Certain Methods of Organizing Human Activity and/or Mental Processes), and
send, for each game result message received from each EGM, a corresponding score update message back to that EGM, wherein the score update message indicates the corresponding tournament mode score amount for the corresponding win amount indicated in that game result message (Certain Methods of Organizing Human Activity); and
the plurality of EGMs, each EGM comprising:
one or more EGM display devices,
one or more EGM processors, and
one or more EGM memory devices, wherein, for each EGM:
the one or more EGM memory devices of that EGM store tournament code and game code,
the game code comprises computer-executable instructions which, when executed by the one or more EGM processors of that EGM, cause the one or more EGM processors to:
present graphical content for a wagering game to be displayed on the one or more EGM display devices of that EGM (Certain Methods of Organizing Human Activity),
determine, when the EGM is operating in a non-tournament mode or a tournament mode, a win amount for each outcome resulting from play of the wagering game on that EGM that is one of one or more winning outcomes (Certain Methods of Organizing Human Activity and/or Mental Processes), and
cause the win amounts to be displayed by the one or more EGM display devices of that EGM when that EGM is operated in the non-tournament mode,
the tournament code comprises computer-executable instructions which, when executed by the one or more EGM processors of that EGM while that EGM is operated in the tournament mode during a tournament session, cause the one or more EGM processors to:
generate and send, for at least each outcome on that EGM that is one of the one or more winning outcomes, the game result message indicating the corresponding win amount associated with that outcome to the TMS and generated by the game code of that EGM (Certain Methods of Organizing Human Activity),
receive, from the TMS, the corresponding tournament score update message from the TMS for each of the game result messages sent by that EGM to the TMS, and
cause the tournament mode score amount indicated by each corresponding tournament score update message received by that EGM to be displayed by the one or more EGM display devices of that EGM.
The limitations in claim 1 (as well as claim(s) 8 and 15), as indicated above, explicitly recite abstract ideas which fall squarely within the following enumerated groupings:
Mathematical Concepts: According to the 2019 Revised Patent Subject Matter Eligibility Guidance, Mathematical Concepts include mathematical formulas, mathematical calculations, and mathematical relationships or operations. The instant claims include at least limitations which constitute a mathematical calculation (e.g., “generate, for each received game result message, a corresponding tournament mode score amount… wherein each corresponding tournament mode score amount is determined by at least multiplying the corresponding win amount by a base multiplier…”). These limitations are directed to a mathematical concept because they explicitly recite an arithmetic multiplication operation, as indicated above;
Certain Methods of Organizing Human Activity: According to the 2019 Revised Patent Subject Matter Eligibility Guidance, Certain Methods of Organizing Human Activity include fundamental economic principles or practices, commercial or legal interactions, managing personal behavior or relationships or interactions between persons, and game rules. The instant claims include limitations that constitute game rules and the management of multiplayer interactions (e.g., “receive game result messages from a plurality of electronic gaming machines…”, “generate, for each received game result message, a corresponding tournament mode score amount…”, “send, for each game result message received from each EGM, a corresponding score update message back to that EGM…”, “present graphical content for a wagering game to be displayed on the one or more EGM display devices of that EGM”, “determine…a win amount for each outcome resulting from play of the wagering game on that EGM that is one of one or more winning outcomes”, and “generate and send…the game result message indicating the corresponding win amount associated with that outcome to the TMS and generated by the game code of that EGM”). These limitations are directed to Certain methods of Organizing Human Activity because they explicitly recite rules for wagering game play, scoring schemes governing a tournament event, and the administrative coordination of competitive interactions among multiple players; and
Mental Processes: According to the 2019 Revised Patent Subject Matter Eligibility Guidance, Mental Processes include concepts performed in the human mind, as well as operations that can practically be performed in the human mind or with a pen and paper. The instant claims include limitations that constitute steps that could practically be performed in the human mind or by a human using pen and paper (e.g., “generate, for each received game result message, a corresponding tournament mode score amount based on the corresponding win amount… determined by at least multiplying the corresponding win amount by a base multiplier…”, and “determine, when the EGM is operating in a non-tournament mode or a tournament mode, a win amount for each outcome resulting from play of the wagering game on that EGM that is one of one or more winning outcomes”). These limitations are directed to a Mental Process because observing a game outcome, evaluating the game outcome against a payout schedule to determine a win, and scaling that win amount by a multiplier value can all be carried out mentally or manually recorded using a pen and paper by a human observer.
Regarding dependent claims DEPENDENT CLAIM NUMBERS:
Each claim is dependent either directly or indirectly from the independent claim identified above and includes all the limitations of said independent claim. Therefore, each dependent claim recites the same abstract idea as identified above. Each of the dependent claim further describes additional aspects of the abstract idea, i.e., additional aspects to the Mathematical Concepts and/or Mental Processes and/or Certain Methods of Organizing Human Activity. For example, some dependent claims merely provide additional Mathematical Concepts and/or Mental Processes and/or Certain Methods of Organizing Human Activity to be performed and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101.
Step 2A-2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
-Applying or using 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 - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Claims 1-20 clearly do not improve the functioning of a computer, as they only incorporate generic computing elements, do not effect a particular treatment, and do not transform or reduce a particular article to a different state or thing. Similarly, there is no improvement to a technical field. In addition the claims do not apply the judicial exception with, or by use of a particular machine. The claims do not apply or use the judicial exception in a meaningful way. The claimed invention does not suggest improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05 (a)).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (MPEP 2106.05 (h)). The claimed computer components are recited at a level of generality and are merely invoked as tool to perform the abstract idea. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
For the reasons as discussed above, the claim limitations are not integrated to a practical application.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of “one or more TMS processors, one or more TMS memory devices, a plurality of electronic gaming machines (EGMs), one or more EGM display devices, one or more EGM processors, and one or more EGM memory devices storing tournament code and game code”, etc. used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility. These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
In addition to the abstract ideas indicated above, the claims include additional elements, such as:
“receive, from the TMS, the corresponding tournament score update message from the TMS for each of the game result messages sent by that EGM to the TMS”; and
“cause the tournament mode score amount indicated by each corresponding tournament score update message received by that EGM to be displayed by the one or more EGM display devices of that EGM”.
As claimed, these additional elements are viewed as mere routine data gathering, network transmission, and post-solution displaying, which is a form of insignificant extra-solution activity and thus does not integrate the judicial exception into a practical application (See MPEP 2106.05(g)).
Further, the claims would require structure that is beyond generic, such as structure that can be interpreted analogous to a general-purpose structure and general purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims. See Alice Corp. v. CLS Bank International, 134 S. Ct. at 2358-59. The elements of one or more processors, one or more memory devices, and one or more EGM display devices, are well known conventional devices used to electronically implement a game as evidence by U.S. 2004/0043813, which discloses that a conventional gaming machine comprises elements such as one or more processors, one or more memory devices, and one or more EGM display devices to control the overall operation of the gaming machine (¶20, ¶41, ¶62-63). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The dependent claims do not add “significantly more” for at least the same reasons as directed to their respective independent claims, at least based on the position, as discussed above, that each of the dependent claims merely provide additional limitations to further expand the abstract idea of the independent claims, without adding anything which would establish eligibility under 35 U.S.C. 101.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Applicant is directed to the attached "Notice of References Cited" for additional relevant prior art. The Examiner respectfully requests the Applicant to fully review each reference as potentially teaching all or part of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON PINHEIRO whose telephone number is (571)270-1350. The examiner can normally be reached M-F 8:00A-4:30P ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached on (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason Pinheiro/Examiner, Art Unit 3715
/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715
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