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 Status
Claims 1-20 are currently pending; and Claims 10 and 11 have been withdrawn, such that Claims 1-9 and 12-20 are presented for examination on the merits.
Priority
Applicant's claim for the benefit of U.S. patent application 17/563,845, filed December 28, 2021, under 35 U.S.C. 120 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/29/2024 was filed before the filing of a first office action on the merits. As such, the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objections
Specification
A title header is unnecessary. The title “should appear as a heading on the first page of the specification (37. C.F.R. § 1.72), and need not be presented along with inventor names, etc. As a note, the Office will not publish the header “United States Patent Application For” and the inventor names.
The abstract of the disclosure is objected to for failing to describe the disclosure in sufficient detail. A brief narrative of the disclosure as a whole is required. See MPEP § 608.01(b). Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
Claim objections
Claim 1 is objected to at “at at least an electronic gaming machine”; is this correct or shout it be “at at least one . . .”?
Claim 6 is objected to at “identifier users;” is this correct or should it be “identify users”? Appropriate correction/clarification is required.
Election/Restrictions
1. Restriction to one of the following inventions is required under 35 U.S.C. § 121.
I. Claims 1-9, and 12-20, drawn to a device and method of operating a device for anonymous procurement of a ticket voucher; and
II. Claims 10 and 11, drawn to a ticket voucher system (for interfacing with the device of Invention I.
2. The inventions are distinct, each from the other because of the following reasons:
Inventions I, and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I has separate utility such as for example, the other functionalities of the device (e.g., mobile phone) as understood by one of ordinary skill in the art. Likewise, subcombination II has separate utility such as, for example, the other functionalities offered by a gaming kiosk/ticket dispenser found in casinos, the ticket dispensed may provide information or be used in a separate manner.
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombinations will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any clam presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
3. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. § 103(a) of the other invention(s).
4. Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) The inventions have acquired a separate status in the art in view of their different classification;
(b) The inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) The inventions require a different field of search (for example, searching different classes/subclasses or electronic resource, or employing different search queries);
(d) The prior art applicable to one invention would not likely be applicable to another invention; and
(e) The inventions are likely to raise different non-prior art issues under 35 U.S.C. § 101 and/or § 112, ¶ 1.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the election. A telephone call was made to the attorney of record (Atty. Holby Abern) on April 9, 2026 to request an oral election to the above restriction requirement. Invention I was elected by Atty. Abern.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention.
Double Patenting
Claim 1-9, and 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 12-20 of U.S. Patent No. 12,159,325. Although the claims at issue are not identical, they are not patentably distinct from each other because the broader instant claims recite the same limitations contained in the narrower claims of the parent application (i.e., Patent ‘325). Instant device claim 1 and method claim 12 track claims 1 and 12 of the parent, respectively; while the dependent claims have similar counterparts in the parent. As such, the instant claims are obvious in light of the parent claims.
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 reLongi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Omum, 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(1)(1) - 706.02(1)(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 e-Terminal 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.
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 1-9, and 12-20 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under the 2019 PEG, October update. The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under the 2019 PEG, step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps are directed towards using a financial account to obtain an item (e.g., tickets, stamps, vouchers, cash, etc.) without the merchant or proprietor (e.g., gaming establishment) knowing. This is a long-standing commercial practice previously performed by humans (e.g., third-party vendors, etc.) manually and via mental steps. For example, third party vendors, such as the US Postal service have established kiosks that enable purchasers to purchase stamps anonymously to the merchant or owner, wherein said stamps may be used to further conduct a transaction with the owner. Similarly, game tokens purchased at a kiosk at an amusement park may be done so anonymously to the park, and then later used to further conduct a transaction with the park. See also, the purchase of airtime minutes for later use with a telecommunications operator. As such, the inventions include an abstract idea under the 2019 PEG, and Alice Corporation.
For example, the extraneous limitations of Claim 1 are presented in bold below:
A device comprising:
a processor; and
a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
interface with a server of a financial institution to communicate data associated with an amount of funds to purchase an anonymous ticket voucher, and
responsive to a completion of a transfer of the amount of funds from a financial account associated with a user and maintained independent of any gaming establishment:
interface with a gaming establishment ticket voucher system to cause, based on the amount of funds, a modification of an account associated with the gaming establishment ticket voucher system, and
interface with the gaming establishment ticket voucher system to cause a creation of the anonymous ticket voucher associated with the amount of funds, wherein the created anonymous ticket voucher is redeemable at at least an electronic gaming machine to increase, based on the amount of funds, a credit balance of the electronic gaming machine to enable a wager of at least a portion of the amount of funds.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure –a system, a processor, a memory device, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use, such as ticket vouchers in casinos (MPEP 2106.05(h)), and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims (e.g., the structure, ticket vouchers, and gaming establishment, an anti-money laundering regulatory obligation, etc.) either further delineate the abstract idea, recite insignificant extra-solution activity, or instruct the artisan to apply it (the abstract idea) across generic computing technology, and the like. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 7-9, 12-16, and 18-20 are rejected under § 102(a)(1) as being anticipated by US 2016/0055322 to Thomas.
With respect to Claim 1, 10, and 12, Thomas teaches a method (FIGS. 4,5,8,9) and system (FIG. 1-3, 10) comprising: a processor (FIG. 10); and a memory device (FIG. 10) that stores a plurality of instructions that, when executed by the processor responsive to a request received from a user to purchase ([0200-202];[0223]) a ticket voucher associated with an amount of funds ([0244]), cause the processor to: communicate, to a server of a financial institution ([0063]; [0086];FIG. 10, 1030; [0224]), data associated with the amount of funds ([0244]), and data associated with a financial account associated with the user ([0152];[0243]), wherein the financial account is maintained by the financial institution independent of any gaming establishment ([0081], gaming service; [0243]), and responsive to a completion of a transfer of the amount of funds from the financial account: interface with a gaming establishment ticket voucher system to cause, based on the amount of funds, a modification of an account associated with a gaming establishment ticket voucher system ([0163], loyalty program is an account that is credited by the gaming establishment) and interface with the gaming establishment system to cause a creation ([0244]), by the gaming establishment ticket voucher system, of the ticket voucher associated with the amount of funds.
With respect to Claims 2 and 13, Thomas teaches wherein the ticket voucher comprises a virtual ticket voucher. [0244]
With respect to Claims 3, and 14, Thomas teaches wherein the virtual ticket voucher is distributed to the user via a communication of data associated with the virtual ticket voucher to a mobile device associated with the user. [0244]
With respect to Claim 4, and 15, Thomas teaches wherein the data associated with the amount of funds to purchase the voucher is received from a mobile device. ([0084];FIG. 1, 102b)
With respect to Claims 5, and 16, Thomas teaches wherein the data associated with the amount of funds to purchase the voucher is received via a kiosk. (FIG. 1, 102a)
With respect to Claim 7 and 18, Thomas teaches wherein the creation of the anonymous ticket voucher associated with the amount of fund occurs independent of identifying any user to any gaming establishment patron management system ([0152], anonymous).
With respect to Claims 8, and 19, Thomas teaches wherein the virtual ticket voucher is distributed to the user via a communication of any of an email associated with the virtual ticket voucher and an SMS message associated with the virtual ticket voucher. ([0143-144];[0231], email address)
With respect to Claim 9, and 20, Thomas teaches wherein the created paper ticket voucher is distributed to the user via a ticket voucher printer of a kiosk. ([0227], printer; computing system 1100 with input and printer teaches a kiosk; [0121])
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 (i.e., changing from AIA to pre-AIA ) 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 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 6 and 17 are rejected under 35 USC § 103, as being unpatentable over Thomas, in view of US 2019/0164384 to Soukup et al.
With respect to Claims 6, and 17, Thomas fails to expressly teach, but Soukup teaches wherein the creation of the anonymous ticket voucher associated with the amount of funds occurs in compliance with an anti-money laundering regulatory obligation to identifier users associated with an electronic fund transfer involving the gaming establishment. [0156] Soukup discusses the problems surrounding casino gaming tracking systems, including that they are laborious and expensive to maintain. [0005] It would have been obvious to one of ordinary skill in the art to modify Thomas to include consideration of anti-money laundering compliance, in order to improve upon the problems associated with gaming tracking systems including their expense. That is to say, non-compliance with such regulation would incur even greater expenses (e.g., fines).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Namrata Boveja can be reached on 5712728105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). 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.
/WILLIAM J JACOB/Examiner, Art Unit 3696
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