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 1-9 and 12-20 are currently pending and presented for examination on the merits.
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 . . .”? Please offer explanation as to the intended scope.
Claim 6 is objected to at “identified users;” please change to “identify users” consistent with the specification. Appropriate correction/clarification is required.
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, and using the item to transact with the merchant. 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 (of the post office), wherein said stamps may be used to further conduct a transaction with the owner. Transit systems often allow users to add funds to a transit card, via a credit card machine at the station, and then use the transit card to gain access to the transit system. 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, 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).
Response to remarks
Applicant’s remarks submitted on 7/15/2026 have been fully considered, but are not persuasive where objections/rejections are maintained. It is initially noted that the claims are generally unamended. The amendment to the specification overcome the outstanding objections. The Terminal Disclaimer submitted on 7/15/2026 has been approved, thereby overcoming the Double Patenting rejection. It does not appear that the objection to Claim 1 has been addressed (the remarks do not provide explanation, except to argue that it is correct); and the objection to Claim 6 remains, because regulatory obligation to identified users is also unclear (The specification consistently refers to regulation to identify users).
As per § 101, a judicial exception (method of organizing human activity, fundamental economic principle) has been cited; the abstract idea(s) that is included in the claim is identified; real-world examples of the abstract idea have been included; the extraneous limitations (of Claim 1) are exemplarily specified; and an explanation as to why they fail under Step 2a, prong 2, and Step 2B to cure patent ineligibility is provided, resulting in a prima facie § 101 rejection. The subject matter of In re Marco distinguishes from the instant invention, at least with respect to the method steps composing a transaction in the instant case. A transaction is a fundamental economic activity. Bascom is likewise distinguishable, in that it dealt with a filtering configuration and the ordered combination of conventional tools offering otherwise solution, which is not presented in the instant case.
It is determined that maintaining the anonymity of patrons while allowing their purchase of credits, tokens, gaming chips, etc. was known in the art. See prior art references of record. Even if gaming chips or vouchers were not previously purchasable via credit card anonymously at casinos, merely applying an abstract idea in a particular setting (gaming establishment) fails to overcome § 101, if done elsewhere. The other components of the gaming system (e.g., the printer that prints the tickets (i.e., vouchers) is the setting and not a specialized machine under MPEP 2106. Third party verification systems (for regulatory purposes) that maintain anonymity were also known in the art (see, e.g., Thomas (¶ [0244]; US 2019/0232172, (¶ [0045])).
As per the prior art rejections, Thomas teaches a verification system that offers solutions to the problem identified by the instant invention (e.g., maintaining anonymity while transferring funds for use in gaming ([0085], “. . . the information is financial-related information, such as account information, voucher information”). It is appreciated that the term “gaming” in Thomas ([0081]) was directed to xBox, PS4, etc.; however, it is noted that online gambling is operable on computing systems as well. Still, at least under prong two (the particular problem to be solved), Thomas is analogous to the instant invention. Thomas teaches at [0152]: “transfer vehicles may allow a payer user to setup one or more anonymous handles, which can be used for transactions with “strangers” to whom a payer user may not wish to divulge phone numbers, names, or payment information. Such a capability is useful when individuals are making purchases of goods and services . . . The payer user may also establish a default currency in which transactions are to be made,” at [0244] it teaches a third party voucher system, and at [0081] is expressly mentions gaming services (which extends to online gaming). As such, the § 102 and § 103 rejections are maintained. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
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 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
Prosecution Insights