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 .
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 1-18 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 significantly more. The claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Guidelines (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter Guidelines
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Guidelines, the claims are directed to a system and/or process, which are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Guidelines
Next, the claims are analyzed to determine whether it is directed to a judicial exception (i.e., an abstract idea) under Step 2A, Prong One.
Independent claim 1 is reproduced below, with the limitations directed to judicial exceptions emphasized in bold, including designations identifying the specific enumerated abstract idea to which the limitations belong to, according to the 2019 Revised Patent Subject Matter Guidelines. Independent claim 14, having substantially similar features, was also analyzed and to which the following conclusion is also applicable:
1. A rewards system for awarding prizes to players of gaming machines which are configured to present at least one wagering game, wherein the prizes are awarded separate from any winnings awarded by the gaming machines for a winning wagering game outcome thereof, comprising:
a prize rewards server, said prize rewards server comprising a processor, a memory embodying non-transitory machine-readable code, and a communication interface which communicatively couples said rewards server with said gaming machines, said machine-readable code of said prize rewards server when executed by said processor configured to cause said processor of said prize rewards server to:
determine the initiation of a new play session at one of said gaming machines by a player thereof (Mental Processes and/or Certain Methods of Organizing Human Activity);
cause said one of said gaming machines to display a prompt to said player to provide a mobile identifier of the player's mobile communication device (Certain Methods of Organizing Human Activity);
receive said mobile identifier as input by said player to said one of said gaming machines (Certain Methods of Organizing Human Activity);
receive activity information obtained from said one of said gaming machines (Certain Methods of Organizing Human Activity);
store said activity information in association with said mobile identifier (Certain Methods of Organizing Human Activity);
determine if said activity information meets criteria associated with one or more stored prize events (Mental Processes and/or Certain Methods of Organizing Human Activity); and
when criteria for one of said prize events has been met, to transmit to said player's mobile communication device, using said mobile identifier, an indication of a prize (Certain Methods of Organizing Human Activity).
The limitations in claim 1 (as well as claim(s) 14) recite an abstract idea included in the groupings of Mental Processes and/or Certain Methods of Organizing Human Activity, connected to technology only through application thereof using generic computing elements (e.g., a gaming machine, a prize rewards server comprising a processor, a memory, and a communication interface, etc.) and/or insignificant extra-solution activity.
According to the 2019 Revised Patent Subject Matter Guidelines:
Mental Processes include concepts performed in the human mind (including an observation, evaluation, judgement, opinion); and
Certain Methods of Organizing Human Activity include:
1. Fundamental Economic Principles or Practices (including hedging (i.e., wagering), insurance, mitigating risk);
2. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
3. Managing Personal Behavior or Relationships or Interactions Between People (e.g. social activities, teaching, and following rules or instructions). The interaction encompasses both activity of a single person (for example a person following a set of instructions) and activity that involves multiple people (such as a commercial or legal interaction). Thus, some interactions between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within this grouping.
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Commercial or Legal Interactions (e.g., advertising, marketing or sales activities or behaviors): The instant claims include limitations (e.g., “cause said one of said gaming machines to display a prompt to said player to provide a mobile identifier of the player's mobile communication device”, “receive said mobile identifier as input by said player to said one of said gaming machines”, and “transmit to said player's mobile communication device, using said mobile identifier, an indication of a prize”), which are directed to commercial marketing, customer solicitation, and loyalty incentive distributing. Using promotions, prizes, and bonus offers to incentivize customer patronage is an established method of marketing and sales activity. Furthermore, the claims include limitations (e.g., “receive activity information obtained from said one of said gaming machines”, “store said activity information in association with said mobile identifier”), which are directed to managing customer accounts, recordkeeping, and tracking patron behavior based on a commercial business relationship. Logging customer visit metrics, tracking expenditures, and indexing activity records by a contact identifier (i.e., a mobile identifier) represents routine business administration and customer relations management activities. These limitations are interpreted as at least Commercial or Legal Interactions insomuch as the claim limitations are directed to performing marketing and sales activities and business administration and customer relations management activities while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims; and/or
B. Concepts performed in the human mind (i.e., Mental Processes): The instant claims include limitations (e.g., “determine the initiation of a new play session at one of said gaming machines by a player thereof” and “determine if said activity information meets criteria associated with one or more stored prize events”), which are directed to Mental Processes. Observing when a player begins playing at a gaming machine (e.g., observing a player funding a credit meter, observing a player pressing a button or pulling a handle to initiate gameplay, etc.), and evaluating whether accrued player activity satisfies a predetermine threshold represent mental observations and evaluations that can conceptually be performed by a human mentally or using pen and paper. These limitations are interpreted as at least Mental Processes insomuch as the claim limitations are directed to performing the observations and evaluations in the human mind or using pen and paper, while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims; and/or
Regarding dependent claims 2-13 and 15-18:
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 Mental Processes and/or Commercial or Legal Interactions) or routine computer implementation. For example, some dependent claims merely provide additional Mental Processes and/or Commercial or Legal Interactions 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 Guidelines
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 1-18 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 Guidelines
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 “a gaming machine, a prize rewards server comprising a processor, a memory, and a communication interface”, 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.
Furthermore, the claims 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 a gaming machine, a prize rewards server comprising a processor, a memory, and a communication interface are well known conventional devices used to electronically implement a game as evidence by U.S. 2004/0043813, which discloses that a conventional gaming system comprises elements such as a gaming machine, a prize rewards server comprising a processor, a memory, and a communication interface to control the overall operation of the gaming machine (¶20, ¶41, ¶43, ¶62-63, ¶70). 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.
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.
Claim(s) 1-7 and 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nelson et al (U.S. 2013/0165231) in view of Amaitis et al (U.S. 2015/0157947).
Regarding claims 1, 12, and 14, Nelson discloses:
a rewards system for awarding prizes to players of gaming machines which are configured to present at least one wagering game (¶82, gaming devices 652, 654, 656 which are configured to provide play of a wagering games to players), wherein the prizes are awarded separate from any winnings awarded by the gaming machines for a winning wagering game outcome thereof (¶129, loyalty function 640 receives and stores, in a record associated with a player, information regarding gaming and non-gaming activities the player performed within a casino and based on the stored record the loyalty function 640 provides the player comps (e.g., free or discounted services including game play), promotions, and custom content), comprising:
a prize rewards server, said prize rewards server comprising a processor, a memory embodying non-transitory machine-readable code, and a communication interface which communicatively couples said rewards server with said gaming machines (¶81, ¶119-120, ¶144, Fig. 4, server 602, which includes loyalty program function 640, includes a processor, memory, and network interface which allows the server 602 to communicate with gaming devices 652, 654, 656), said machine-readable code of said prize rewards server when executed by said processor configured to cause said processor of said prize rewards server, to:
determine the initiation of a new play session at one of said gaming machines by a player thereof (¶67, ¶73, ¶99, server 602 determines the initiation of a game play session or player tracking session at a gaming device in response to a player approaching a gaming device, depositing funds, placing a wager, or initiating game play);
cause said one of said gaming machines to display a prompt to said player to provide identification information (¶70, ¶121-123, ¶126, the gaming device displays a user interface which prompts the player to provide identification information to associate the player with a game session);
receive said identification information as input by said player to said one of said gaming machines (¶70, ¶121-123, ¶126, the gaming device displays a user interface wherein the player provides identification information to associate the player with a game session);
receive activity information obtained from said one of said gaming machines (¶99, ¶132, game controller 606 reports gaming activity and associated events from the gaming device to server 602);
store said activity information in association with said mobile identifier (¶99, ¶129, loyalty function 640 receives and stores, in a record associated with a player);
determine if said activity information meets criteria associated with one or more stored prize events (¶71, ¶91, ¶129, server 602 evaluates the stored data associated with the player against criteria stored within loyalty function 640 to determine if the player qualifies for comps (e.g., free or discounted services including game play), promotions, and custom content); and
when criteria for one of said prize events has been met, to transmit to said player's mobile communication device, an indication of a prize (¶73, ¶91-93, ¶103, server 602 transmits promotional offers, comps, and indications of wards to the player’s mobile device).
However, Nelson does not specifically disclose:
causing said one of said gaming machines to display a prompt to provide a mobile identifier of the player's mobile communication device; or
receiving said mobile identifier as input by said player to said one of said gaming machines; or
using the mobile identifier to transmit the indication of the prize.
Amaitis teaches:
a cardless user registration and authentication for a gaming system, wherein a player is prompted to provide a phone number of their mobile communication device and wherein the player enters the phone number which causes the system to link the player’s account and establish a direct communication link between the mobile communication device and a casino electronic gaming device (¶283-284, ¶290-298, a player provides a phone number of their mobile device to allow for future access to their account, wherein the player uses their phone number to sign onto a wagering service and link their mobile device), wherein the mobile identifier is used to transmit an indication of a prize to the player (¶303, ¶325-3332, messages, notifications , and indications of outcomes are sent directly to the player’s mobile device using the mobile phone number as the destination address).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the display prompt, as taught by Nelson, to request the player’s mobile phone number as the requested identifier and receive the player’s mobile phone number as the identifier received and used to transmit prize information to a player, as taught by Amaitis, in order to yield the predictable result of providing player’s with a simpler, cardless manner of providing identification and linking their mobile devices without requiring specialized hardware pairing.
Regarding claim 2, Nelson discloses that which is discussed above, and further discloses that:
said prize rewards server determines the initiation of a new play session based upon an output of said one of said gaming machines indicating an increase in a credit balance from a credit balance of zero at said one of said gaming machines (¶30, ¶67, ¶99, server 602 determines the start of a new play session based on an event reported by a gaming device, such as deposit of funds, which initiates the start of a game play session).
Regarding claim 3, Nelson discloses that which is discussed above, and further discloses that:
the prompt is displayed as a graphical user interface by a display device of said one of said gaming machines (¶121, a portion of the display area is controlled by server 602 and is used to display the service window).
Regarding claim 4, Nelson discloses that which is discussed above, and further discloses that:
said input of said mobile identifier comprises an input to a touch-screen in relation to one or more portions of said graphical user interface (¶122, the service window is displayed as a touch screen display wherein inputs are received via the service window).
Regarding claim 5, Nelson discloses that which is discussed above, and further discloses that:
Authentication and verification steps are performed before authorizing gaming operations and linking sessions (¶70).
However, Nelson does not specifically disclose that:
said machine-readable code is further configured to cause said processor of said reward server to cause said communication interface to transmit a validation request to said player's mobile communication device using said mobile identifier.
Amaitis teaches:
transmitting a validation request to said player's mobile communication device using said mobile identifier (¶303, ¶325-332, ¶716, a verification indication is transmitted to the player’s mobile device using the mobile telephone identifier and the player device is verified as authorized prior to enabling and recording active gaming transactions).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nelson’s authentication process to incorporate transmitting a validation request to the player’s mobile communication device using the mobile identifier, as taught by Amaitis, in order to yield the predictable result of ensuring that the mobile telephone number entered at the gaming machine genuinely belongs to the player present, thus preventing unauthorized tracking, or fraudulent diversion of awards.
Regarding claims 6 and 15, Nelson discloses that which is discussed above, and further discloses that:
said activity information comprises one or more of information regarding one or more wagers, one or more game outcomes, and game event information (¶97-99, ¶113-115, ¶132, reporting and player tracking software on the gaming devices transmits gaming activity data to server 602, including amounts wagered, amounts deposited, game outcomes, awards, and other gaming event data).
Regarding claim 7, Nelson discloses that which is discussed above, and further discloses that:
said criteria comprises a plurality of criteria stored in a database (¶71, ¶91, ¶120, 129, sever 602 stores criteria and rules for loyalty function 640 to determine eligibility for a plurality of different promotional and prize events).
Regarding claims 8 and 17, Nelson discloses that which is discussed above, and further discloses that:
said indication of a prize includes a prize code (¶125, information about a promotion can be displayed in the service window in a QR code format and transferred to a user’s portable device via an image capture device).
Regarding claims 9 and 18, Nelson discloses that which is discussed above, and further discloses:
a prize play unit, wherein said machine-readable code is further configured to cause said processor of said reward server to receive said prize code and, in response to receiving said prize code, enable use of said prize play unit (¶129, loyalty function 640 provides the player with free services including game play, for example a player at a first gaming device 652 being provided free game play at a second gaming device 654).
Regarding claim 10, Nelson discloses that which is discussed above, and further discloses that:
said prize play unit comprises one of said gaming machines (¶129, loyalty function 640 provides the player with free services including game play, for example a player at a first gaming device 652 being provided free game play at a second gaming device 654).
Regarding claim 11, Nelson discloses that which is discussed above, and further discloses that:
said prize play unit comprises a prize dispenser which houses a plurality of prizes for dispensing (¶82, ¶129, ¶142-143, each gaming device includes a ticket printer for printing prize tickets redeemable for additional game plays).
Regarding claim 13, Nelson discloses that which is discussed above, and further discloses:
receiving and storing information regarding game play at one of said gaming machine during a second game play session (¶99, ¶129, loyalty function 640 receives and stores, in a record associated with a player).
However, Nelson does not specifically disclose that:
the second game play session uses the mobile identifier.
Amaitis teaches:
a cardless user registration and authentication for a gaming system, wherein a player is prompted to provide a phone number of their mobile communication device and wherein the player enters the phone number which causes the system to link the player’s account and establish a direct communication link between the mobile communication device and a casino electronic gaming device (¶283-284, ¶290-298, a player provides a phone number of their mobile device to allow for future access to their account, wherein the player uses their phone number to sign onto a wagering service and link their mobile device).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the display prompt, as taught by Nelson, to request the player’s mobile phone number as the requested identifier and receive the player’s mobile phone number as the identifier received and used to transmit prize information to a player, as taught by Amaitis, in order to yield the predictable result of providing player’s with a simpler, cardless manner of providing identification and linking their mobile devices without requiring specialized hardware pairing.
Regarding claim 16, Nelson discloses that which is discussed above, and further discloses that:
said determining if said aggregated first and second play session activity information meets said criteria comprises determining whether said amount wagered during said first and second play sessions meets said criteria (¶71, ¶91, ¶129, sever 602 stores criteria and rules for loyalty function 640 to determine eligibility for a plurality of different promotional and prize events).
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.
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, 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
