Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Procedural Summary
This is responsive to the claims filed 11/18/2024.
Claims 1-17 are pending.
Signed copies of the IDS’ are attached.
The Drawings filed 11/18/2024 are noted.
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 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
The claims are drawn to apparatus categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claims 1 & 10 are analyzed below, with italicized limitations indicating recitations of an abstract idea:
Claim 1: “A system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: maintain a plurality of entries associated with a plurality of virtual vouchers, and responsive to an occurrence of a creation event, modify the plurality of entries based on a created virtual voucher.”
Claim 8: “A system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: maintain a plurality of entries associated with a plurality of virtual vouchers, and responsive to an occurrence of a redemption event, modify the plurality of entries based on the redemption event.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG1:
“Mental Processes”: concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
“Certain Methods Of Organizing Human Activity”: managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
The claims are drawn to maintaining voucher entries and redemptions. This represents bookkeeping. This is a mental process that can be practically performed in the human mind, and/or using pencil and paper. Maintaining voucher entries and redemptions is bookkeeping. Maintaining voucher entries and redemptions is managing personal behavior between people, and interactions between people. To the extent the bookkeeping is applied to wagering gaming, this also represents a social activity, i.e., game play. It also represents following rules/instructions, i.e., when/where to debit and credit accounts.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations drawn to a computing system with a processor and memory, (a GUI).
These additional limitations:
Do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a));
Fail to recite an improved way of training a machine learning model that protected the model’s knowledge about previous tasks while allowing it to effectively learn new tasks, and do not recite improvements to computer component or system performance based upon adjustments to parameters of a machine learning model associated with tasks or workstreams2;
Do not apply the exception using a particular machine, (MPEP 2106.05(b)) and
Fail to effect a transformation. (MPEP 2106.05(c)).
Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, see e.g., U.S. Pub. No.: 2011/0086691 A1 showing the conventionality of voucher/ticketing systems in EGMs. Therefore, these elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Additionally, Applicant’s Specifications acknowledge that generic devices including smartphones are used to implement the claimed invention.3
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they only recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls4:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lempel et al. (U.S. Pub. No.: 2011/0015976 A1) in view of Schueller (U.S. Pub. No.: 2013/0053133 A1).
Lempel discloses a system (Fig. 2), comprising: a processor, (Fig. 3, 302); and a memory device that stores a plurality of instructions, (¶ 79) that, when executed by the processor, cause the processor to: maintain a plurality of entries associated with a plurality of vouchers, (e.g., Fig. 2, 260, Fig. 4, and related descriptions), and responsive to an occurrence of a creation event, modify the plurality of entries based on a created voucher, (e.g., Fig. 7 and related descriptions.).
Lempel discloses the invention substantially but does not make explicit that the voucher is virtual. However, in a related invention, Schueller teaches virtual voucher systems, (e.g., Schueller, Fig. 1, ¶ 34, Figs. 4-7 and related descriptions.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have provided Schueller’s virtual vouchers in Lempel’s system for the purpose of increasing convenience. A person of ordinary skill in the art would appreciate that virtual payment makes it easier to conduct transactions versus carrying physical/tangible currency.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No.: 12,444,267 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims substantially disclose the pending claim limitations:
Pending Claims:
Patented Claims:
1. A system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: maintain a plurality of entries associated with a plurality of virtual vouchers, and responsive to an occurrence of a creation event, modify the plurality of entries based on a created virtual voucher.
2. The system of claim 1, wherein the creation event occurs in association with a first electronic gaming machine.
3. The system of claim 2, wherein the memory device stores a plurality of further instructions that, when executed by the processor responsive to an occurrence of a redemption event associated with a second electronic gaming machine, cause the processor to modify the plurality of entries based on the redemption event.
4. The system of claim 3, wherein the first electronic gaming machine and the second electronic gaming machine are different electronic gaming machines.
5. The system of claim 1, wherein the plurality of entries are associated with a plurality of different gaming establishments.
6. The system of claim 1, wherein the creation event comprises a cashout of a credit balance of an electronic gaming machine.
7. The system of claim 1, wherein the plurality of entries comprise virtual voucher information associated with each of the plurality of virtual vouchers.
8. The system of claim 1, wherein the memory device stores a plurality of further instructions that, when executed by the processor, cause the processor to cause a communication of virtual voucher information associated with the created virtual voucher to at least one of a mobile device, a digital wallet application, and a remote distributed storage device.
9. The system of claim 1, wherein at least a portion of the plurality of entries are further maintained in association with a mobile device.
10. A system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: maintain a plurality of entries associated with a plurality of virtual vouchers, and responsive to an occurrence of a redemption event, modify the plurality of entries based on the redemption event.
11. The system of claim 10, wherein the modification of the plurality of entries is based on a receipt of first virtual voucher information.
12. The system of claim 11, wherein the first virtual voucher information is received from at least one of a mobile device, a digital wallet application, and a remote distributed storage device.
13. The system of claim 10, wherein the redemption event occurs in association with a mobile device.
14. The system of claim 13, wherein the redemption event occurs in association with a conversion of a non-virtual voucher.
15. The system of claim 10, wherein the redemption event occurs in association with a redemption kiosk.
16. The system of claim 10. wherein the redemption event occurs in association with a server of a financial institution.
17. The system of claim 10, wherein at least a portion of the plurality of entries are further maintained in association with a mobile device.
1. A system comprising: a network interface; a processor in communication, via the network interface, with a game controller of a first electronic gaming machine, a smart interface board associated with the first electronic gaming machine and a server of a gaming establishment cashless system; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: responsive to an occurrence of a virtual ticket voucher creation event, cause a creation of a virtual ticket voucher independent of any creation of any printed ticket vouchers, wherein the created virtual ticket voucher is associated with a gaming establishment virtual ticket voucher management application, cause a modification, based on the created virtual ticket voucher, of a database comprising virtual ticket vouchers, wherein each entry of the database is associated with a monetary value which the virtual ticket voucher is redeemable for and a virtual ticket voucher identification number exclusively used for virtual ticket vouchers without being available to be used for any printed ticket vouchers which are exclusively associated with printed ticket voucher identification numbers, and cause a communication of virtual ticket voucher information associated with the created virtual ticket voucher to at least one of a mobile device, a digital wallet application, and a remote distributed storage device.
2. The system of claim 1, wherein the virtual ticket voucher creation event occurs in association with the first electronic gaming machine.
3. The system of claim 2, wherein the memory device stores a plurality of further instructions that, when executed by the processor responsive to an occurrence of a virtual ticket voucher redemption event associated with a second electronic gaming machine, cause the processor to cause, based on a redeemed virtual ticket voucher, a modification of the database.
4. The system of claim 3, wherein the first electronic gaming machine and the second electronic gaming machine are different electronic gaming machines.
5. The system of claim 1, wherein the database is associated with a plurality of different gaming establishments.
6. The system of claim 1, wherein the virtual ticket voucher creation event comprises a cashout of a credit balance of the first electronic gaming machine.
7. The system of claim 1, wherein the database comprises virtual ticket voucher information associated with the created virtual ticket voucher.
8. A system comprising: a network interface; a processor in communication, via the network interface, with a game controller of an electronic gaming machine, a smart interface board associated with the electronic gaming machine and a server of a gaming establishment cashless system; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: responsive to a virtual ticket voucher redemption event occurring in association with a gaming establishment virtual ticket voucher management application, cause a redemption of a virtual ticket voucher independent of any redemption of any printed ticket vouchers, wherein prior to the occurrence of the virtual ticket voucher redemption event, virtual ticket voucher information associated with the redeemed virtual ticket voucher was stored in association with at least one of a mobile device, a digital wallet application, and a remote distributed storage device, and cause a modification, based on the redeemed virtual ticket voucher, of a database comprising virtual ticket vouchers, wherein each entry of the database is associated with a monetary value which the virtual ticket voucher is redeemable for and a virtual ticket voucher identification number exclusively used for virtual ticket vouchers without being available to be used for any printed ticket vouchers which are exclusively associated with printed ticket voucher identification numbers.
9. The system of claim 8, wherein the virtual ticket voucher redemption event occurs in association with the electronic gaming machine.
10. The system of claim 8, wherein the virtual ticket voucher redemption event occurs in association with a redemption kiosk in communication, via the network interface, with the processor.
11. A method of operating a system, the method comprising: responsive to an occurrence of a virtual ticket voucher creation event, causing, by a processor, a creation of a virtual ticket voucher independent of any printed ticket vouchers, wherein the created virtual ticket voucher is associated with a gaming establishment virtual ticket voucher management application and the processor is in communication, via a network interface, with a game controller of a first electronic gaming machine, a smart interface board associated with the first electronic gaming machine and a server of a gaming establishment cashless system, modifying, by the processor and based on the created virtual ticket voucher, a database comprising virtual ticket vouchers, wherein each entry of the database is associated with a monetary value which the virtual ticket voucher is redeemable for and a virtual ticket voucher identification number exclusively used for virtual ticket vouchers without being available to be used for any printed ticket vouchers which are exclusively associated with printed ticket voucher identification numbers, and causing a communication of virtual ticket voucher information associated with the created virtual ticket voucher to at least one of a mobile device, a digital wallet application, and a remote distributed storage device.
12. The method of claim 11, wherein the virtual ticket voucher creation event occurs in association with the first electronic gaming machine.
13. The method of claim 12, further comprising, responsive to an occurrence of a virtual ticket voucher redemption event associated with a second electronic gaming machine, modifying, by the processor and based on a redeemed virtual ticket voucher, the database.
14. The method of claim 13, wherein the first electronic gaming machine and the second electronic gaming machine are different electronic gaming machines.
15. The method of claim 11, wherein the database is associated with a plurality of different gaming establishments.
16. The method of claim 11, wherein the virtual ticket voucher creation event comprises a cashout of a credit balance of the first electronic gaming machine.
17. The method of claim 11, wherein the database comprises virtual ticket voucher information associated with the created virtual ticket voucher.
Conclusion
Additional Relevant References: See 892
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMKAR A DEODHAR whose telephone number is (571)272-1647. The examiner can normally be reached M-F, generally 9am-5:30 pm.
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/OMKAR A DEODHAR/Primary Examiner, Art Unit 3715
1 See MPEP 2106
2 Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential)
3 Specifications: [0146] The portable electronic device 202 can include a processor, a memory and a network interface 220. In addition, the portable electronic device can include a number of I/O interfaces 222. The I/O interfaces 222 can include visual and audio interfaces, such as displays, speakers, cameras, microphones, a touchscreen and an audio jack. The I/O interfaces 222 allow a user to interact with the portable electronic device including receiving video images and audio content associated with different applications executed on the portable electronic device. Further, the I/O interfaces 222 can include wired and/or wireless interfaces that allow the portable electronic device to communicate with other devices directly or via a network connection. Further, the portable electronic device 202 can include various a GPS receivers and various sensors, such as an accelerometer. The GPS receiver can be used for applications requiring a location. The accelerometer can be used to detect a movement of the device, which in some instances can used to generate control commands. As an example, the portable electronic device 202 can be a smartphone or a tablet computer, such as an iPhone™ or an iPad™ by Apple™. (Emphasis Added.)
4: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)
Prosecution Insights