DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Status
Claims 1-9 are pending.
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 § 2146 et seq. 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, 4, and 7 of the instant application is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,113,930 B2. The claims have been reviewed and analyzed in accordance with the claim chart below.
Claim 1 of the Instant Application
Claim 1 of Patent 11,741,790 B2
Claim 1 of Patent 11,113,930 B2
Comparison of the Similarities and Differences with the instant application
An apparatus comprising: a database to store video footage; a network interface;
An apparatus comprising: a database to store video footage; a network interface;
An apparatus comprising: a database to store video footage; a network interface;
Scope of subject matter is the same
at least one processor to: store a plurality of video footage of recorded races in the database;
at least one processor to: store a plurality of recorded races in the database;
at least one processor to: store a plurality of video footage of recorded races in the database;
The same
playback video footage of a first recorded race of the plurality of recorded races;
playback video footage of a first recorded race of the plurality of recorded races;
playback video footage of a first recorded race of the plurality of recorded races;
The same
obscure selected portions of the first recorded race that reveal a likely winner thereof before bets on a winner of the first recorded race are received;
reduce a number of frames of the first recorded race so as to manipulate some video portions of the playback video footage and obscure selected portions of the first recorded race during the playback of the video footage such that revelation of a likely winner thereof is precluded before bets on a winner of the first recorded race are received;
reduce a number of frames of the first recorded race so as to manipulate some video portions of the playback video footage and obscure selected portions of the first recorded race during the playback of the video footage such that revelation of a likely winner thereof is precluded before bets on a winner of the first recorded race are received;
The claims each recite the same process to obscure selected portions of the first recorded race that reveal a likely winner thereof before bets on a winner of the first recorded race are received.
Differences- Claim 1 of the instant application recites a broader embodiment that does not recite the narrower embodiment of reduce the number of frames of the first recorded race so as to manipulate some video portions of the playback video footage and that the obscuring occurs during the playback of the video footage.
store information representing multiple difficulty levels of the first recorded race based at least partially on a point in time within the first recorded race in which bets on the winner are received;
store information representing multiple difficulty levels of the first recorded race based at least partially on a point in time within the first recorded race in which bets on the winner are received; and
store information representing multiple difficulty levels of the first recorded race based at least partially on a point in time within the first recorded race in which bets on the winner are received; and
The same
receive, via the network device, data representing bets on the winner of the first recorded race from a first set of remote mobile devices; and
receive, via the network interface, data representing bets on the winner of the first recorded race from a first set of remote mobile devices.
receive, via the network interface, data representing bets on the winner of the first recorded race from a first set of remote mobile devices; and
The same
prevent acceptance of further data representing bets on the winner of the first recorded race at some point in time before an actual winner of the first recorded race is revealed wherein the first recorded race concluded before bets on the winner of the first recorded race are received.
prevent acceptance of further data representing bets on the winner of the first recorded race at some point in time before an actual winner of the first recorded race is revealed during the playback of the video footage of the first recorded race.
Claim 1 of the instant application is the same as Claim 1 of the ‘930 patent.
Claim 1 of the instant application is different from Claim 1 of the ‘790 patent because it does not include the limitation the subject matter directed to prevent acceptance of further data…during the playback of the video footage of the first recorded race. However, Robb et al. (US 2008/0132314 A1) discloses preventing acceptance of bets before a winner is revealed (see Robb, 0130-0135). Additionally, the wherein clause does not define a patentable distinct element as the manipulated/obscured video of the race is a race that previously concluded in historical race betting recites an inherent trait of the video used of the wagering game that is being claimed such as in the ’930 patent.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims of US Patent No. 11,113,930 anticipate or obviate Claim 1 now pending. That is, the claims are not patentable distinct as they recite obvious variations of the historical racing game embodiment of the recited video race betting systems of claims 1-18 of the ‘930 Patent. For instance, the claims recite further limitations that recite obvious variations of the technological environment for managing a wager associated with a historical race bet that do not further define the system but obvious variations of the rule of the wager game or steps and/or instructions to manage the wager game by the system to receive data and manage a wager of the received data. For instance, the limitation “wherein the first recorded race concluded before bets on the winner of the first recorded race are received” does not recite a technological distinction but is directed to defining a rule of the game and/or to a type of wagering game such as a historical racing game which utilizes pre-recorded races to be used in a wager. Moreover, independent Claims 4 and 7 are different in that they are directed to a method and a non-transitory computer readable medium storing the instructions. However, it is well-understood that if one had the system they would also have the method of performing by the system and the non-transitory computer readable medium to control the system. For at least these reasons, the claims 1, 4, and 7 are rejected as being unpatentable over claims 1-18 of US Patent No. 11,113,930.
Claim 1, 4, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,741,790 B2 in view of Robb et al. (US 2008/0132314 A1) .
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims of US Patent No. 11,741,790 B2 recite substantially the same subject matter to the broader Claim 1 now pending. For instance, Claim 1 of the instant application does not require the limitation “reduce the number of frames of the first recorded race so as to manipulate some video portions of the playback video footage and that the obscuring occurs during the playback of the video footage”. However, Claim 1 of the ‘790 patent does not incorporate the limitation “prevent acceptance of further data representing bets on the winner of the first recorded race at some point in time before an actual winner of the first recorded race is revealed wherein the first recorded race concluded before bets on the winner of the first race are received”.
Robb et al. teaches to prevent acceptance of data representing bets on the winner of the event at some point in time before an actual winner of the event is revealed (see Robb, 0138-0139). One would have been motivated to incorporate the teachings of Robb to use known techniques with similar devices to yield the predictable result to prevent players from placing wagers after the outcome of the event is determined (see Robb, 0139). Therefore, it would have been an obvious variation to one of ordinary skill in the art at the time of filing the application to prevent acceptance of further data representing bets on the winner of the first recorded race at some point in time before an actual winner of the first recorded race is revealed. In the context of historical race wagering the recorded race is concluded before bets on the winner on the recorded event which is understood by one of ordinary skill in the wagering arts. For at least this reason, Claims 1, 4, and 7 are not patentably distinct from the subject matter of Claims 1-18 of the ‘790 patent.
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a grouping of abstract ideas without significantly more. The claims, as exemplified by independent Claim 1, recites a grouping of abstract ideas such as: “receive, data representing bets on the winner of the first recorded race” – certain method of organizing human activity; “prevent acceptance of further data representing bets on the winner of the first recorded race at some point in time before an actual winner of the first recorded race is revealed wherein the first recorded race concluded before bets on the winner of the first recorded race are received” – certain method of organizing human activity. Specifically, the claims are found to recite a series of instructions to manage a racing bet which is analogous to a certain method of organizing human activity which include fundamental economic activity and/or managing a social activity. For at least these reasons, the claims are found to recite a grouping of abstract ideas under Step 2A-prong 1.
This judicial exception is not integrated into a practical application because the additional limitations such as “store a plurality of video footage of recorded races in the database;” “playback video footage of a first recorded race that reveal a likely winner thereof before bets on a winner of the first recorded race are received”, and “obscure selected portions of the first recorded race that reveal a likely winner thereof before bets on a winner of the first recorded race are received” recite a series of instructions to invoke a computer as a tool to implement the abstract idea, extra solution activity, and/or provide a technological environment in which perform the abstract idea (see MPEP 2106.05(f)-(h)). The remaining limitations such as “a database to store video footage;” “ a network interface”, and “at least one processor to:” when viewed with the additional limitation recite various pieces of ordinary computer equipment to provide the data and videos needed to accomplish a bet on the recorded race which recite a series of steps to invoked a computer as a tool to implement the abstract idea and/or a technological environment in which to perform the abstract idea (see MPEP 2106.05(f) and (h)). For at least these reasons, the additional limitations do not integrate the claim into a practical application under Step 2A-prong 2.
The claims, as exemplified by independent Claim 1, do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements such as “a database to store video footage;” “a network interface;” and “at least one processor to:” as adding utilization of generic hardware in combination with a computer system which is insufficient to transform the abstract idea into significantly more but are invoked as a tool to implement the abstract idea, extra solution activity, and/or a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). For instance, a review of the Specification indicates the highly generalized and well-known nature of the claimed components such as “[w]hereas databases are described, it will be understood by one of ordinary skill in the art”, a network interface include “standard protocols such as Ethernet, SAP, ATP, Bluetooth, CDMA” and at least one processor is “an Intel Pentium processor” (see Specification, 0186-191). It follows, that similar to Alice v. CLS, the additional elements recite the use of generic computer systems and/or commercially available components that when viewed individually and/or as a collection of elements do not amount to significantly more than the abstract idea under Step 2B.
Regarding independent claims 4 and 7, the claims recite substantially the same subject matter as independent Claim 1. The claims are merely directed to the method and/or non-transitory computer-readable medium embodiments of the claimed abstract idea. The analysis above of independent claim 1 is incorporated herein. Claims 4 and 7 are found to be directed to an abstract idea without significantly more for substantially the same reasons as independent Claim 1 stated above.
Regarding dependent claims 2-3, 5-6, and 8-9, the additional limitations have been reviewed and analyzed and were found to recite additional limitations directed to a grouping of abstract ideas (see MPEP 2106.04(a), steps or instructions to invoke a computer as a tool to implement the abstract idea, recite extra solution activity of the abstract idea, and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). For at least these reasons, claims 1-9 are found to be directed to an abstract idea without significantly more
Claim Rejections - 35 USC § 103
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 negatived by the manner in which the invention was made.
Claim 1-9 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Burwell (US 2004/0078208 A1) in view of Gatto et al. (US 2008/0070666 A1) and Robb et al. (US 2008/0132314 A1).
Regarding claims 1, 4, and 7, Burwell teaches an apparatus, a method, and a non-transitory computer readable medium (see Burwell, graphical racing system 1 of Fig. 1, 0011) comprising: a database to store video footage (see Burwell, archival database 40 of Fig. 2, 0016); a network interface (see interface service provider interface 42 of Fig. 2, 0016); at least one processor (see Burwell, central processing system 14 of Fig. 2, 0016; It is noted that the limitations currently recite the mere intended use of the processor and would require the limitation “configured to” to positively recite the steps performed by the processor) to: store a plurality of video footage of recorded races in the database (see Burwell, 0012, 0016-0018, 0041-0042, wherein the database stores race information to record performance data of all horses in the recorded race to watch the race such as processed video streams from the plurality of racetracks); playback video footage of a first recorded race of the plurality of recorded races (see Burwell, 0021-0023, wherein the received race information is constructed by the race simulation software 58 to display the race as it progresses); obscure selected portions of the first recorded race that reveal a likely winner thereof before bets on a winner of the first recorded race are received (see 0024, wherein the based on the recorded skill level certain information is obscured or not shown to the user); store information representing multiple difficulty levels of the first recorded race based at least partially on a point in time within the first recorded race in which bets on the winner are received (see Burwell, 0024, wherein the system stores different skill levels based on the user’s settings which are construed as difficulty level for placing the wager in order to place an informed bet which is a point in time within the first recorded race in which bets on the winner are received); receive, via the network interface, data representing bets on the winner of the first recorded race (see Fig. 3, 0026, wherein system accepts valid betting requests and payment of winnings are awarded by crediting an account). Although, Burwell discloses a system with a betting facility 16 which ensures that a valid betting request is submitted and historical horse racing rendered in a simulation it is silent as to the video footage being “a first recorded race of the plurality of recorded races” and “prevent acceptance of further data representing bets on the winner of the first recorded race at some point in time before an actual winner of the first recorded race is revealed”.
Gatto teaches a historical horse racing system that comprises playback video footage of a first recorded race of the plurality of recorded races (see Gatto, 0018, wherein the process sandbox uses pre-recorded video or realistic real-time 3D animation). Specifically, Gatto teaches wherein obscure the selected portions the first recorded race comprises manipulating portions of the video footage of the first recorded race that reveal the likely winner, such that at least some of the video footage is played back and the portions are obscured from all of the first set of remote mobile devices that are engaged with the vide of the historical horse racing system (see Gatto, Fig. 1, 0018, wherein each horse number indicia usually printed on the horse’s saddle blanket is totally obfuscated or otherwise obscured which is a manipulated of the pre-recorded horse race); 0037, wherein the user devices are a mobile computer which received the obscured video footage to participate in the historical horse racing system). One would have been motivated to incorporate the teachings of Gatto’s pre-recorded video to use known techniques with similar devices to yield predictable results known to one of ordinary skill in the gaming arts. Therefore, it would have been obvious to one of ordinary skill at the time of filing the application to substitute the rendered video simulation with the obscured pre-recorded video footage to be provided to all the mobile device, but Gatto is silent with respect to “prevent acceptance of further data representing bets on the winner of the first recorded race at some point in time before an actual winner of the first recorded race is revealed”.
In a related gaming system, Robb teaches a system accept and prevent wagers with dynamic bet slips and betting games such as a sports event and/or horse race (see Robb, 0130-0131). Robb’s system accepts dynamic wagering events by providing indicia relating to the indicia relating to the event, event identification indicia, and event participant indicia (see Robb, 0133-0135). Moreover, Robb teaches that the system may alter wagering options and may cease accepting bets for the occurrence of the sporting event to prevent players from placing wagers on the sporting event at some point in time before an actual winner of the first recorded race is revealed (see Robb, 0138 – 0139). One would have been motivated to incorporate the teachings of Robb to use the techniques to yield the predictable result to prevent players from placing wagers on sporting events when an outcome of the sporting event can be determined to increase security and revenue for wagering events. Therefore, it would have been obvious to one of ordinary skill in the art to prevent acceptance of further data representing bets on the winner of the first recorded race at some point in time before an actual winner of the first recorded race is revealed.
Regarding claims 2, 5, and 8, the combination of Burwell, Gatto, and Robb teach the apparatus of claim 1, the method of claim 4, and the non-transitory computer-readable medium of claim 7. The combination further teach, wherein obscuring the selected portions of the first recorded race comprises manipulating portions of the video footage of the first recorded race that reveal the likely winner, such that at least some of the video footage is played back (see Burwell, 0021-0023; Gatto, Fig. 1, 0018).
Regarding claims 3, 6, and 9, the combination of Burwell, Gatto, and Robb teach the apparatus of claim 1, the method of claim 4, and the non-transitory computer-readable medium of claim 7. The combination further teaches, wherein the selected portions are obscured from all of the first set of remote mobile devices (see Burwell, 0021-0023; Gatto, Fig. 1, 0018).
Conclusion
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/RYAN HSU/EXAMINER, Art Unit 3715
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