DETAILED ACTION
Claim Objections
Claim 1 is objected to because of the following informalities: as best understood by the examiner Claim 1 line 12 “based on matching the at least one portion” should end with a semi-colon. Appropriate correction is required.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 9,824,542 (‘542). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of ‘542 teaches all of the limitations of independent claim 1. Claim 1 of ‘542 teaches additional limitations describing the software implementation in more detail and additional specific features, nevertheless, these claims include all of the claim language and limitations found in the apparatus of claim 1 of the present application.
Claims 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 10,614,670 (‘670). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of ‘670 teaches all of the limitations of independent claim 1. Claim 1 of ‘670 teaches additional limitations describing the software implementation in more detail and additional specific features, nevertheless, these claims include all of the claim language and limitations found in the apparatus of claims 1 of the present application.
Claims 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 11,282,344 (‘344). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-2 of ‘344 teaches substantially all of the limitations of independent claim 1 with the exception of “a non-transitory medium having stored thereon a plurality of instructions that when executed by the processor cause the apparatus to:”. Claim 1 of ‘670 teaches additional limitations describing the software implementation in more detail and additional specific features, and refers to the “gaming entity” as “a remote computing device” which examiner considers to constitute “a gaming entity.” Nevertheless, these claims include all of the claim language and limitations found in the apparatus of claims 1 of the present application with the exceptions noted above. The missing limitations of the non-transitory medium are taught by Amaitis et al., US 2012/0009984 as described below in reference to Claim 1. It would have been obvious to one of ordinary skill in the art at the time of the invention to include a non-transitory medium with instructions in order to allow the computer to execute the software and perform the desired functions it a repeated manner in accordance with the standard operation of a general purpose computer.
Claims 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 12,211,353 (‘353). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-2 of ‘353 teaches substantially all of the limitations of independent claim 1 with the exception of “a non-transitory medium having stored thereon a plurality of instructions that when executed by the processor cause the apparatus to:”. Claim 1 of ‘670 teaches additional limitations describing the software implementation in more detail and additional specific features, and refers to the “gaming entity” as “a remote computing device” which examiner considers to constitute “a gaming entity.” Nevertheless, these claims include all of the claim language and limitations found in the apparatus of claims 1 of the present application with the exceptions noted above. The missing limitations of the non-transitory medium are taught by Amaitis et al., US 2012/0009984 as described below in reference to Claim 1. It would have been obvious to one of ordinary skill in the art at the time of the invention to include a non-transitory medium with instructions in order to allow the computer to execute the software and perform the desired functions it a repeated manner in accordance with the standard operation of a general purpose computer.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to Certain Methods of Organizing Human Activity, specifically “fundamental economic principles of practices” and/or “commercial or legal interactions,” without significantly more. The claim recites “receive an indication of an amount of money from a gaming entity; determine one or more portions of the amount of money to expose to a gaming market on behalf of the gaming entity; expose the one or more portions to the gaming market; match at least one portion of the exposed amount with at least one counter party to form at least one game between the entity and at least one counter party; determine one or more additional portions of the amount to expose to the gaming market based on matching the at least one portion expose the one or more additional portions of the amount to the gaming market in response to matching the at least one portion; set characteristics for the at least one game between the entity and the at least one counter party; and resolve the at least one game.” This described a series of abstract steps used to step up wagers on games between different parties.
This judicial exception is not integrated into a practical application because the additional limitations of “a processor” and “a non-transitory medium having stored thereon a plurality of instructions that when executed by the processor cause the apparatus to:” are simply recitation of generic computer components and at best mere instructions to implement the abstract idea on a computer, see MPEP 2106.05(f). As such, these limitations fail to integrate the abstract idea into a practical application.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because recitation of a processor and a non-transitory medium storing instructions for execution by the processor are simply recitation of well-known, routine, and conventional computer functionality common to all general purpose computers. As such, even when considered with the claims as a whole these elements fail to add significantly more than the abstract idea.
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 of this title, 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.
Claims 1 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Amaitis et al., US 2012/0009984, in view of Crosthwaite et al., US 2004/0260640.
In Reference to Claim 1
Amaitis et al. teaches an apparatus which includes a processor; and a non-transitory medium having stored thereon a plurality of instructions that when executed by the processor (Par. 71 and 75) to maintain an amount of money for a gaming entity (Par. 242 and 246 “amount available for trading”), determine one or more portions of the amount of money to expose to a gaming market on behalf of the gaming entity,
expose the one or more portions to the gaming market (Par. 241-246 which teaches an account places open trading orders from the available funds), match at least one portion of the exposed amount with at least one counter party to form at least one game between the entity and at least one counter party (Fig. 4 and Par. 246 and 248 which teach matching the offers to another party to create wagering games), set characteristics for the at least one game between the entity and the at least one counter party (Par. 295), and resolve the at least one game (Fig. 4 which teaches determining the outcome of the wager and transmitting payout amounts based on the outcome).
However, Amaitis et al. does not explicitly teach causing the apparatus to receive an indication of the amount of money from a gaming entity, or determining one or more additional portions of the amount to expose to the gaming market based on matching the at least one portion and exposing the one or more additional portions of the amount to the gaming market in response to matching the at least one portion.
Crosthwaite et al. teaches a trading market which includes causing the apparatus to receive an indication of the amount of money from a gaming entity (Par. 180 “determine one or more initial balances”), or determining one or more additional portions of the amount to expose to the gaming market based on matching the at least one portion and exposing the one or more additional portions of the amount to the gaming market in response to matching the at least one portion (Par. 188 which teaches that after an order is matched the user can make requests for additional orders which will be approved so long as the current balance of their account is able to cover the risk. Since the second order is contingent upon the adjusted balance from the first order, the first portion, examiner considers it to be ”in response” to the first portion).
It would be desirable to modify the apparatus of Amaitis et al. to include the indication of initial balance and additional bet orders as taught by Crosthwaite et al. in order to accurately determine an initial balance of the funds that should be made available to a user, as well as to let the user to set up additional wagering games so long as they have sufficient funds available to cover the risk once the user knows how much of their available funds are occupied by other wagers.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the apparatus of Amaitis et al. to include the indication of initial balance and additional bet orders as taught by Crosthwaite et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARL V LARSEN whose telephone number is (571)270-3219. The examiner can normally be reached Monday through Friday; 10:00 am - 6:30 pm.
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/CARL V LARSEN/Examiner, Art Unit 3715
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