DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This communication is responsive to application no. 19/023,739 filed on 01/16/2025.
3. Claim 1 is currently pending and has been examined.
4. This application is a continuation of U.S. application No. 18/413,388 filed on 01/16/2024 now U.S Patent 12,254,744 See MPEP 201.07. In accordance with MPEP 609.02 A.2 and MPEP 2001.06 (b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP 2001.06 (b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Patent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP 609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Patent Application is relevant in this application.
Information Disclosure Statement
5. IDSs filed are considered.
Claim Rejections - 35 USC § 101
6. 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.
7. Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite the limitation of: “a method for submitting a tax submission on behalf of a player of a game”.
The limitation of submitting a tax submission on behalf of a player of a game, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, nothing in the claims preclude the steps from practically being performed in the mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, claim 1 recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claims only recite one additional element – using a device to receive a request from the player to play the game on a gaming device; determining an identity of the player and a location of the gaming device; determining whether the player has an authorization profile; based on the location of the gaming device, determining at least one jurisdiction that governs the player’s taxable winnings to perform both receiving and determining steps. The device in both steps is recited at a high-level of generality (i.e., as a generic computer configured to submitting a tax submission on behalf of a player of a game) such that it amounts no more than mere instructions. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
In the instant case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of requesting that the player fill out an electronic tax form for each jurisdiction; obtaining an electronic authorization from the player; determining, based on the player’s winnings, that the player has a tax liability; transmitting, in response to the tax liability, the tax submission to a remote device, in which the tax submission comprises at least the electronic tax form and the electronic authorization, in which the remote device and the processor are in electronic communication over a network. Thus, taken alone, the additional element fails to ensure the claims as a whole amount to significantly more than the judicial exception itself. Accordingly, claims 1-8 are ineligible under 35 U.S.C. 101.
Double Patenting
8. 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. See 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);and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim 1 of US application no. 19/023,739 recites:
A method for submitting a tax submission on behalf of a player of a game, the method comprising:
Receiving a request from the player to play the game on a gaming device;
determining an identity of the player and a location of the gaming device;
determining whether the player has an authorization profile;
based on the location of the gaming device, determining at least one jurisdiction that governs the player’s taxable winnings;
requesting that the player fill out an electronic tax form for each jurisdiction;
obtaining an electronic authorization from the player;
determining, based on the player’s winnings, that the player has a tax liability; transmitting, in response to the tax liability, the tax submission to a remote device, in which the tax submission comprises at least the electronic tax form and the electronic authorization, in which the remote device and the processor are in electronic communication over a network.
Claim 1 of US application no. 18/413,388 recites:
A method for submitting a tax submission on behalf of a player of a game, the method comprising:
Receiving, by at least one processor, a request from the player to play the game on a gaming device and a pin or an electronic signature for authorization;
Determining, by at least one processor, an identity of the player and a location of the gaming device;
Determining, by at least one processor, whether the player has an authorization profile;
Based on the location of the gaming device, determining at least one jurisdiction that governs taxable winnings of the player;
Determining, by at least one processor, based on the taxable winnings, that the player has a tax liability when the player hits a taxable event; and
Automatically recording, by at least one processor, in a memory that taxable event with the pin or the electronic signature;
In response to the tax liability, transmitting, by at least one processor, the tax submission to a remote device, in which the tax submission comprises at least an electronic tax form and the authorization, in which the remote device and the at least one processor are in electronic communication over a network.
The difference between claim 1 of application no. 19/023,739 and claim 1 of application no. 18/413,388 is the limitation of: automatically recording, by at least one processor, in a memory that taxable event with the pin or the electronic signature.
Therefore, claim 1 of application no. 19/023,739 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-11 of U.S. Pat. No.12,254,744. Although the conflicting claims are not identical, they are not patentably distinct from each other. Accordingly, it would have been obvious to those in possession of the invention defined by claim 1 to observe that the limitations described in claim 1 are already incorporated in claims 1-11 of U.S. Pat. No.12,254,744. Therefore, one of ordinary skill in the art would have realized that by omitting the limitations of: “automatically recording, by the at least one processor, in a memory the taxable event with the pin or the electronic signature” is an obvious expedient since the remaining elements perform the same functions as before. In re Karlson, 136 USPQ 184 (CCPA 1963.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to PIERRE E ELISCA whose telephone number is (571) 272-6706. The Examiner can normally be reached on Monday -Thursday; 6:30AM- 5:30PM. Hoteler.
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, Hu Kang can be reached on 571 270 1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PIERRE E ELISCA/Primary Examiner, Art Unit 3715
Prosecution Insights