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 Objections
Claim 1 is objected to because of the following informalities: Claim 1, lines 13-14 recite “cause numbers to be selected from a first set of numbers for the first game session and by the server”; however, the limitation contains grammatical error, and should be stated as “cause numbers to be selected from a first set of numbers for the first game session by the server”. 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 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-7, 10-11, 14-18, 20-22, 24-26 & 28 of copending Application No. 19/087,135 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and the co-pending application substantially recite similar limitation with a single exception. The current application additionally claims, “numbers selected from the first set of numbers by the server for the first game session”, which is lacking in the copending application. However, it would have been obvious for one with ordinary skill in the art, at the time of the invention to modify the co-pending Bingo game to include the server selection of winning numbers to prevent tampering.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-19 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.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S.___(2014).
Claim 1 is directed to a system to implement a bingo game. As such, the claims are directed to statutory subject matter under Step 1 of the Alice flowchart as directed to a judicial exception (i.e. an abstract idea).
Addressing the claims under Step 2A, the claims are held to be directed to concepts similar to those found to be abstract, either as outlined in the 2014 lEG/July 2015 Update to Subject matter eligibility, or, as compared to certain decisions rendered by the courts. The claims describe the steps of conducting a bingo game. The addition of the limitations (i.e. plurality of processors, memory devices, including processors located in a server and processors located in devices remote from the server) that narrow the idea merely aide in the description of the abstract idea and therefore do not render the claims any less abstract.
This concept is considered a method of organizing human activity by managing interactions between people through a social activity and following game rules or instructions (see July 2015 Update: Section III (B)). The claimed subject matter is analogous to the subject matter considered in Planet Bingo, LLC v. VKGS LLC (Fed. Cir. 2014). Wherein, the Federal Circuit considered computer-aided methods and systems for managing bingo games, including storing and retrieving player-selected numbers, tracking player payments, and verifying winning numbers. The court determined that the underlying bingo-management operations could be carried out by a human using pen and paper and constituted an abstract idea.
Finally, the concept of identifying and transmitting bingo information to a user further represents ‘an idea itself’ (see July 2015 Update: Section III (C)) inasmuch as it is related to processes of identifying, comparing, processing, and presenting data. Several precedential cases have found concepts relating to processes of identifying, comparing, processing, and presenting data to be mere ideas in themselves. One example includes selecting/identifying displayed data, manipulating the data through encoding and decoding processes, and generating new outputs/displays (Recognicorp, LLC, v. Nintendo Co., Ltd., Nintendo of America, Inc., No. 2:12-cv-01873-RAJ (2017)). The courts have addressed other computerized processes for of identifying, comparing, processing, and presenting data including data collecting and comparing known information (Classen Immunotherapies Inc. v. Biogen IDEC 659 F.3d 1057(Fed. Cir. 2011)), collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group, LLC v. Alstom 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016))] extracting, organizing, storing and transmitting data (Content Extraction and Transmission LLC v. Wells Fargo Bank, National Ass'n. 776 F.3d 1343 (Fed. Cir. 2014)) and obtaining and comparing intangible data (Cybersource Corp v. Retail Decisions, Inc. 654 F.3d 1366, 99 U.S.P.Q.2d 1690 (Fed. Cir. 2011)) (see July 2015 Update: Section III (C)).
The claims 2-6 are also directed to mathematical algorithms (i.e. averaging, aggregating, adjusting, and calculating a monetary value (rating) of a service provider)) In particular, the courts have found mathematical algorithms to be abstract ideas (i.e. a mathematical procedure for converting one form of numerical representation to another in Benson, or an algorithm for calculation parameters indication an abnormal condition in Grams). The courts have found that analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. (See Electric Power Group, LLC v. Alstom S.A., (Fed. Cir. 2015) citing e.g., TLI Commc'ns, 823 F.3d at 613; Digitech, 758 F.3d at 1351; Bancorp Servs., L.L.C. v.Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRFTech., Inc. v. Int'ITrade Comm'n, 601 F.3d 1319,1333 (Fed. Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook, 437 U.S. 584, 589-90 (1978); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
Therefore, while it is understood that the claims in the current application are not verbatim recitations of the guidelines or case law, the detailed analysis provided above shows how the current claim limitations at issue closely parallel the concepts provided by the guidelines and the precedential case law, and are therefore considered to be directed to an abstract idea (Step 2A: YES).
Step 2A, Prong Two: Claim 1 does not contain additional elements that integrate the abstract idea exception into a practical application because the additional elements are mere instructions to apply the abstract idea exception; MPEP § 2106.05(f). (2) generally link the judicial exception to a particular technological environment; MPEP § 2106.05(h); (3) are insignificant extra solution activity; MPEP § 2106.05(g). The additional elements are limited to generic computer components. The additional elements include plurality of processors and memory devices; computer-executable instructions; displaying information corresponding user interfaces; and the use of those components to present bingo card. However, the claim as a whole, looking at the additional elements individually and in combination, are no more than mere instructions to apply the exception using generic computer/computer components and is not a practical application. See MPEP §2106.05(f). The additional elements do not integrate the abstract idea exception into a practical application because they do not impose any meaningful limits on the abstract idea exception. Accordingly, Claim 1 is directed to an abstract idea.
Under Step 2B, the examiner acknowledges the additional limitations (i.e. plurality of processors and memory devices; computer-executable instructions; displays and corresponding user interfaces). However, the recited element or combination of elements is not sufficient to ensure the claim as a whole amounts to significantly more that the abstract idea itself. For example, the computer components generically claimed to enable the management of the game by performing the basic functions of: (i) receiving, processing, and storing data, and (ii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized these functions to be well-understood, routine, and conventional functions when claimed in a merely generic manner. Particularly, Planet Bingo, LLC v. VKGS LLC (Fed. Cir. 2014). The Federal Circuit concludes that the recitation of a computer, memory, input/output terminal, display, and program did not supply an inventive concept, but those components performed generic bingo-management functions. The court concluded that the claims recited “a generic computer implementation of the covered abstract idea” and that the computer’s functions at each step are conventional. As such, the recitation of the computer limitations in claims 1 to 19 amounts to mere instructions to implement the abstract idea on a computer.
Ultimately, the claimed machine(s) function solely as an obvious mechanism to achieve the claimed result, failing to impart a meaningful limit on the claim scope [see SiRF Tech., Inc. v. ITC (Fed. Cir. 2010)]. The claims at issue here do not rise to overriding the routine and conventional sequence of events ordinarily performed by the computer, nor do they set forth with any specificity the interactions of the machine itself. Conversely, the claims are only specific in how the computer is used to facilitate the abstract idea itself using routine and conventional operations of the generic machinery, and are silent as to any detail or property that would transform the otherwise generic machinery into a specialized or special purpose machine. Even when considered as an ordered combination, the computer components of applicant's method add nothing that is not already present when they are considered individually. Viewed as a whole, the claims simply convey the idea itself facilitated by generic computing components.
Thus, under Step 2B, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 2-19 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The claims provide minimal technical structure or components for further consideration either individually or as ordered combinations with the independent claims. As such, additional recited limitations in the dependent claims only refine the identified abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete. Claims 1-19 are therefore ineligible under 35 U.S.C. 101.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1-9, 14-15, & 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kellerman et al. (US Patent Pub. 2006028155; referred to hereinafter as Kellerman), and further in view of Cannon (US Patent Pub. 20160307410; referred to hereinafter as Cannon).
Claim 1: Kellerman disclose a system comprising, a plurality of processors and memory devices (figure 1), wherein, one or more of the processors are located in a server and at least some of the processors are located in devices remote from the server (0008), and the memory devices store computer-executable instructions which, when executed by the processors (0020), cause the processors, in aggregate, to cause each device to present, via a display of that device, a corresponding user interface that includes a player-accessible representation of one or more bingo cards associated with that device for a first game session (0032-0033, wherein player selects the bingo game to participate in), determine, for each of the devices, whether that device is a first type of device participating in the first game session in a for-money context (0028-0029) or a second type of device participating in the first game session in a free-to-play context (0059, disclose free-to-play). Kellerman, however, fails to explicitly disclose, causing numbers to be selected from a first set of numbers for the first game session and by the server, cause each of the devices to be provided with information indicating each of the numbers selected from the first set of numbers by the server for the first game session, receive one or more bingo claim indications for the first game session sent from one or more of the devices, wherein each bingo claim indication indicates that the device from which that bingo claim indication was received made a claim that one or more of the numbers selected by the server for the first game session match a corresponding number or numbers in one or more locations on one of the one or more bingo cards associated with the device from which that bingo claim indication was received that form a pattern that matches an eligible bingo pattern of one or more eligible bingo patterns associated with the device from which that bingo claim indication was received. In an analogous art, Cannon teaches of multi-player network-based bingo game (0046). Cannon further teaches causing numbers to be selected from a first set of numbers for the first game session and by the server (0077-0082), cause each of the devices to be provided with information indicating each of the numbers selected from the first set of numbers by the server for the first game session (figure 7 & 0082-0083) receive one or more bingo claim indications for the first game session sent from one or more of the devices (0059 ‘play/daub’ button), wherein each bingo claim indication indicates that the device from which that bingo claim indication was received made a claim that one or more of the numbers selected by the server for the first game session match a corresponding number or numbers in one or more locations on one of the one or more bingo cards associated with the device from which that bingo claim indication was received that form a pattern that matches an eligible bingo pattern of one or more eligible bingo patterns associated with the device from which that bingo claim indication was received (0082-0084 determining if the winning pattern and the player’s pattern match). It would have been obvious for one with ordinary skill in the art, at the time of the invention, to modify the bingo game disclosed by Kellerman, to include features taught by Cannon to conduct simultaneous bingo game.
Claims 2-6: The combination of Kellerman and Cannon teach causing promotional awards to cease being associated with a corresponding player of each device of the second type for the bingo claim indications received from that device of the second type during the first game session and after a first quantity of X numbers is selected from the first set of numbers for the first game session and before a second quantity of X+1 numbers is selected from the first set of numbers for the first game session (obvious to bingo games, wherein the promotional award automatically ceases once the winning outcome has been achieved).
Claim 7: The combination of Kellerman and Cannon teach causing the first game session to terminate after a bingo claim indication for the first game session is received from a first device of the devices remote from the server and indicates that a game-ending eligible bingo pattern has been formed on one of the one or more bingo cards associated with the first device during the first game session (0135, Cannon).
Claim 8: The combination of Kellerman and Cannon teach the first device is of the first type and is not permitted to be of the second type for the first game session (obvious, as the same device cannot implement same wagering game in different categories).
Claim 9: The combination of Kellerman and Cannon teach wherein the game-ending pattern is a blackout pattern (0059, Cannon).
Claim 14: The combination of Kellerman and Cannon teach causing the user interface presented on each device of the second type to provide player- accessible representations of multiple bingo cards for the first game session (0074 & 0076, Cannon).
Claims 15: The combination of Kellerman and Cannon teach conducting multiple game sessions within a first time period, the multiple game sessions including the first game session, and limit to a predetermined number a quantity of the game sessions within the first time period that a player account can participate in while being associated with a device of the second type (0115, Cannon).
Claim 17: The combination of Kellerman and Cannon teach presenting a player-accessible representation of only one bingo card for that game session (0023, Kellerman).
Allowable Subject Matter
Claims 10-13, 16 & 18-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Examiner’s Note
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Warner (8,821,248) refers to a bingo game wherein a single bingo pattern is associated with a plurality of outcomes. In one such embodiment, a first bingo pattern is associated with a static outcome, such as an award of a designated value, and a second bingo pattern is associated with an open-ended outcome, such as a progressive award. If a bingo pattern associated with a progressive award is covered, the disclosed gaming system and method causes the bingo game to display, a symbol combination associated with the progressive award. In one embodiment, the disclosed gaming system and method selects the symbol combination from a plurality of symbol combinations associated with the progressive award.
Luciano (7,481,707) refers to generating bingo game bonuses that are non-banked, for use with pooled bingo games. The system generates pools of money for use in bingo games by deducting a percentage of the amount used to purchase bingo cards (in the present invention, virtual bingo cards). Each bingo game automatically enrolls active players in one or more bonus games, exemplified by "4 corners," where the amounts to be given away to players as bonuses are calculated to be equal, over time, to the amount taken in from players buying bingo cards. The house has no stake in the bonus awards.
Gupta (20150141110) refers to a system for allowing players to play a bingo-type game with a user computing device. The system includes a database including a plurality of bingo symbols and a system controller coupled to the database. The system controller is configured to receive a request from a player to play the bingo-type game and responsively display the bingo-type game on the at least one user computing device. The system controller is configured to determine a plurality of symbol groups included in the bingo-type game, randomly select a set of bingo symbols, and displays the selected set of bingo symbols with respect to the symbol grid. Each symbol group includes a predefined set of bingo symbols. The set of bingo symbols including a bingo symbol selected from each one of the symbol groups. Each bingo symbol in the set of bingo symbols is displayed simultaneously.
The referenced citations made in the rejection(s) above are intended to exemplify areas in the prior art document(s) in which the examiner believed are the most relevant to the claimed subject matter. However, it is incumbent upon the applicant to analyze the prior art document(s) in its/their entirety since other areas of the document(s) may be relied upon at a later time to substantiate examiner's rationale of record. A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). However, "the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed ...." In re Fulton, 391F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIT PANDYA whose telephone number is (571)272-2823. The examiner can normally be reached M-F 9:30-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUNIT PANDYA/Primary Examiner, Art Unit 3715
