DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 6,600,959. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US Patent 6,600,959 anticipate the more generic or broader claims of now pending claims of the instant application. For comparison purposes, please see below chart comparing the claims.
Current Application 19/211,433
US Patent No. 9,600,959
1. A method comprising:
displaying an indication of an opportunity for a promotion to be presented;
receiving a bid for the opportunity, in which the bid includes a monetary figure;
determining whether the bid meets one or more of a first set of predetermined criteria;
accepting the bid based on whether the bid meets the one or more of the first set of predetermined criteria;
receiving data from which a first promotion may be presented; determining whether the first promotion meets one or more of a second set of predetermined criteria;
identifying a mobile gaming device, in which the mobile gaming device is currently in use by a player;
transmitting the data to the mobile gaming device;
transmitting first instructions to the mobile gaming device, the first instructions describing how to present the promotion; and
transmitting second instructions to the mobile gaming device, the second instructions describing a location in which the mobile gaming device must be when the promotion is presented.
1. An apparatus comprising: at least one processor; and a machine-readable medium having stored thereon a set of instructions, which when executed by the at least one processor, cause the apparatus to:
display, to an advertiser, an indication of an opportunity for a promotion to be presented in the future, in which the opportunity includes a particular outcome of a game that may occur in the future;
receiving a bid for the opportunity for the promotion to be presented in the future from the advertiser, in which the bid includes a monetary figure;
in response to an acceptance of the bid, receive, from the advertiser, content for the promotion, in which the content includes at least one of image data, video data, and audio data;
determine that the content meets one or more of a set of predetermined criteria, in which the criteria define a set of characteristics that must be met by the content for the promotion;
identify a device, in which the device is in use by a player;
determine that the opportunity for the promotion to be presented occurs on the device, in which to determine that the opportunity occurs includes to determine that the outcome in the game has occurred, and in which the game includes a game played on the device; in response to determining that the opportunity occurs, transmit the content to the device;
in response to determining that the opportunity occurs, transmit first instructions to the device, the first instructions describing how to present the promotion; and
in response to determining that the opportunity occurs, transmit second instructions to the device, the second instructions describing a location in which the device is not located in but must be located in when the promotion is presented.
Claim 1
4. The apparatus of claim 1, in which the instructions, when executed by the at least one processor, further cause the apparatus to: determine whether the bid meets one or more of a first set of predetermined criteria, in which to determine whether the bid meets one or more of a first set of predetermined criteria comprises to determine whether the monetary figure is greater than a threshold amount that does not depend on other bids.
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.
This subject matter eligibility analysis follows the latest guidance for Patent Subject Matter Eligibility Guidance.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
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?
Examiner has underlined the claim limitations which recite the abstract idea, discussed in detail in the paragraphs that follow.
1. A method comprising:
displaying an indication of an opportunity for a promotion to be presented;
receiving a bid for the opportunity, in which the bid includes a monetary figure;
determining whether the bid meets one or more of a first set of predetermined criteria;
accepting the bid based on whether the bid meets the one or more of the first set of predetermined criteria;
receiving data from which a first promotion may be presented;
determining whether the first promotion meets one or more of a second set of predetermined criteria;
identifying a mobile gaming device, in which the mobile gaming device is currently in use by a player;
transmitting the data to the mobile gaming device;
transmitting first instructions to the mobile gaming device, the first instructions d scribing how to present the promotion; and
transmitting second instructions to the mobile gaming device, the second instructions describing a location in which the mobile gaming device must be when the promotion is presented.
The claims recite italicized limitations that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG, namely, Mental Processes and Certain Methods of Organizing Human Activity.
More specifically, under this grouping, the italicized limitations are directed towards the bidding for an opportunity to present a promotion, determining to accept the bid based upon a criteria, receive the promotion and transmit the promotion for presentation wherein the presentation includes a location requirement. For example, the italicized limitation are directed towards the managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The latter also falls under the grouping of managing interactions between people, i.e., bidding and accepting of opportunities to present promotions based upon presentation criteria)
Prong 2: Does the Claim recite additional elements that integrate the exception into 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 as follow, (emphasis added): mobile devices
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)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not 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. Therefore, since the additional limitations, individually or in combination, are indistinguishable from a computer used as a tool to perform the abstract idea, the analysis continues to Step 2B, below.
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 and routine computer implementation and mere instructions for implementing the abstract idea on generic computing devices.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract idea. Applicant has claimed mobile devices. However, all of 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.
As the Alice court cautioned, citing Flook, patent eligibility cannot depend simply on the draftsman’s art. Here, amending the claims with generic computing elements does not (in this Examiner’s opinion), confer eligibility.
Regarding the Berkheimer decision, Applicant’s own specification establishes that these additional elements are generic:
[0167] FIG. 2 shows a mobile gaming device 110 according to some embodiments. As used herein, the term “mobile gaming device” may refer to any device that is readily movable or portable and which allows for players to gamble on one or more of at least the following: (a) a game of chance; (b) a sporting contest; (c) a game of mixed chance and skill (e.g., blackjack); (d) a game of skill; (e) a slot machine game (e.g., a game of video slots); (f) a lottery game; (g) a game of cards (e.g., a game of poker); (h) a pull-tab game; (i) a game of bingo; (j) a natural event (e.g., the occurrence of a hurricane); (k) a political event (e.g., the winner of an election); (l) an event of popular culture (e.g., the date of a wedding between two celebrities); and so on. A mobile gaming device may be a device such as a Blackberry®, iPod®, personal digital assistant, mobile phone, laptop computer, camera, personal computer, television, electronic book (eBook), or any other suitable device. A mobile gaming device may be movable or portable in the sense that the average human would be able to transport the device without significant exertion and without the aid of heavy machinery. A mobile gaming device may be movable or portable in the sense that it is not, by design, locked, bolted, or tied down to the same location for extended periods of time (e.g., months). It is, however, contemplated that a mobile gaming device may be temporarily fixed into place (e.g., with locks or bolts) so that a human might physically interact with the device without risk that the device will be accidentally pushed, moved, toppled, etc. A mobile gaming device may include a processor for executing various programs, including programs for operating games, programs for communicating with other devices, programs for presenting advertisements, programs for presenting entertainment, and any other programs. A mobile gaming device may include memory for storing program data, for storing image data, for storing data about a player, for storing information about outcomes of games played on the mobile gaming device, for storing accounting data, and so on. A mobile gaming device may include various output devices. Such output devices may include a display screen, such as a liquid crystal display. The display screen may display images, videos, cartoons, animations, text, or any other feasible output. Output devices may include a speaker. The speaker may generate audio outputs. For example, the speaker may generate voice outputs, the sound of bells, the sound of engines, or any other sound. The speaker may generate vibrations. A mobile gaming device may include one or more input devices. The input devices may allow a player to interact with the mobile gaming device. The mobile gaming device may include buttons, keypads, roller balls, scrolling wheels, and so on. The mobile gaming device may include a touch screen which, e.g., can sense contact from a human’s touch and/or from a stylus. The mobile gaming device may include a microphone for receiving audio inputs. The microphone may be used for receiving voice inputs. A mobile gaming device may include a card reader for receiving inputs from a magnetically striped card (e.g., from a credit card or player tracking card). A mobile gaming device may also include a smart card reader. A mobile gaming device may include a camera for capturing images or video. A mobile gaming device may include a biometric reader, such as a thumb-print reader or retinal scanner. A mobile gaming device may include a communications port. The communications port may include an antenna for broadcasting and/or for receiving electromagnetic signals, such as wireless signals. The communications port may include an optical communication mechanism, such as a laser or diode. The communications port may include an electric contact, which may interface to a wire, to a cable, or to the electronic contact of another device so as to create an electronic connection. The electronic connection may be used for purposes of communication and/or for the purposes of drawing power. A mobile gaming device may include a portion which is geometrically configured to fit into a docking area of another device. The other device may include a portion with a complementary geometrical configuration. When the mobile gaming device is docked into the other device, the mobile gaming device may communicate with such device and/or draw power from the device. For example, the mobile gaming device may upload game software from the other device or download information about player gambling activities to the other device. A mobile gaming device may include a power source, such as a battery or fuel cell. The mobile gaming device may further include a sensor for determining when power is low. The sensor may trigger an indicator, which may indicate an amount of power remaining. The mobile gaming device may include a radio frequency identification (RFID) tag. The tag may include a unique signature and may allow other devices to recognize the presence of the mobile gaming device. For example, a sensor embedded in a door frame may detect a signal from an RFID tag embedded within a mobile gaming device and thereby recognize the presence of the mobile gaming device. In an example of its general operation, a mobile gaming device may receive an indication of a player identifier, such as from the swipe of a player tracking card through a magnetic card reader associated with the mobile gaming device. The mobile gaming device may wirelessly transmit the player identifier to a casino server. The casino server may transmit a confirmation signal back to the mobile gaming device, confirming that the player has adequate credits on account to engage in gambling activities. The mobile gaming device may receive a game initiation signal from a player, e.g., via one the buttons on the mobile gaming device. The mobile gaming device may then execute a game program to generate a random outcome and present the random outcome to the player. For example, on its displays screen, the mobile gaming device may simulate the spinning of slot machine reels, which may be shown to stop with a particular outcome displayed centrally. The mobile gaming device may inform the casino server of the outcome of the game. The casino server may, accordingly, add or subtract credits from the player’s account. It will be appreciated that there are many other ways in which a mobile gaming device may operate. A mobile gaming device may include a more general purpose device which is configured to allow gaming activity, e.g., through downloads of gaming related software to the device. A mobile gaming device may also include a special purpose device dedicated to gaming. A mobile gaming device may include a device as set forth in Nevada bill AB471.
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).
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 merely provide conventional computer implementation.
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 merely 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 has said in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
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
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.
Claim 1 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Willis (US 2004/0044567) in view of Willis (US 2006/0136297) (hereinafter “Willis ‘297) in view of Teshima (US 2002/0032035).
As per claim 1, Willis discloses:
displaying an indication of an opportunity for a promotion to be presented; (Willis discloses displaying of an opportunity to present a promotion wherein an advertiser makes a bid to present advertisements that are to be presented) (Willis 0032, 0033)
receiving a bid for the opportunity, in which the bid includes a monetary figure; (Willis discloses the submission of a bid that comprises monetary amounts) (Willis 0032 – 0033)
determining whether the bid meets one or more of a first set of predetermined criteria; (Willis discloses the evaluation of the bids wherein each bid specifies a price or amount the advertiser is willing to pay) (Willis 0032)
accepting the bid based on whether the bid meets the one or more of the first set of predetermined criteria; (Willis discloses the acceptance of the bid) (Willis 0032)
receiving data from which a first promotion may be presented; (Willis discloses the system receiving the advertisement from the advertiser and storing the advertisement) (Willis 0031)
transmitting the data to the mobile gaming device; (Willis discloses the transmitting of the data comprising the advertisement to the user) (Willis 0033 – 0034)
identifying a mobile gaming device, in which the mobile gaming device is currently in use by a player; (Willis discloses identifying the mobile device the user is using) (Willis 0033)
Willis fails to disclose:
determining whether the first promotion meets one or more of a second set of predetermined criteria;
transmitting first instructions to the mobile gaming device, the first instructions d scribing how to present the promotion; and
transmitting second instructions to the mobile gaming device, the second instructions describing a location in which the mobile gaming device must be when the promotion is presented.
However in a similar field of endeavor, Willis ‘297 However, Willis discloses an advertising system wherein a user utilizes a mobile device and the system uses a location means to determine what location the mobile device is and then advertisements are transmitted to the mobile device based upon
them being in a designated location. For example the system will determine when a person is playing a game whether the player is in a HOME location or not and tailor the game advertisements according to the location (Willis ‘297, 0031 - 0032, 0035 - 0038).
It would be obvious to one of ordinary skill in the art to modify Willis in view of Willis ‘297 to provide game advertisements or promotions that are tailored according to the mobile devices mobile location. This would enable the system to provide more applicable ads that would be of interest to a game player in a particular game location.
However, in a similar field of endeavor, Teshima discloses a system that transmits advertisement data information (ADI) to a mobile device wherein the ADI includes instructions for how the advertisement is presented such as visually or audio and the location that the mobile device needs to be located or near in order for the advertisement to be presented (Teshima 0072, 0076, 0079).
It would be obvious to one of ordinary skill in the art, at the time of filing, to modify Willis in view of Teshima to use a known technique to improve similar devices in the same way. That is, utilizing instructional data that is transmitted to the mobile device that instructs how the advertisement is presented and what location the advertisement can be presented in. This would be beneficial as the advertiser can tailor the advertisement to be presented to certain demographics or in only set locations in advance, based on the pre-transmitted instructions, in case the device is out of range of communication signals when the location is actually reached by the user.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROSS A WILLIAMS whose telephone number is (571)272-5911. The examiner can normally be reached Mon-Fri 8am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at (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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/RAW/ Examiner, Art Unit 3715
9/28/2026
/KANG HU/ Supervisory Patent Examiner, Art Unit 3715
