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: the word “inputting” is misspelled on line 15. Appropriate correction is required.
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 1-20 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.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. Claims 1-20 are directed to computer readable media, methods, and systems. As such, the claimed invention falls into the broad categories of invention. However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. at 309.
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, “Embodiments of the present disclosure relate to generating market pricing for sports wagers…Specifically, embodiments of the present disclosure relate to generating user-requested markets from an outcome matrix and associated stored calculation tables.” Spec. ¶ 2. Representative claim 1 recites the following (with emphasis):
1. One or more non-transitory computer-readable media storing computer-executable instructions that, when executed by at least one processor, perform a method of tracking user wagers during live contests, the method comprising:
receiving, from a computing device associated with a user, a wager on a contest, wherein the wager is on a proposition and a proposition value;
determining, by a tracking metric matcher of a tracking engine, a tracking metric associated with the wager, wherein determining the tracking metric comprises classifying the wager as a wager type and matching the wager to the tracking metric, the tracking metric being retrieved from a tracking metric store or generated by a tracking metric generator, and wherein a tracking metric associated with the wager, wherein the tracking metric is an algorithmic expression including a current-value field for a current value of the proposition during the contest and a proposition field for the proposition value;
determining, by a state engine of the tracking engine, an initial state associated with the wager, wherein the initial state is determined by inputting one or more wager parameters into the tracking metric;
presenting, via a user interface of the computing device, the initial state to the user using a user-interface element generated based on information extracted from the tracking metric;
monitoring, by the tracking engine, the contest for live data;
responsive to receiving the live data, determining by the state engine, a current state associated with the wager by inputting the live data into the tracking metric; and
presenting the current state to the user by updating the user interface including modifying the user-interface element based on the current state.
The underlined portions of claim 1 generally encompass the abstract idea, with substantially identical features in claims 8 and 15. Dependent claims 2-7, 9-14, and 16-20 further define the abstract idea (e.g., monitoring live events to update data, timing of wagers, wagers associated with a user-requested market, pricing using an outcome matrix, querying a table to find information, types of wagers presented such as binary wagers, wagering on sporting events, gathering data from websites associated with a contest for live data, outputting progress or odds of a wager, matchups between users, live data that affects the proposition of the wager, etc.).
Under prong 1, the claimed invention encompasses an abstract idea in the form of mental processes, mathematical concepts, and/or certain methods of organizing human activity. The invention encompasses human users requesting and accessing information regarding wagering. Wagering and purchasing financial products are fundamental economic concepts long prevalent in human civilization. Moreover, the abstract idea of setting out rules for a transaction and entering into a transaction is a mental activity which could be accomplished using pen and paper or simply in the minds of the human users. The invention’s use of data stored in a matrix, including mathematical formulas for pricing, encompasses all of mental processes, mathematical concepts, and certain methods of organizing human activity. The storing and accessing of the information in the matrix are analogous to storing and accessing information in a table, which is a mental process. The pricing of wagers is a certain method of organizing human activity because it encompasses fundamental economic activity. Finally, the pricing formulas themselves are mathematical formulas or algorithms. The abstract idea analysis herein is non-exhaustive.
Under prong 2, the instant claims do not integrate the abstract idea into a practical application. While certain physical elements (i.e., elements that are not an abstract idea) are present in the claims, such features do not effect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. There is no indication of any particular computer system or format for the data structures employed by the claimed invention, and hence there is also no indication of the claimed invention improving the functioning of the computer system. Instead, the claims merely present an environment in which the abstract idea is to be applied. That environment is an online computer system in communication with at least one user computing device. Neither the processor nor user computing device(s) is described with any specificity. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine, (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim, as a whole, is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)-(c), (e)-(h). Therefore, the claims are directed to the judicially recognized exception of an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional element(s) or combination of elements other than the abstract idea per se amount(s) to no more than: a system comprising at least one processor, one or more databases, one or more computer-readable media, and at least one user computing device to perform the abstract idea. It is noted that the claimed ‘engines’ and ‘generators’ are interpreted as software used to carry out the abstract idea by performing a given function (e.g., the tracking engine serves to track data, etc.). Such features are recited at a high level of generality.
The above elements amount to generic, well-understood and conventional computer components. Each of the claimed computer functions is well-understood, routine, conventional activity previously known to the industry and/or constitutes extra-solution activity. Such functions include receiving using inputs, executing instructions via a processor, storing or accessing/querying data in a matrix or data structure, and outputting data on a user interface. As demonstrated by Berkheimer v. HP, such computer functions cannot save an otherwise ineligible claim under §101. In short, each step does no more than require a generic computer to perform generic computer functions.
The specification contemplates a variety of well-understood, routine, and conventional computer systems to carry out the invention. “Computer 102 can be a desktop computer, a laptop computer, a server computer, a mobile device such as a smartphone or tablet, or any other form factor of general- or special-purpose computing device.” Spec. ¶ 50. “[T]he server 204 can include one or more servers or other types of computing devices that can be embodied in any number of ways” whereby “the functional components and data of the server can be implemented on a single server, a cluster of servers, a server farm or data center, a cloud-hosted computing service, a cloud-hosted storage service, or the like.” Id. at ¶ 53. “Network 212 can include, but is not limited to, any type of network known in the art, such as a local area network or a wide area network, the Internet, a wireless network, a cellular network, a local wireless network, Wi-Fi and/or close range wireless communications, Bluetooth®, Bluetooth Low Energy (BLE), Near Field Communication (NFC), a wired network, or any other such communication network, or any combination thereof as describe above in reference to FIG. 1.” Id. at ¶ 55. This demonstrates there is no particularity in the computer systems or cloud servers used in the claims, and that these features were well-understood, routine, and conventional in the art and represent extra-solution activities.
It is further noted that server systems, including cloud server systems, are generic and conventional in the art of online contest games. For instance, US 2017/0098348 to Odom provides a system and method for providing a fantasy competition in which players create a team roster and determine the outcome of a contest according to a real-life sporting event. Odom, abstract. The reference makes clear that the computer systems used therein may include “personal computers (PC), file servers, cloud computing systems, software-as-a-service (SaaS) systems, cellular telephones, smartphones, tablet devices, laptop computers, personal digital assistants, and the like.” Id. at ¶ 40. This demonstrates that cloud computing systems (i.e., servers) were considered well-understood, routine, and conventional alternatives (or additions) to other computing devices before the effective date of the invention.
Considered as an ordered combination, only generic computer components are present (e.g., computing systems, user interfaces, data structures, and storage). Viewed as a whole, the claims simply encompass the concept of pricing or purchasing wagers on a generic computer network. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer system. Under relevant court precedents, that is not enough to transform an abstract idea into a patent-eligible invention.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive.
Applicant addresses the grounds of rejection under 35 U.S.C. § 101 on pages 9-14 of the Remarks section. More particularly, Applicant asserts that the claims as presently amended recite a variety of ‘engines’ to carry out relevant features of the claimed invention, which Applicant asserts are not practically performed in the human mind. Remarks 10-11. The Examiner respectfully disagrees. The claim recitations relating to these ‘engines’ or ‘generators’ merely recite analyzing or categorizing data in a way that could be performed mentally or with pen and paper. For instance, the claimed “tracking metric matcher of a tracking engine” merely determines tracking metrics associated with a wager, classifies certain wager information, retrieves tracking metrics from a database or generates tracking metrics. See, e.g., claim 1. Each of these features relates to a mental activity. Moreover, the tracking metric is described as an algorithmic expression including a current-value field for a current value of the proposition during the contest and a proposition field for the proposition value. Id. This indicates that the information describing the wager has a mathematical expression for the monetary value of the proposition and that the information is stored in a database. This indicates that the claim limitation is both a mental process and a mathematical algorithm. In each case, the claim limitations merely provide abstract ideas carried out by a computer system.
Applicant addresses the Step 2A prong 2 inquiry beginning on page 11. Applicant asserts that the claimed computer system provides a bet-specific progress indicator that intends to translate live contest developments into meaningful information about a bet. Remarks, 11. The Examiner respectfully submits that analyzing information and providing an output of the results falls squarely within the mental process category of abstract ideas. There is no particular indication of how the information is analyzed or what the progress indicator might constitute in the claimed invention. Even if it were claimed in detail, it is not clear how this would result in patent eligibility. See, e.g., Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016) (Finding ineligible claims to “systems and methods for performing real-time performance monitoring,” where information is gathered and analyzed to create a human-readable display of the analyzed information) and SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018) (Finding ineligible claims directed to analyzing financial information and generating a pictorial representation of a person’s finances).
Applicant addresses Step 2B beginning on page 12 of the Remarks. Applicant attempts to characterize various features of the claimed abstract idea as an ordered combination that requires factual analysis. Remarks, 12-13. The Examiner respectfully disagrees with this line of reasoning. The Office need not show that the abstract idea itself is old and well-known because the determination of eligibility is separate from novelty and obviousness. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). In this case, the Odom reference (and other factual findings) address the additional elements of the claimed invention, which are primarily directed to computer hardware and related software. Those elements relating to ‘engines’ and ‘generators’ are interpreted as software meant to program a computer system to perform a portion of the abstract idea. This amounts to a recitation of an abstract idea with an instruction to ‘apply it’ using conventional computer components, including software components. The Alice court made clear that such features are insufficient to demonstrate eligibility.
The Examiner has considered the remaining arguments relating to features of the dependent claims. Remarks, 13-14. These arguments are unpersuasive because they are predicated on arguments addressed above. For the forgoing reasons, the claimed invention fails to demonstrate patent eligibility.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715
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