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 .
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,530,945. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. All aspects of the instant claims are fully contained within the claims of the ‘945 patent. Additionally, with respect to instant claim 1, the presence of a wagering window is necessarily required in both sets of claims because the acceptance of wagers must eventually end in order to resolve those wagers. Furthermore, with respect to instant claim 18, analysis of data generated by the sports betting cohort during the sports contest and combining of real-time response data with the previous micro betting results and the unfolding events is a substantial restatement of the first subparagraph of the claim as originally filed. As such, the claims are not patentably distinct.
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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
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 claims fall into one of the four statutory categories of invention. Claims 1-22 are directed to devices and methods, which fall into the four statutory categories. However, claims that fall within 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. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the invention is directed to a “method and apparatus relate[d] to micro sports betting where the odds on In Play propositions are readjusted based on the actual input from the same participant audience.” Spec. 5.
Representative claim 18 recites the following (with emphasis):
18. A method programmed in a non-transitory memory of a device comprising:
sending content to a mobile device, wherein the content includes a game of chance including one or more micro betting propositions with odds simultaneously presented to sports betting cohorts wagering on a sports contest, wherein the odds presented to the sports betting cohorts are in part adjusted by analysis utilizing artificial intelligence and machine learning applied to results of previous micro betting propositions from the same sports betting cohort betting on the same game of chance, wherein the artificial intelligence adjusts the odds based on unfolding events and a decrementing game clock, wherein analysis is provided by previous micro betting during a single contest by one or more of the following resources:
a skill game operator,
a selected sample of the cohort,
a cohort of recruited experts,
a sports book operator’s accumulated game betting data, and
data from a third party data and odds supplier,
wherein the artificial intelligence collects and analyzes real-time response data generated by the sports betting cohort during the sports contest and combines the real-time response data with the previous micro betting results and the unfolding events to recalculate the odds for the one or more micro betting propositions.
The underlined portions of representative claim 18 generally encompass the abstract idea, with a subset of substantially similar features in appearing in claims 1 and 10. The dependent claims further define the abstract idea (e.g., providing various sources of information, providing a particular timeframe for providing betting propositions, monitoring or observing human interactions, determining that a player is cheating, etc.) or relate to implementation of the abstract idea (e.g., using GPS to determine a player’s location). The abstract idea may be viewed, for example, as:
a method of exchanging financial obligations (e.g., micro betting propositions, which are effectively methods of exchanging and resolving financial obligations based on probabilities created during the game) as discussed in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014), In re Smith, 815 F.3d 816 (Fed. Cir. 2016), and In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018),
a fundamental economic practice (e.g., rules for conducting a game) as discussed in In re Smith, and In re Marco Guldenaar Holding B.V.,
a method of managing a game similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (non-precedential);
a set of game rules similar to increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results, as discussed in Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342 (Fed. Cir. 2021);
use of machine learning in a given environment (e.g., for calculating wager information) as discussed in Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025); and/or
a method of organizing human activities (e.g., allowing a human player to play an award-providing game according to rules of the game method, observing human behavior to determine reactions or cheating) as discussed in Bilski v. Kappos, 561 U.S. 593 (2010) and Alice Corp. v. CLS Bank.
The claimed abstract idea reproduced above is effectively a method of exchanging and resolving financial obligations between one or more players and an operator of the gaming system based on probabilities created during the game (see Smith, Marco Guldenaar, and Alice). Based on the reasoning in Smith, and Marco Guldenaar, the recited steps of conducting a game in the instant claims relate to the “fundamental economic practice” of rules for conducting a game. The abstract idea is also similar to that of Planet Bingo, in which a method of managing a bingo game was found to be an abstract idea. Though the instant claims are not limited to bingo games, they encompass the management of similar games. The abstract idea is also comparable to the game rules presented on gaming machines in Bot M8 LLC v. Sony Corp. of America, in which a reward probability could be increased or decreased based on aggregating previous game outcomes placed on the gaming machines. The Bot M8 decision also found that such abstract idea is “more broadly the difficulty[] of a multiplayer game.” The instant claims encompass presenting odds, which may be adjusted over time and/or in response to selections made by a plurality of participants. Like the claims in Recentive, the instant claims merely recite the use of generic machine learning applied to a given data environment. The Recentive court determined that claimed methods are not rendered patent eligible by the fact that using existing machine learning technology to perform a task previously undertaken by humans with greater speed and efficiency than could previously be achieved. Courts have consistently held, in the context of computer-assisted methods, that such claims are not made patent eligible under § 101 simply because they speed up human activity. Finally, the claims allow a player to win an award, which is a financial transaction based on the rules of the game, along with observing user behavior to determine reactions to outcomes or to determine that cheating has occurred. Such transactions are akin to the sort of organizing of human activities, i.e., risk hedging, discussed in Bilski (and shadow accounts in Alice).
Under prong 1, the above analysis demonstrates that the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity. Under prong 2, the instant claims do not integrate the abstract idea into a practical application because they merely provide instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea, add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use.
To the extent that artificial intelligence and machine learning are considered additional elements, these features merely add a computer-aided limitation to the abstract concept. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.”). Relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible. See Alice, 573 U.S. at 224 (holding that “use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is insufficient for patent eligibility); Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (explaining that a computer “employed only for its most basic function…does not impose meaningful limits on the scope of those claims”). Moreover, the “mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). The claims here do not provide any level of specificity as to how artificial intelligence and machine learning provides more than a mere automation of manual processes using generic computers.
While certain physical elements (e.g., elements that are not an abstract idea such as server devices and storage media) 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. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (only generic gaming components), (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 (e.g., a client-server 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 claims encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se: a server device, non-transitory memory, mobile device with GPS to determine location, and associated software to carry out the abstract idea, along with generic recitation of artificial intelligence and machine learning to analyze human interactions. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
The specification admits, “Devices such as a laptop 206, a mobile phone 208, a computer 210, a dedicated betting terminal 220, or any other web connected capable devices are able to be used to participate in the skill game competitions and/or the sports betting by sending information (e.g., responses) to and receiving information (e.g., propositions) from the SGO device 200 and/or the SBO device 202.” Spec. 21.
Additionally, the specification does not indicate what type of artificial intelligence (AI) algorithm is employed, nor does it specify what the AI actually does to analyze data. For instance, the disclosure states that “AI analyzes previous skill game propositions and results from the skill game propositions, in addition to other information, to generate new skill game propositions and/or micro betting propositions.” Spec. 16-17. However, the specification does not provide any particular algorithm for performing these steps. Instead, the AI and machine learning are described at a high level of generality and with only functional language. There is no indication that any new or improved AI or machine learning is provided or contemplated. In light of the court decision in Recentive, this is not sufficient to save a claim from abstraction.
Moreover, the use of a GPS device to track user locations in a betting context has been found to be abstract by the courts. For instance, when inventions do not “purport to have advanced GPS or mobile device technology [and] they provide no description whatsoever of any hardware or software for equipping GPS on a mobile device… this can only plausibly mean that the patent applicant drafted the specification understanding that a person of ordinary skill in the art knew what GPS was, how to include it on a mobile device, and that using it for the purposes disclosed in the patent was routine, conventional, and well-understood.” Beteiro, LLC v. Draftkings Inc., 104 F.4th 1350, 1358 (Fed. Cir. 2024). The same is true of the instant disclosure, which merely sets forth a variety of mobile devices, such as smartphones, that include GPS technology, which is simply used in its ordinary and conventional capacity to determine the location of a given device. Like the instant claims, the Beteiro invention also used GPS to determine whether a user was in a particular jurisdiction that allowed betting to take place.
Furthermore, the specification describes the server devices in generic and functional terms, which illustrates that these are merely off-the-shelf computer components arranged in conventional ways. For instance, on pages 20-21, the specification states:
“An SGO [skill game operator] device 200 is utilized to provide SGO propositions and/or receive user input based on the propositions. For example, the SGO device 200 is a game server or a group of servers configured to generate/host/send/control real-time skill game propositions and receive any communications (e.g., selections/responses) from skill game users/participants.
An SBO [sports betting operator] device 202 is utilized to provide SBO propositions and/or receive user input based on the propositions. For example, the SBO device 202 is a server or a group of servers configured to generate/host/send/control real-time sports betting propositions and receive any communications (e.g., selections/responses) from sports betting users/participants.
The SGO device 200 and the SBO device 202 are able to communicate with each other as well, directly (e.g., peer-to-peer) or over a network 204 (e.g., the Internet, a LAN, a cellular network). The SGO device 200 is able to send information (e.g., input results from real-time propositions) to the SBO device 202 which then utilizes the information to generate odds for sports betting propositions. The SBO device 202 is able to then communicate the odds to casinos and/or gaming applications to receive wagers on the propositions.
In some embodiments, the SGO device 200 and the SBO device 202 are one device.”
As such, the claimed server devices represent generic and conventional computer components described at a high level of generality.
Taking the claimed elements individually yields no difference from taking them in combination because each element simply performs its respective function as discussed above. The claims do not purport to improve the functioning of a computer itself, nor do they effect an improvement in any other technology or technical field. Instead, the additional features merely amount to an instruction to apply the abstract idea using generic, functional, and conventional components well-known in the art. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
Response to Arguments
Applicant's arguments filed 7/13/2026 have been fully considered but they are not persuasive.
As an initial matter, Applicant’s request on page 6 to hold the double patenting rejection in abeyance is acknowledged. Applicant addresses the grounds of rejection under 35 U.S.C. § 101 on pages 6-8 of the Remarks section. More particularly, Applicant characterizes the invention as collecting and utilizing contemporaneous response data from the relevant audience and incorporating that information into the generation of subsequent odds within a limited window of time. Remarks 6-7. The Examiner respectfully notes that this is an abstract idea. The propositions are wagers. Those wagers are created using the audience’s responses to generate odds to be used for the wagering propositions.
Applicant further contends on pages 7-8 that the claimed (and at times, disclosed) invention improves computer technology because it provides information in real time. Applicant asserts that the artificial intelligence and machine learning aspects of the claimed invention provide an improvement by considering different types of information (namely, newly generated event-driven information on p. 8). The Examiner respectfully disagrees with these positions. First, processing different types of information does not change the finding that the claims encompass an abstract idea. At best, this represents a business decision to incorporate more audience feedback into the generation of odds as opposed to some other group of people (e.g., a panel of experts). It does not change the underlying computer system in any way. Second, the courts have found that performing complex mathematical calculations in real time is an ineligible abstract idea. See, e.g., Elec. Power Grp., LLC V. Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016). Therefore, the argument that the claimed invention processes information in real time or in some restrictive timeframe does not alter the finding that the claims are directed to an abstract idea.
In light of the above findings, the claimed invention fails to demonstrate patent eligibility.
Conclusion
THIS ACTION IS MADE FINAL. 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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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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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715
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