Is there an easy way to find proven office action responses?……. Read on to find out!
While the USPTO has reported that the number of, and variability in, rejections based on Alice v. CLS Bank have decreased following 2019’s eligibility guidance, Alice rejections continue to be among the most challenging to overcome and disproportionately affect certain technologies and categories of filers1. One area of technology which continues to be substantially impacted by Alice rejections is gaming, with some rejections appearing to be based on a categorical rule that any gaming claims are per-se directed to an abstract idea2. However, while dealing with Alice rejections may seem like a roll of the dice, it isn’t necessarily a rigged game, and having a system can help even the odds. To that end, patent agents and attorneys working on gaming technologies may want to keep these proven strategies up their sleeves to help strengthen their hands when representing their clients.
This was then followed by a notice of allowance, with the result that the Electronic Gaming Machine and Method is now U.S. patent 10,366,569.
Claim 43 is directed to displaying a plurality of cloned symbol display potions adjacent to the selected at least one reel at a display device of a gaming machine, the plurality of cloned symbol display positions displaying the plurality of symbols selected for display in the initial outcome for the selected at least one reel, and determining an outcome, based at least in part on, the plurality of symbols in the initial outcome and the plurality of symbols displayed at the cloned symbol positions. Thus, the limitations of Applicant’s independent claim 43 are unrelated to mathematical concepts, mental processes, and certain methods of organizing human activity. Moreover, even if an enumerated judicial exception were present (which it is not), the limitations of independent claim 43 convey specific graphical information in a specific way at a display device of a gaming machine. Thus, the recited display control is a practical application in gaming technology.
Claims 1 and 2 stand rejected under 35 U.S.C. § 101 as allegedly being directed to abstract ideas. Applicants respectfully disagree. To advance prosecution, claim 1 has been amended to include eligible subject matter such as a location tracker.
The location server and/or tracker, when considered in combination with the vessel and mobile gaming device provide for meaningful limits. The claims are not simply “a method of exchanging and resolving financial obligations between a player and an operator of the gaming machine” as alleged in the Office Action. The location server and/or tracker acts in concert with the recited features of the vessel and mobile gaming devices to enable the mobile gaming devices to permit a game of chance to be played on the mobile gaming devices.
This office action response was followed by an office action in which all § 101 rejections had been withdrawn16, and 15/495,973 subsequently issued as patent 10,586,425 on March 10, 2020.
The above office action responses, and countless others that have worked to overcome § 101 rejections on gaming patent applications, provide both examples and building blocks which can be used to make the right calls in what may look like a longshot situation. However, while the file wrappers which include those office action responses may theoretically be publicly available, the patent office hasn’t laid its cards on the table – neither PAIR nor the newly released patent center (in beta as of the time of writing) provide functionality that could allow a practitioner to find responses that may be relevant in any particular situation.
So how can the value inherent in past office action responses be unlocked? One way would be for a practitioner to look at patents for inventions like the one he or she is working on, look at their file wrappers in PAIR or patent center, and hope to get lucky with something that can be applied to his or her case. However, we would propose a better way. The cases for this article were all found using the Arguminer patent prosecution software from IP Toolworks. The Arguminer software automatically sifts through millions of documents, finding office action responses, appeal briefs and other documents that worked (or didn’t if you’re looking for negative examples) when dealing with office actions similar to those faced by its users.
Visit IP Toolworks to learn more about how you can use Arguminer as an assistant to help you discover game changing strategies to use in your next Office Action.
1Andrew A. Toole & Nicholas A. Pairolero, Adjusting to Alice: USPTO patent examination outcomes after Alice Corp. v. C LS Bank International, U.S.P.T.O., Office of the Chief Economist, IP DATA HIGHLIGHTS 3, (Apr., 2020). Available at https://www.uspto.gov/sites/default/files/documents/OCE-DH_AdjustingtoAlice.pdf.Mark A. Leml & Samantha Zyontz, Does Alice Target Patent Trolls? (Mar., 2020). Available at SSRN: https://ssrn.com/abstract=3561252 or http://dx.doi.org/10.2139/ssrn.3561252.
The examiner finds that wagering games are all rather similar: accepting a wager, playing the game according to the rules comprising generating random outcomes according to the rules, determining winning outcomes, determining how much is to be paid for a winning outcome, and paying out the winnings. This breakdown of wagering claim language is similar to that in precedential case in re Smith (in re Smith (Fed. Cir. 2016), appeal 2015-1664, U.S. patent application 12/912,410) [in which a subject matter eligibility rejection was appealed and affirmed by the PTAB and the Federal Circuit].
4815 F.3d 816 (Fed. Cir. 2016).
5In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1166 (Fed. Cir. 2018) (Mayer, J. Concurring).
6Office Action of July 10, 2018 on application 15/785,865 at 5.
7Response to office action of July 10, 2018 on application 15/785,865 at 5 (underlining, italics and bold formatting from response).
The term “fundamental” is used in the sense of being foundational or basic, and not in the sense of necessarily being “old” or “well-known.” See, e.g., In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016) (describing a new set of rules for conducting a wagering game as a “fundamental economic practice”).
The present claims do not fall within the category of “fundamental economic practices”.
The present claims involve arranging portions of multimedia content for presentation to a user to create a multimedia game. This makes the present claims very similar to the claims recited in DietGoal, Ameranth, and Electric Power Group.
The present claims are therefore directed to the certain methods of organizing human activity.
10Response to Office Action of December 14, 2018 on application 15/861,431 at 17.
11Office Action of July 17, 2019 on application 15/626,422 at 10.
12Response to Office Action of July 17, 2019 on application 15/626,422 at 13-14.
13Office Action of August 28, 2019 on application 15/861,431 at 4.
14Office Action of January 11, 2019 on application 15/495,973 at 3-4.
15Response to Office Action of January 11, 2019 on application 15/495,973 at 4-5.
