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.
Claims 2 - 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 23 of U.S. Patent No. US 9928680 and claims 1 – 23 of U.S. Patent No. US 10515506
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims substantially disclose the pending limitations:
16689968
US 9928680
2. An apparatus comprising:
at least one processor configured to control: providing an interface through which a player may play a card game;
determining whether a physical item associated with a monetary value for a wager for the card game is received through a monetary acceptor associated with the at least one processor;
1. An apparatus comprising:
a monetary acceptor that receives a physical item associated with a monetary value; and a non-transitory machine readable medium having stored thereon a set of instructions configured such that when executed by a computing device,
(a) the computing device is caused to:
provide an interface through which a player may play a game of Blackjack;
determining at least one first card used from a set of cards for a hand of the player in the card game;
dealing the at least one first card in the card game to the player;
determine at least one first card used from a set of cards for a hand of the player in the game;
deal the at least one first card in the game of Blackjack to the player;
determining at least one second card used from the set of cards for a hand of a dealer in the card game; dealing the at least one second card in the card game to the dealer;
determine at least one second card used from the set of cards for a hand of a dealer in the game; deal the at least one second card in the game of Blackjack to the dealer;
determining a plurality of respective probabilities that at least one of the dealer or an opponent of the player in the card game may achieve each of a plurality of particular outcomes in the card game, based on the dealt at least one first card and the dealt at least one second card; after dealing the at least one first card and the at least one second card,
determine a plurality of respective probabilities that the dealer, may achieve each of a plurality of particular hands in the game based on the at least one first card, and the at least one second card; and after dealing the at least one first card and the at least one second card,
soliciting an action to be taken in the card game from the player through the interface;
solicit an action to be taken in the game from the player through the interface;
and after dealing the at least one first card and the at least one second card, providing respective indications of each of the probabilities to the player through the interface.
after dealing the at least one first card and the at least one second card, provide respective indications of each of the probabilities to the player through the interface.
16689968
US 10515506
2. An apparatus comprising:
at least one processor configured to control: providing an interface through which a player may play a card game;
determining whether a physical item associated with a monetary value for a wager for the card game is received through a monetary acceptor associated with the at least one processor;
1. An apparatus comprising:
a non-transitory machine readable medium having stored thereon instructions configured such that when executed by a computing device, the computing device is caused to:
provide an interface through which a player may play a game of Blackjack;
determine whether a physical item associated with a monetary value for a wager for the game of Blackjack is received through a monetary acceptor associated with the computing device;
determining at least one first card used from a set of cards for a hand of the player in the card game;
dealing the at least one first card in the card game to the player;
determine at least one first card used from a set of cards for a hand of the player in the game;
determining at least one second card used from the set of cards for a hand of a dealer in the card game; dealing the at least one second card in the card game to the dealer;
deal the at least one first card in the game of Blackjack to the player; determine at least one second card used from the set of cards for a hand of a dealer in the game; deal the at least one second card in the game of Blackjack to the dealer;
determining a plurality of respective probabilities that at least one of the dealer or an opponent of the player in the card game may achieve each of a plurality of particular outcomes in the card game, based on the dealt at least one first card and the dealt at least one second card; after dealing the at least one first card and the at least one second card,
determine a plurality of respective probabilities that the dealer may achieve each of a plurality of particular hands in the game, based on the dealt at least one first card and the dealt at least one second card;
soliciting an action to be taken in the card game from the player through the interface; and after dealing the at least one first card and the at least one second card, providing respective indications of each of the probabilities to the player through the interface.
after dealing the at least one first card and the at least one second card, solicit an action to be taken in the game from the player through the interface; and after dealing the at least one first card and the at least one second card, provide respective indications of each of the probabilities to the player through the interface.
Claims 3-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-23 of U.S. Patent No. US 9928680. Although the claims at issue are not identical, they are not patentably distinct from each other because the inventions are directed to substantially similar subject matter.
Claims 3–21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-23 of U.S. Patent No. US 10515506. Although the claims at issue are not identical, they are not patentably distinct from each other because the inventions are directed to substantially similar subject matter.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
At step 1, claim 2 is drawn to an apparatus, which is one of the categories of invention.
At step 2a, the following limitations are found to be directed to an abstract idea:
determining, at least one first card used from a set of cards for a hand of the player in the card game;
dealing the at least one first card in the card game to the player;
determining at least one second card used from the set of cards for a hand of a dealer in the card game;
dealing the at least one second card in the card game to the dealer;
determining an indication of a plurality of respective probabilities that at least one of the dealer or an opponent of the player in the card game may achieve at least one particular point total in the card game by tracking cards that have already been dealt from the set of cards in at least one prior card game, based on the dealt at least one first card and the dealt at least one second card;
after dealing the at least one first card and the at least one second card, soliciting an action to be taken in the card game from the player; and
The above limitations are directed to abstract ideas of mental processes that may be done in the mind or with pen and paper, mathematical operations –the determination of probabilities–, and/or certain methods of organizing human activity via game rules.
The following claim limitations are additional elements:
An apparatus comprising:
at least one processor configured to control:
providing an interface through which a player may play a card game;
based on execution of instructions in a memory by the at least one processor to conduct the card game,
based on the execution of the instructions in the memory by the at least one processor to conduct the card game,
through the interface
The above elements do not contribute significantly more because they are merely instructions to implement the abstract idea on a general-purpose computer and as decided in Alice, merely applying the idea with a computer is not an eligible tie.
The following are insignificant extra-solution activity:
determining whether a physical item associated with a monetary value for a wager for the card game is received through a monetary acceptor associated with the at least one processor;
after dealing the at least one first card and the at least one second card, providing respective indications of each of the probabilities respectively of the particular point totals to the player through the interface.
The above are merely taking in data to enable the wagering in the game and displaying the results of the determination. As these are insignificant data manipulation steps, they do not confer eligibility.
At step 2b, in reevaluating the claim as an ordered combination, the additional element of the monetary acceptor to receive payment is shown to be well-understood and conventional in the art as exhibited by par. 58 of Walker (US 20040082384).
Dependent claims 3-20 merely further define the abstract idea by stipulating what data will be used in the determinations or what additional bits of statistics will be determined. As these claims add no additional elements, they fail to amount to significantly more.
Claim 21 is directed to the same method as the apparatus in claim 2 provides and is rejected using the same rationale as above.
Response to Arguments
Applicant's arguments filed 2026/04/10 are considered. The 112(b) rejection provided by the Board is not maintained by the examiner. The double patenting rejection is maintained and no arguments are provided warranting response.
To the extent that the rejection under §101 was argued before, examiner maintains that the claim is directed to a very basic concept of showing the odds. Cards showing the odds of blackjack have been around for decades. Doing the math is basic probability calculation extremely well-known to any gambler as evidenced by the numerous inventions to try to eliminate or make it harder to calculate. Doing it on a computer does not make it eligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID DUFFY whose telephone number is (571)272-1574. The examiner can normally be reached M-F 0830-1700 +/- 15.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Barrett can be reached at (571) 270-1935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID DUFFY/Quality Assurance Specialist, TC 3700
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