DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/10/2023 has been entered.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 5, 8, 11, 12, 14, 18, 21, 23, 24, 28-30, 33, 36, 38-40, 44, and 47-48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,613,498. Although the claims at issue are not identical, they are not patentably distinct from each other because both the patent and the instant application are directed to identifying a location of a player, presenting, via a graphical user interface, a list of electronic gaming options available to the player based on the location of the player, and receiving a selection from the player of an electronic game to play from the list. The instant application is a broadened form of the patented application and is directed to the same idea that was previously patented and therefore a patent on the instant application would result in multiple patents for the same idea.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 5, 8, 11-13, 18, 21, 23-24, 28-30, 33, 36, 39, 44, and 47-48 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ochi (US 2001/0019965) in view of Montagna et al (US 2004/0242322).
Re claim 1, Ochi discloses a method comprising: presenting, via a graphical user interface, a list of electronic gaming options available to the player (fig. 3, 13 and fig. 5, S11, where the game entry processing unit creates and presents a list of options to players at a gaming client as taught in par. [0073]); and receiving, via the graphical user interface, a selection from the player of an electronic game to play from the list ([0073], players use terminal device 31 to input their selections). However, Ochi is silent on identifying a location of the player operating a gaming client that enables the player to play electronic games and after the identification, presenting the list. Montagna teaches a gaming system where a casino provides a game menu to users for selecting a game to play, the availability of the games and denominations used therein being based on the location of the user ([0087]). Thus, since the game menu varies based on the location of the user, it follows that the user’s location has been determined prior to displaying the game menu to the user. It would have been obvious to implement the location-based menu taught by Montagna with the game list of Ochi in order to customize the game list to players based on their location and additionally ensure the user is in a legal gaming jurisdiction.
Re claims 5 and 33, Ochi discloses the list of options is based on at least current events or player volume ([0076], the list includes all registered opponents, allowing the player to select an opponent, S32, wherein the currently registered opponents are considered current events and player volume).
Re claims 8 and 36, see the rejection to claim 1. Since Montagna ensures players are in a legal jurisdiction before allowing players to play, the combination of Ochi and Montagna would ensure that limits on wagering amounts change according to the location of the player (i.e. a player in an illegal gaming jurisdiction would have a wagering limit of 0).
Re claims 11 and 28, Montagna teaches determining the location of the player using network access ([0039], [0043], [0045]).
Re claims 12 and 29, Ochi discloses initiating the electronic game via a gaming client based on the selection received from the player (fig. 8, “Start Process…”).
Re claims 13, 39, and 48, Montagna teaches determining a change in the location of the player and suspending or abandoning play by the player when the player is no longer authorized in an updated current location of the player ([0010], if changes occur between requests, such as the user changing residency to a different jurisdiction, the system makes appropriate changes, therefore if the system is able to allow a previously illegal game due to a residency change, it will be able to forbid a previously allowed game as well).
Re claims 18 and 44, Ochi discloses adjusting game play in the electronic game based on skill level of players and dollar amounts being bet ([0075], players willing to enter into a match have their bets compared, with the match set to the lower of the numbers, and a skill rating of the two players is determined and a handicap determined).
Re claim 21, see the rejection to claim 1, mutatis mutandis.
Re claims 23 and 24, Ochi discloses causing the gaming system to match the player with at least other player which is a competitor ([0075]).
Re claim 30, Ochi discloses collecting a bet from the player for the electronic game ([0075]).
Re claim 47, see the rejection to claim 1, mutatis mutandis.
Claims 14 and 40 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ochi in view of Montagna as applied to claim 1 above, and further in view of Saffari et al (US 6,264,561).
Re claims 14 and 40, Ochi et al have been discussed, but fail to disclose updating the list of electronic gaming options available to the player based on licensing statuses of the gaming options. Saffari teaches a gaming system in which games are made available to an operator (fig. 6). Depending on the licensing statuses, games are available or unavailable to the operator (col. 7:1-12). Because the operators (i.e. the casino) determines games to offer to players in the system taught by Ochi, by implementing the licensing system of Saffari, the game options of Ochi would therefore be reflected by the licensing statuses of the games as taught by Saffari, as games that are not licensed would be unavailable to operators, and therefore players. It would have been obvious to one of ordinary skill to implement the licensing system of Saffari in the game system of Ochi in order to provide a multiple game platform gaming machine which can easily enable the vendor or manufacturer to control the licensing of selected games.
Claim 38 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ochi in view of Montagna as applied to claim 30 above, and further in view of Shacham (US 2006/0052168).
Re claim 38, Ochi is silent on the gaming system presenting the list including limits on wagering amounts that change the bet to a non-monetary bet. Shacham teaches an online gaming system which supports both monetary and non-monetary gaming wherein the system is able to convert monetary deposits to non-monetary deposits and vice versa ([0053]). It would have been obvious to implement the non-monetary conversion taught by Shacham with the gaming system of Ochi in order to ensure that even players who are not in legal gaming jurisdictions would be able to participate in the game by converting monetary deposits into non-monetary deposits, circumventing any bans on wagering games with real money.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Y Kim whose telephone number is (571)270-3215. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN Y KIM/Primary Examiner, Art Unit 3715
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