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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/08/2026 has been entered.
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3-9, 11-13, 15-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Modawell (20170007916) in view of LeMay (20190272704) and Anderson (20180012453).
Regarding claim 1, Modawell (Figures 1-11) teaches an instant lottery ticket game system, comprising: a set of scratch-off lottery ticket blanks (Fig. 9-10, Part No. 100), each lottery ticket blank comprising a game play area (Fig. 9, Part No. 108; Fig. 10, Part No. 105) with play indicia that presents a pre-determined game outcome (Para. 0056), the play indicia covered by a scratch-off coating (SOC) (Para. 0056); each lottery ticket blank further comprising a composition area (104) adjacent the game play area (108); an automated dispenser (15) (Para. 0018-0020, 0040), the set of lottery ticket blanks housed within the dispenser (Para. 0040); an interface (123) (Para. 0040) configured with the dispenser and in communication with a printer (17) associated with the dispenser (Para. 0040); the interface configured to accept player input of personalized indicia for printing in the composition area (Para. 0043); and wherein the printer (17) prints the personalized indicia from the player in the composition area (104) to generate a finished scratch-off lottery ticket prior to dispensing the finished lottery ticket (Para. 0043, 0056), and the dispenser comprises a controller (Para. 0045) in communication with the interface and the printer, and the ticket inherently includes a template (i.e. a background such as that shown in fig. 9 labeled “HEARTS OF GOLD” and surrounding background), wherein the personalized indicia input by the player is combined by the controller with the template and personalized indicia in the composition area by the printer (Para. 0056), the composition area and the game play area of the lottery ticket blanks housed within the dispenser (15) (Para. 0040) are void of indicia related to an event or occasion such that the lottery ticket blanks in the dispenser (15) (Para. 0040) are generic and used with each of the digital indicia templates, the personalized indica and the indicia template providing a theme related to an event or occasion on the finished lottery ticket printed by the dispenser.
It is noted that the claim recitation of “each lottery ticket blank housed within the dispenser” is directed to placing lottery ticket blanks in the dispenser. Claims are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of “housed” is being interpreted to mean “to provide space for something”. Modawell (Para. 0032) discloses: “as described elsewhere herein, the device 15 allows the player to insert the un-activated ticket into the front of the unit, have it transported in, processed, printed and dropped into a hopper/bucket which is located on the front panel of the device 15”. It is noted that Modawell teaches placing lottery tickets into the housing of the dispenser so that the tickets are “housed within the dispenser" as claimed. As an alternative rejection, the prior art of Anderson is being used to teach “lottery ticket blanks housed within the dispenser”.
It is noted that the claim recitation of “the composition area and the game play area of the lottery ticket blanks are void of indicia related to an event or occasion such that the lottery ticket blanks are generic and used with each of the digital indicia templates, the personalized indica and the indicia template providing a theme related to an event or occasion on the finished lottery ticket printed by the dispenser” is directed to the process of making the finished lottery ticket. The prior art inherently includes a composition area and game play area that are blank (i.e. before anything is printed on them). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See: In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). In this case, the prior art inherently teaches the claimed “ticket blanks” (as the tickets will be blank before any printing is done), and teaches printing on the blank tickets as claimed.
It is noted that the recitation in claim 1 of “a game play area with play indicia that presents a pre-determined game outcome; the interface configured to accept player input of personalized indicia for printing in the composition area” is directed to printed matter. To be given patentable weight, the printed matter and associated product must be in a functional relationship and the functional relationship must be new and unobvious. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated. See Lowry, 32 F.3d at 1584, 32 USPQ2d at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404). Where a product merely serves as a support for printed matter, no functional relationship exists. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product. An example in which a product merely serves as a support would occur for a deck of playing cards having images on each card. See In re Bryan, 323 Fed. App'x 898 (Fed. Cir. 2009) (unpublished). In Bryan the applicant asserted that the printed matter allowed the cards to be “collected, traded, and drawn”; “identify and distinguish one deck of cards from another”; and “enable the card to be traded and blind drawn”. However, the court found that these functions do not pertain to the structure of the apparatus and were instead drawn to the method or process of playing a game. In the instant case, there is no functional relationship between the printed matter (the indicia) and the substrate (the ticket) because the printed matter substrate merely serves as support for the printed matter. Also, the relationship between the printed matter (the indicia) and the substrate (the ticket) is not new and unobvious as it is known known in the art to have tickets having indicia related to lottery games (See for example the prior art used the rejection of the claims). Therefore, the printed matter is not given patentable weight. It is noted that claims 1-6, 8, 10, and 13-19 include limitations directed to indicia on a ticket. The indicia of claims 2-6, 8, 10, and 13-19 are not given patentable weight for the same reasons given with regard to claim 1. As an alternative rejection, the prior art of record is being used to teach the claimed printed matter/indicia on a ticket.
Modawell does not teach the controller configured to present a plurality of digital indicia templates to the player via the interface.
LeMay (Figures 1-7) teaches the controller configured to present a plurality of digital indicia templates (Para. 0155, 0167) to the player via the interface (Para. 0185).
Anderson (Figures 1-13) teaches lottery ticket blanks (Fig. 1, Part No. 52) housed within the dispenser (11) (Para. 0034-0035).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Modawell with the controller configured to present a plurality of digital indicia templates to the player via the interface as taught by LeMay as a means of providing a portable electronic device with options such as a number of ticket templates which allow a user to customize the appearance of virtual tickets rendered on the portable electronic device (Lemay: Para. 0185), and to provide Modawell with lottery ticket blanks housed within the dispenser as taught by Anderson as a means of providing a lottery ticket dispenser with a compartment to store lottery ticket blanks (Anderson: Para. 0035).
Regarding claim 3, the modified Modawell (Figures 1-11) teaches the controller (Para. 0045) is in communication with a central game server (Para. 0044).
The modified Modawell does not teach the indicia templates updated or downloaded to the controller by the central game server.
LeMay (Figures 1-7) teaches the indicia templates updated or downloaded to the controller by the central game server (Para. 0155, 0167, 0185)
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Modawell with indicia templates updated or downloaded to the controller as taught by LeMay as a means of providing a portable electronic device with options such as a number of ticket templates downloaded from a remote host which allow a user to customize the appearance of virtual tickets rendered on the portable electronic device (LeMay: Para. 0155, 0185).
Regarding claim 4, the modified Modawell (Figures 1-11) teaches the indicia templates comprise static indicia (i.e. a background such as that shown in fig. 9 labeled “HEARTS OF GOLD” and surrounding background) associated with the event or occasion, wherein the player input personalizes the static indicia (Para. 0056; see fig. 9-10).
Regarding claim 5, the modified Modawell (Figures 1-11) teaches the interface and controller are configured to present an empty canvas template to the player corresponding to the composition area (See fig. 9 where the “empty canvas” is shown with player input labeled “Happy Birthday…”) (Para. 0056).
Regarding claim 6, the modified Modawell (Figures 1-11) teaches the interface and controller are configured to accept an external image (Fig. 9, Part No. 106) (Para. 0056) presented by the player as the player personalized indicia (Para. 0049).
Regarding claim 7, the modified Modawell (Figures 1-11) teaches the external image is a digital image in an external storage device presented by the player (Para. 0041), the interface comprising means for communicating with the external storage device to accept the digital image (Para. 0041).
Regarding claim 8, the modified Modawell (Figures 1-11) teaches the dispenser comprises a controller in communication with the interface and the printer (Para. 0045), and the interface configured to accept player input of personalized indicia for printing in the composition area (Para. 0043).
The modified Modawell does not teach the interface and controller are configured to present to the player options for backgrounds or borders to be printed in the empty canvas template.
LeMay (Figures 1-7) teaches the interface and controller are configured to present to the player options for backgrounds or borders to be printed in the empty canvas template (Para. 0052, 0155, 0167, 0185)
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Modawell with the interface and controller are configured to present to the player options for backgrounds or borders to be printed in the empty canvas template as taught by LeMay as a means of providing a portable electronic device with options such as a number of ticket templates which allow a user to customize the appearance of virtual tickets rendered on the portable electronic device (LeMay: Para. 0052, 0155, 0167, 0185).
Regarding claim 9, the modified Modawell (Figures 1-11) teaches the interface and controller are configured to present to the player an option to purchase the finished lottery ticket with the empty canvas template remaining blank (Para. 0004, 0056).
It is noted that the prior art of Modawell (Para. 0004) discloses: “the customer can select any of: vending device functions to generate a personalized message to be displayed on the ticket; game options; color; typeface; copy; graphics”. It is noted that the disclosure of Modawell gives the user an option to select personalized indicia (Modawell: Para. 0004, 0056) so that a user not selecting a personalized message would result in the “empty canvas template remaining blank”.
Regarding claim 11, the modified Modawell (Figures 1-11) teaches a plurality of the sets of scratch-off lottery ticket blanks for different games having a different purchase price and prize structure (Para. 0059).
Regarding claim 12, the modified Modawell (Figures 1-11) teaches an instant lottery ticket game system, comprising: a set of scratch-off lottery ticket blanks (Fig. 9-10, Part No. 100).
The modified Modawell does not teach each lottery ticket blank comprises a validation code that is linked to an electronic validation file associated with the lottery ticket blank, the validation file containing ticket-specific information for validation and pay-out on the lottery ticket blank.
Anderson (Figures 1-13) teaches each lottery ticket blank comprises a validation code (Fig. 7, Part No. 419) (Para. 0089) that is linked to an electronic validation file associated with the lottery ticket blank, the validation file containing ticket-specific information for validation and pay-out on the lottery ticket blank (Para. 0089).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Modawell with each lottery ticket blank comprises a validation code as taught by Anderson as a means of quickly verifying any award associated with a ticket (Anderson: Para. 0089).
Regarding claim 13, Modawell (Figures 1-11) teaches a method for conducting an instant lottery ticket game, comprising: providing an automated dispenser (15) (Para. 0018-0020, 0040) with a set of scratch-off lottery ticket blanks (Para. 0040), each lottery ticket blank housed within the dispenser (15) (Para. 0040) having a game play area (Fig. 9, Part No. 108; Fig. 10, Part No. 105) with play indicia that presents a pre-determined game outcome (Para. 0056), the play indicia covered by a scratch- off coating (SOC) (Para. 0056), each lottery ticket blank further comprising a composition area (104); via an interface (123) (Para. 0040) configured with the dispenser and in communication with a printer (17) associated with the dispenser (Para. 0040), accepting input from a player containing personalized indicia for printing in the composition area (Para. 0043, 0056); printing the personalized indicia from the player in the composition area to generate a finished scratch-off lottery ticket (Para. 0056); and dispensing the finished lottery ticket from the dispenser (Para. 0037, 0056), the dispenser includes a controller (Para. 0045) in communication with the interface and the printer, and the ticket inherently includes an indicia template (i.e. a background such as that shown in fig. 9 labeled “HEARTS OF GOLD” and surrounding background), and accepting via the interface the player input and using the player input to personalize the indicia template (Para. 0056), the controller combining the indicia template selected by the player (Para. 0056) and the personalized indicia to provide a theme to the finished lottery ticket related to an event or occasion, the composition area and the game play area of the lottery ticket blanks housed in the dispenser (15) (Para. 0040) are void of indicia related to the event or occasion such that the lottery ticket blanks are generic and used with each of the digital indicia templates.
It is noted that the claim recitation of “each lottery ticket blank housed within the dispenser” is directed to placing lottery ticket blanks in the dispenser. Claims are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of “housed” is being interpreted to mean “to provide space for something”. Modawell (Para. 0032) discloses: “as described elsewhere herein, the device 15 allows the player to insert the un-activated ticket into the front of the unit, have it transported in, processed, printed and dropped into a hopper/bucket which is located on the front panel of the device 15”. It is noted that Modawell teaches placing lottery tickets into the housing of the dispenser so that the tickets are “housed within the dispenser" as claimed. As an alternative rejection, the prior art of Anderson is being used to teach “lottery ticket blanks housed within the dispenser”.
It is noted that the claim recitation of “the composition area and the game play area of the lottery ticket blanks are void of indicia related to the event or occasion such that the lottery ticket blanks are generic and used with each of the digital indicia templates” is directed to the lottery ticket before any printing is done on the lottery ticket. The prior art inherently includes a composition area and game play area that are blank (i.e. before anything is printed on them).
Modawell does not teach presenting a plurality of indicia templates to the player via the controller and interface.
LeMay (Figures 1-7) teaches presenting a plurality of indicia templates (Para. 0155, 0167, 0185) to the player via the controller and interface.
Anderson (Figures 1-13) teaches lottery ticket blanks (Fig. 1, Part No. 52) housed within the dispenser (11) (Para. 0034-0035).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide Modawell with presenting a plurality of indicia templates to the player via the controller and interface as taught by LeMay as a means of providing a portable electronic device with options such as a number of ticket templates which allow a user to customize the appearance of virtual tickets rendered on the portable electronic device (LeMay: Para. 0155, 0167, 0185), and to provide Modawell with lottery ticket blanks housed within the dispenser as taught by Anderson as a means of providing a lottery ticket dispenser with a compartment to store lottery ticket blanks (Anderson: Para. 0035).
Regarding claim 15, the modified Modawell (Figures 1-11) teaches the controller (Para. 0045) is in communication with a central game server (Para. 0044).
The modified Modawell does not teach updating or downloading the indicia templates from the central game server.
LeMay (Figures 1-7) teaches updating or downloading the indicia templates from the central game server (Para. 0155, 0167, 0185)
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Modawell with updating or downloading the indicia templates from the central game server as taught by LeMay as a means of providing a portable electronic device with options such as a number of ticket templates downloaded from a remote host which allow a user to customize the appearance of virtual tickets rendered on the portable electronic device (LeMay: Para. 0155, 0185).
Regarding claim 16, the modified Modawell (Figures 1-11) teaches presenting an empty canvas template to the player via the controller and interface that corresponds to the composition area (See fig. 9 where the “empty canvas” is shown with player input labeled “Happy Birthday…”) (Para. 0056).
Regarding claim 17, the modified Modawell (Figures 1-11) teaches accepting via the interface an external image (Fig. 9, Part No. 106) (Para. 0056) presented by the player as the player input of personalized indicia (Para. 0049), wherein the external image is a digital image in an external storage device presented by the player (Para. 0041).
Regarding claim 18, the modified Modawell (Figures 1-11) teaches printing personalized indicia from a player (Para. 0056).
The modified Modawell does not teach presenting to the player via the controller and the interface options for backgrounds or borders to be printed in the empty canvas template.
LeMay (Figures 1-7) teaches presenting to the player via the controller and the interface options for backgrounds or borders to be printed in the empty canvas template (Para. 0052, 0155, 0167, 0185)
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Modawell with presenting to the player via the controller and the interface options for backgrounds or borders to be printed in the empty canvas template as taught by LeMay as a means of providing a portable electronic device with options such as a number of ticket templates which allow a user to customize the appearance of virtual tickets rendered on the portable electronic device (LeMay: Para. 0052, 0155, 0167, 0185).
Regarding claim 20, the modified Modawell (Figures 1-11) teaches providing the dispenser with a plurality of the sets of scratch-off lottery ticket blanks for different games having a different purchase price and prize structure (Para. 0040, 0059).
Claims 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Modawell in view of LeMay and Anderson, further in view of Tevis (20200282298).
Regarding claim 10, the modified Modawell (Figures 1-11) teaches an interface (123) (Para. 0040) configured with the dispenser and in communication with a printer (17) associated with the dispenser (Para. 0040).
The modified Modawell does not teach the controller is configured to present a plurality of game play area templates to the player via the interface, the game play area templates presenting overprint indicia options selectable by the player for printing over the SOC by the printer.
Anderson (Figures 1-13) teaches the controller is configured to present a plurality of game play area templates (Fig. 6, Part No. 359) (Para. 0081-0082) to the player via the interface (300) (Para. 0072), the game play area templates presenting overprint indicia options selectable by the player (Para. 0081-0082).
Tevis (Figures 1-6) teaches printing over the SOC by the printer (Para. 0034).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Modawell with the controller is configured to present a plurality of game play area templates to the player via the interface as taught by Anderson as a means of providing an option for a consumer to select indicia, via an interface, as a component of a printed lottery ticket (Anderson: Para. 0081-0082), and to provide the modified Modawell with printing over the SOC by the printer as taught by Tevis as a means of providing a scratch off coating comprised of multiple layers with overprint indicia being the topmost layer of the multiple layers (Tevis: Para. 0034).
Regarding claim 19, the modified Modawell (Figures 1-11) teaches an interface (123) (Para. 0040) configured with the dispenser and in communication with a printer (17) associated with the dispenser (Para. 0040).
The modified Modawell does not teach presenting a plurality of game play area templates to the player via the interface, the game play area templates presenting overprint indicia options selectable by the player for printing over the SOC by the printer.
Anderson (Figures 1-13) teaches presenting a plurality of game play area templates (Fig. 6, Part No. 359) (Para. 0081-0082) to the player via the interface (300) (Para. 0072), the game play area templates presenting overprint indicia options selectable by the player (Para. 0081-0082).
Tevis (Figures 1-6) teaches printing over the SOC by the printer (Para. 0034).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide the modified Modawell with presenting a plurality of game play area templates to the player via the interface as taught by Anderson as a means of providing an option for a consumer to select indicia, via an interface, as a component of a printed lottery ticket (Anderson: Para. 0081-0082), and to provide the modified Modawell with printing over the SOC by the printer as taught by Tevis as a means of providing a scratch off coating comprised of multiple layers with overprint indicia being the topmost layer of the multiple layers (Tevis: Para. 0034).
Response to Arguments
Applicant's arguments filed 01/08/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art of Modawell or LeMay do not teach the recitation in claims 1 and 13 of “lottery ticket blanks housed within the dispenser”, this is not found persuasive because claims 1 and 13 are now rejected under 35 USC 103 over Modawell in view of LeMay and Anderson (20180012453). Claims are interpreted using a broadest reasonable interpretation (BRI). Under BRI, the claim recitation of “housed” is being interpreted to mean “to provide space for something”. Modawell (Para. 0032) discloses: “as described elsewhere herein, the device 15 allows the player to insert the un-activated ticket into the front of the unit, have it transported in, processed, printed and dropped into a hopper/bucket which is located on the front panel of the device 15”. It is noted that Modawell teaches placing lottery tickets into the housing of the dispenser so that the tickets are “housed within the dispenser" as claimed. As an alternative rejection, the prior art of Anderson is being used to teach “lottery ticket blanks housed within the dispenser”. Anderson (Figures 1-13) teaches lottery ticket blanks (Fig. 1, Part No. 52) housed within the dispenser (11) (Para. 0034-0035). It would have been obvious to one of ordinary skill in the art to provide Modawell with lottery ticket blanks housed within the dispenser as taught by Anderson as a means of providing a lottery ticket dispenser with a compartment to store lottery ticket blanks (See Anderson: Para. 0035).
Conclusion
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/C.G./Examiner, Art Unit 3711
/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711