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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 15, 2026 has been entered.
The Examiner acknowledges that claims 1-9, 12, 18, & 19 were amended, no claims were canceled, and no new claims were added. Therefore, claims 1-20 are currently pending, with claims 10 & 11 remaining withdrawn from consideration pursuant to the election filed on May 1, 2025.
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 1-9 & 12-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 & 12-20 of co-pending Application No. 17/949,510 & over claims 1-8 & 13-20 of co-pending Application No. 17/949,497 (reference applications). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the claimed inventions of the present application and the reference applications are substantially overlapping directed to the modification of first balances of non-monetary funds associated with ticket vouchers being based on a first amount of monetary funds, requesting games via game seeds from servers, and modification of second balances of monetary funds based on any value component associated with the requested games. While certain claim language differs, the crux of the claimed invention in each of the above-identified reference application is substantially overlapping to the crux of the claimed invention of the present application, warranting a standing of nonstatutory double patenting.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-9 & 12-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) a method of accounting for funds and transferring them between accounts. Additionally, to the extent that gambling is claimed, the claims are drawn to a method of determining financial obligations. These are fundamental economic practices of long standing and are methods of organizing human activities. In addition, the method can be performed by a human without the aid of a computer. Thus, the claims are drawn to an abstract idea.
This judicial exception is not integrated into a practical application because:
(a) It does not improve the functioning of a computer or to any other technology or technical field;
(b) Applying the judicial exception does not effect a particular treatment or prophylaxis for a disease or medical condition;
(c) Do not apply the judicial exception with, or by use of a particular machine;
(d) It does not effect a transformation or reduction of a particular article to a different state or thing;
(e) It does not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the exception to a particular technological environment such that the claims as a whole are more than a drafting effort designed to monopolize the exception.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the system having a remote server and/or cloud-based server is generic as shown by Applicant’s specification at paragraphs 0014-0017, 0028:
The system includes one or more gaming terminals and one or more servers, each of which appear to be generic computers performing generic computing functionality (e.g. data communication, storage, display, etc.).
Regarding exemplary claim 1, the functionality of the electronic gaming machine is a process of maintaining accounts and transferring data between accounts and between generic computers. The process is abstract and merely implemented by generic computing. The abstract idea can be carried out by a person without the aid of aid generic computing. A human can perform functions responsive to a request to play a game. A human can modify a first balance of non-cashable funds based on a purchase price of the play of the game. A human can receive or read a predetermined game outcome associated with a game outcome seed. A human can modify a second balance of cashable funds based on any value component associated with the predetermined game outcome. And, a human can issue a winnings ticket voucher associated with the second balance of cashable funds at the conclusion of the game. A human is also capable of “displaying” information such by writing or drawing. The computing elements, as claimed are generic, per Applicant’s specification, as such the communication between generic computers and the causing of data to be displayed via said generic computers is the conventional use of generic computers to carry out the abstract idea.
The dependent claims merely describe the data more specifically or specify the form the data takes. Data is abstract. Therefore, the dependent claims cannot add “significantly more” to the abstract idea. Adding abstraction to abstraction cannot make the claims less abstract.
Currently, implementation of an abstract idea on generic computers is not patent-eligible without “significantly more.” Neither the abstract idea itself nor parts of the abstract idea can supply “significantly more” than the abstract idea. As written, current claims are drawn to an abstract idea with essentially the words “implement it” on a generic computer appended thereto. As such, the claims are not patent-eligible.
A thorough analysis or each and every limitation of each and every claim, both individually and as a part of an ordered combination shows that the claims are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 103
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 1-6, 8, 9, 12-17, 19, & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Moshal et al. (U.S. Patent Application Publication No. 2009/0023490; hereinafter “Moshal”).
Claims 1 & 12: Moshal discloses an electronic gaming machine comprising:
a processor; and
a memory device that stores a plurality of instructions (figure 1[gaming terminal 4], wherein a gaming terminal is a conventional computer or computing device, interpreted to house a processor) that, when executed by the processor, cause the processor to:
responsive to a request to play a game (paragraphs 0051-0094 and figures 2-16, wherein Moshal discloses a player purchases a pre-paid game card or ticket voucher via distribution outlet, the player utilizes the gaming terminal to enter information associated with the purchased ticket voucher to initiate gameplay, thereby causing a request to play the game to be communicated to a remote server, which responsively provides gameplay functionality):
modify a first balance of a first amount of non-cashable funds based on a purchase price of the play of the game (paragraphs 0051-0094 and figures 2-16, wherein Moshal discloses that a first balance of non-cashable funds is modified based upon a purchase price of the play of the game, e.g. when a player purchases a ticket voucher for $10 and enters the associated ticket information within an interface accessed by the gaming terminal, the gaming terminal modifies a first balance of non-cashable funds associated with the $10 paid by the player for the ticket voucher), and
responsive to a receipt, from a cloud-based central determination system server operating independent of the electronic gaming machine, of data associated with a game outcome seed selected from a set of game outcome seeds and deterministic of a predetermined game outcome (paragraphs 0051-0094, 0112-0015 and figures 2-16, wherein Moshal discloses a server facilitates requests for predetermined game outcomes associated with a game outcome seed from a set of game outcome seeds, e.g. datagrams containing predetermined game outcomes are transmitted to terminals in response to play requests from the terminals, generated at central game server (3) through remote server (2), where Moshal also discloses that the game outcome seeds are deterministic of a predetermined game outcome – paragraphs 0112-0115 details that game outcomes are generated in advance via finite pools or bins of outcomes, as such Moshal discloses a cloud-based server operating independent of the electronic gaming machine that serves or otherwise sends game outcome seeds selected from a set of game outcome seeds, each seed being deterministic of a predetermined outcome):
cause a display device to display the predetermined game outcome determined based on the game outcome seed (figures 2-12), and
modify a second balance of a first amount of cashable funds based on any value component associated with the predetermined game outcome prior to any selection of any game outcome seed from the set of game outcome seeds by the cloud-based central deterministic system server (paragraphs 0051-0094 and figures 2-16, wherein Moshal discloses that the player is presented with a game outcome display that may indicate a winning value, thereby causing a second balance of a first amount of cashable funds to be modified accordingly, e.g. if the player wins a monetary value, cash account (44) or win box (106) may be increased to reflect the won monetary value, all of which is based upon the display of the predetermined outcome associated with the selected game outcome seed having a value components determined prior to any selection of a seed by the server, as detailed above).
While Moshal reasonably discloses that at the conclusion of gameplay associated with the pre-paid game card or ticket voucher, a player can cashout any winnings, Moshal does not explicitly disclosing issuing of a winnings ticket voucher associated with the first amount of cashable funds when specifically interpreted as a ticket being printed in association with the cashable funds. Regardless, Moshal’s disclosure is clearly directed to a player being capable of obtaining their cashable winnings after conclusion of gameplay, such as when they’ve exhausted all non-cashable funds or when desired (paragraphs 0090-0091 - The player can then cash out and end play of the game either as soon as they win cash, or alternatively after they have exhausted the non-cashable credit). Moshal is also directed to implementing their invention within a casino environment in which the electronic gaming machine is a video slots machine or similar electronic gaming machine. It is well established in the gaming arts to provide a ticket printer or similar mechanism to print or otherwise issue ticket vouchers when a player is cashing out of the electronic gaming machine, the ticket voucher being associated with any funds associated with the player, such that in Moshal’s case, the ticket voucher would be associated with any cashable funds or winnings and non-cashable funds if the player has opted to cash out prior to exhausting all of their non-cashable funds. The Examiner respectfully positions that any person of ordinary skill in the casino gaming arts would possess the common knowledge and skill pertaining to modifying Moshal to explicitly incorporate some means to print or otherwise issue a winning tickets voucher that would enable the player to redeem the ticket voucher for any associated funds. Given Moshal’s disclosure pertaining to casino environments and utilizing video slot machines, it has been commonplace in such an environment for multiple decades to incorporate such ticket printing means to issue winning ticket vouchers. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Moshal with a means to issue ticket vouchers upon the occurrence of game session termination events, the ticket vouchers being associated with cashable and/or non-cashable funds as detailed above.
Regarding claim 12, Moshal discloses a method of operating the system, the method performing substantially the same functionality as detailed above.
Claims 2 & 13: Moshal discloses that the winnings ticket voucher is redeemable at a point- of-sale terminal for a monetary amount based on the first amount of cashable funds (paragraph 0004, wherein Moshal discloses the player may redeem tickets at the distribution outlet, including point-of-sale terminals, such as kiosks or vending machines). Moreover, as detailed above with respect to the discussion of claims 1 & 12, the obviousness of incorporating a means to print or issue a ticket voucher enables the player to go back to the point-of-sale terminal to redeem the issued ticket voucher for any associated cashable funds.
Claims 3, 4, 14, & 15: Moshal discloses that the winnings ticket voucher is associated with the first balance of non-cashable funds and that the winnings ticket voucher is redeemable at a point-of-sale terminal for a monetary amount based on the first balance of non-cashable funds and the first amount of cashable funds (e.g. as discussed above, the winnings ticket voucher is interpreted as the ticket voucher being associated with end of play or end of use – paragraphs 0090-0091 - The player can then cash out and end play of the game either as soon as they win cash, or alternatively after they have exhausted the non-cashable credit – which contemplates that when a player cashes out before all non-cashable funds are exhausted, the ticket voucher would be associated with any remaining non-cashable funds and any won cashable funds, and where the player is enabled to redeem the ticket voucher for funds associated therewith that are redeemable)
Claims 5 & 16: Moshal discloses that the winnings ticket voucher is redeemable in association with another electronic gaming machine to modify a first balance of non-cashable funds of that other electronic gaming machine (e.g. based on the discussion above, Moshal as modified would thereby provide a player with a ticket voucher that can have non-cashable funds remaining thereon, which can similarly be utilized at another electronic gaming machine for continued play of remaining non-cashable funds in a similar manner)
Claims 6 & 17: Moshal discloses that the winnings ticket voucher comprises a virtual winnings ticket voucher (figure 15 and paragraphs 0105-0106, wherein Moshal contemplates utilizing virtual ticket vouchers and thus winning ticket voucher being the ticket voucher associated with end of play and a monetary value can similarly be a virtual winnings ticket voucher).
Claims 8 & 19: Moshal discloses that the processor is caused to report, to a point-of-sale terminal, data associated with at least one of: the first balance, the second balance, the purchase price of the play of the game, the predetermined game outcome, and any value component associated with the predetermined game outcome (paragraphs 0054-0062, wherein Moshal discusses that the winnings ticket information is communicated from the gaming terminal at the conclusion of play and is stored in the central gaming server database, which may be communicated to the distribution outlet during redemption of the winnings ticket voucher by a player redeeming the voucher for cash, as such the central game server database would communicate the validated amount to be provided to the player, e.g. at least the second balance of the first amount of cashable funds).
Claims 9 & 20: Moshal discloses the play of the game comprises an instant ticket lottery game displayed as a probability-based game (abstract, paragraphs 0067, 0094, figures 3-6, wherein it appears readily apparent Moshal discloses the play of the game is an instant ticket lottery game displayed as a probability-based game, such as a slot reel game).
Claims 7 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over Moshal, as applied to claims 1-6, 8, 9, 12-17, 19, & 20, where applicable, in view of Norris (U.S. Patent Application Publication No. 2015/0087396).
Claims 7 & 18: Moshal discloses the invention substantially as claimed and modified per the above discussion except for explicitly disclosing that the processor is enabled to transfer a second amount of cashable funds from the second balance to the first balance of non-cashable funds such that after the transfer, the transferred funds are converted to non-cashable funds. Regardless of the deficiency, those having ordinary skill in the art would have found implementing such functionality within Moshal to have been functionality well established in the art. Firstly, it is noted that the prior art is replete with various methods and systems that involve the management of cashable and non-cashable balances in a gaming environment. In Moshal, as the player utilizes their non-cashable resources, they ultimately obtain the excitement and joy of playing a game that could result in a cashable monetary value. To continue such excitement and gameplay, offering a means to convert some or all of their already-earned cashable value back into non-cashable credits for further chances to win more or higher cashable monetary value would have been advantageous. Norris, in an analogous invention with respect to managing cashable and non-cashable balances, offers players the option to convert some of their already-earned cashable credits to non-cashable credits (paragraphs 0032-0033, 041). The concept of converting cashable value to non-cashable value is also disclosed by the instant application’s assignee in co-pending application No. 17/879,268 (U.S. Publication No. 2024/0046757, entitled “Exchanging Cashable Credits for Non-Cashable Credits”), which pre-dates the instant application, as such it appears the Applicant is aware that such a concept of converting cashable value to non-cashable value was known prior to Applicant’s earliest effective filing date of the present application. Therefore, it would have been prima facie obvious to those skill in the art before the effective filing date of the claimed invention to have modified Moshal with the functionality to exchange or convert some or all of their already-earned cashable value back into non-cashable value to at least allow continued excitement from current gameplay associated with the ticket voucher based on the teachings of Norris and common knowledge / routine skill in the art. Notably, providing players additional opportunities to utilize cashable credits in this manner only provides the game operators additional opportunities to generate revenue, thereby providing a win-win scenario of players being able to continue game play as desired and game operators generating increased revenue from increased gaming activity.
Response to Arguments
In regards to the previously presented provisional double patenting rejection, Applicant requested the rejection be held in abeyance until the claims are found allowable. Accordingly, the provisional rejection is maintained above.
In regards to the previously presented 35 U.S.C. 101 rejection, Applicant’s initial remarks appear to merely conclude that the claimed electronic gaming machines provides a technical solution by paraphrasing certain claim limitations in combination with aspects pertaining to jurisdictional regulations. There are no jurisdictional regulations included or implied in the present set of claims. Claim 1 appears to simply amount to two generically recited computing devices, the first being labeled an “electronic gaming machine” and the second being labeled a “cloud-based central determination system server operating independent of the electronic gaming machine”, that carry out the abstract idea of managing a first balance, obtaining game outcome information, displaying game outcome information, and managing a second balance. Applicant appears to be interpreting the labels as providing some type of technical solution, however, these labeled devices/servers appear to be nothing more than generic computers, as presented recited.
Applicant also argues that these labeled devices/servers are additional elements that are not generic, conventional, or well-known, and are not recited at a high level of generality. Examiner must respectfully disagree. As presented recited, there is no technical specificity to these devices/servers aside from one being remote from the other (“cloud-based”) and they are recited in a generic manner at a high level of generality.
Applicant also argues that these additional elements entirely alter a flow of operation of modifying different balances of cashable funds and non-cashable funds maintained by the electronic gaming machine, as such the additional elements impose meaningful limits on the claims. The server merely serves data or predetermined outcomes to the electronic gaming machine. The electronic gaming machine performs accounting processes based on the predetermined outcome. It is unclear how obtaining a game outcome seed, i.e. the predetermined outcome from the server, alters the flow operation of modifying balances at the game machine.
Regarding the 35 U.S.C. 102 rejection in view of Moshal, Applicant argues that the outcome randomly generated at the server of Moshal is not a game outcome seed and further not associated with any value component prior to being randomly generated at the server. Examiner recognizes the difference to interpretations previously applied in view of Applicant’s amendments, that the game outcome seed is selected from a set of game outcome seeds and deterministic of a predetermined game outcome, such that the value component is associated with the predetermined game outcome prior to any selection of any game outcome seed from the set of game outcome seeds by the cloud-based central determination system server, as claimed.
However, as discussed in the Response to Arguments section of the previous office action, the Examiner detailed that Moshal reasonably discloses the same process in alternative embodiments. Moshal recognizes that in lottery-style applications of their disclosure, game outcomes are generally “predetermined” at the server and stored in finite sets and are not randomly determined at the server. This is commonplace in lottery-style gaming systems that utilize sets of predetermined game outcomes. Moshal explicitly discloses “it is desirable to have lottery prizes in accordance with this disclosure also determined in advance, in order to bring certainty to the maximum payout exposure” (paragraph 0112). Moshal goes onto discuss two ways to achieve this (paragraphs 0114-0115), including finite pools or bins (“set of game seeds”) to choose a predetermined outcome from. Accordingly, the Examiner respectfully positions that Moshal sufficiently discloses “a cloud-based central determination system server operating independently of the electronic gaming machine” that is capable of transmitting game outcome seeds that are selected from a set of game outcome seeds and are deterministic of a predetermined game outcome, which cause a display device, at the electronic gaming machine, to display the predetermined game outcome determined based on the game outcome seed via receipt of a datagram generated by the server and received by the game machine containing the necessary information (paragraphs 0027, 0052, 0055). The rejection has been updated to reflect this disclosure of Moshal as disclosing corresponding limitations as claimed.
Lastly, Applicant argues that Moshal does not disclose any winnings ticket voucher being issued. While the Examiner maintains that the previously applied interpretation is reasonable, in effort to advance prosecution, the Examiner modifies the rejection as set forth above from a 35 U.S.C. 102 rejection to a 35 U.S.C. 103 rejection and positions that it would have been an obvious matter to issue a ticket voucher (e.g. printing a ticket voucher or the like) associated with the cashable funds, as Moshal’s disclosure throughout suggests that the player actually wins cashable monetary funds in response to playing games using non-cashable funds. Moshal also indicates the electronic gaming machine being utilized within the Moshal invention can be a video slots machine in a casino (paragraph 0107). Any person of ordinary skill in the casino gaming arts would readily recognize that it is an obvious matter to issue a ticket voucher at the conclusion of play, such as when the player has exhausted all non-cashable funds or initiates a cashout request (paragraphs 0090-0091 - The player can then cash out and end play of the game either as soon as they win cash, or alternatively after they have exhausted the non-cashable credit). See updated rejection set forth above for additional detail.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited (PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MILAP SHAH whose telephone number is (571)272-1723. The examiner can normally be reached Monday - Friday, 9:30-6PM.
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, KANG HU can be reached at 571-270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MILAP SHAH/Primary Examiner, Art Unit 3715