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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 to 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barclay, et al. (WIPO publication WO/2011/130172 A1, PCT/US2011/031952) in view of Rowe (U.S. Pre-Grant Publication 2009/0111574 A1).
As to Claims 1 to 20: Barclay teaches a method, comprising: receiving, at a processor and via a communication channel (generally taught at Barclay, Claims 1 to 3, Figs. 3 and 5),
an indication that a user has redeemed a new lottery number for a lottery game based on an outcome of a first game played by the user at a gaming device (Para. 11, the base game can be a slot game with a winning combination),
wherein the new lottery number is determined based, at least in part, on a combination of the outcome of the first game that includes an outcome of a reel spin and a number generated by a random number generator (the second stage of the game included a depiction of the winning value or winning combination from the base game, Para. 13),
wherein the gaming device is separated from the processor by at least one of a gaming network that is administered by an entity also administering the gaming device and a communication network that is considered untrusted from a perspective of the gaming network (Fig. 3, step 302, the base game played on the local machine, steps 304 and 306, the player is invited to continue to the second stage of the game; the local client 260 is located on a network 222, Fig. 2; the second gaming content is located remotely and includes the first wagering game content as part of the second wagering game content, Barclay, Claims 1 and 2, Para. 45; Para. 46 teaches a public network such as the Internet which the examiner is interpreting as untrusted), and
wherein the communication channel traverses the gaming network and the communication network (Fig. 3, step 302, the base game played on the local machine, steps 304 and 306, the player is invited to continue to the second stage of the game; the local client 260 is located on a network 222, Fig. 2; the second gaming content is located remotely and includes the first wagering game content as part of the second wagering game content, Barclay, Claims 1 and 2, Para. 45;
determining, at the processor, a set of numbers previously assigned to the user as lottery numbers for a drawing of the lottery game (Fig. 3, step 302, the base game played on the local machine, steps 304 and 306, the player is invited to continue to the second stage of the game; the local client 260 is located on a network 222, Fig. 2; the second gaming content is located remotely and includes the first wagering game content as part of the second wagering game content, Barclay, Claims 1 and 2, Para. 45);
determining, at the processor, that a time at which the indication is received coincides with a time at which the drawing is current and has yet to occur (the second wagering game occurs after the first game, “previous wagering game session,” Para. 45); and
automatically updating, at the processor and in response to determining that the drawing is current, the set of numbers associated with the user to become inclusive of the new lottery number (content from the base game included in the second game to be combined with the result of the secondary game for a second possible winning occurrence, Para. 65, “In another example, as illustrated in Figure 4, a wagering game system ("system") 400 can detect that a player plays a hand of cards in an online poker game 409. The player may narrowly miss getting a specific card hand, such as a flush, a straight, a three-of-kind, etc. that would cause the player to likely win the round of play. The system 400 can thus flag that opportunity as a near win and can follow-up with the player at a later point in time to present a opportunity to replay a portion of the hand for a second chance to try and obtain the flush, straight, three-of-a-kind, etc. that would have likely resulted in a win.” See also Para. 66 of Barclay).
Barclay teaches all of the limitations of these claims, but lacks specificity as to the gaming network being encrypted (second clause of Claim 1). Rowe, however, teaches a primary game played on a local machine and a secondary game played over a network, with the network being encrypted (Para. 82 discussing encryption; Claim 1, Paras. 149 to 157 discussing first and second games, the second game being remote; see also Figs. 6A-C and Paras. 131 to 135 generally). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied Rowe’s encryption to the gaming network of Barclay. Both games execute a base game locally and a second game over a network, so both games are similar in field of use and mode of operation. The advantage of this modification would be to ensure that the public or Internet network communications such as taught by Barclay would be secure to protect players and the gaming establishment from cheating or altering the game.
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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 to 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 11,100,758 B2 (parent case 16/419,531). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Present Claim 1 reads as follows: “A method, comprising: receiving, at a processor and via an encrypted communication channel, an indication that a user has redeemed a new lottery number for a lottery game based on an outcome of a first game played by the user at a gaming device, wherein the new lottery number is determined based, at least in part, on a combination of the outcome of the first game that includes an outcome of a reel spin and a number generated by a random number generator, wherein the gaming device is separated from the processor by at least one of a gaming network that is administered by an entity also administering the gaming device and a communication network that is considered untrusted from a perspective of the gaming network, and wherein the encrypted communication channel traverses the gaming network and the communication network; determining, at the processor, a set of numbers previously assigned to the user as lottery numbers for a drawing of the lottery game; determining, at the processor, that a time at which the indication is received coincides with a time at which the drawing is current and has yet to occur; and automatically updating, at the processor and in response to determining that the drawing is current, the set of numbers associated with the user to become inclusive of the new lottery number.”
‘531 Claim 1 reads as follows: “A method of facilitating user interactions with a gaming device, the method comprising: receiving a first user input at the gaming device, wherein the first user input comprises an indication of a wager amount desired by a user for a first game executed by the gaming device; invoking, with a processor of the gaming device, a random number generator to generate an outcome for the first game; providing, with the processor, an output to the user that indicates the outcome for the first game; determining, with the processor, that the outcome for the first game qualifies the user to receive an award that is an input for a secondary game, wherein the secondary game is different from the first game, and wherein the input for the secondary game comprises a number; providing, with the processor, a query to the user requesting whether the user desires to participate in the secondary game; receiving a second user input at the gaming device, wherein the second user input comprises a response to the query; in response to receiving the second user input, generating an output at the gaming device for a server that manages the secondary game, wherein the gaming device is hosted by a first entity, wherein the server that manages the secondary game is hosted by a second entity that is different from the first entity, and wherein the output comprises an indication that the user is participating in the secondary game based on the response to the query; and automatically transmitting the output from the gaming device to the server that manages the secondary game, wherein the output is transmitted across at least one of a gaming network administered by the first entity and a communication network that is considered untrusted from a perspective of the gaming network.”
The claims are nearly identical in scope. The difference between the claims is that present Claim 1 has the base game as a reel spin and the secondary game is a lottery game, while the first and second games in ‘531 Claim 1 are not specified. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the specific spinning reel and lottery games of present Claim 1 to the gaming network of ‘531 Claim 1 since both claimed inventions are drawn to including a result from a first game played locally into a second game played over a network, with the network being untrusted and therefore encrypted. This proposed modification would have the advantage of securely playing familiar types of games over a typical casino network, which may encompass one or more physical locations.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 to 20 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. The previous 101 rejection is withdrawn as the claims have been amended to pertain to specific gaming structures. The examiner has reviewed the specification and has no suggestions at this time as to how to amend the claims for allowance. The examiner respectfully disagrees with the applicants as to the claims’ present condition for allowance.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW D HOEL whose telephone number is (571)272-5961. The examiner can normally be reached M-F 8:00 A.M.-4:30 P.M..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.D.H/Examiner, Art Unit 3715 /DAVID L LEWIS/Supervisory Patent Examiner, Art Unit 3715