DETAILED ACTION
This action is in response to the amendment filed August 6, 2025. The Examiner acknowledges that claims 1-12, 16-26, 30-34, & 37-40 were amended, no claims were canceled, and no new claims were added. Claims 27-29 remain withdrawn from examination as being directed to a non-elected invention (see Election of May 7, 2025).
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 .
Response to Arguments
In regards to the previously presented double patenting rejection, Applicant indicates that a terminal disclaimer is filed with the August 6, 2025 response to address this rejection. However, there appears to be no terminal disclaimer filed with the response, nor currently of record in the application. Accordingly, the rejection is being maintained as set forth below in response to the amended claims being substantially overlapping to the identified patents similarly to the original claims.
In regards to the previously presented 35 USC 112(b) and 35 USC 112(d) rejections, amendments to the claims appear to overcome the rejections, as such the rejections have been withdrawn.
In regards to the previously presented 35 USC 102 and 35 USC 103 rejections, amendments to the claims appear to overcome the rejections, as such the rejections have been withdrawn. Claims 1-26 tentatively appear to be in condition for allowance pending a terminal disclaimer to address the outstanding double patenting rejection. Applicant is directed to the new rejections to claims 30-40 as set forth below and necessitated by the amendments.
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 1-26 & 30-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-48 of U.S. Patent No. 11,983,911 and claims 1-20 of U.S. Patent No. 12,228,444. Although the claims at issue are not identical, they are not patentably distinct from each other because a person of ordinary skill in the art would readily ascertain the substantial overlap in scope as set forth in at least each of the independent claims of the present application to the independent claims of each of the above-identified patents. That is, the claims each substantially overlap in scope pertaining to a system that includes a determination device, a registration device, and a verification device that recite functionality to facilitate the determination, registration, and verification of data stored on or in conjunction with RFID tags associate with casino items or gaming chips to ensure usability of the items or chips. While a side-by-side comparison of each and every claim is omitted for the sake of brevity and compact prosecution, the Examiner must position that any person of ordinary skill comparing the sets of claims in their entirety would have concluded that a terminal disclaimer is reasonably warranted to overcome this standing of non-statutory double patenting.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 30, 32-37, 39, & 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moore et al. (U.S. Patent Application Publication No. 2018/0075690; hereinafter “Moore”).
Claim 30: Moore discloses a casino system installed in a backyard of a casino (figure 1) that uses casino item items with RFID tags storing identification information, the casino system comprising:
a first reading device configured to read an RFID tag of a casino item received from a manufacturer of the casino item to determine the identification information stored in the RFID tag (figure 2 and paragraphs 0040-0050, wherein Moore discloses components pertaining to a “first reading device” that are configured to read RFID tags of casino items or chips, those chips being at some point received from a manufacturer of said chips);
an inspection device configured to detect whether the casino item has been damaged by at least comparing a number of RFID tags read by the first reading device with a number of casino items (figures 5A-9 and paragraphs 0075-0112, wherein Moore discloses multiple processes performed by components pertaining to an “inspection device” that can detect whether a casino chip has been damaged, i.e. a “faulty chip”, based on comparing a number of RFID tags read to a number of expected casino items or chips – notably, this limitation of the claim is constructed in the alternative, where Moore discloses at least the inspection device being configured to perform one of the alternatives to detect whether the casino item has been damaged);
a registration device configured to register the casino item that is determined to be usable as a result of the inspection by the inspection device (figures 5A-9 and paragraphs 0075-0112, wherein Moore discloses faulty chips are recorded as such by either updating their status as faulty or updating a faulty chip database – paragraph 0108 – thus where chips are properly read and there no indication of being damaged, implicitly the system maintains or registers the chip as working or useable).
Claim 32: Moore discloses that the first reading device is configured to read RFID tags of casino items contained in a case (e.g. a chip tray) capable of containing a predetermined number of casino items (e.g. a chip tray has a max capacity), and the inspection device is configured to compare the predetermined number of casino items that the case is capable of containing with the number of the RFID tags read by the first reading device (figures 5A-5B and paragraphs 0075-0080, where when the chip tray is at max capacity, each of the RFID tags are read for the chip tray containing the capable maximum number of chips).
Claim 33: Moore discloses an input device configured to receive an input of the number of the casino item by an operator, wherein the inspection device is configured to compare the number of the casino items received by the input device with the number of the RFID tags (figures 5A-5B and paragraphs 0075-0080, 0084, 0103, wherein Moore discloses a user interface with an expected value of chips and discusses that the expected value is determined based on input such as one or more transactions, e.g. a fill or credit transaction).
Claim 34: Moore discloses a casino system in a casino that uses a gaming chip with an RFID tag (figure 1), the casino system comprising:
a first reading device configured to read the RFID tag of the gaming chip, wherein the gaming chip pertains to a fill or a credit (figures 2-9 and paragraphs 0075-0112, wherein Moore discusses the casino system includes components pertaining to “a first reading device” that are configured to read RFID tags of one or more gaming chips pertaining to a fill or credit transaction, see particularly the process detailed in figure 8); and
an inspection device configured to detect a gaming chip with a broken RFID tag by comparing a number of RFID tags read by the first reading device with a number of gaming chips pertaining to the fill or the credit (figures 2-9 and paragraphs 0075-0112, wherein Moore, as previously discussed above, discloses components pertaining to “an inspection device” that detect whether gaming chips are damaged or faulty, interpreted as “broken” by comparing a number of RFID tags read from a chip tray to a number of expected gaming chips pertaining to a fill or credit during one such transaction), wherein: gaming chips pertaining to the fill comprises gaming chips transferred from a security area for storing the gaming chips to a table where games using the gaming chips are played or to a pit managing a plurality of tables, and gaming chips pertaining to the credit comprises gaming chips transferred from the table or from the pit to the security area (notably, fills and credit transactions are notoriously well established in the casino arts where a fill is generally when chips are securely brought onto a game table from a security or pit area of the casino and a credit is generally when chips are securely taken off a gaming table to said security or pit area of the casino, and Moore appears to acknowledge such as referencing both fill and credit transactions throughout their disclosure, see figure 8 and paragraphs 0019-0022, 0026, 0040, 0074-0076, 0084, 0101-0105 – clearly Moore recognizes the well established common fill and credit transactions of a casino table game environment).
Claim 35: Moore discloses a registration device configured to register the identification information of the gaming chip that can be used, wherein the registration device is configured to disable identification information identified in a manner other than the RFID tag for a gaming chip with a broken RFID tag (figures 5A-9 and paragraphs 0075-0112, wherein Moore discloses faulty chips are recorded as such by either updating their status as faulty or updating a faulty chip database [a manner other than the RFID tag itself]– paragraph 0108 – thus where chips are properly read and there no indication of being damaged, implicitly the system maintains or registers the chip as working or useable).
Claim 36: Moore discloses that the gaming chip is marked with information for identifying the identification information in the manner other than the RFID tag (e.g. it is well established in the casino gaming art that a denomination of the chip being graphically provided on the chip, as patrons need to be able to identify the value of each trip without utilizing the RFID tag).
Claim 37: Moore discloses the casino system is provided with at least the table where games using the gaming chip are played (figures 2-3).
Claim 39: Moore discloses that the first reading device is configured to read RFID tags of the gaming chips contained in a case (e.g. a chip tray) that can contain a predetermined number of the gaming chips (e.g. a chip tray has a max capacity), and the inspection device is configured to compare the predetermined number of gaming chips with the number of the RFID tags (figures 5A-5B and paragraphs 0075-0080, where when the chip tray is at max capacity, each of the RFID tags are read for the chip tray containing the capable maximum number of chips).
Claim 40: Moore discloses an input device configured to receive an input of the number of the gaming chips by an operator, wherein the inspection device is configured to compare the number of the gaming chips received by the input device with the number of the RFID tags (figures 5A-5B and paragraphs 0075-0080, 0084, 0103, wherein Moore discloses a user interface with an expected value of chips and discusses that the expected value is determined based on input such as one or more transactions, e.g. a fill or credit transaction).
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 31 & 38 are rejected under 35 U.S.C. 103 as being unpatentable over Moore as applied to claims 30, 32-37, 39, & 40, where applicable, in view of Shigeta et al. (U.S. Application Publication No. 201/80144166; hereinafter “Shigeta”)
Claims 31 & 38: Moore discloses the invention substantially as claimed except for explicitly disclosing that the casino system further comprises a camera configured to capture an image of the casino items (gaming chips) to be read by the first reading device and an image recognition device configured to obtain the number of the gaming chips by performing image recognition on the image, wherein the inspection device is configured to compare the number of the gaming chips obtained by the image recognition device with the number of the RFID tags. However, Shigeta, in an analogous casino system directed to gaming chip management via systems and methods that read RFID tags from gaming chips, discloses also utilizing one or more cameras that are configured to capture an image of the gaming chips to be read by an RFID reader and perform image recognition by an image recognition device to obtain the number of type of gaming chips from the image thereby comparing the number of chips obtained from image recognition versus RFID information being read from the RFID tags, such as to determine specific chips being unusable or the like, such as when no RFID information is obtained by image recognition recognizes a chip that was not read (paragraphs 0160-0189, wherein Shigeta discloses a plurality of different pass/fail tests that are capable by utilizing both RFID scanning of tags and image capturing/recognition). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified Moore with the teachings of Shigeta in order to provide a more robust gaming chip management system that not only utilizes RFID tags in gaming chips but also utilizing cameras as secondary means of verification, i.e. similarly implementing the Shigeta teachings to incorporate tests that rely on both RFID and camera technologies to make determinations pertaining to gaming chips being faulty, missing, fake, or the like.
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.
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/MILAP SHAH/Primary Examiner, Art Unit 3715