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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/6/26 has been entered.
Claim Status
Claims 1-20 are pending.
Response to Arguments
Applicant's arguments filed 1/6/26 have been fully considered but they are not persuasive. With respect to the double patenting rejections, the Applicant’s representative states that the Applicant is open to filing a Terminal Disclaimer but holds the rejection in abeyance pending final disposition of the application. However, no Terminal Disclaimer has been filed therefore the rejection has been maintained below.
With respect to the rejection under 35 USC 101, the Applicant’s representative argues that the rejection under 35 USC 101 is improper and should be withdrawn because the additional elements integrate the alleged abstract idea into a practical application and/or amount to significantly more than the abstract idea (see Remarks pg. 11). The Applicant’s representative asserts that the claims integrate the claim into a practical application for “improving the functioning of a dual-display electronic device by coordinating (1) specific vertically stacked two-display architecture presenting a single gaming area; (2) state data identifying each of the display positions as frozen or unfrozen; and (3) processor-executed operations that, in response to upward movement of an animated symbol, change adjacent positions from frozen to unfrozen, update state data accordingly, and evaluate only unfrozen positions for awards (see Remarks, pg. 11-12). Moreover, the Applicant’s representative asserts that review under Step 2B, the claims recite significantly more than the abstract idea because they recite a specific ordered combination that defines how the target gaming system operations and these operations constitute an improvement to the target gaming system (see Remarks, pg. 14). The Examiner respectfully disagrees for the reasons provided below.
With respect to the first argument under Step 2A-prong 2, the Applicant’s representative asserts that the claims are directed to improving the functioning of a dual-display electronic device by coordinating (1) a specific vertically stacked two-display architecture presenting a single gaming area (e.g., pars. [0008], [0079], [0080]) (see Remarks, pg. 11-12). The Examiner respectfully disagrees. The amendments to independent Claims 1, 8, and 15 which recites “a first and second video displays arranged vertically to present a single a gaming area that provides a set of display positions” recites a desired result of an arrangement of transactional information of the abstract idea which invokes computers or other machinery merely as a tool to perform an existing process (e.g., display symbol positions of a symbol position game) (see MPEP 2106.05(f)). As noted by the courts, arranging transactional information (e.g., display symbol positions of a game outcome of a symbol position game), is not generally indicative of an improvement to computer functionality (see MPEP 2106.05(a)I). Furthermore, implementing a commonplace business method being applied on a conventional gaming system is not generally indicative of an improvement to show an improvement to any other technology or technical field (see MPEP 2106.05(a)II). For at least these reasons, the Applicant’s argument is not persuasive that the claim recite a particular device-implemented solution is directed to an improvement to a two-display gaming system by coordinating state-driven rendering and evaluation across vertically stacked displays but to mere instructions to apply the exception. For at least these reasons, the analysis under Step 2A-prong 2 has been maintained below.
With respect to the second argument, the Applicant’s representative asserts that the additional element of “state data identifying each of the display positions as frozen or unfrozen” integrate the claim into a practical application. The Examiner respectfully disagrees. The step and/or instruction for identifying display positions associated with frozen or unfrozen symbols associated with a play of the game amounts to a game rule and/or managing the game itself. Furthermore, “state data” identifying the result of the rule and/or instructions of the game transaction amounts to mere data gathering, selecting a particular data source of type of data to be manipulated, and/or insignificant application which has been construed as insignificant extra solution activity and is not indicative of integration into a practical application (see MPEP 2106.05(g)). For at least these reasons, the second argument is not persuasive and the additional element is not found to integrate the claim into a practical application.
With respect to the third argument, the Applicant’s representative asserts that the additional element of a processor-executed operations that, in response to upward movement of an animated symbol, change adjacent positions from frozen to unfrozen, update state data accordingly, and evaluate only unfrozen positions for awards is indicative of integration into a practical application. The Examiner respectfully disagrees. An animated symbol, change adjacent positions from frozen to unfrozen, update state data, and evaluation only unfrozen positions for awards are directed to a certain method of organizing human activity including rules and/or instructions for managing a symbol position game and not to an improvement to a dual-display gaming system that integrates the claim into a practical application.
Furthermore, the Applicant’s representative argues that under Step 2B the claims recite significantly more than the alleged abstract idea. Specifically, the Applicant’s representative asserts that the amended claims recite a specific ordered combination that defines how the target gaming system operates to display using two video displays providing a single gaming area, a data structure for position-level state data, and rules/instructions for coordinating upward movement causing adjacent positions identified as frozen to be evaluated for awards in the cited gaming system (see Remarks, pg. 12-13). The Examiner respectfully disagrees. As discussed above, providing a single gaming area, indicating particular data associated in managing the game, and/or rules and/or instructions for evaluating the awards of the game amount to mere instructions to apply the exception, insignificant extra solution activity, providing a technological environment in which to perform the abstract idea and/or rules and/or instructions to manage the symbol game (see MPEP 2106.05(f)-(h), MPEP 2106.04(a)). Moreover, as addressed in the Office Action, Vancura (US 2010/0029381) discloses that the additional elements of claimed gaming system comprising one or more display devices, at least one processor, a memory, a random number generator and/or a centrally located server are components of a conventional gaming system known to one of ordinary skill in the art (see Vancura, Fig. 1, 0037-0040). For at least these reasons, the Applicant’s argument is not persuasive and the analysis under Step 2B has been maintained below.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,922,920 B2 and claims 1-20 of US 11,562,624 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-17 of the ‘920 Patent and claims 1-20 of the ‘624 Patent anticipate claims 1-20 of the current application.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a grouping of abstract ideas without significantly more. The claims, as exemplified by independent claim 1, recites limitations which as underlined in the body of the claim below are directed to a grouping of abstract ideas:
1. A gaming system comprising:
first and second video displays arranged vertically to present a single gaming area that provides a set of display positions;
at least one processor and
a memory storing a symbol set including an animated symbol, state data identifying each of the display positions as frozen or unfrozen, and instructions that, executed by the at least one processor, cause the at least one processor to:
receive, from at least one server, a first plurality of symbols randomly selected from the symbol set based on one or more of a plurality of random numbers generated by a random number generator for display at a first plurality of display positions with an unfrozen appearance and a second plurality of display positions with a frozen appearance,
receive, from the at least one server, a second display position selected from the second plurality of display positions for the animated symbol,
control the first and second video displays to animate the animated symbol moving upward within the single gaming area from a first display position of the first plurality of display positions to the second display position and one or more display positions adjacent to the second display position changing from the frozen appearance to the unfrozen appearance to increase the first plurality of display positions with the unfrozen appearance to a third plurality of display positions with the unfrozen appearance,
update the state data to reflect the changes to the one or more display positions adjacent to the second display position as the animated symbol moves upward within the single gaming area;
evaluate, based at least in part on the state data, only the display positions identified as unfrozen for an award; and
control the first and second video displays to animate the award in response to the third plurality of display positions displaying a winning game outcome.
The limitations as underlined above are found to recite a certain method of organizing human activity such as managing a winning game outcome for a symbol game which is analogous to a managing a social activity including rules and/or instructions. For at least these reasons, the claims, as exemplified by independent claim 1, are found to recite a grouping of abstract ideas under Step 2A-prong 1.
This judicial exception is not integrated into a practical application because the additional limitations such as: “first and second video displays arranged vertically to present a single gaming area that provides a set of display positions;” “at least one processor and” “a memory storing a symbol set including an animated symbol, state data identifying each of the display positions as frozen or unfrozen, and instructions that, executed by the at least one processor, cause the at least one processor to:” “receive, from at least one server, a first plurality of symbols randomly selected from the symbol set based on one or more of a plurality of random numbers generated by a random number generator for display at a first plurality of display positions with an unfrozen appearance and a second plurality of display positions with a frozen appearance,” “receive, from the at least one server, a second display position” “control the first and second video displays to animate the animated symbol” and “control the first and second video displays to animate the award in response to the third plurality of display positions displaying a winning game outcome.” are each found to recite instructions to invoke a computer as a tool to implement the abstract idea, insignificant extra solution activity, and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). For at least these reasons, the additional limitations do not integrate the claim into a practical application under Step 2A-prong 2.
The claims, as exemplified by independent claim 1, do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements such as: “first and second video display”, “at least one processor” and “a memory”, “ a random number generator” and “at least one server” when viewed individually and/or as a collection of elements are similar to the findings in Alice v. CLS, because they merely recite invoking highly generalized computer components as tool to implement the abstract idea, perform insignificant extra solution activity, and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). For instance, Vancura (US 2010/0029381 A1) discloses a conventional gaming system comprising a gaming machine (e.g., client device) comprising at least one or more display devices, at least one processor, a memory, a random number generator, and at least one server are well-known, routine and conventional components to manage a game to one of ordinary skill in the gaming arts (see Vancura, Fig. 1, 0008, 0037-0040). It follows that when viewed individually and/or as a collection of elements they do not amount to an improvement to the functioning of the computer and/or a technical solution to a technical problem in/or an improvement to a different field of technology. For at least these reasons, the claims, as exemplified by independent claim 1, do not amount to significantly more than the abstract idea under Step 2B.
Regarding independent Claims 8 and 14, the recite substantially the same subject matter as independent claim 1 that was analyzed above. The claims differ in that they are directed to a method and non-transitory computer-readable medium embodiment of the claimed invention. It follows that the claims are found to be directed to an abstract idea without significantly more for substantially the same reasons as indicated above.
With respect to dependent claims 2-7, 9-13, and 15-20, the additional limitations have been analyzed and are found to recite additional limitations directed to a grouping of abstract ideas (see MPEP 2106.04(a)), invoke a computer as a tool to implement the abstract idea (see MPEP 2106.05(f)); insignificantly extra solution activity (see MPEP 2106.05(g)); and a technological environment in which to perform the abstract idea (see MPEP 2106.05(h)). For at least these reasons, claims 1-20 are found to recite an abstract idea without significantly more.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN HSU whose telephone number is (571)272-7148. The examiner can normally be reached Monday - Friday 10:00-6:00 PM.
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/RYAN HSU/EXAMINER, Art Unit 3715