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 .
Claim Status
Claims 1-20 are pending. Claims 1, 8, 14, and 18-20 have been amended. No new claims have been added.
Response to Arguments
With respect to the double patenting rejection, the Applicant’s arguments filed 5/14/26 have been considered and acknowledges that the Applicant wishes to hold the filing of a Terminal Disclaimer in abeyance till final disposition of the application. However, this does not overcome the pending rejection under double patenting. For at least these reasons, the rejection has been maintained below.
Applicant's arguments filed 5/14/26 have been fully considered but they are not persuasive. The Applicant’s representative asserts arguments that claims 1-20 are not directed to a grouping of abstract ideas without significantly more. The Examiner notes that Step 1 of the two-part Alice test has been satisfied because the claims recite a process, machine, manufacture, or composition of matter. With respect to the arguments, the Applicant’s representative argues that the claims are not directed to i) a certain method of organizing human activity under Step 2A (referenced by representative as “Step 1”) (see Remarks, pg. 11-12) and ii) recites an inventive concept under Step 2B (referenced by representative as “Step 2”)(see Remarks, pg. 13-14). The Examiner respectfully disagrees for the reasons provided in the sections below.
With respect to Step 2A, the Applicant’s representative argues that the claims are not directed to a certain method of organizing human activity but “defines how the electronic gaming system controls graphical rendering and evaluation across multiple coordinated video displays” (see Remarks, pg. 11). In particular, the Applicant’s representative asserts that the claims require: (1) displaying a first plurality of symbols across first and second video display using two different graphical appearances to distinguish active and inactive display positions, (2) receiving a second display position for an animated symbol from a subset of display positions with a different graphical appearance, (3) animating the animated symbol across the united gaming area formed by the first and second displays, (4) dynamically modifying the graphical appearance of display positions adjacent to the animated symbol during its movement, (5) increasing a set of display positions that are actively evaluated for an award, and (6) evaluating only those positions currently rendered with the modified graphical appearance (see Remarks, pg. 11-12). As asserted by the Applicant’s representative, “these features define how the gaming system operates internally at the display level, including how graphical states of display positions are updated and how rendering and evaluation are coordinated with respect to animation-driven changes” which is analogous to Enfish and McRO v. Bandai because they recite rules for automatically changing visual output (see Remarks, 11-12 – McRo – facial recognition; instant application – graphical display positions). Moreover, the Applicant’s representative argues that the claims are similar to Core Wireless Licensing because they present and update information across multiple displays as a unified graphical area that is specific improvement in the operation of a display-controlled gaming system. The Examiner respectfully disagrees. As discussed in the Specification, the claims recite an electronic gaming system for selecting symbols for display to be evaluated to determine whether an award is to be made to a player in order to maintain or increase player enjoyment (see Specification, 0002-003). In particular, as noted in the prior rejection, the claims are found to be directed to a certain method of organizing human activity because they recite steps and/or instructions for managing a winning outcome for a symbol game which includes rules and/or instructions for selecting and displaying game symbols to be evaluated for an award associated with a selected game outcome. For at least these reasons, claims 1-20 are found to be directed to certain method of organizing human activity under Step 2A-prong 1.
With respect to Step 2A-prong 2, the requirements of the claims directed to (1), (2), (3) listed above have been found to recite insignificant extra solution activity such as: displaying a plurality of symbols, data gathering (e.g., receiving a second display position), animating the animated symbol a unified gaming area which amount to arranging the game information in a manner on a graphical user interface to allow the player to process the progress of the played game. Additionally, requirements (4), (5), and (6) recites a rule and/or instruction for the symbol game such as: “dynamically modifying the graphical appearance of display positions adjacent to the animated symbol during its movement”; increasing a set of display positions that are actively evaluated for an award; and evaluating only those positions currently rendered with the modified graphical appearance. It follows that the requirements by the additional limitation are found to amount to invoking 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)). An evaluation under the ‘improvements’ consideration, find that the Specification fails to provide a discussion as a technical solution to a technical problem but rather to merely managing a symbol game including instructions to implement a business method (e.g., a symbol game) as a tool on a general purpose computer and/or arranging transactional information on a GUI to display progress of the game which is not indicative of an improvement to computer functionality and/or a different field (see MPEP 2106.05(a)I-II). For at least these reasons, the claims are not found to integrate the claim into a practical application under Step 2A-prong 2.
With respect to Step 2B, the Applicant’s representative asserts that the claims amount to significantly more than any alleged abstract idea because the recite a non-conventional combination of (1) a multiple display gaming architecture, (2) display positions rendered with different graphical appearances that encode functional state directly into display output, (3) animation of animated symbol across display positions spanning multiple displays; (4) a movement-triggered modification of graphical appearances of display positions adjacent to the animated symbol; and (5) an evaluation of only those display positions where the set of such positions is expanded based on the dynamic display to move a symbol from the first display to the second display (see Remarks, pg. 12-13). The Examiner respectfully disagrees. The features (1)-(5) that are listed are analogous to requirements (1)-(6) discussed above and the analysis is incorporated herein. As noted above, these limitations are not found to recite a specific ordered combination or an improvement to the functioning of the computer but to rules and/or instructions to manage the symbol game by invoking 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)). Furthermore, a review of the Specification, does not appear to provide details or indicate a technological problem and/or how a technological solution was achieved by the inventor that would indicate an improvement to display technology and/or to the operation of the computer similar to Enfish, McRo, and/or Core Wireless. It is noted that the claims recite rules to managing a symbol game, the type of ‘slot’ game that is generally found in a wagering environment. It follows that the claims are not found to recite a technical solution to a technical problem but steps to managing a symbol game by invoking a computer as a tool to implement the abstract idea, perform insignificant extra solution activity, and/or provide a technological environment (e.g., a multiple-display environment) to perform the abstract idea (see MPEP 2106.05(f)-(h)).. For at least these reasons, the claims are not found to amount to significantly more than the abstract idea under Step 2B.
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 across the first and second video displays;
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 as the animated symbol moves upward across display positions on the first and second video displays 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 and control the first and second video displays to modify a graphical appearance of the one or more display positions from the frozen appearance to the unfrozen appearance 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 currently rendered with the unfrozen appearance for an award as displayed on the first and second video displays; 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 across the first and second video displays;” “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 displays”, “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
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 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
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