DETAILED ACTION
This action is in response to the amendment filed January 21, 2026. The Examiner acknowledges that claims 4, 11, 15, & 18 were amended, no claims were canceled, and no new claims were added. Therefore, claims 1-20 are currently pending.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4, 11, & 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 4, 11, & 18 recite, similarly, “wherein changing the paytable comprises determining one or more payback reductions associated with the one or more trade-in indications” (as recited in claim 4 and similarly worded in claims 11 & 18). The specification fails to disclose any determination of any payback reductions when changing the paytable [to a bonus paytable].
Applicant’s remarks of January 21, 2026 (see page 6) argue that the amended language (identified above) is supported by Table 1 of the specification that discloses a payback reduction column with specific percentages for discarding various cards. Applicant correctly indicates that the specification explains that the payback reduction portion of Table 1 describes the potential winnings (theoretical payback) given up by the player in the base game for a chance to receive an award in the bonus game.
However, the Examiner respectfully disagrees that such is support for a determination to be made pertaining to one or more payback reductions associated with changing the paytable. Table 1 of the specification merely highlights different theoretical reduction in payback percentages when a player opts to discard a variety of cards during the base game. The specification fails to provide any discussion pertaining to “wherein changing the paytable comprises determining…” that is, the specification does not correlate any determinations being made pertaining to the payback reduction associated with changing the paytable to the bonus pay table, i.e. when the game triggers the scenario of the double pay, there is no determination of a payback reduction.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-3, 5-10, 12-17, 19, & 20 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Pacey (U.S. Patent Application Publication No. 2005/0079908).
Claims 1, 8, & 15: Pacey discloses a method comprising:
determining, based on a paytable associated with an electronic casino gaming device, one or more gaming outcomes (figures 3, 6-10, and paragraphs 044-061, wherein Pacey discloses determining, based on a paytable, one or more game outcomes, e.g. a payout of 30 credits as illustrated in figure 7);
receiving, via a user interface of the electronic casino gaming device, one or more trade- in indications associated with the one or more gaming outcomes (figures 3, 6-10, and paragraphs 044-061, wherein Pacey discloses a player may opt not to take the determined outcome or payout and instead select an offer, the selection of the offer is a “trade-in indication associated with the one or more game outcomes” that is received via a user interface of the gaming device); and
automatically changing, based on the one or more trade-in indications, the paytable to a bonus paytable (figures 3, 6-10, and paragraphs 044-061, wherein Pacey discloses an automatic changing of the paytable, based on the trade-in indication, to a bonus paytable, such as for at least a predetermined number of additional reels pins; see flowchart 300, in which step 314 occurs automatically after the indication and paragraph 0051 indicates the paytable is changed to a bonus paytable, such as doubling or tripling payouts of the base paytable).
Regarding claims 8 & 15, Pacey discloses an electronic casino gaming apparatus or device (figure 1) performs the functionality of the method detailed above by executing stored computer programs by a processor of the device that causes the device to perform said functionality of the method (paragraph 0037).
Claims 2, 9, & 16: Pacey discloses that the electronic casino game device comprises a wager receiving module configured to receive at least hard currency (paragraph 0029.
Claims 3, 10, & 17: Pacey discloses that the one or more gaming outcomes are associated with one or more games, wherein the one or more games comprise at least a slots game (figures 6-12).
Claims 5, 12, & 19: Pacey discloses receiving, via a player identity module, a player identifier (paragraph 0030).
Claims 6, 7, 13, 14, & 20: Pacey discloses outputting, based on the bonus paytable, one or more bonuses (paragraph 0055), the one or more bonus being at least one or more determined bonus amounts, such as when the player selects a trade-in indication of three spins at 2x, the three spins are evaluated based on a bonus paytable that is double the base paytable, thus determining bonus amounts accordingly (paragraphs 0010, 0051, 0055).
Response to Arguments
In view of the previously presented 35 U.S.C. 112 rejection to claims 4, 11, & 18, Applicant amended the claims in an effort to overcome the rejection and presented arguments accordingly. The Examiner respectfully positions that the amendments and arguments do not overcome the rejection, for at least the reasons set forth in the updated 35 U.S.C. 112 rejection above.
Applicant’s arguments with respect to Pacey and the previously presented 35 U.S.C. 102 rejection are not persuasive.
Applicant argues that Pacey does not disclose “automatically changing, based on the one or more trade-in indications, the paytable to a bonus paytable”. Applicant indicates that their specification discloses automatically changing… to a bonus paytable when a player has won the bonus, which triggers a double-pay, compared to the standard paytable 500 of figure 5. Applicant continues to indicate that the double-pay “bonus paytable” is in effect for 50 plays. Firstly, it should be noted that “bonus paytable” is actually no where in Applicant’s specification, as such changing “the paytable” to “a bonus paytable” even in Applicant’s specification appears substantially the same as in Pacey, i.e. the double-pay scenario being triggered and active for X number of plays is a “bonus paytable”. Other intended interpretation could raise 35 U.S.C. 112 issues for proper support. Applicant’s specification appears to indicate that the game changes the evaluation to utilize “the bonus paytable” that consists of the underlying paytable 500 having certain wining combinations doubled to arrive at a double-pay scenario as detailed in Applicant’s paragraph 0081. The Examiner positions that Pacey operates in the same manner such that in response to a trade-in indication (e.g. selecting yes to a displayed offer after a winning combination in a base game), the paytable is changed to “a bonus paytable” that offers the player a similar double-pay scenario for Y number of games. The fact that X number of games in Applicant’s specification for the “bonus paytable” being active versus Y number of games in Pacey appears irrelevant, as the same process is otherwise performed. Thus Applicant’s remarks pertaining to the process providing a temporary double-pay scenario appears similarly irrelevant, as the claimed invention is otherwise disclosed by Pacey for at least the reasons discussed above and detailed in the 35 U.S.C. 102 rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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 MILAP SHAH whose telephone number is (571)272-1723. The examiner can normally be reached Monday - Friday, 9:30-6PM.
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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.
/MILAP SHAH/Primary Examiner, Art Unit 3715