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 .
Response to Amendments
This office action is in response to amendments filed on 06/03/2025.
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 3-9, 10 and 13-18 rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more. As per step 1 examiner recognizes the claims are directed towards method comprising hardware elements performing the method steps and therefore step 1 is meet. As per step 2A the claim(s) recite(s) “receiving a user input at a gaming device that causes the gaming device to initiate a first play of a game, wherein the game presents an array of cells via a display of the gaming device as part of the game; rendering, by the display, a first distribution of symbols in the array of cells, wherein each cell in the array of cells comprises a discrete symbol in the first distribution of symbols; rendering, by the display, a first updated presentation of the game in which a cell in the array of cells is replaced with an upgrade symbol, wherein the upgrade symbol represents an instance when a common symbol in a first cell and a second cell have been combined into the upgrade symbol and wherein the cell that is replaced with the upgrade symbol comprises the first cell; rendering, by the display, a second updated presentation of the game in which the common symbol is removed from the second cell at least until a second play of the game is initiated, wherein the second cell is empty at least until the second play of the game is performed; and rendering, by the display, a third updated presentation of the game in which a second distribution of symbols is presented in the first array of cells, wherein the cell comprises the upgrade symbol in the second distribution of symbols and wherein cells in the array of cells other than the cell comprise a new discrete symbol in the second distribution of symbols.” as per the function of the game comprising a game which determines an outcome of symbols and if any certain symbols are in a first and cell an upgrade event occurs with the game having at least two plays with the upgraded symbol being maintained. Additional language includes replacing the one of the common symbols and leaving the cell empty till a second play. Further dependent claims include additional upgrades, when and where to upgrade, and other game steps. Examiner finds that the independent claims lacks a mental step via reciting rendering steps. However further dependent claims such as claims 3-9, 10 and 13-18 including language such as “evaluating”, “based on”, and other mental step language which involves the observation of the state of a game and applying a rule based on a determination. These are mental steps that can be performed by an individual based on observation of data and applying rules accordingly in carrying out a game. Specifically when and where to upgrade a symbol. The inclusion of language such as automatically goes towards step 2B with the steps being performed by a process and are addressed below. This judicial exception is not integrated into a practical application because the steps are directed towards a series of mental steps in the form of rules for playing a game. Specifically the use game rules for how to play a game such as evaluating steps and in response to steps such as when to upgrade or start another instance of the game. See MPEP 2106.05(f). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because it is merely directed to carrying out the game and being directed to the exception of organizing human activity for the purpose of a financial obligation. Specifically this is no more than a game being carried out to determine an outcome.
As per step 2B examiner recognizes that additional elements are directed to conventional activities or extra solution activity. See below.
Limitations directed to “initiating a first play of a game, wherein the game presents an array of cells; rendering, by the display in response to initiating the first play of the game, a first distribution of symbols in the array of cells”, steps comprising automatically being carried out, and further gaming machine hardware. The hardware elements are commonly found in the gaming art related to electronic slot machines or wagering terminals and therefore are no more than a generic recitation of computer hardware elements and therefore does not provide a practical application that amounts to more than the identified abstract idea. This includes the recitation of memory, processors, and displaying steps which are generically found in electronic gaming machine including the elements accepting wagers for the purpose of presenting an outcome and payout for the results. See US 6186894 B1 at col. 5, lines 25-38 regarding video slot reels including displaying outcomes and that the activity of spinning and producing random outcomes from a wagering game are convention activities well-understood in the art. See Acres (US Pub. No. 2012/0172107 A1) teaches within the electronic gaming art the use of a random number generator to determine numbers for specific reel stop positions in order to determine an outcome which is evaluated if it is a winning combination of symbols appearing on a played payline (paragraph [0073]). Specifically it is conventional to communicate data to output to a user comprising animated spinning of a wager determining device (which would include reels or wheels) or static images to communicate an outcome and award due as well as the state of the game. Therefore these limitations do not provide a practical application. As per displaying the game this is directed towards extra solution activity and therefore does not provide a practical application. Specifically the outputting of information on a display. As per steps concerning automatically examiner recognizes this is the feature of a processor carrying out a rule or step which would include the exemptions above. The automatic carrying out of an instruction by a processor is a conventional step and therefore does not overcome the 101 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 1-20 of U.S. Patent No. 11710367. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed towards similar inventions regarding upgrading symbols when two symbols of a certain type, such as common, are found adjacent to each other. Specifically the current claims are method claim examples of the parent claims or as shown by claim 12 of both cases include similar language. Therefore the claims are not patentably distinct. Amended language modifies the claims to more clearly recite display steps but the display steps read on a game in the similar manner as 11710367. Therefore the rejection is maintained.
Response to Arguments
Applicant's arguments filed 06/03/2025 have been fully considered but they are not persuasive. Applicant argues that all amended claims overcome the previous 101 rejection. Examiner agrees regarding the independent claims but finds that dependent claims still recite the mental step portion as indicated above. Therefore the 101 is maintained for those claims. Specifically a judicial exception is still recited in these claims and the claims do not present a practical application beyond the playing of a game. Additionally the step of evaluating symbol outcome or other determination steps can be performed mentally upon observing a state of the game and based on established rules.
Applicant has not addressed the double patenting rejection and the claims remain directed toward similar subject matter. Therefore the previous rejection is maintained.
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 JUSTIN L MYHR whose telephone number is (571)270-7847. The examiner can normally be reached 10AM-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUSTIN L MYHR/Primary Examiner, Art Unit 3715 7/25/2025