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 and 4-22 are pending. Claims 1, 8, and 14 have been amended. Claims 21-22 have been newly added.
Response to Arguments
Applicant's arguments filed 2/23/26 have been fully considered but they are not persuasive. The Applicant’s representative argues against i) the obviousness-type double patent rejection (see Remarks, pg. 10) and ii) the rejection of claims under 35 USC 101 (see Remarks, pg. 10-13). The Examiner respectfully disagrees for the reasons provided below.
With respect to the double patenting, the Applicant’s representative asserts that none of the alleged conflicting patents recites or renders obvious “selecting, for each reel of the plurality of reels, a stopping position using the random number generator in conjunction with a probability table stored in the memory to vary the odds of a particular stop position being selected” as amended. The Examiner agrees with the assessment that the claims of ‘057 and ‘661, and ‘752 do not recite the subject matter to use a probability table stored in the memory to vary the odds of a particular stop position being selected”. However, after further search and/or consideration Kup-Ferroth (US 2010/0304832 A1) obviates the difference as it discloses the use of a random number generator for wagering game environments to use a probability table stored in memory to vary the odds of a particular stop position being selected as a known technique to control the odds of particular outcomes to thereby control the return to player of the game (see Kup-Ferroth, 0095). For at least these reasons, the double patenting rejection has been maintained below in view of Kup-Ferroth.
With respect to the rejection under 35 USC 101, the Applicant’s representative asserts that the claims are not directed to a grouping of abstract ideas but to a recited technical improvement in the functioning of a computer and/or an improvement to other technology. Specifically, the Applicant’s representative asserts that amended claim 1 is directed to an improvement to the functioning of a computer and/or to other technology or technical field by i) selecting a stopping position “using the random number generator in conjunction with a probability table stored in the memory to vary the odds of a particular stop positions being selected” which enables the gaming system to dynamically form a symbol set that directly constrains reel stop and RTP; ii) “place at least one reel selected into an active state, and at least one reel not selected into an inactive state, based on a game option selected, [and] dynamically allocate stacks of designated symbol positions located at contiguous positions on the reels in the active state to include one or more mystery symbols to increase a probability of the one or more mystery symbols being selected, and on the reel in the inactive state to include one or more default symbols, based on the game option selected and random outcomes generated by a random number generator” which allows players to choose game options that affect the number of active reels and allocation of mystery symbols, providing a customizable gameplay experience, while still reliant on random number generation (see Remarks, pg. 10-12). The Examiner respectfully disagrees. The claims are not similar or found to invoke the guidance provided in Ex Parte Desjardins, Enfish, and/or McRo, but are found to recite rules and/or instructions for managing a wagering reel game, similar to regulated and random number generator games typically found in a casino, that have been found to be analogous to a fundamental economic activity. For instance, as noted above, the use of a random number generator and a probability table stored in memory to vary the odds of a particular stop position being selected is a known technique to control the odds of a particular outcomes to control the return to player for wagering games (see Kup-Ferroth, 0095). Moreover, providing game options selected by the player to determine i) active and inactive reel states, allocate stacks of designated symbol positions located at contiguous positions on the reels in the active state to include one or more mystery symbols to increase a probability of mystery symbols to be selected amount to rules and/or instructions for managing the reel game (see MPEP 2106.04(a)), mere 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)). It follows that the instantly claimed invention is not found to recite an improvement to computer functionality and/or to other technology of field because the claims at best recite to rules and/or instructions of a reel game which does not improve the functioning of the computer and/or by implementing techniques to control the odds of particular outcomes to vary the odds of a particular stop position which is a known technique to one of ordinary skill in the wagering game arts and therefore is not an improvement to the field of electronic wagering games. For at least these reasons, the Applicant’s argument is not persuasive and the rejection 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 and 4-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,749,057 B2, claims 1-20 of U.S. Patent No. 11,120,661 B2 and claims 1-20 of U.S. Patent No. 10,339,752 B2).
The claim chart below, provides a comparison and analysis of the similarities and differences between the independent Claim 1 of the instant application and Claim 1 of the ‘057 Patent. Claims 1-20 of the ‘661 Patent and claims 1-20 of the ‘752 Patent were found to be directed to identical subject matter recited in Claim 1 of the ‘057 Patent.
Claim 1 of the Instant Application
Claim 1 of the ‘057 Patent
Similarities and Differences
A gaming system comprising:
An electronic gaming machine comprising:
Substantially the same
at least one processor and a memory storing a pay table, a plurality of symbols, a plurality of reels with a plurality of symbol positions, and instructions, which, when executed, cause the at least one processor to at least:
a player interface; and a game controller having a processor and a memory, the memory storing a pay table, a plurality of symbols comprising a plurality of default symbols and a plurality of mystery symbols, a plurality of reels, each of the plurality of reels having a plurality of symbol positions and a plurality of states including an active state and an inactive state, and instructions, which, when executed, cause the processor to at least:
Substantially the same
Differences – the instant claims recite a broader embodiment which does not include the particular elements stored in the memory
place at least one reel selected into an active state, and at least one reel not selected into an inactive state, based on a game option selected,
receive through the player interface a game option selected from a plurality of game options, the game option selected renders active at least one of the plurality of reels and renders inactive each of the plurality of reels not selected by the game option selected,
Substantially the same subject matter
Differences – the instant application recites a broader embodiment of the claimed subject matter that does not include the implementation of the player interface
dynamically allocate stacks of designated symbol positions located at contiguous positions on the reels in the active state to include one or more mystery symbols to increase a probability of the one or more mystery symbols being selected, and on the reels in the inactive state to include one or more default symbols, based on the game option selected and random outcomes generated by a random number generator,
allocate dynamically different stacks of designated symbol positions on the plurality of reels, respectively, based on the game option selected, populate the different stacks of designated symbol positions on the plurality of reels that are rendered active with one or more of the plurality of mystery symbols to increase a probability of having the one or more of the plurality of mystery symbols being selected, and on the plurality of reels that are rendered inactive with one or more of the plurality of default symbols based, at least in part, on one or more random outcomes generated by a random number generator,
Substantially similar subject matter regarding the dynamic allocation of stacks and use of mystery symbols to increase a probability and default symbols rendered in the one or more inactive symbol positions
Differences – the instant application recites a broader embodiment of the claimed subject matter of the ‘057 Patent.
determine an outcome formed from a portion of each of the plurality of reels by selecting, for each reel of the plurality of reels, a stopping position using the random number generator in conjunction with a probability table stored in the memory to vary the odds of a particular stop position being selected
control the player interface to display an outcome based on a portion of each of the plurality of reels,
Substantially the same
Differences – the instant application recites a broader embodiment of the claimed invention as it does not recite the player interface to display
and update a win meter according to the outcome.
and update a win meter when the outcome includes a winning outcome.
Substantially the same
The claims of the ‘057 Patent were found to be directed to broader embodiment then the subject matter of Claims 1-20 of the ‘661 Patent and claims 1-20 of the ‘752 Patent. Although the claims at issue are not identical, they are not patentable distinct from each other because the patented claims are directed to substantially the same reel game that includes a plurality of reels with a plurality of symbol positions to place at least one reel selected into an active state, and at least one reel not selected into an inactive state, based on a game option selected, to dynamically allocate stacks of designated symbol positions on the reels in the active state to include oe or more mystery symbols to increase a probability of the one or more mystery symbols being selected, and on the reels in the inactive state to include one or more default symbols, based on the game option selected and random outcomes generated by a random number generator to determine an outcome formed from a portion of each of the plurality of reels. Although the claims contain differences, these differences are obvious as the subject matter such as: “located in contiguous positions” was previously claimed in Claims 4 and 34 of the ‘752 Patent and Claims 5 and 18 of the ‘661 Patent which anticipate the more generic or broader claims now pending (instant Claims 1 and 4-22). Furthermore, the claims of the instant claim further a difference from the ‘057, ‘661, and ‘752 Patents in that they recite “by selecting, for each reel of the plurality of reels, a stopping position using the random number generator in conjunction with a probability table stored in the memory to vary the odds of a particular stop position being selected”. However, Kup-Ferroth (US 2010/0304832 A1) discloses that a symbol selection sequence using random number generator that it is known to use a probability table stored in memory to vary the odds of a particular stop position being selected to control the odds of particular outcomes to thereby control the return to player of the game (see Kup-Ferroth, 0095). It follows that it would have been obvious to one of ordinary skill in the art at the time of filing the application to use known techniques with similar wagering games by selecting for each reel of the plurality of reels, a stopping position using the random number generator with a probability table stored in the memory to vary the odds of particular stop position being selected to one of ordinary skill in the gaming arts. For at least these reasons, claims 1 and 4-22 are not found to be patentably distinct from claims 1-20 of the ‘057 Patent, claims 1-20 of the ‘661 Patent and claims 1-20 of the ‘752 Patent.
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 and 4-22 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 directed to a grouping of abstract idea such as:
1. A gaming system comprising:
at least one processor and a memory storing a pay table, a plurality of symbols, a plurality of reels with a plurality of symbol positions, and instructions, which, when executed, cause the at least one processor to at least:
place at least one reel selected into an active state, and at least one reel not selected into an inactive state, based on a game option selected, -certain method of organizing human activity;
dynamically allocate stacks of designated symbol positions located at contiguous positions on the reels in the active state to include one or more mystery symbols to increase a probability of the one or more mystery symbols being selected, and on the reels in the inactive state to include one or more default symbols, based on the game option selected and random outcomes generated by a random number generator,
determine an outcome formed from a portion of each of the plurality of reels by selecting, for each reel of the plurality of reels, a stopping position using the random number generator in conjunction with a probability table stored in the memory to vary the odds of a particular stop position being selected, -certain method of organizing human activity; and
update a win meter according to the outcome.
The limitations, as underlined above, are found to be a series of steps and/or instructions to manage a reel game which is similar other concepts that have been found to be directed to a certain method of organizing human activity. 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, as exemplified by independent Claim 1, such as: “at least one processor and a memory storing a pay table, a plurality of symbols, a plurality of reels with a plurality of symbol positions, and instructions, which, when executed, cause the at least one processor to at least:” “generated by a random number generator,” “using the random number generator in conjunction with a probability table stored in the memory to vary the odds of a particular stop position being selected” and “update a win meter according to the outcome.” are found to amount to 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 claims, as exemplified by independent Claim 1, are not found to recite additional limitations which 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 element such as: “a gaming system” comprising “at least one processor”, “a memory”, “a random number generator” and “ a win meter” when considered individually and/or as a collection of elements recite highly-generalized components which are invoked as a tool to implement the abstract idea, provide insignificant extra solution activity, and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). The additional elements are found to recite highly-generalize computer components that are invoked to perform the conventional and understood function known to one of ordinary skill in the gaming arts. For instance, Vancura (US 2010/0029381 A1) discloses a conventional gaming machine comprises at least one processor, a memory, a random number generator to generate events, and a player interface includes a win meter that is known to one of ordinary skill in the gaming arts (see Vancura, Fig. 1, 0008, 0037-0040, 0047). Furthermore, Kup-Ferroth (US 2010/0304832 A1) discloses that it is a conventional known technique in the field of wagering reel games to use the random number generator in conjunction with a probability table stored in the memory to vary the odds of a particular stop position being selected (see Kup-Ferroth, 0095). It follows that the additional elements when viewed individually and/or a collection of elements do not amount to significantly more than the abstract idea under Step 2B.
With respect to independent Claims 8 and 14, the independent Claims recite substantially the same subject matter as analyzed above with respect to independent Claim 1. The analysis is incorporated herein. For substantially the same reasons, independent Claims 8 and 14 are found to recite a grouping of abstract ideas without significantly more.
With respect to dependent claims 4-7, 9-13, and 15-22, the additional limitations have been analyzed and were found to further recite at least one of: a limitation directed to a grouping of abstract ideas (see MPEP 2106.04(a)), mere instructions to apply the exception (see MPEP 2106.05(f)), insignificant extra solution activity (see MPEP 2106.05(g)), and/or provide 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 a grouping of abstract ideas 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.
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/RYAN HSU/EXAMINER, Art Unit 3715