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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/15/26 has been entered.
Claim Status
Claims 1, 4-17, and 19-23 are pending. Claims 1, 8, and 14 have been amended and claim 23 has been newly added. Claims 18 has been cancelled and claims 2-3 were previously cancelled.
Response to Arguments
Applicant's arguments filed 6/15/26 have been fully considered but they are not persuasive. The Applicant’s representative presents arguments to address the rejections under obvious-type double patenting and 35 USC 101 (see Remarks, pg. 10-14). The arguments are addressed in the sections below.
Response to arguments to the Double Patenting rejection
The Applicant’s representative argues that the claims are not anticipated or been obvious over the reference claims because independent Claims 1, 8, and 14 each recite “a mystery symbol selector” and a “outcome generator” that use specific processor elements that are not obvious to one of ordinary skill in the art (see Remarks, pg. 9). The Examiner respectfully disagrees. As is consistent with the Specification, these elements are not directed to specific processor elements but merely recite software for implementing rules and/or instructions for managing a symbol game. The claims of the ’057 Patent, ‘661 Patent, and ‘752 patent recite a game controller that causes a processor to execute instructions stored in memory to perform the recited rules and/or instructions for the symbol game to select a mystery symbol and generate an outcome. It is understood in the art that if one of ordinary skill were to have the system and memory storing instructions then they would have the anticipated and/or obviated the software to perform the operations of the game. It follows, the Applicant’s argument is not persuasive and the elements of a “a mystery symbol selector” and “an outcome generator” recite subject matter that would not have been obvious to one of ordinary skill in the gaming arts at the time of filing the application. For at least these reasons, the obvious-type double patenting rejection has been maintained below.
Response to arguments under 35 USC 101
The Applicant’s representative argues that the claims are not directed to ineligible subject matter under 35 USC 101 (see Remarks, pg. 10-14). The Applicant’s representative argues that the claims are directed to an improvement to an improved gaming system architecture that dynamically constructs and processes symbol sets using “memory-resident data structure and coordinate controller modules, enabling flexible and efficient generation of game outcomes that improve upon “static reel configurations as is typical in conventional systems” (see Remarks, pg. 11). Specifically, the Applicant’s representative argues that the claims are similar to Enfish as they describe a software that makes a “non-abstract improvement to computer technology” that is an improvement to computer functionality as opposed to the abstract idea because they recite “a specific, structured gaming system in which the processor to “use a symbols set former to dynamically allocate stacks of designated symbol positions at continuous positions on the reels in the active state to include one or more mystery symbols….and on the reels in the inactivate state to include one or more default symbols…based on the game option selected and random outcomes generated by a random number generator” (see Remarks, pg. 10-11). The Examiner respectfully disagrees. The claims recite steps and./or instructions to form stacks of symbol in a symbol set, a rule and/or instruction to increase a probability of the one or more mystery symbols and an outcome generator to select and stop a reel position to determine an outcome using a random number generator to vary the odds. These elements do not recite a specific, structured gaming system but is directed to a conventional gaming system that utilizes game software to perform the desired functionality of determining an outcome of the symbol game. For instance, a review of the cited portions of the Specification provide a conclusory statement as to the desired functional result of the recited software components but does provide any details as to how the interrelationship of these elements. In contrast, the Specification indicates that the claimed invention relies merely on general purpose functions of executing software instructions to achieve the recited desired result. It follows that the claims of the instant application are not analogous to the findings in Enfish as the Specification fails to provide adequate details as to how a solution to a technical problem is achieved that itself is an improvement to the functioning of the computer. In contrast, the facts indicate that the claimed subject matter recites managing a symbol game outcome in accordance to rules and/or instructions of the game to satisfy regulatory requirements associated with games of chance (e.g., to vary odds using a random number generator) that does not integrate the claim into a practical application and/or significantly more but is directed to the abstract idea itself. Moreover, when additional elements are viewed individually and/or as whole, the claims are not found to integrate the claim into a practical application because managing a symbol game, a type of game of chance, applied on a gaming system is analogous to a common place business method being applied on a computer as was found ineligible in Alice v. CLS. Additionally, displaying and presenting an outcome of the game on reels amounts to arranging transactional information using a graphical user interface to view progress of the game is not an improvement to display technology or a different field (see MPEP 2106.05(a) I- II).
Secondly, the Applicant’s representative argues that the “symbol set former”, “mystery symbol selector of the symbol set former” reflect selection logic. The Examiner respectfully disagrees. The elements as recited are viewed as rules and/or instructions for managing the symbol game. The recitation of these elements are not found to recite a particular data transformation pipeline but merely a desired result using general functions of a computer to implement the game that is not found to be an improvement to the functioning of a computer but to the abstract idea itself. For at least these reason, the applicant’s argument is not persuasive.
Thirdly, the Applicant’s representative argues that the recitation of the elements of “a symbol set former”, “a mystery symbol selector” and “an outcome generator” is an improvement pipeline that recites the use of particular controller components that is not directed to an abstract idea but a specific structural arrangement of a data-driven architecture for dynamically constructing and processing symbol sets using coordinate controller components. The Examiner respectfully disagrees. A review of the cited portions of the Specification, indicate that purported particular controller components, recite a general statement of the desired result of these software components. However, the Examiner notes that the Specification fails to recite the particulars of these processing components with sufficient detail that would indicate to one of ordinary skill in the art how to achieve the claimed functionality. In particular, a review of the Specification fails to provide any algorithm and/or necessary steps to be performed that would indicate to one of ordinary skill in the art that the recited invention is directed to a specific technological mechanism that improves the functioning of the gaming system. In contrast, the claims recite components of the gaming system performing general and/or ordinary functions to implement rules and/or instructions for determining an outcome in the symbol game. It follows that when viewed individually and/or as a collection of elements, they do not recite a particular machine performing a specific implements that improves the functioning of the gaming system but merely recites 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 in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). For at least these reasons, the Applicant’s argument is not persuasive and the rejection under 35 USC 101 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
use a symbol set former to 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 by a mystery symbol selector of the symbol set former, 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.
The claims of the instant application additionally recite “use symbol set former” and “by a mystery symbol selector” to perform a desired result of software which is analogous to instructions executed on a processor as recited in the ‘057 patent
use an outcome generator to 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.
The claims of the instant application additional recite “use of an outcome generator” which recites result oriented result of software which is analogous to instructions executed on a processor as recited in the ‘057 patent
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 or 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 4-17, and 19-23). 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). Additionally, the claims of the instant application recite software elements to perform the instructions recited by the Patents. These differences are not patentably distinct as if one had the system and memory instructions to perform the symbol game they would also have the software including software components to perform the functions of the symbol game. 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 4-17, and 20-23 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;
use a symbol set former to 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 by a mystery symbol selector of the symbol set former, 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,
use an outcome generator to 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-generalized 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, 4-17, and 20-23 are found to recite a grouping of abstract ideas without significantly more.
Conclusion
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/RYAN HSU/EXAMINER, Art Unit 3715
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