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 .
Status of Claims
This office action is in response to arguments and amendments entered on August 14, 2025 for the patent application 18/225,555 originally filed on July 24, 2023. Claims 1, 2, 4, and 5 are amended. Claims 6-20 are new. Claims 1-20 remain pending. The first office action of May 14, 2025 is fully incorporated by reference into this office action.
Response to Amendment
Applicant’s amendments to the claims have been noted by the Examiner.
Applicant has amended the claims to correct the claim language to avoid being indefinite under 35 USC 112(b). Accordingly, the outstanding claim objections are withdrawn by the Examiner.
Applicant’s amendments and arguments are sufficient to overcome the outstanding rejections under 35 USC 103. Therefore, the rejections under 35 USC 103 are withdrawn.
Upon further examination of the claims, new Double Patenting rejections and rejections under 35 USC 101 are applied to the claims in this office action, as set forth below.
Claim Objections
Claims 16-20 are objected to because of the following informalities: typographical errors.
Claim 16 recites the limitation “received zero, one or more signals.” The Examiner reasonably believes this is a typographical error and should be corrected to “receive[[d]] zero, one or more signals.” Appropriate correction is required. Dependent claims 17-20 are also objected to based on their dependencies to claim 16.
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 1-9 and 12-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,551,525. Although the claims at issue are not identical, they are not patentably distinct from each other, as shown in the following comparison chart:
Instant Application
US Patent 11,551,525
1. A video poker apparatus comprising:
a display including a plurality of card positions;
a user interface configured to generate signals in response to inputs from a player to facilitate player participation in poker games;
a memory configured to store a credit amount and at least one deck of virtual playing cards;
a wager input device structured to receive physical items associated with currency values;
a processor coupled to the display, the user interface, the memory, and the wager input device, the processor operable to:
receive a signal indicating receipt of a physical item associated with a currency value;
increase the credit amount stored in the memory based on the currency value associated with the received physical item;
receive a first game initiation signal from the user interface including a first wager amount to initiate a first poker game, the first wager amount deducted from the credit amount stored in the memory;
randomly deal virtual playing cards to the plurality of card positions on the display;
determine whether any of the plurality of card positions are randomly selected to be designated;
mark a designated card position among the plurality of card positions on the display when the designated card position was determined to be randomly selected;
evaluate a first poker hand from the virtual playing cards in the plurality of card positions in the first poker game for first poker awards;
increase the credit amount stored in the memory by any of the first poker awards in the first poker game;
receive a second game initiation signal from the user interface including a second wager amount to initiate a second poker game after any first poker awards in the first poker game have increased the credit amount stored in the memory, the second wager amount deducted from the credit amount stored in the memory;
deal an upgraded virtual playing card to the designated card position on the display;
randomly deal virtual playing cards to any remaining card positions of the plurality of card positions on the display;
evaluate a second poker hand from the virtual playing cards in the plurality of card positions in the second poker game for second poker awards; and
increase the credit amount stored in the memory by any of the second poker awards associated with the second poker hand of the second poker game.
1. A video poker gaming device comprising:
a gaming cabinet having a security lock;
a display housed in the gaming cabinet, the display including a video screen having a poker game play grid of card positions;
a player interface positioned on the gaming cabinet, the player interface including at least one button, the button configured to generate a signal in response to being activated;
a memory housed in the gaming cabinet, the memory configured to store a virtual deck of cards and a credit amount;
a wager input device positioned on the gaming cabinet, the wager input device structured to receive physical items associated with currency values; and
a processor housed in the gaming cabinet, the processor operable to:
receive a signal indicating receipt of a physical item associated with a currency value;
increase the credit amount stored in the memory based on the currency value associated with the received physical item;
receive a first game initiation signal from the player interface including a first wager amount to initiate a first poker game, the first wager amount deducted from the credit amount stored in the memory;
randomly deal a first poker hand from the virtual deck of cards to the card positions of the poker game play grid on the display;
randomly designate zero, one or more of the card positions of the first poker hand as approved for subsequent hand enrichment;
determine if one or more of the card positions were previously designated as approved for subsequent hand enrichment in the first poker game; [this limitation moved up]
evaluate the first poker hand for first poker awards;
increase the credit amount stored in the memory by any first poker awards in the first poker game;
receive a second game initiation signal from the player interface including a second wager amount to initiate a second poker game after any first poker awards in the first poker game have increased the credit amount stored in the memory, the second wager amount deducted from the credit amount stored in the memory;
randomly deal a second poker hand from the virtual deck of cards to the card positions of the poker game play grid on the display;
if one or more of the card positions is determined to be designated as approved for subsequent hand enrichment, assign an enriched card to each of the one or more card positions designated as approved for subsequent hand enrichment;
evaluate the second poker hand for second poker awards; and
increase the credit amount stored in the memory by any second poker awards.
2. The video poker apparatus of Claim 1, wherein the upgraded virtual playing card dealt to the designated card position in the second poker game is a wild card.
5. The video poker gaming device of claim 1, wherein assigning an enriched card to each of the one or more card positions designated as approved for subsequent hand enrichment includes replacing the cards dealt in the second poker game to the one or more designated card positions with wild cards.
3. The video poker apparatus of Claim 2, wherein the wild card is associated with a randomly determined multiplier value.
6. The video poker gaming device of claim 5, wherein the processor is further operable to determine if a random multiplier is to be assigned to each of the wild cards that replace the each of the one or more card positions designated as approved for subsequent hand enrichment in the second poker game.
4. The video poker apparatus of Claim 1, wherein the processor is further operable to: specify a plurality of virtual playing cards to be used in the second poker game when it is determined that at least one of the plurality card positions has been randomly selected to be designated; present the specified plurality of virtual playing cards via the display during the first poker game; and dealing the specified plurality of virtual playing cards in a subset of the plurality of card positions as upgraded virtual playing cards during the second poker game.
2. The video poker gaming device of claim 1, wherein the processor is further configured to visually mark the card positions on the display that were randomly designated for subsequent hand enrichment after dealing the first poker hand.
5. The video poker apparatus of Claim 4, wherein the processor is further operable to specify the plurality of virtual playing cards to be used with the second poker game by presenting, via the display, visual representations of specific virtual playing cards during the first poker game that will be used with the second poker game.
3. The video poker gaming device of claim 2, wherein visually marking the card positions on the display that were randomly designated for subsequent hand enrichment includes visually highlighting the card positions on the display that were randomly designated for subsequent hand enrichment.
6. The video poker apparatus of Claim 1, wherein the first poker game and the second poker game are draw poker games.
11. The video poker gaming device of claim 1, wherein the poker game comprises a draw poker game.
7. The video poker apparatus of Claim 1, wherein the first poker game and the second poker game are stud poker games.
10. The video poker gaming device of claim 1, wherein the poker game comprises a stud poker game.
8. A video poker apparatus comprising:
a display including a plurality of card positions;
a user interface configured to generate signals in response to inputs from a player to facilitate player participation in poker games;
a memory configured to store a credit amount and at least one deck of virtual playing cards;
a wager input device structured to receive physical items associated with currency values;
a processor coupled to the display, the user interface, the memory, and the wager input device, the processor operable to:
receive a signal indicating receipt of a physical item associated with a currency value;
increase the credit amount stored in the memory based on the currency value associated with the received physical item;
receive a first game initiation signal from the user interface including a first wager amount to initiate a first poker game, the first wager amount deducted from the credit amount stored in the memory;
randomly deal virtual playing cards to the plurality of card positions on the display;
determine whether to designate one or more of the card positions on the display;
mark the one or more designated card position among the plurality of card positions on the display when one or more of the plurality of card position were respectively determined to be designated;
evaluate a first poker hand from the virtual playing cards in the plurality of card positions in the first poker game for first poker awards;
increase the credit amount stored in the memory by any of the first poker awards in the first poker game;
receive a second game initiation signal from the user interface including a second wager amount to initiate a second poker game after any first poker awards in the first poker game have increased the credit amount stored in the memory, the second wager amount deducted from the credit amount stored in the memory;
deal one or more upgraded virtual playing cards, respectively, to the one or more designated card positions on the display;
randomly deal virtual playing cards to any remaining card positions of the plurality of card positions on the display;
evaluate a second poker hand from the virtual playing cards in the plurality of card positions in the second poker game for second poker awards; and
increase the credit amount stored in the memory by any of the second poker awards associated with the second poker hand of the second poker game.
1. A video poker gaming device comprising:
a gaming cabinet having a security lock;
a display housed in the gaming cabinet, the display including a video screen having a poker game play grid of card positions;
a player interface positioned on the gaming cabinet, the player interface including at least one button, the button configured to generate a signal in response to being activated;
a memory housed in the gaming cabinet, the memory configured to store a virtual deck of cards and a credit amount;
a wager input device positioned on the gaming cabinet, the wager input device structured to receive physical items associated with currency values; and
a processor housed in the gaming cabinet, the processor operable to:
receive a signal indicating receipt of a physical item associated with a currency value;
increase the credit amount stored in the memory based on the currency value associated with the received physical item;
receive a first game initiation signal from the player interface including a first wager amount to initiate a first poker game, the first wager amount deducted from the credit amount stored in the memory;
randomly deal a first poker hand from the virtual deck of cards to the card positions of the poker game play grid on the display;
randomly designate zero, one or more of the card positions of the first poker hand as approved for subsequent hand enrichment;
determine if one or more of the card positions were previously designated as approved for subsequent hand enrichment in the first poker game; [this limitation moved up]
evaluate the first poker hand for first poker awards;
increase the credit amount stored in the memory by any first poker awards in the first poker game;
receive a second game initiation signal from the player interface including a second wager amount to initiate a second poker game after any first poker awards in the first poker game have increased the credit amount stored in the memory, the second wager amount deducted from the credit amount stored in the memory;
randomly deal a second poker hand from the virtual deck of cards to the card positions of the poker game play grid on the display;
if one or more of the card positions is determined to be designated as approved for subsequent hand enrichment, assign an enriched card to each of the one or more card positions designated as approved for subsequent hand enrichment;
evaluate the second poker hand for second poker awards; and
increase the credit amount stored in the memory by any second poker awards.
9. The video poker apparatus of Claim 8, wherein determining whether to designate one or more of the card positions on the display includes randomly determining whether to designate zero, one, or a plurality of card positions on the display.
1. … randomly designate zero, one or more of the card positions of the first poker hand as approved for subsequent hand enrichment; …
12. The video poker apparatus of Claim 8, wherein the one or more upgraded virtual playing card dealt to the one or more designated card position, respectively, in the second poker game are wild cards.
5. The video poker gaming device of claim 1, wherein assigning an enriched card to each of the one or more card positions designated as approved for subsequent hand enrichment includes replacing the cards dealt in the second poker game to the one or more designated card positions with wild cards.
13. The video poker apparatus of Claim 12, wherein each of the wild cards is associated with a multiplier value.
14. The video poker apparatus of Claim 13, wherein each multiplier value is independently determined at random.
15. The video poker apparatus of Claim 13, wherein the multiplier values are set to be an identical value, where the identical value is determined at random.
6. The video poker gaming device of claim 5, wherein the processor is further operable to determine if a random multiplier is to be assigned to each of the wild cards that replace the each of the one or more card positions designated as approved for subsequent hand enrichment in the second poker game.
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 judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Independent claims 1, 8, and 16 are each directed to “a video poker apparatus” (i.e. a machine), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
However, the claims are drawn to an abstract idea of “identifying positions of card hands that will be accorded heightened value in subsequent games,” either in the form of “certain methods of organizing human activity,” in terms of fundamental economic principles or practices which include hedging (i.e. wagering/gambling), insurance, or mitigating risk, or reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion) which are “performed on a computer” (per MPEP 2106(III)(C) “A Claim That Requires a Computer May Still Recite a Mental Process”).
Regardless, the claims are reasonably understood as either “certain methods of organizing human activity” or “mental processes,” which require the following limitations…
of claim 1:
“receive a first game initiation signal… including a first wager amount to initiate a first poker game, the first wager amount deducted from the credit amount…
randomly deal virtual playing cards to the plurality of card positions…
determine whether any of the plurality of card positions are randomly selected to be designated;
mark a designated card position among the plurality of card positions… when the designated card position was determined to be randomly selected;
evaluate a first poker hand from the virtual playing cards in the plurality of card positions in the first poker game for first poker awards;
increase the credit amount… by any of the first poker awards in the first poker game;
receive a second game initiation signal… including a second wager amount to initiate a second poker game after any first poker awards in the first poker game have increased the credit amount… the second wager amount deducted from the credit amount…
deal an upgraded virtual playing card to the designated card position…
randomly deal virtual playing cards to any remaining card positions of the plurality of card positions…
evaluate a second poker hand from the virtual playing cards in the plurality of card positions in the second poker game for second poker awards; and
increase the credit amount… by any of the second poker awards associated with the second poker hand of the second poker game.”
of claim 8:
“receive a first game initiation signal… including a first wager amount to initiate a first poker game, the first wager amount deducted from the credit amount…
randomly deal virtual playing cards to the plurality of card positions…
determine whether to designate one or more of the card positions…
mark the one or more designated card position among the plurality of card positions… when one or more of the plurality of card position were respectively determined to be designated;
evaluate a first poker hand from the virtual playing cards in the plurality of card positions in the first poker game for first poker awards;
increase the credit amount… by any of the first poker awards in the first poker game;
receive a second game initiation signal… including a second wager amount to initiate a second poker game after any first poker awards in the first poker game have increased the credit amount… the second wager amount deducted from the credit amount…
deal one or more upgraded virtual playing cards, respectively, to the one or more designated card positions…
randomly deal virtual playing cards to any remaining card positions of the plurality of card positions…
evaluate a second poker hand from the virtual playing cards in the plurality of card positions in the second poker game for second poker awards; and
increase the credit amount… by any of the second poker awards associated with the second poker hand of the second poker game.”
and of claim 16:
“receive a first game initiation signal… including a first wager amount to initiate a first poker game, the first wager amount deducted from the credit amount…
randomly deal virtual playing cards to the first plurality of card positions… to form a first dealt poker hand;
…indicating cards to be held within the first dealt poker hand;
copy any cards held from the first dealt poker hand to respective ones of the second plurality of card positions in the second poker hand;
…draw virtual playing cards;
replace any virtual playing cards in the first dealt poker hand that were not held by randomly selecting replacement virtual playing cards to form a first final poker hand;
randomly select virtual playing cards to fill in any remaining ones of the second plurality of card positions in the second poker hand that are not associated with virtual playing cards copied from the first dealt poker hand to form a second final poker hand;
determine whether to designate one or more of the first plurality of card positions… to form one or more designated card positions and mark the one or more designated card positions…
evaluate the first final poker hand and the second final poker hand in the first poker game for first poker awards;
increase the credit amount… by any of the first poker awards in the first poker game;
receive a second game initiation signal… including a second wager amount to initiate a second poker game after any first poker awards in the first poker game have increased the credit amount… the second wager amount deducted from the credit amount…
deal one or more upgraded virtual playing cards, respectively, to the one or more designated card positions…
randomly deal virtual playing cards to any remaining ones of the first plurality of card positions… to form a second dealt poker hand;
…indicating cards to be held within the second dealt poker hand;
copy any cards held from the second dealt poker hand to respective ones of the second plurality of card positions in the second poker hand;
…draw virtual playing cards;
replace any virtual playing cards in the second dealt poker hand that were not held by randomly selecting replacement virtual playing cards to form a third final poker hand;
randomly select virtual playing cards to fill in any remaining ones of the second plurality of card positions in the second poker hand that are not associated with virtual playing cards copied from the second dealt poker hand to form a fourth final poker hand;
evaluate the third final poker hand and the fourth final poker hand from the virtual playing cards in the plurality of card positions in the second poker game for second poker awards; and
increase the credit amount… by any of the second poker awards associated with the second poker hand of the second poker game.”
These limitations simply describe a process of data gathering and manipulation, which is partially analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Furthermore, the claims do not include additional elements that either alone or in combination are sufficient to claim a practical application because to the extent that, e.g., “a video poker apparatus,” “a display,” “a user interface,” “a memory,” “a wager input device,” and “a processor” are claimed, as these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering) and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In other words, the claimed “identifying positions of card hands that will be accorded heightened value in subsequent games,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., “a video poker apparatus,” “a display,” “a user interface,” “a memory,” “a wager input device,” and “a processor” are claimed these are all generic, well-known, and conventional computing elements. As evidence that these are generic, well-known, and conventional computing elements, Applicant’s specification discloses them in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a), which satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “a video poker apparatus” is shown in FIG. 17B and described in paragraph [0202] of the publication as including “the display 1702, user interface 1706 and user input 1708, wager input device 1710, and processor 1712.” A memory, though not explicitly listed in the quoted passage from paragraph [0202], is an inherent element required for a computing device to function. With the exception of the “wager input device,” all of these elements are conventional components of generic computing devices.
A “wager input device,” though not a generic computer component, has long been a conventional component of generic gaming machines. For example, US Patent Publication 2002/0045474 (published in 2002) recites in paragraph [0026], “On the interior of the gaming machine 10 are the computer controls that operate the gaming machine as well as the other conventional hardware used in a gaming machine such as the coin hopper, the video monitor hardware, the wiring harness, the coin validator, the bill acceptor equipment and other suitable devices used to make the gaming machine 10 operational.” As another example, US Patent Publication 2004/0147308 (published in 2004), paragraph [0282] discloses, “With respect to gaming operations, the slot machine 102 operates in a conventional manner. The player starts the machine 102 by inserting a coin into coin acceptor 248, or using electronic credit, and pressing the starting controller 222. Under control of a program stored, for example in a data storage device 224 or ROM 216, the CPU 210 initiates the RNG 220 to generate a number. The CPU 210 looks up the generated random number in a stored probability table 226, which contains a list which matches random numbers to corresponding outcomes, and finds the appropriate outcome. Based on the identified outcome, the CPU 210 locates the appropriate payout in a stored payout table 228. The CPU 210 also directs a reel controller 230 to spin reels 232, 234, 236 and to stop them at a point when they display a combination of symbols corresponding to the appropriate payout. When the player wins, the machine stores the credits in RAM 218 and displays the current balance in video display area 238. In an alternate embodiment, the slot machine 102 dispenses the coins to a payout tray (not shown), and in another embodiment, the slot network server 106 stores the player credits.” These two examples show that at least prior to 2004, certain claimed elements of Applicant’s invention such as the wager input device, physical items associated with currency values, and credit amounts stored in memory, were conventional components of generic gaming devices such as Applicant’s “video poker apparatus.”
All of the above-described elements are reasonably interpreted as generic computer or gaming device components, which provides no details of anything beyond ubiquitous standard equipment. As such, the claimed limitations are reasonably understood as not providing anything significantly more. Therefore, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-7, 9-15, and 17-20 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-7, 9-15, and 17-20 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to independent claims 1, 8, and 16.
Therefore, claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Response to Arguments
The Applicant’s arguments filed on August 14, 2025 have been fully considered.
The Applicant respectfully argues, “all three cited references of Moody, Schultz, and Campagno teach poker game features that occur within a single poker game. None of these references, either taken alone or in combination with the other references, teach a poker feature that spans from a first poker game to a separate second poker game which are each separately played and wagered on.”
Upon careful consideration of Applicant’s arguments, the Examiner agrees. Therefore, the outstanding prior art rejections under 35 USC 103 are withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Stephen Alvesteffer whose telephone number is (571)272-8680. The examiner can normally be reached M-F 8:00-6:00.
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/STEPHEN ALVESTEFFER/Examiner, Art Unit 3715