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 April 20, 2026 for the patent application 18/225,555 originally filed on July 24, 2023. Claims 1-20 are amended. Claims Claims 1-20 remain pending. The first office action of May 14, 2025 and the second office action of November 18, 2025 are 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 claim 16 to correct a minor informality. Accordingly, the outstanding claim objections are withdrawn by the Examiner.
Applicant’s amendments are not sufficient to overcome the outstanding Double Patenting rejections, for reasons set forth below.
The Applicant’s amendments to the claims are sufficient to overcome the outstanding 35 USC 101 rejections. Therefore, the 35 USC 101 rejections are withdrawn.
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 gaming machine configured to provide games of chance in response to the placement of wagers, the video poker gaming machine comprising:
a physical gaming cabinet having one or more security locks;
a display mounted to the cabinet, the display including a plurality of card positions;
a user interface device attached to the cabinet and configured to generate signals in response to inputs from a player to facilitate player participation in poker games;
a memory housed inside the cabinet and configured to store a credit amount and at least one deck of virtual playing cards;
a random number generator housed inside the cabinet;
a wager input device mounted to the cabinet and structured to receive physical items associated with currency values;
a processor housed inside of the cabinet and coupled to the display, the user interface, the memory, the random number generator, 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 based on random values provided by the random number generator;
determine whether any of the plurality of card positions are randomly selected, based on random values provided by the random number generator, 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 based on random values provided by the random number generator;
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;
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]
randomly designate zero, one or more of the card positions of the first poker hand as approved for subsequent hand enrichment;
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 gaming machine 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 gaming machine of Claim 2, wherein the wild card is associated with a randomly determined multiplier value based on random values provided by the random number generator.
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 gaming machine 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 based on random values provided by the random number generator; 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 gaming machine 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 gaming machine 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 gaming machine 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 gaming machine configured to provide games of chance in response to the placement of wagers, the video poker gaming machine comprising:
a physical gaming cabinet having one or more security locks;
a display mounted to the cabinet, the display including a plurality of card positions;
a user interface device attached to the cabinet and configured to generate signals in response to inputs from a player to facilitate player participation in poker games;
a memory housed inside the cabinet and configured to store a credit amount and at least one deck of virtual playing cards;
a random number generator housed inside the cabinet;
a wager input device mounted to the cabinet and structured to receive physical items associated with currency values;
a processor housed inside of the cabinet and coupled to the display, the user interface, the memory, the random number generator, 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 based on random values provided by the random number generator;
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 based on random values provided by the random number generator;
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 gaming machine of Claim 8, wherein determining whether to designate one or more of the card positions on the display includes randomly determining, based on random values provided by the random number generator, 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 gaming machine 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 gaming machine of Claim 12, wherein each of the wild cards is associated with a multiplier value.
14. The video poker gaming machine of Claim 13, wherein each multiplier value is independently determined at random based on random values provided by the random number generator.
15. The video poker gaming machine of Claim 13, wherein the multiplier values are set to be an identical value, where the identical value is determined at random based on random values provided by the random number generator.
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.
Response to Arguments
Applicant’s arguments regarding the outstanding rejection under 35 USC 101 have been carefully considered. The claims are directed to a video poker gaming machine having a physical gaming cabinet with one or more security locks, with display mounted to the cabinet, computing elements housed inside the cabinet, and a wager input device mounted to the cabinet. Taken together, these elements form a device that is not merely a generic computer. Therefore, the rejection under 35 USC 101 is withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Basallo et al. (US 9,881,460) Gaming system and method providing a bonus opportunity when a designated relationship exists between a plurality of randomly determined elements
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 Stephen Alvesteffer whose telephone number is (571)272-8680. The examiner can normally be reached M-F 8:00-6:00.
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, Peter Vasat can be reached at 571-270-7625. 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.
/SA/Examiner, Art Unit 3715
/PETER S VASAT/Supervisory Patent Examiner, Art Unit 3715
Prosecution Insights