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 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 abstract idea without significantly more.
The claim(s) recite(s) “A gaming system comprising: a processor; and a memory device that stores a plurality of instructions, which when executed by the processor, cause the processor to: cause a display, by a display device, of reels having different symbols on the reels; cause a display, by the display device, of the reels spinning; cause a display, by the display device, of the reels stopped after spinning; cause a display, by the display device, of the reels displaying a reel replacement and reel shifting sequence triggering event; and cause a display, by the display device, of a reel replacement and reel shifting sequence that comprises a quantity of sub-sequences, the quantity of sub-sequences being at least one, wherein each sub-sequence comprises: a display, by the display device, of a removal of one of the reels, a display, by the display device, of shifting of a plurality of the reels other than the reel that is removed for the sub-sequence, a display, by the display device, of a replacement reel, a display, by the display device, of the shifted plurality of the reels held stationary and of the replacement reel spinning and stopping, a display, by the display device, of an indication of any winning symbol combinations on the replacement reel and the shifted plurality of reels, and a display, by the display device, of an indication of either a continuation of the reel replacement and reel shifting sequence comprising a further sub-sequence or an indication of a termination of the reel replacement and reel shifting sequence.” (Claim 1); “A gaming system comprising: a processor; and a memory device that stores a plurality of instructions, which when executed by the processor, cause the processor to: cause a display, by a display device, of reels having different symbols on the reels; cause a display, by the display device, of the reels spinning; cause a display, by the display device, of the reels stopped after spinning; cause a display, by the display device, of the reels displaying a reel replacement and reel shifting sequence triggering event; and cause a display, by the display device, of a reel replacement and reel shifting sequence that comprises a first quantity of sub-sequences, the first quantity of sub-sequences being at least equal to the quantity of reels, wherein each of the first quantity of sub-sequences comprises: a display, by the display device, of a removal of one of the reels, a display, by the display device, of shifting of a plurality of the reels other than the reel that is removed for the sub-sequence, a display, by the display device, of a replacement reel, a display, by the display device, of the shifted plurality of the reels held stationary and of the replacement reel spinning and stopping, and a display, by the display device, of an indication of any winning symbol combinations on the replacement reel and the shifted plurality of reels, wherein after the first quantity of sub-sequences, all of the reels have been removed and replaced with replacement reels.” (Claim 10); and “A gaming system comprising: a processor; and a memory device that stores a plurality of instructions, which when executed by the processor, cause the processor to: cause a display, by a display device, of reels having different symbols on the reels; cause a display, by the display device, of the reels spinning; cause a display, by the display device, of the reels stopped after spinning; cause a display, by the display device, of the reels displaying a first reel replacement and reel shifting sequence triggering event and a second replacement and reel shifting sequence triggering event; and cause a simultaneous display, by the display device, of a first reel replacement and reel shifting sequence that comprises a first quantity of first sub-sequences, the first quantity of first sub-sequences being at least one, and a second reel replacement and reel shifting sequence that comprises a second quantity of second sub-sequences, the second quantity of second sub-sequences being at least one, wherein the display, by the display device, for a first one of the first sub-sequences and a first one of the second sub-sequences, of comprises: a display, by the display device, of a removal of one of the reels, a display, by the display device, of shifting of a plurality of the reels other than the reel that is removed, a display, by the display device, of a replacement reel, a display, by the display device, of the shifted plurality of the reels held stationary and of the replacement reel spinning and stopping, and a display, by the display device, of an indication of any winning symbol combinations on the replacement reel and the plurality of shifted reels.” (Claim 15). Each of the above underlined portions are related to Certain Methods of Organizing Human Activity (managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions for a game)). Such limitations, as drafted, is a simple process that, under its broadest reasonable interpretation, covers game rules or game instructions for shifting, removing, and/or replacing reels to determine game outcomes but for the recitation of a “system”, “processor”, “memory device”, and/or “display device”. That is, other than reciting a “system”, “processor”, “memory device”, and/or “display device”, nothing in the claims precludes the concepts from being performed via managing personal behavior or relationships or interactions between people (interactions encompass both activity of a single person (for example a person following set instructions) and activity that involves multiple people (such as commercial or legal interactions); thus, some interactions between a person and a computer (for example a method of anonymous load shopping that person conducts using a mobile phone) may fall within this grouping) including rules or interactions (particularly, game rules or instructions for shifting, removing, and/or replacing reels to determine game outcomes). Although the claims recite the limitations in steps of displaying, the claims recite rules for shifting, removing, and/or replacing reels to determine game outcomes which is an organization of human activity. The display steps occur to provide a game sequence determined by instructions or rules e.g. the display steps encompass the abstract idea.
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (particularly the technological environment of a gaming device and/or gaming system) (MPEP 2106.05 (h)).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of a “system”, “processors”, “memory device”, and/or “display device” are recited at a level of generality and are merely invoked as tool to perform the used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility (the use of a computing device and/or generic components is merely illustrating the environment in which the abstract idea is practiced). These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. Taking the physical elements individually and in combination, the computer-based components perform purely generic computer-based functions that are silent in regards to clearly indicating how a computer aids the system and/or the extent to which a computer performs/implements the system. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer, ’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
It is settled law that adding physical elements to an abstract idea will not amount to an “inventive concept" if the physical elements are well-known, routine and conventional elements and they perform their well-known, routine and conventional functions. TLI Communications LLC v. AV Automotive, L.L.C. (Fed Cir 2016):
Turning to the second step in our analysis, we find that the claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294). We agree with the district court that the claims’ recitation of a “telephone unit,” a “server”, an “image analysis unit,” and a “control unit” fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability. (Emphasis added by Examiner.)
On the question of preemption, the Federal Circuit has stated in Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015):
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of DNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
Nor do the dependent claims 2-9, 11-14, and 15-20 add “significantly more” since they merely add to the claimed concepts relating to managing personal behavior or relationships or interactions between people including following rules or instructions (particularly, game rules or instructions) under the grouping of Certain Methods of Organizing Human Activity. The dependent claims failing to place the claimed invention into a practical applicant or additional generic components of the dependent claims failing to amount to “significantly more” for the same reasons noted above.
Consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claim are not patent-eligible under 35 USC §101.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 8-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Caputo (US 2014/0256402).
Claim 1: Caputo discloses a gaming system comprising: a processor; and a memory device that stores a plurality of instructions, which when executed by the processor, cause the processor (¶ 104-106, 115-117, Claim 1) to: cause a display, by a display device, of reels having different symbols on the reels (Fig. 2a, ¶ 30); cause a display, by the display device, of the reels spinning (Fig. 2b, ¶ 31); cause a display, by the display device, of the reels stopped after spinning (Fig. 2c, ¶ 32-33); cause a display, by the display device, of the reels displaying a reel replacement and reel shifting sequence triggering event (Fig. 2c, ¶ 32-33); and cause a display, by the display device, of a reel replacement and reel shifting sequence that comprises a quantity of sub-sequences, the quantity of sub-sequences being at least one, wherein each sub-sequence comprises: a display, by the display device, of a removal of one of the reels (Fig. 2d, ¶ 34), a display, by the display device, of shifting of a plurality of the reels other than the reel that is removed for the sub-sequence (Fig. 2e, ¶ 35), a display, by the display device, of a replacement reel (Fig. 2f, ¶ 36), a display, by the display device, of the shifted plurality of the reels held stationary and of the replacement reel spinning and stopping (Fig. 2g, ¶ 37), a display, by the display device, of an indication of any winning symbol combinations on the replacement reel and the shifted plurality of reels (Fig. 2h-2i, ¶ 38-40 ), and a display, by the display device, of an indication of either a continuation of the reel replacement and reel shifting sequence comprising a further sub-sequence or an indication of a termination of the reel replacement and reel shifting sequence (Figs. 2j-n, ¶ 40-45).
Claim 8: Caputo discloses wherein the plurality of instructions, when executed by the processor, cause the processor to cause for a subsequent one of the sub-sequences, a display, by the display device, of the replacement reel (210f) from a previous one of the sub-sequences to be shifted and held stationary for the subsequent one of the sub-sequences (see above, Fig. 2e-2m, ¶ 35-45).
Claim 9: Caputo discloses wherein the plurality of instructions, when executed by the processor, cause the processor to cause for a subsequent one of the sub-sequences, a display, by the display device, of the replacement reel from a previous one of the sub-sequences to being removed for the subsequent one of the sub-sequences and replaced by a further replacement reel (see above, Fig. 2a-2m, ¶ 30-45, 49, for example if 3 reels are removed in the first sub-sequence (¶ 49), the 3 leftmost reels are removed the 2 right most reels are shifted from left to right and the 3 rightmost reel positions are replaced with 3 new reels. Furthermore, upon a subsequent one of the sub-sequences the replacement reel from the previous one of the sub-sequences would be replaced by a further replacement reel e.g. for example the middle reel (which is a replacement reel in the initial/first sub-sequence) is replaced by another replacement real due to another 3 removed/3 added real modification event).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Caputo (US 2014/0256402).
Claim 2: Caputo teaches the above, but fails to disclose wherein the plurality of instructions, when executed by the processor, cause the processor to cause: the display, by the display device, of the removal of one of the reels to be a rightmost one of the reels, the display, by the display device, of shifting of the plurality of the reels other than the reel that is removed to be a shifting of said plurality of the reels in a right direction, and the display, by the display device, of the replacement reel to be a left most reel. Caputo discloses, wherein the plurality of instructions, when executed by the processor, cause the processor to cause: the display, by the display device, of the removal of one of the reels to be a leftmost one of the reels, the display, by the display device, of shifting of the plurality of the reels other than the reel that is removed to be a shifting of said plurality of the reels in a left direction, and the display, by the display device, of the replacement reel to be a right most reel (Figs. 2a-2j, ¶ 30-41). However, Caputo fails to disclose wherein the plurality of instructions, when executed by the processor, cause the processor to cause: the display, by the display device, of the removal of one of the reels to be a rightmost one of the reels, the display, by the display device, of shifting of the plurality of the reels other than the reel that is removed to be a shifting of said plurality of the reels in a right direction, and the display, by the display device, of the replacement reel to be a left most reel. However, applicant fails to the removal of one of the reels to be a rightmost one of the reels, the shifting of the plurality of the reels other than the reel that is removed to be a shifting of said plurality of the reels in a right direction, and the replacement reel to be a left most reel e.g. the direction of shifting and/or which specific reels are removed or replaced solves any stated problem, provides an advantage, or is for any particular purpose. Moreover, it appears that the removal of one of the reels to be a leftmost one of the reels, the shifting of the plurality of the reels other than the reel that is removed to be a shifting of said plurality of the reels in a left direction, and the replacement reel to be a right most reel of Caputo, or applicant’s invention, would perform the same function of removing reels, shifting reels, and replacing reels, regardless of the direction of shifting and/or what specific reels that are removed and/or replaced. Therefore, it would have been prima facie obvious to modify Caputo to obtain the invention as specified in claim 2 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Caputo.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Caputo (US 2014/0256402) in view of Schultz (US 2011/0312400).
Claim 3: Caputo teaches the above, but lacks explicitly suggesting wherein the plurality of instructions, when executed by the processor, cause the processor to cause the replacement reel to comprise one or more instances of only one symbol. Caputo at least teaches that various modifications can be made without departing from the overall scope of the invention (¶ 145). Furthermore, an analogous art of Shultz teaches replacement reels that comprise one or more instances of only one symbol (wild)(¶ 8, 28-30). It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to have modified the replacement reel of Caputo to comprise one or more instances of only one symbol at taught by Schulz to provide players with enhanced excitement and an increased opportunity of winning (¶ 11).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Caputo (US 2014/0256402) in view of Yoshizawa (US 2010/0304836).
Claim 4: Caputo teaches the above, but lacks explicitly suggesting wherein the reel replacement and reel shifting sequence triggering event comprises a winning symbol combination displayed on the reels. Caputo at least teaches wherein the reel replacement and reel shifting sequence triggering event can be any suitable event (¶ 50); comprises a symbol displayed on one or more reels (¶ 24-25, 30, 32-33, 50); and that various modifications can applied without departing from the overall scope of the invention (¶ 145). Furthermore, an analogous art of Yoshizawa teaches triggering event can comprise a winning symbol combination displayed on the reels (¶ 115, 173, 331). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the triggering event of Caputo to include a winning symbol combination displayed on the reels as taught by Yoshizawa because such a modification would have yielded predictable results, namely, a means of triggering an event in which at least Caputo is intended (see above). Such a modification provides a game with new entertainment properties (Yoshizawa - ¶ 7).
Best Applicable Prior Art
In regards to Claims 10, Caputo (US 2014/0256402) teaches a gaming system comprising: a processor; and a memory device that stores a plurality of instructions, which when executed by the processor, cause the processor (¶ 104-106, 115-117, Claim 1) to: cause a display, by a display device, of reels having different symbols on the reels; cause a display, by the display device, of the reels spinning; cause a display, by the display device, of the reels stopped after spinning; cause a display, by the display device, of the reels displaying a reel replacement and reel shifting sequence triggering event; and cause a display, by the display device, of a reel replacement and reel shifting sequence that comprises a first quantity of sub-sequences, the first quantity of sub-sequences being at least equal to the quantity of reels, wherein each of the first quantity of sub-sequences comprises: a display, by the display device, of a removal of one of the reels, a display, by the display device, of shifting of a plurality of the reels other than the reel that is removed for the sub-sequence, a display, by the display device, of a replacement reel, a display, by the display device, of the shifted plurality of the reels held stationary and of the replacement reel spinning and stopping, and a display, by the display device, of an indication of any winning symbol combinations on the replacement reel and the shifted plurality of reels (Figs. 2a-n, ¶ 30-46).
Caputo teaches the above, but fails to teach or render obvious wherein after the first quantity of sub-sequences, all of the reels have been removed and replaced with replacement reels. Such limitations in combination not being obvious without undue hindsight reasoning.
In regards to Claims 15, Caputo (US 2014/0256402) teaches a gaming system comprising: a processor; and a memory device that stores a plurality of instructions, which when executed by the processor, cause the processor (¶ 104-106, 115-117, Claim 1) to: cause a display, by a display device, of reels having different symbols on the reels; cause a display, by the display device, of the reels spinning; cause a display, by the display device, of the reels stopped after spinning; cause a display, by the display device, of the reels displaying a first reel replacement and reel shifting sequence triggering event and a second replacement and reel shifting sequence triggering event; and (Figs. 2a-n, ¶ 30-46).
Caputo teaches the above, but fails to teach or render obvious cause a simultaneous display, by the display device, of a first reel replacement and reel shifting sequence that comprises a first quantity of first sub-sequences, the first quantity of first sub-sequences being at least one, and a second reel replacement and reel shifting sequence that comprises a second quantity of second sub-sequences, the second quantity of second sub-sequences being at least one, wherein the display, by the display device, for a first one of the first sub-sequences and a first one of the second sub-sequences, of comprises: a display, by the display device, of a removal of one of the reels, a display, by the display device, of shifting of a plurality of the reels other than the reel that is removed, a display, by the display device, of a replacement reel, a display, by the display device, of the shifted plurality of the reels held stationary and of the replacement reel spinning and stopping, and a display, by the display device, of an indication of any winning symbol combinations on the replacement reel and the plurality of shifted reels. Such limitations in combination not being obvious without undue hindsight reasoning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAMAR HARPER whose telephone number is (571)272-6177. The examiner can normally be reached 7:30am to 5:30pm.
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, Kang Hu can be reached at (571) 270-1344. 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.
/TRAMAR HARPER/Primary Examiner, Art Unit 3715