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 .
Response to Amendment
This is in response to the amendments filed on 4/2/26. Claims 1, 10, and 20 have been amended. Claims 1 – 20 are pending in the current application.
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 – 17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1: It must be determined whether the invention falls in one of the four statutory categories of invention. Claims 1 - 20 are directed towards a system, (machine), which is a statutory category of invention.
A system, comprising: a processor; and memory coupled with the processor and storing instructions thereon that, when executed by the processor, cause the processor to: determine, while a player is interacting with a gaming machine to engage in a primary game of chance funded by a wager, that the player has earned an upgrade symbol generated from an outcome of the primary game of chance, the upgrade symbol categorized according to a type of symbol for use in a skill-based bonus game, wherein the primary game of chance produces a plurality of different upgrade symbols that provide a different additional skill-based feature in the skill-based bonus game; store information indicating that the player has earned the upgrade symbol and is entitled to use the upgrade symbol in an event that the skill-based bonus game is unlocked; determine a type of skill-based feature associated with the upgrade symbol collected from the primary game of chance, wherein the type of skill-based feature associated with the upgrade symbol enhances player control of a quantifiable skill-based input during the skill-based bonus game; determine that the player has unlocked the skill-based bonus game and, in response thereto, execute the skill-based bonus game according to the outcome of the primary game of chance; during execution of the skill-based bonus game, determine that the player is entitled to use the upgrade symbol; and during execution of the skill-based bonus game, provide the player with an ability to access gameplay functionality associated with the upgrade symbol to enhance the player control of the quantifiable skill-based input by enabling an additional skill-based feature in the skill-based bonus game not otherwise available to the player in the skill-based bonus game without using the upgrade symbol, wherein the additional skill- based feature corresponds to the type of skill-based feature associated with the upgrade symbol collected from the primary game of chance.
The abstract idea is defined by the underlined portions exemplary claim 1, with substantially similar features found in claims 10 and 20. Dependent claims 2 – 9 and 11 - 19 further define the abstract idea or relate to the implementation of the abstract idea. The abstract idea is defined in at least the following grouping below:
Certain methods of organizing human activity (exchanging financial obligations)
Mental processes (observation, evaluation, judgment)
The claims are directed towards an abstract idea of a method of exchanging financial obligations which falls into the category of organizing human activity, (See MPEP 2106/04(a)(2)(II)(C)). More specifically, the claimed invention recites a gaming system comprising a set of reels and gaming symbols, that provides a game to a player, wherein the game represents the exchange of consideration based on probabilities created during the dealing and displaying of randomly displayed symbol outcomes. Controlling a game that allows a player to participate represents exchanging financial obligations. Furthermore, the claims are drawn to how a game is played, which represents following rules/instructions that define how the game is conducted.
The claims are also directed towards a series of steps which can practically be performed by one or more human, which fall into the category of mental processes, (See MPEP 2106.04(a)(2)(III)). More specifically, the claimed invention recites a game, wherein the claims require displaying game symbols and determining results of plays of a game. The claims recite instructions for controlling a game with these features. Here, a human can observe the displaying of game symbols and determine an outcome, wherein based on the state of the game with respect to the upgrade symbols and the bonus game, a player can observe and determine that an upgrade symbol and bonus has been unlocked. Therefore, since the claimed invention can practically be performed in the human mind, it represents an ineligible abstract mental process.
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
The claims recite a generic processor and memory along with instructions that generate and present a game to a player and determine the result of plays of the game, which is viewed as no more than instructions to implement a judicial exception.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2b: It must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception.
The claim language does recite a processor, memory and game symbols, however, viewed as a whole, these additional elements are indistinguishable from conventional computing elements known in the art, ( See US 6186894 B1 at col. 5, lines 25-38 regarding video slot reels including displaying outcomes and that the activity of spinning and producing random outcomes from a wagering game are conventional activities well-understood in the art). Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Viewing the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
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 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,978,324.
Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are drawn towards the system and method claim versions of the parent 11,978,324, except the current claims discloses unlocking a skill-based game and transferring at least a portion of control during the skill-based game. Therefore the current claims are a narrower version of the parent claims regarding this feature, as shown in table below. Independent claims 10 and 20 include similar language to that of independent claim 1, wherein dependent claims 2 – 9 and 11 – 20 include identical language as the dependent claims in the parent 11,978,324. Therefore the claims are not patentably distinct.
Pending Claim 1:
Patented Claim 1:
1. A system, comprising: a processor; and memory coupled with the processor and storing instructions thereon that, when executed by the processor, cause the processor to: determine, while a player is interacting with a gaming machine to engage in a primary game of chance funded by a wager, that the player has earned an upgrade symbol generated from an outcome of the primary game of chance, the upgrade symbol categorized according to a type of symbol for use in a skill-based bonus game, wherein the primary game of chance produces a plurality of different upgrade symbols that provide a different additional skill-based feature in the skill-based bonus game; store information indicating that the player has earned the upgrade symbol and is entitled to use the upgrade symbol in an event that the skill-based bonus game is unlocked; determine a type of skill-based feature associated with the upgrade symbol collected from the primary game of chance, wherein the type of skill-based feature associated with the upgrade symbol enhances player control of a quantifiable skill-based input during the skill-based bonus game; determine that the player has unlocked the skill-based bonus game and, in response thereto, execute the skill-based bonus game according to the outcome of the primary game of chance; during execution of the skill-based bonus game, determine that the player is entitled to use the upgrade symbol; and during execution of the skill-based bonus game, provide the player with an ability to access gameplay functionality associated with the upgrade symbol to enhance the player control of the quantifiable skill-based input by enabling an additional skill-based feature in the skill-based bonus game not otherwise available to the player in the skill-based bonus game without using the upgrade symbol, wherein the additional skill- based feature corresponds to the type of skill-based feature associated with the upgrade symbol collected from the primary game of chance.
1. A method of operating an electronic gaming machine (EGM) in a gaming system, by at least one processor, comprising: collecting an upgrade symbol generated from an outcome of a primary game of chance funded by a wager, the upgrade symbol categorized according to a type of symbol for use in a skill-based bonus game, wherein the primary game of chance produces a plurality of different upgrade symbols that provide a different additional skill-based feature in the skill-based bonus game; determining a type of skill-based feature associated with the upgrade symbol collected from the primary game of chance, wherein the type of skill-based feature associated with the upgrade symbol enhances player control of a quantifiable skill-based input; accessing and executing the skill-based bonus game according to the outcome of the primary game of chance; and using gameplay functionality associated with the upgrade symbol to enhance the player performance control of the quantifiable skill-based input during the skill-based bonus game by enabling an additional skill-based feature in the skill-based game not otherwise available to the player in the skill-based game without using the upgrade symbol, wherein the additional skill-based feature corresponds to the type of skill-based feature associated with the upgrade symbol collected from the primary game of chance.
Response to Arguments
With respect to the double-patenting rejection of claims 1 – 20, Applicants have requested that the double patenting rejections be held in abeyance until such time as the claims are otherwise in condition for allowance. Therefore, the Examiner maintains the double-patenting rejection of claims 1 – 20.
Applicant's arguments with respect to the 101 rejection of claims 1 -20 have been fully considered but they are not persuasive. Regarding claims 1 -20, Applicants argue that the “claims have been amended to recite features that cannot fairly be interpreted as corresponding to any one of the above-noted abstract idea and do not fall into the definition of certain methods of organizing human activity”. The Examiner respectfully disagrees. The claims are directed towards a gaming system comprising a set of reels and gaming symbols, that allows a player to participate in plays of the game in order to win an award, based on probabilities created during the dealing and displaying of randomly displayed symbol outcomes. The claims clearly represent following rules/instructions that define how the game is conducted, which falls into the category of organizing human activity. The claims allow a player to play an award-providing game according to rules of the game. Such transactions relate to the sort of organizing human activities discussed in Bilski, (Bilski v. Kappos, 561 U.S. 593 (2010)).
Applicants further argue that the current claims “cannot fairly be interpreted as hedging or risk management, commercial or legal interactions, financial transaction processing, and/or wagering”. The Examiner respectfully disagrees. As stated above, the claims are directed towards a gaming system comprising a set of reels and gaming symbols, that allows a player to participate in plays of the game in order to win an award. The claims further discloses that the player participates in plays of the game by placing a wager. The claims clearly represent a fundamental economic practice of rules for conducting a game, which relate fundamental economic practice of rules for conducting a game as discussed in Alice, (Alice Corporation Pty. Ltd. V. CLS Bank International, et al. 573 U.S. 208 (2014)).
Applicants further argue that “the claims recite significantly more and/or incorporate any abstract idea into a practical application”. The Examiner respectfully disagrees. Applicant’s specification discloses that the features of the present invention are performed by conventional computing elements, (see par. 0040 and par. 0059). Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea. Viewing the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Applicants further argue that the claims address “a current challenge of appealing to and reaching players that are attracted to a skill-based gaming machine”. The Examiner respectfully disagrees. Attracting or appealing to players is considered a business solution, purely chasing engagement metrics is not a practical application, because attracting players does not solve a technical problem, nor does it provide a technical solution.
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101 as the claims do not integrate the exceptions into a practical application or add an “inventive concept” beyond well-understood, routine, and conventional computer components and functions.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC M THOMAS whose telephone number is (571)272-1699. The examiner can normally be reached 9:00am - 5:00pm.
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, Dmitry Suhol can be reached at 571-272-4430. 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.
/E.M.T/ Examiner, Art Unit 3715
/JUSTIN L MYHR/ Primary Examiner, Art Unit 3715
Prosecution Insights