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 .
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11983993. Although the claims at issue are not identical, they are not patentably distinct from each other because all the features disclosed by the instant claims are being disclosed by claims 1-20 of U.S. Patent No. 11983993.
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 non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. As summarized in the 2019 Revised Patent Subject Matter Eligibility Guidance, examiners must perform a Two-Part Analysis for Judicial Exceptions.
Step 1
In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant invention encompasses a gaming system in claims 1-12 and a non-transitory computer readable medium in claims 13-19 (i.e., machines) and a method in claim 20 (i.e., a process), which are clearly directed to one of the four statutory categories and meet the requirements of step 1.
Step 2A
Prong One
The claimed invention is directed to an abstract idea without significant more. The instant invention is broadly directed to “the field of electronic gaming, and more particularly to systems and methods for collecting one or more game play enhancers to be used during a bonus game of an electronic game, and for enhancing game play during the bonus game” ([0002]). Claim 1 recites the following (with emphasis added):
Claim 1: A gaming system comprising:
a memory device; and
a processor configured to execute instructions stored on the memory device, which when executed, cause the processor to:
cause display of a first symbol occurring in an outcome of a base game;
cause display of a game play enhancer for the first symbol being collected in response to the first symbol occurring in the base game outcome;
initiate, in response to a trigger condition being satisfied, a bonus game;
cause display of an initial outcome of the bonus game; and
cause display of an enhanced outcome of the bonus game by evaluating independent occurrences of the first symbol in the initial bonus game outcome according to the game play enhancer.
The bold and underlined portions of claim 1 encompass the abstract idea, which is also encompassed by the dependent claims 2-12, and substantially also encompassed by claims 13-19 and claim 20.
Claims 1, 13, and 20 recite the steps and rules for a player to collect a game play enhancer and watch it being used to enhance the outcome of a bonus game. The recited rules tell the player how to collect the enhancer and what effect it can bring to the bonus game. These limitations, when given their broadest reasonable interpretation, are directed to certain methods of organizing human activity and mental processes.
Prong Two
This judicial exception is not integrated into a practical application because mere instruction to implement on a computer or mobile device, or merely using a computer or mobile device as a tool to perform the abstract idea, adding insignificant extra solution activity, and/or generally linking the use of the abstract idea to a technological environment for field of use is not considered integration into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the present claims include the additional elements other than the abstract idea which include a processor and a memory device. These additional elements to carry out these routine steps and rules does not make the claim any less abstract. The claims are drafted in a result-oriented fashion, without the requisite specificity needed to provide a nonabstract technological solution. Without any detail on the processor and the memory, they are directed to the conventional computers over generic network as presented and are directed to the components of a system amount to merely field of use type limitations and/or extra solution activity to implement the abstract idea as presented.
Step 2B
Step 2B in the analysis requires us to determine whether the claims do significantly more than simply describe that abstract method. Mayo, 132 S. Ct. at 1297. We must examine the limitations of the claims to determine whether the claims contain an "inventive concept" to "transform" the claimed abstract idea into patent-eligible subject matter. Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1298). The transformation of an abstract idea into patent-eligible subject matter "requires 'more than simply stat[ing] the [abstract idea] while adding the words 'apply it."' Id. (quoting Mayo, 132 S. Ct. at 1294) (alterations in original). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].'" Id. (quoting Mayo, 132 S. Ct. at 1297) (alterations in original). Those "additional features" must be more than "well-understood, routine, conventional activity." Mayo, 132 S. Ct. at 1298.
The present claims include the additional elements other than the abstract idea which include a processor and a memory device. These additional elements are merely used for insignificant extra-solution activity, in which these conventional machines and their ability to connect to internet for communication are related to implementing the steps and rules for enhancing an outcome of a bonus game. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility. See Bilski, 138 S. Ct. at 3230 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, ___ (1978)), and Cybersource v. Retail Decisions, 654 F.3d 1366, 99 USPQ2d 1690 (Fed. Cir. 2011). Thus the present claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The claims are generally linked to implement an abstract idea on a generic computer. When looked at individually and as a whole, the claim limitations are determined to be an abstract idea without "significantly more," and thus not patent eligible.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-8 and 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frank et al. [US20100120495], hereinafter Frank.
Regarding claim 1, Frank discloses a gaming system (Fig. 2A) comprising: a memory device; and a processor configured to execute instructions stored on the memory device, which when executed, cause the processor to:
cause display of a first symbol occurring in an outcome of a base game (Figs. 4A-4H);
cause display of a game play enhancer for the first symbol being collected in response to the first symbol occurring in the base game outcome ([0112], “As shown in FIG. 4B, the credit meter shows the number 90, indicating that the player has chosen to purchase an amplifier. The player assigns the amplifier to the bar symbol accumulator 202a, as shown in FIG. 4B.”);
initiate, in response to a trigger condition being satisfied, a bonus game (Fig. 3B, step 126, and [0181], “the bonus triggering event occurs when an accumulator assigned with an amplifier reaches a designated level.”).
However, Frank does not explicitly disclose cause display of an initial outcome of the bonus game; and cause display of an enhanced outcome of the bonus game by evaluating independent occurrences of the first symbol in the initial bonus game outcome according to the game play enhancer in the embodiments disclosed by Figs. 4A-4H.
Nevertheless, Frank teaches in different embodiments, cause display of an initial outcome of the bonus game; and cause display of an enhanced outcome of the bonus game by evaluating independent occurrences of the first symbol in the initial bonus game outcome according to the game play enhancer ([0186], “More specifically, in one example embodiment wherein the gaming system provides a red symbol accumulator associated with a bonus game multiplier award, a blue symbol accumulator associated with a free spin bonus game award, and a green symbol accumulator associated with an extra payline award, the gaming system also provides the player with a set of multipliers (for example, a "2.times." multiplier, a "5.times." multiplier, and a "0.5.times." multiplier). In this example embodiment, the gaming system enables the player to assign each of these multipliers to one of the accumulators provided. Thus, when the gaming system provides any of the awards associated with a respective accumulator (as described above), the respective assigned multiplier multiplies the value of the award associated for that accumulator.”).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the gaming system disclosed by one embodiment of Frank, to have the evaluating independent occurrences of the first symbol in the initial bonus game outcome according to the game play enhancer, as taught by a different embodiment of Frank, in order to provide a diversity of options of enhancers for the players to choose from so that the players would have more fun to play.
Regarding claim 2, Frank discloses the gaming system of Claim 1, wherein the instructions, when executed by the processor, further cause the processor to generate, prior to initiating the bonus game, a reconfiguration data file for the bonus game based on the game play enhancer ([0026], “The memory device also stores other data such as image data, event data, player input data, random or pseudo-random number generators, pay-table data or information, and applicable game rules that relate to the play of the gaming device” and [0186], “In one embodiment, the gaming system provides a designated number of multipliers which can each be assigned to a designated number of accumulators. In one embodiment, the gaming system enables the player to assign each multiplier to one of the accumulators” and Fig. 3B, step 110 “assign amplifiers to accumulators” is prior to step 126 [Wingdings font/0xE0] 128, “initiating the bonus game”).
Regarding claim 3, Frank discloses the gaming system of Claim 2, wherein the enhanced outcome of the bonus game is based on the reconfiguration data file (Fig. 3B, step 128).
Regarding claim 4, Frank discloses the gaming system of Claim 1, wherein the bonus game is a slot game comprising a plurality of reels and a plurality of symbols provided on the reels in a plurality of rows, and wherein the game play enhancer changes the evaluation of the first symbol during the bonus game to include at least one of a symbol WILD and a symbol multiplier (Figs. 4A-4H, and [0186], “More specifically, in one example embodiment wherein the gaming system provides a red symbol accumulator associated with a bonus game multiplier award, a blue symbol accumulator associated with a free spin bonus game award, and a green symbol accumulator associated with an extra payline award, the gaming system also provides the player with a set of multipliers (for example, a "2.times." multiplier, a "5.times." multiplier, and a "0.5.times." multiplier). In this example embodiment, the gaming system enables the player to assign each of these multipliers to one of the accumulators provided. Thus, when the gaming system provides any of the awards associated with a respective accumulator (as described above), the respective assigned multiplier multiplies the value of the award associated for that accumulator.”).
Regarding claim 5, Frank discloses the gaming system of Claim 1, wherein the game play enhancer comprises a first game play enhancer stored during a first round of the base game and a second game play enhancer stored during a second round of the base game (Fig. 3B, step 112 allows for different round of base games and step 119 allows for different game play enhancers to change value and being stored).
Regarding claim 6, Frank discloses the gaming system of Claim 5, wherein the instructions, when executed by the processor, further cause the processor to generate, prior to initiating the bonus game, a reconfiguration data file for the bonus game based on the game play enhancer, wherein the reconfiguration data file is generated based on the first game play enhancer and is modified based on the second game play enhancer (Fig. 3B, step 112 allows for different round of base games and step 119 allows for different game play enhancers to change value and being stored, all prior to initiating the bonus game in step 128).
Regarding claim 7, Frank discloses the gaming system of Claim 6, wherein the instructions, when executed, further cause the processor to: revert gameplay to the base game after completing a first plurality of game play rounds of the bonus game (Fig. 3B, step 128 [Wingdings font/0xE0] step 130 [Wingdings font/0xE0] step 112); remove the first game play enhancer from the reconfiguration data file in response to the first game play enhancer being used during the first plurality of game play rounds of the bonus game; and keep the second game play enhancer in the reconfiguration data file in response to the second game play enhancer not being used during the first plurality of game play rounds of the bonus game ([0156], “In another embodiment, after the gaming system provides the player with any awards associated with the level of one or more accumulators, the accumulator that triggered the bonus event is reset to zero. That is, in this embodiment, the level of one or more of the accumulators remains for subsequent plays of the game”).
Regarding claim 8, Frank discloses the gaming system of Claim 6, wherein the first game play enhancer modifies an award of the bonus game and the second game play enhancer modifies a game play area of the bonus game ([0182], “In different embodiments, the awards associated with the accumulators include, but are not limited to: a quantity of free activations of one or more games; an applicable multiplier for at least one, a plurality or each of the free spins; a credit amount (based on a triggering event and/or a wager placed); a quantity of picks in the game; a quantity of selections in the game; a quantity of retrigger symbols in the game; a quantity of terminators or termination symbols in the game; a quantity of anti-terminators in the game; a quantity of locking reels in the game; a quantity of locking symbol positions in the game; a quantity of expanding symbols in the game; a quantity of rounds or levels in the game; a quantity of award opportunities in the game; a quantity of progressive awards in the game; a range of available awards in the game; a quantity of active reels in the game; a quantity of offers in the game; a paytable which will be utilized in the game; a quantity of hands of playing cards in the game; any combination thereof; and any other suitable award”).
Regarding claim 11, Frank discloses the gaming system of Claim 1, wherein the instructions, when executed, further cause the processor to: cause display of a spinning of a wheel, the wheel including a plurality of game play enhancers thereon; and cause display of a stopping of the wheel to visually indicate the game play enhancer for the first symbol is awarded in the base game outcome (Fig. 4C-4D).
Regarding claim 12, Frank discloses the gaming system of Claim 1, wherein at least one of the memory device and the processor are provided at a gaming server in communication with a remote gaming device, and wherein the processor causes display of the enhanced outcome of the bonus game at the remote gaming device ([0017], “FIG. 2B is a schematic diagram of the central server in communication with a plurality of gaming systems in accordance with one embodiment of the gaming system disclosed herein”).
Regarding claims 13-19, please refer to the claim rejections of claims 1-7 and 12.
Regarding claim 20, please refer to the claim rejection of claim 1.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frank, in view of Cohen et al. [US20120094745], hereinafter Cohen.
Regarding claim 9, Frank discloses the gaming system of Claim 1. However, Frank does not explicitly disclose wherein the game play enhancer is a first game play enhancer and is randomly selected from a plurality of game play enhancers based on a weighted table.
Nevertheless, Cohen teaches in a like invention, the game play enhancer is a first game play enhancer and is randomly selected from a plurality of game play enhancers based on a weighted table (Fig. 3, step 110).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the gaming system disclosed by Frank, to have a first game play enhancer randomly selected from a plurality of game play enhancers based on a weighted table, as taught by Cohen, in order to normalize the average expected payout of a bonus game.
Regarding claim 10, the combination of Frank and Cohen discloses the gaming system of Claim 9, wherein the weighted table is a first weighted table, and wherein the instructions, when executed, further cause to the processor to: determine a second weighted table based on the first game play enhancer; and select a second game play enhancer for use during the bonus game based on the second weighted table (Cohen, Fig. 3, step 106, and [0129], “In one embodiment, as described in the illustrated example above, each of the bonus game attributes of the maintained database is associated with a designated initial or reset probability of being selected, such as an initial zero probability of being selected… In another embodiment, the initial or reset associated probabilities of being selected associated with each of the bonus game attributes of the maintained database are different”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YINGCHUAN ZHANG whose telephone number is (571)272-1375. The examiner can normally be reached 8:00 - 4:30 M-F.
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/YINGCHUAN ZHANG/Primary Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715