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 Objections
Claim 16 is objected to because of the following informalities: “configured select” should read “configured to select.” Appropriate correction is required.
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 1-8, 11, and 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,961,371. Although the claims at issue are not identical, they are not patentably distinct from each other because both the patent and the instant application are directed to a system for virtual interactive sports where real events are converted into simulated events that are different than the real events and displayed to users.
Claims 1 and 11 of the instant application claim largely the same inventive concept as claims 1 and 12 of the patent. The patent includes additional limitations directed to the physical structure and arrangement of elements within the system, e.g. the various modules. The instant application only discloses computers with processors and computer readable media, which is understood as a broader form of the various modules disclosed in the patent.
Both the patent and the instant application disclose receiving details of betting opportunities, displaying the details of real events to a user, enable the user to make betting selections, and converting the real events into simulated events to be displayed, wherein the simulated events are in each instance a different type of event than each of the one or more real events.
Claims 2-8 and 13-19 of the instant application, while not identical to claims 2-11 and 13-19 of the patent, disclose largely the same elements. Claim 2 of the application is disclosed by claim 2 of the patent (though the patent includes limitations regarding tickets). Claim 3 of the application is taught by claim 7 of the patent. Claims 4-7 of the application are equivalent to claims 2 and 9-10 of the patent. Claim 8 of the instant application is taught by claim 4 of the patent.
Claims 13-14 of the application are equivalent to claim 14 of the patent. Claims 15-16 of the application are equivalent to claim 13 of the patent. Regarding claims 17-19 of the application, see claim 4 of the patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Y Kim whose telephone number is (571)270-3215. The examiner can normally be reached Monday-Friday.
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/KEVIN Y KIM/Primary Examiner, Art Unit 3715