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.
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 1-20 of U.S. Patent No. 11,688,245. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. Both claim sets are directed to devices, methods, and/or media for a game that provides symbols that may be held in place over a plurality of spins, along with the ability to provide an award based on a sum of values presented by symbols displayed on a display.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,263,862. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. Both claim sets are directed to machines and methods for a game that provides symbols that may be held in place over a plurality of spins, along with the ability to provide an award based on a sum of values presented by symbols displayed on a display.
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.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claims fall into one of the four statutory categories of invention. Claims 1-20 are directed to machines, methods, and computer readable media, which fall into the four statutory categories. However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the disclosure “relates generally to electronic gaming, and more specifically, to systems and methods for dynamically controlling displayed symbols in electronic gaming.” Spec. ¶ 1. The specification also recognizes that “typically involves a player establishing a credit balance by inputting money, or another form of monetary credit, and placing a monetary wager (from the credit balance) on one or more outcomes of an instance (or single play) of a primary or base game.” Id. at ¶ 2.
Representative claim 10 recites the following (with emphasis):
10. At least one non-transitory computer-readable storage medium with instructions stored thereon that, in response to execution by at least one processor, cause the at least one processor to:
cause display of an electronic game for a plurality of plays on a plurality of reels, wherein the plurality of reels comprise a plurality of symbols, and wherein a first reel of the plurality of reels comprises a trigger symbol that triggered the electronic game;
for a first play of the electronic game, cause each reel of a subset of the plurality of reels to spin, the subset comprising each reel other than the first reel, wherein one or more output symbols on the subset are held and not replaced for the first play, and wherein symbols other than the one or more output symbols on the subset are replaced for the first play;
based on at least one additional output symbol being displayed for the first play, cause initiation of a second play of the electronic game wherein the one or more output symbols, including the at least one additional output symbol, are held and not replaced for the second play, and wherein symbols other than the one or more output symbols on the subset are replaced for the second play; and
after a last play of the plurality of plays, cause an output amount associated with the one or more output symbols to be provided, wherein the output amount comprises a sum of output amounts associated with output symbols on one or more reels of the plurality of reels, the one or more reels comprising consecutive reels of the plurality of reels that include at least one output symbol thereon.
The underlined portions of representative claim 10 generally encompass the abstract idea, with substantially similar features in claims 1 and 19. It is clear that the inventive concept here is a set of rules for a game, which may provide one or more awards to a player. The dependent claims further define the abstract idea by introducing various rules to the game (e.g., re-spin symbols causing another spin, holding certain symbols/reels between spins, displaying prize amounts on symbols, etc.). The abstract idea may be viewed, for example, as:
a method of exchanging financial obligations (e.g., an award-providing game, which is effectively a method of exchanging and resolving financial obligations based on probabilities created during the game) as discussed in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014), In re Smith, 815 F.3d 816 (Fed. Cir. 2016), and In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018),
a fundamental economic practice (e.g., rules for conducting a game) as discussed in In re Smith, and In re Marco Guldenaar Holding B.V.,
a method of managing a game similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (non-precedential);
a set of game rules similar to increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results, as discussed in Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342 (Fed. Cir. 2021); and/or
a method of organizing human activities (e.g., allowing a human player to play an award-providing game according to rules of the game method) as discussed in Bilski v. Kappos, 561 U.S. 593 (2010) and Alice Corp. v. CLS Bank.
The claimed abstract idea reproduced above is effectively a method of exchanging and resolving financial obligations between one or more players and an operator of the gaming machine based on probabilities created during the game (see Smith, Marco Guldenaar, and Alice). Based on the reasoning in Smith, and Marco Guldenaar, the recited steps of conducting a game in the instant claims relate to the “fundamental economic practice” of rules for conducting a game. The abstract idea is also similar to that of Planet Bingo, in which a method of managing a bingo game was found to be an abstract idea. Though the instant claims are not limited to bingo games, they encompass the management of similar games. The abstract idea is also comparable to the game rules presented on gaming machines in Bot M8 LLC v. Sony Corp. of America, in which a reward probability could be increased or decreased based on aggregating previous game outcomes placed on the gaming machines. The Bot M8 decision also found that such abstract idea is “more broadly the difficulty[] of a multiplayer game.” While the instant claims appear to only require one player, the modification of the reward probability is clearly comparable to that of Bot M8 because the instant claims cause a modification (i.e., re-spinning) of the reels that result in one or more modified awards. Finally, the claimed allow a player to win an award, which is a financial transaction based on the rules of the game (e.g., as determined by a random number generator). Such transactions are akin to the sort of organizing of human activities, i.e., risk hedging, discussed in Bilski (and shadow accounts in Alice).
Under prong 1, the above analysis demonstrates that the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity. Under prong 2, the instant claims do not integrate the abstract idea into a practical application because they merely provide instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea, add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. While certain physical elements (e.g., elements that are not an abstract idea such as a gaming machine) are present in the claims, such features do not effect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (only generic gaming components), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (e.g., a casino or similar environment under control of a jurisdiction which uses casino protocols), such that the claim, as a whole, is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h). Therefore, the claims are directed to an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The claims encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se: an electronic gaming device comprising a memory and a processor to execute instructions to carry out the abstract idea. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
To the extent the claimed game machines are casino-type gaming machines, such as slot machines, the claimed features are generic, conventional, and well-known in the art of wager gaming and/or are devices and techniques that represent extra-solution activity.
For instance, US 6,142,872 to Walker et al. teaches that these elements are conventional:
“The slot server 200 and the slot machines 300-303, discussed further below in conjunction with FIGS. 2 and 3, respectively, may be embodied as conventional hardware and software, as modified herein to carry out the functions and operations described below. The slot server 200 and slot machines 300-303 transmit data between one another. The transmitted data may represent player names and corresponding identification numbers and team associations, credit balance amounts and play results. The slot server 200 and each of the slot machines 300-303 may communicate by means of cable or wireless links on which data signals can propagate” (6:53-64).
“In a per-spin embodiment, each player starts the representative slot machine 300 in a conventional manner by providing a form of payment, for example, by depositing one or more coins or bills in a coin/bill acceptor 355, or inserting a credit card, debit card or smart card into a card reader 364” (8:45-50).
“Each team player can cash out in a conventional manner by pushing a cash out button 370 on his or her respective slot machine 300-303. The CPU 310 then checks the RAM to see if the player has any credit and, if so, signals the hopper 354 to release an appropriate number of coins into a payout tray” (9:15-20).
Walker additionally teaches that “slot machines 300-303” may be embodied as “conventional hardware and software” shown in Figure 3, including three reels, a reel controller, a video display and a random number generator.
Additionally, US 2002/0187828 to Benbrahim teaches a gaming machine and a master gaming controller, and notes that permitting data to flow to and from the processor of a master gaming controller is “well known.” Benbrahim ¶ 29. Benbrahim further notes, “Many gaming devices, such as that illustrated, include a card reader 38 for reading information from a player card…This information may be used in a player tracking system, as is well known in the art.” Id. ¶ 24. Note that card reader 38 is disposed in the housing of the gaming machine in Fig. 1. Benbrahim also teaches the use of various versions of software code that is tailored to “the particular jurisdiction” in which the gaming device is to be operated. Id. ¶ 51.
US 2008/0026854 to Chen et al. describes a “conventional gaming machine” that may include a cabinet housing that supports a display, several input devices, a currency acceptor, and encloses the electrical components, such as a processor and random number generator, with a door having a lock for the cabinet to prevent unauthorized access along with doors being in communication with the controller to alert a user if the door is opened. See e.g., Chen ¶ 27, 31, 33, and 42.
US 2010/0255902 to Goldstein et al. teaches a variety of security mechanisms, including tampering detection and prevention. Goldstein teaches that security monitoring circuits detect intrusion into a gaming device by monitoring security switches attached to access doors in the gaming device cabinet. See Goldstein ¶ 247. Preferably, access violations result in suspension of game play and can trigger additional security operations to preserve the current state of game play. Id. Moreover, Goldstein teaches that the gaming device may not advance from a first state to a second state until critical information that allows the first state to be reconstructed has been atomically stored, and after the state of the gaming device is restored during the play of a game of chance, game play may resume and the game may be completed. Id. at ¶ 242.
Furthermore, the specification admits that the system may be implemented using “various gaming devices, including but not limited to end user devices (EUDs) 264a, 264b and 264c.” Spec. ¶ 92. These devices may include mobile devices, tablet devices, smart phones, and laptops, wherein hardware of the EUDs need not be specifically configured for online gaming. Id. As such, a generic mobile device or conventional mobile phone would be capable of meeting the substantive limitations of the claims, as well as other generic computer devices such as laptops and desktops.
In light of these factual findings, the additional claim features discussed above are well-understood, routine, and conventional and/or constitute extra-solution activities.
Taking the claimed elements individually yields no difference from taking them in combination because each element simply performs its respective function as discussed above. The claims do not purport to improve the functioning of a computer itself, nor do they effect an improvement in any other technology or technical field. Instead, the additional features merely amount to an instruction to apply the abstract idea using generic, functional, and conventional components well-known in the art. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715