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 a mental step without significantly more. As per step 1 examiner recognizes that the claims are directed towards gaming systems or methods performed by gaming systems. Therefore step 1 is met. As per step 2A the claim(s) recite(s) “reel strip data defining a set of reel strips, each reel strip of the set of reel strips comprising special symbols and regular symbols; and instructions which, when executed by the processor, cause the processor to: instruct a display to display a playing field comprising an array of positions; instruct the display to display portions of each reel strip of the set of reel strips in the array of positions retrieved by using a random number generator to generate numbers and creating a mapping of the numbers to reel strip positions; when a first symbol is adjacent on the playing field to a first identical symbol based on the mapping, instruct the display to animate the playing field to merge the first symbol and the first identical symbol to create a first merged symbol wherein merging the first symbol and the first identical symbol replaces a first of the first symbol or the first identical symbol with the first merged symbol and removes a second of the first symbol or the first identical symbol; and when the first merged symbol is adjacent on the playing field to a second identical symbol, instruct the display to animate the playing field to merge the first merged symbol and the second identical symbol to create a second merged symbol.” as being directed towards a slot game comprising rules for when to merge symbols together including based on adjacency including merging identical merged symbols. Further dependent claims include details on the hardware, display layout, and awards being provided among other rules. As per the mental step examiner looks to at least the bolded sections which comprise the step of observation and when the observation is performed a determination is made regarding what is the next step. Specifically when it is determined a certain symbol is adjacent to another symbol a rule is to be performed is a step that can be done mentally since this is the action of observation and determination. An individual is able to observe a state of the game, such as what symbols are displayed, and then determine what is the next action that should be performed in a game based on the observation. The computer elements are addressed in step 2B and goes towards animation steps or conventional hardware features. This judicial exception is not integrated into a practical application because it remains directed to a game comprising game rules. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because performing a mental step based on a displayed outcome following game rules remains a mental step. Specifically observing the state of the game and applying a rule accordingly remains a mental step and no recited steps beyond conventional feature or extra solution activity are recited that cannot be performed in the mind. Specifically following rules can be performed in the mind. Additional elements are addressed below regarding the display and hardware portions.
As per step 2B examiner recognizes that additional elements are directed to conventional activities or extra solution activity. See below.
Limitation “system, comprising: a processor; and a memory connected to the processor, and storing: reel strip data defining a set of reel strips, each reel strip of the set of reel strips comprising special symbols and regular symbols; and instructions which, when executed by the processor, cause the processor to: instruct a display to display a playing field comprising an array of positions;”, “instruct the display to display portions of each reel strip of the set of reel strips in the array of positions retrieved by using a random number generator to generate numbers and creating a mapping of the numbers to reel strip positions;”, and “instruct the display to animate the playing field to merge” and other associated hardware and computer elements. The hardware elements are commonly found in the gaming art related to electronic slot machines or wagering terminals and therefore are no more than a generic recitation of computer hardware elements including network elements and therefore does not provide a practical application that amounts to more than the identified abstract idea. This includes the recitation of memory, processors, and displaying steps which are generically found in electronic gaming machine including the elements accepting wagers for the purpose of presenting an outcome and payout for the results. 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. See Acres (US Pub. No. 2012/0172107 A1) teaches within the electronic gaming art the use of a random number generator to determine numbers for specific reel stop positions in order to determine an outcome which is evaluated if it is a winning combination of symbols appearing on a played payline (paragraph [0073]). Specifically it is conventional to communicate data to output to a user comprising animated spinning of a wager determining device (which would include reels or wheels) or static images to communicate an outcome and award due as well as the state of the game. Therefore these limitations do not provide a practical application. Further the means of displaying graphics and animations regarding a result or state of the game are conventional to the art and is directed towards extra solution activity as being a means to output information without changing the identified mental steps above. This includes the act of displaying particular animations regarding an outcome, including the merging of symbols, since these display steps are extra solution activity and directed to the outputting of data to inform a player which is conventional to the art. Specifically merging symbols is another way to output a game outcome for what symbols should be present as a final result when determining a win or loss in a game.
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. 12014603. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed towards similar inventions regarding a slot game wherein symbols are merged together including animating the playing field to merge the first symbol and the first identical symbol to create a first merged symbol and animating the playing field to merge the first merged symbol and the second identical symbol to create a second merged symbol. The difference between the claims regarding the merged symbol not being indicated as a higher-value capable symbol as per parent 12014603. However the current language therefore is a broader form and not patentably distinct since a generic merge symbol would also be a higher value capable symbol. Dependent claims include similar language regarding hardware and display layout. Patent 12014603 indicates a jackpot while the current application has displaying an award which is not specific to a jackpot but a jackpot is a form of an award and therefore the claim remains not patentably distinct. Therefore the claims are rejected under nonstatutory double patenting.
Conclusion
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/JUSTIN L MYHR/ Primary Examiner, Art Unit 3715 2/25/2026