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 Status
Claims 1-20 are pending. Claims 1-2, 4-12, and 16-19 have been amended and no new claims have been added.
Response to Arguments
Applicant's arguments filed 2/27/26 have been fully considered but they are not persuasive. The Applicant’s representative presents to address the ‘Claim Objections’ and ‘Double Patenting’ rejections. With respect to the ‘Claim Objections’, the Applicant’s amendments have been reviewed and the object has been withdrawn. With respect to the ‘Double Patenting’, although the Applicant’s representative indicates that a terminal disclaimer over US 11,448,448 and 12,020,543 has been filed to overcome the ‘Double Patenting’ rejection, no submission has been received. For at least this reason, the rejection has been maintained below.
With respect to the rejection under 35 USC 101, the Applicant’s representative submits arguments that i) the claims do not recite an abstract idea under Step 2A-prong 1 (see Remarks, pg. 11-19) and ii) the claims, even if directed to an abstract idea, integrate the claim into a practical application under step 2A-prong 2 (see Remarks, pg. 20-22). The Examiner respectfully disagrees for the reasons discussed below.
With respect to Step 2A-prong 1, the Applicant’s representative argues that the claims are not directed to a certain method of organizing human activity such as fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior and relations or interactions between people as described in MPEP 2106.04(a)(2)(II) (see Remarks, pg. 11). The Applicant’s representative argues that the claims are not directed a judicial exception because as evidenced by the oral arguments of In re Smith and In re Marco Guldenaar, the instant claims are not similar to the abstract idea of “rules to follow when playing a game” but to “a system that is specifically configured to present a GUI in a particular manner and to make the GUI behave in a particular manner (see Remarks, pg. 11-12). Specifically, the Applicant’s representative argues that the allowance of Claim 1, previously claim 20, of Smith (US 11,992,750) which was directed to the method being performed on a video gaming system indicates that the same conclusion should be found in the instant case. The Examiner respectfully disagrees. Findings and conclusions under 35 USC 101 are determined on a case-by-case basis determined through the two-part Alice framework. Additionally, the Examiner notes that the claims are directed to managing a bonus reel spin of a slot game which is a type of wagering game. It follows that the findings that the claimed subject matter are directed to rules and/or instructions for managing a bonus reel spin are analogous to the abstract idea managing a wagering game is consistent with MPEP 2106.04(a)(2)(II). For at least this reason, the Applicant’s argument is not persuasive.
Although the Applicant’s representative analysis of In re Smith and In re Marco Guldenaar is appreciated, the conclusions drawn by the Applicant’s representative are based upon assumptions of how those courts would view the instant claims of the instant application (see Remarks, pg. 12-19). For instance, the Applicant’s position is that the Smith court would find that wagering games performed on a slot machine are patent eligible. However, the court did not make any such expressed finding or rulings in the opinion that rules and/or instructions for managing a game using a slot machine is not directed to an abstract idea. In contrast to the conclusion drawn by the Applicant’s representative, the claims have been found to recite rules for managing a bonus game reel spin including steps and/or instructions to populate game symbols in bonus game positions to present a game outcome of the bonus reel spin per a stored bonus state that are mere invoked on a general purpose gaming device as a tool to implement the abstract idea. It follows that the subject matter of the instantly claimed invention is analogous to the findings by the court in Alice v. CLS which found that performing a common place business method (e.g., managing a bonus game reel spin) on a general purpose computer/gaming machine does not transform the abstract idea or integrate the claim into a practical application (see MPEP 2106.05(a)II).
With respect to Guldenaar, the Applicant’s representative argues that the court found that there was nothing technological in Guldenaar’ s dice game in contrast with the instantly claimed invention which recites actions to be performed by the slot machine and cannot be implemented with a “standard” gaming system (see Remarks, pg. 14-20). The Examiner respectfully disagrees. As discussed in the asserted 35 USC 101 rejection in the Non-Final Rejection, the additional limitations such as: “one or more server computing device”, “cause the gaming device to display” and “based on one or more random number generator outputs” were found to recite performing the slot game using a conventional slot machine and/or conventional networked gaming system environment to conform with regulatory requirements that are known to one of ordinary skill in the gaming arts (see Vancura, Fig. 1, 0008, 0037-0040). It follows that similar to Guldenaar, the steps and/or instructions of the bonus reel game could be performed by invoking and implementing the game on a conventional gaming system and are directed to the abstract idea. For at least these reasons, the Applicant’s conclusions on Guldenaar are not persuasive.
The Applicant’s representative contest this characterization and argues that the claims recite steps for configuring a GUI in a particular manner to make the GUI behave in a particular manner that is construed as an improvement but to the abstract idea itself because the display of the game outcome (see Remarks, pg. 17-20). The Examiner respectfully disagrees. Displaying the game outcome on a GUI is not found to recite an improvement to the functioning of the computer and/or a different field or other technology but amounts to arranging transactional information on a display in a manner that assist the player in processing the game outcome that the courts have indicated does not transform the abstract idea into an inventive concept (see MPEP 2106.05(a)I). For at least this reasons, the Applicant’s argument is not persuasive.
With respect to Step 2A-prong 2, the Applicant’s representative maintains that the claims are not directed to a judicial exception but asserts that any judicial exception is integrated into a practical application (see Remarks, pg. 20-22). Specifically, the Applicant’s representative argues that “storing information regarding symbols from a first outcome in a stored bonus game state and then, after an intervening one or more base game reel spins have occurred, presenting a second bonus game outcome using one or more of the symbols from the first bonus game outcome that are stored in the stored bonus game” allow for an enhanced user engagement and to cause a user to continue to play the base game which is an improvement to the functioning of a computer or an improvement to other technology or technical field (see Remarks, pg. 20-22). The Examiner respectfully disagrees. As discussed during the Examiner Interview, the Examiner expressed that the claimed steps such as: “transmitting, from the one or more server computing devices, one or more signals that cause a gaming device to display one or more bonus game reel spins…on one or more displays of the gaming device”, “transmitting, from the one or more server computing device and after transmitting the one or more signals that cause the gaming device to display the one or more first bonus game reel spins…a base game outcome generated based on one or more random number generator outputs one the one or more displays of the gaming device;” and “transmitting, from one or more server computing devices and after transmitting the one or more signals that cause the gaming device to display the one or more base game reels spins on one or more signals that cause the gaming device to display the one or more game reel spins…wherein the second bonus game outcome comprises at least one symbol of the first bonus game outcome retrieved from the stored bonus game state” when viewed individually and/or as a combination of elements were not found to recite an improvement to the functioning of the computer and/or to other technology or technical field. For instance, as acknowledged by the Applicant’s representative, the claimed invention is to “enhance user engagement” and to “cause a user to continue to play the base game in the hopes of triggering a second bonus game that re-uses symbols from a previous bonus game” which are found to be directed to steps and./or instructions for managing social activity (e.g., user engagement of the base game) and/or a business method (e.g., managing a bonus reel spin of a slot game) and/or arranging the transactional information of the game to the user as opposed to a technological solution to a technical solution (see Remarks, pg. 20-22). This is consistent with the what the courts have indicated is not sufficient to show an improvement in computer functionality or improvements to any other technology or technical field because they amount to arranging transactional information on a graphical user interface that assist the player in processing the game and/or a commonplace business method being applied on a general purpose gaming machine (see MPEP 2106.05(a)I-II – citing to viii – Trading Technologies, 921 F.3d 1084, 1093-1094, (Fed. Cir. 2019) and i -Alice Corp v. CLS, 573 US 208, 223 (2014)). Moreover, as noted in MPEP 2106.04(d)(1), although the specification need not explicitly set forth the improvement, it must describe the invention such that the improvement would be apparent to one or more ordinary skill in the art. In this instance, the Specification fails to describe the improvement to the computer and/or other field but uses bare assertions that the claimed subject matter provide more and exciting games. This is consistent with the why the analysis under the two-part Alice framework which the Examiner found that the additional elements such as: “transmitting, from the one or more server computing devices”, “display one or more first bonus game reel spins”, and “a stored bonus game state” recite only well-understood, routine, and conventional activity in the field of electronic wagering that is found to merely invoke a computer as a tool to implement the abstract idea, insignificant extra solution activity, and/or provide a technological environment in which to perform the abstract idea which does not integrate the claim into a practical application (see MPEP 2106.05(d)II – i) receiving or transmitting data over a network; iv) storing and retrieving information in memory); MPEP 2106.05(f)-(h)). For at least these reasons, the Applicant’s arguments are not persuasive and the rejection under 35 USC 101 has been maintained below.
Claim Objections
Claim 1 is objected to because of the following informalities: in lines 16-17 the limitation “game outcome on the one or display of the gaming device” contains a typographical error. 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.
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,020,543 B2 and claims 1, 3-5, 7, 9-10, 12-14 of U.S. Patent No. 11,488,448 B2.
An analysis and comparison of the method of the instant claim 1 to Claim 1 of US Patent 12,020,543 B2 and Claims 1 and 9 of US Patent No. 11,488,448 B2 which is provided in the claim chart below:
Claim 1 of the Instant Application
Claim 1 of the ‘543 Patent
Claim 1 of the ‘448 Patent
Claim 9 of ‘448 Patent
Similarities and Differences
A method executed by one or more server computing devices, the method comprising:
A method of a gaming device, the method comprising: controlling, by a processor of the gaming device
A method of an electronic gaming machine, the method comprising:
A method of an electronic gaming machine having a processor and an electronic display, the method comprising:
Claim 1 of the instant application and Claim 1 of the ‘543 and Claims 1 and 9 of the ‘448 patent are each directed to a method of controlling a gaming device.
Claim 1 of the instant application recites a broader embodiment of Claim 1 of the ‘534 Patent and Claims 1 and 9 of the ‘448 Patent. Additionally the claims are directed to at least one or more server to control which is a gaming-related device within a gaming environment (see Fig. 1).
for a first play of a base game, controlling, by a processor of the electronic gaming machine, an electronic display of the electronic gaming machine to display a plurality of reels that generate a randomized first base game outcome based on a first random number generator output, wherein the first base game outcome comprises first symbols displayed by the plurality of reels in a matrix of symbol display positions;
for a first play of a base game, controlling, with the processor, a graphical user interface of the electronic display to display a randomized first base game outcome based on a first random number generator output, wherein the first base game outcome comprises first symbols in a symbol matrix of the graphical user interface;
Claim 1 of ‘543 recites a broader embodiment of the subject matter of Claims 1 and 9 of the ‘448. Claim 1 of the instant application recites a broader embodiment of Claim 1 of ‘543 and ‘448 that is directed to transmitting the signals to control the gaming device to display the outcome.
transmitting, from one or more server computing devices, one or more signals that cause a gaming device to display one or more first bonus game reel spins that present symbols of a first bonus game outcome on one or more displays of the gaming device;
for a first play of a bonus game, a display of the gaming device to display one or more bonus game reel spins that present symbols of a first bonus game outcome at bonus game display positions of the display
and controlling, by the processor in response to a first triggering condition during the first play of the base game, the electronic display to display a first play of a bonus game that generates randomized one or more first bonus game outcomes based on one or more second random number generator outputs, wherein the one or more first bonus game outcomes comprise second symbols selected from a bonus game symbol set displayed by the plurality of reels in a bonus matrix of the electronic display, wherein the bonus game symbol set includes hold symbols and non-hold symbols, and wherein each of the one or more first bonus game outcomes updates the bonus matrix by holding hold symbols of that first bonus game outcome at their respective symbol display positions in the bonus matrix and replacing non-hold symbols of that first bonus game outcome with replacement symbols selected from the bonus game symbol set;
for a first play of a bonus game, controlling, by the processor, a graphical user interface of the electronic display to display a randomized first bonus game outcome based on a second random number generator output, wherein the first bonus game outcome comprises second symbols selected from a symbol set comprising configurable symbols and non-configurable symbols; controlling, by the processor, the graphical user interface of the electronic display hold each configurable symbol of the second symbols at its corresponding display position in the symbol matrix and replace non-configurable symbols of the first bonus game outcome with randomized replacement symbols selected, based on one or more third random number generator outputs, from the symbol set comprising configurable symbols and non-configurable symbols;
Claim 1 of the instant application recites a broader embodiment of the subject matter of Claim 1 of the ‘543 and Claims 1 and 9 in the ‘448 patent. Each of the claims are directed to generating a first play of a bonus game that comprises one or more first bonus game reel spins that to present a symbols of a first bonus game outcome.
Differences – Claim 1 of the instant application presents a broader embodiment that does not require the particulars of the narrower embodiment recited in Claim 1 of the ‘543 and Claims 1 and 9 of the ‘448 patent such as particulars as to generating the outcomes using a random number generator outcome and in the ‘448 Patent a triggering condition of the first play of the base game and a second random number generator. Claim 9 is further narrower embodiment because it limits the subject matter with a graphical user interface, steps to select from a symbol set comprising configurable symbols and non-configurable symbols and to hold each configurable symbol and replace non-configurable symbols.
reducing a quantity of games remaining for the first play of the bonus game; and repeating the holding, the replacing, and the reducing until the quantity of games remaining is zero; and
The Examiner notes dependent Claims 5, 11, and 19 of the instant application recite substantially similar to the subject matter recited by dependent Claims 5, 11 and 19 of the ‘543 Patent and Claim 9 of the ‘448 Patent.
retaining, by the processor, one or more second symbols of the first bonus game outcome in a memory device in response to activation of a retain graphical button presented by the graphical user interface, wherein the one or more second symbols retained from the first bonus game outcome comprises at least the configurable symbols in the first bonus game outcome;
transmitting, from the one or more server computing devices and after transmitting the one or more signals that cause the gaming device to display the one or more first bonus game reel spins, one or more signals that cause the gaming device to display one or more base game reel spins that present symbols of a base game outcome generated based on one or more random number generator outputs on the one or more displays of the gaming device;
transmitting, from the one or more server computing devices and after transmitting the one or more signals that cause the gaming device to display the one or more base game reel spins on the one or more displays of the gaming device, one or more signals that cause the gaming device to populate, per a stored bonus game state, bonus game display positions displayed on the one or more displays of the gaming device with one or more symbols from the first bonus game outcome and
after the first play of the bonus game: storing, by the processor, a bonus game state that includes one or more symbols from the first bonus game outcome; and controlling, by the processor for a play of a base game, the display to display one or more base game reel spins that present symbols of a base game outcome at base game display positions of the display;
after the first play of the bonus game in which the hold symbols of the first bonus game outcome partially complete an objective with an associated award, storing, by the processor, a retained bonus game state in a memory device of the electronic gaming machine, wherein the retained bonus game state includes at least the hold symbols of the bonus matrix and their respective symbol display positions; for a second play of the base game, controlling, by the processor, the electronic display to display a randomized second base game outcome based on a third random number generator output, wherein second based game outcome comprises third symbols displayed by the plurality of reels in the matrix of symbol display positions; and
for a second play of the base game, controlling, with the processor, the graphical user interface of the electronic gaming machine to display a randomized second base game outcome based a fourth random number generator output, wherein the second base game outcome comprises third symbols in the symbol matrix of the graphical user interface;
Claim 1 of the instant application recites transmitting by the server the subject matter of Claim 1 of the ‘543 and ‘448 patents which each recite storing bonus game state in the memory and wherein the bonus game state include at least one of the symbols from the first bonus game outcome.
Moreover, the instant application recites a broader embodiment that does not recite the particulars of “hold symbols” and “configurable symbols” of Claim 1 and Claim 9 of the ‘448 patent
The differences between the Claim 1 of the instant application and Claims 1 of the ‘543 Patent and Claims 1 and 9 of the ‘448 patent is that the particular type of symbols and the rules for populating the one or more symbols into the display positions of the bonus game are contained in dependent Claims 2, 4, 9-10, and 17-18.
to display one or more second game bonus game reel spins that present a second bonus game outcome on the one or display of the gaming device, wherein the second bonus game outcome comprises at least one symbol of the first bonus game outcome retrieved from the stored bonus game state.
after the play of the base game: retrieving, by the processor, the stored bonus game state; and controlling, by the processor for a second play of a bonus game, the display to populate, per the retrieved bonus game state, the bonus game display positions with the one or more symbols from the first bonus game outcome and display one or more bonus game reel spins that present a second bonus game outcome at the bonus game display positions of the display, wherein the second bonus game outcome comprises at least one symbol held from the one or more symbols from the first bonus game outcome.
for a second play of the bonus game: retrieving, by the processor from the memory device, the retained bonus game state; controlling, by the processor, the electronic display to populate the bonus matrix of the electronic display with the hold symbols from the retained bonus game state of the first bonus game outcome at their respective display positions in the retained bonus game state to initialize a starting point for the second play of the bonus game;
for a second play of the bonus game that follows the second play of the base came: controlling, by the processor, the electronic display to populate the symbol matrix of the graphical user interface with the one or more second symbols retained from the first bonus game outcome; and controlling, by the processor, the electronic display to display the second play of the bonus game using the symbol matrix of the graphical user interface populated with the one or more second symbols retained from the first bonus game outcome as a starting point for the second play of the bonus game;
Claim 1 of the instant application recites a broader embodiment of the subject matter recited in Claim 1 of the ‘543 Patent and Claims 1 and 9 of the ‘448 patent. Both Claim 1 of the ‘543 Patent and Claim 1of the ‘448 recites the particulars such as “after the play of the base game” “controlling, by the processor for a second play of a bonus game, the display to populate” which
Differences – Claim 1 of the instant application recites a broader embodiment and does not include the particulars of the narrower embodiment of the ‘543 and ‘448 Patents which recites “after the play of the base game:” and “for a second play of the bonus game that follows the base game” which indicate details that are obvious variants of the claimed game sequence
controlling, by the processor, the electronic display to display a randomized second bonus game outcome based a fourth random number output, wherein the second bonus game outcome comprises the hold symbols from the retained bonus game state and fourth symbols selected from the bonus game symbol set; and in response to the hold symbols of the second bonus game outcome completing the objective, controlling, by the processor, the electronic display to present the award associated with the objective.
and upon completion of the second play of the bonus game, controlling, with the processor, the graphical user interface to provide a player with (1) a pay graphical button whose activation causes controlling, by the processor, the electronic display to display an award based on the configurable symbols of a second bonus game outcome and (2) the retain graphical button whose activation causes retaining, by the processor in the memory device, the configurable symbols of the second bonus game outcome for a subsequent, third play of the bonus game.
Claim 1 of the instant application recites a broader embodiment that does not require the particulars of the random number outcome and the graphical user interface of the ‘543 and ‘448 Patent.
Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the instant application recites a broader embodiment of the limitations of Claim 1 of the ‘543 Patent and Claims 1 and 9 of the ‘448 patent. Claim 1 of the instant application and Claims 1 of the ‘543 Patent and Claims 1 and 9 of the ‘448 are each directed to storing and displaying symbols of a retained bonus game state from a first bonus game outcome. Claims 1 of the ’543 and Claims 1 and 9 of the ‘448 recites a narrower embodiment as the “”one or more first bonus game reel spins that present a first bonus game outcome” of the instant application which are analogous to the “one or more symbols” of Claim 1 of the ‘543 Patent and the defined set of “hold symbols and non-hold symbols” and “configurable symbols and non-configurable symbols” that are generated in the bonus game outcomes of Claims 1 and 9 of the ‘448 Patent. Additionally, the differences such as “transmitting, from the one or more server computing devices, one or more signals” as opposed to “after the first play of the bonus game” in the ‘543 Patent and “for a second play of the bonus game” in the ‘448 Patent are as such obvious variants to designate “a play of a bonus game” to how one of ordinary skill in the art would understand as steps of a reel game sequence to be performed by the gaming device and/or by the one or more servers in the instant application. Moreover, the instant application recites a broader embodiment that infers the performance of a first play of the base game of Claim 1 and Claim 9 of the ‘448 patent. It follows that for the reasons as shown in the claim chart and discussion above, that one of ordinary skill in the art at the time of filing the application would have understood that Claim 1 of the instant application and Claim 1 of the ‘543 Patent and Claims 1 and 9 of the ‘448 patent are not patentably distinct.
Regarding independent Claim 6, the claims recite substantially the same subject matter as discussed in the claim chart above with respect to independent Claim 1. Specifically, Claim 6 of the instant application recites substantially the same subject matter as Claim 6 of the ‘543 Patent. Similarly, Claim 10 of the ‘448 patent also recites substantially the same subject matter as Claim 6 of the instant application. It follows that for the same reasons as discussed above, Claim 6 of the instant application recites a broader embodiment of Claim 6 of the ‘543 Patent and Claim 10 of the ‘448 patent. For at least these reasons, Claim 6 of the instant application is not patentably distinct from Claims 6 of the ‘543 Patent and Claims 10 of the ‘448 patent.
Regarding independent Claim 16, the Claim recite substantially the same subject matter as discussed above with respect to independent Claims 16 of the ‘543 Patent. Claim 16 of the instant application recites a broader embodiment of the subject matter of Claims 1 and 6 of the ‘448 Patent but is directed to a non-transitory computer-readable storage medium. However, one of ordinary skill in the art at the time of filing the application would have understood that if one had the electronic gaming machine of Claim 9 of the ‘448 patent then they would also have the non-transitory computer readable medium (e.g., memory). It follows for the reasons in the claim chart and discussion above, it would have been obvious to one of ordinary skill in the art at the time of filing the application that Claim 16 is not patentably distinct from Claim 10 of the ‘448 patent.
Regarding Claims 2, 9, and 17, the Claims recites subject matter directed to: i) include a configurable symbol in the stored bonus game state and controlling the second play of the bonus game/after the play of the base game (in the instant application) and ii) to populate the symbols from the first bonus game outcome into the second bonus game outcome with at least one or more symbols held from the first bonus game outcome. This is substantially the same as what is recited in Claims 2, 9, and 17 of the ‘543 Patent and Claims 1 and 9-10 of the ‘448 patent as shown in the claim chart above. For at least these reasons, Claims 2, 9, and 17 are not patentably distinct from the subject matter recited in Claims 2, 9, and 17 of the ‘543 Patent and Claims 1 and 9-10 of the ‘448 patent as shown in the claim chart above.
Regarding Claim 3, the Claim recites subject matter that is substantially the same as recited in Claim 3 of the ‘543 Patent. Regarding Claim 3 of the instant application recites substantially the as Claim 4 of the ‘448 patent. The Claims are different from each other in that Claim 3 of the instant application is directed to a gaming device and Claim 4 of the ‘448 patent is directed to the method of an electronic gaming machine. However, one of ordinary skill in the art at the time of filing the application would understand that if one had the method to perform the steps they would also have the server to perform the steps. For at least these reasons, Claim 3 of the instant application is not patentably distinct from Claim 4 of the ‘448 patent.
Regarding Claims 4, 10, and 18, the Claims recite subject matter to include all symbols symbol(s) of the first bonus game outcome in the stored bonus game state and to populate all of the symbols of the first bonus game outcome into the second bonus game outcome. The Claims are not patentably distinct from the subject matter of Claims 4, 10, and 18 of the ‘543 Patent and Claim 5 of the ‘448 patent. The Claims are different in that of Claims 4, 10, and 18 of the instant application and Claims 4, 10, and 18 of the ‘543 Patent are directed to a gaming device as opposed to Claim 5 of the ‘448 patent which is directed to the method of an electronic gaming machine. However, one of ordinary skill in the art at the time of filing the application would understand that if one had the method to perform the steps, they would also have the server to perform the steps. For at least these reasons, Claims 4, 10, and 18 of the instant application are not patentably distinct from Claims 4, 10, and 18 of the ‘543 Patent and Claim 5 of the ‘448 patent.
Regarding Claims 5, 11, and 19, the Claims recite substantially the same subject matter as Claims 5, 11, and 19 of the ‘543. For at least these reasons, Claims 5, 11, and 19 are not patentably distinct from the subject matter of Claims 5, 11, and 19 of the ‘543 Patent and Claims 7, 10, and 14 of the ‘448 patent.
Regarding claim 7, the claim recites substantially the same subject matter as Claim 7 of the ‘543 Patent and Claim 2 of the ‘448 patent as they both include at least one persistent function symbol that is populated from the retrieved bonus state in the second bonus game. For at least these reasons, Claim 7 is not patentably distinct from Claim 7 of the ‘543 Patent and Claim 2 of the ‘448 patent.
Regarding Claim 8, the claim recites substantially the same subject matter as recited in Claim 8 of the ‘543 Patent and Claims 3 and 12 of the ‘448 patent. Each of the Claims recite a persistent WILD symbol of the first bonus game outcome to be populated in the second bonus game outcome. For at least these reasons, Claim 8 is not patentably distinct from Claim 8 of the ‘543 Patent and Claims 3 and 12 of the ‘448 patent.
Regarding claim 12, the Claim recites the substantially the same subject matter as Claim 12 of the ‘543 Patent. Claim 12 recites substantially the same subject matter as Claim 10 of the ‘448 patent which comprises a gaming device wherein the display of the game comprises a display device. The differences between the Claims are that the instant application recites the broader embodiment of “one or more” display devices as opposed to “a display device” of the ‘448 patent. One of ordinary skill in the art at the time of filing the application would understand that the broader embodiment of one or more display devices encompasses the subject matter of the ‘448 patent. Alternatively, it would have been an obvious variant because it would only require a mere duplication of parts of the display devices of the gaming device. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing the application that the Claims are not patentably distinct.
Regarding Claims 13 and 20, the Claims recites substantially the same subject matter as recited in Claims 13 and 20 of the ‘543 Patent. Claims 13 and 20 recite substantially the same subject matter as Claim 13 of the ‘448 patent. However, the limitation, “wherein availability of the stored first bonus game state is limited to a specified period of time” encompasses the subject matter of Claim 13 of the ‘448 patent which limits the availability of the retained bonus condition during one or more fourth spins of the reels to be used in a subsequent play of the bonus game. For at least these reasons, the Claims 13 and 20 of the instant application are not patentably distinct from Claims 13 and 20 of the ‘543 Patent and Claim 13 of the ‘448 patent.
Regarding Claim 14, the Claim is not patentably distinct from the subject matter of Claim 14 of the ‘543 Patent because they are directed to substantially the same subject matter. The claims are obvious variants because one of ordinary skill in the art at the time of filing the application would understand that if one had the method to perform the steps, they would also have the server to perform the steps. Claim 14 is not patentably distinct from Claim 10 of the ‘448 patent because “a specified number of plays of the base game” is a broader embodiment that is encompassed by the limitations of Claim 10 which recites “a first” and “a second” play of the base game. Stated differently, “a first” and “a second” play of the base game is a “specified number of plays of the base game”. For at least these reasons, Claim 14 is not patentably distinct from Claim 10 of the ‘448 patent.
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 grouping of abstract ideas without significantly more. The claims, as exemplified by independent Claim 6 recites, limitations directed to a grouping of abstract ideas such as:
6. A gaming device, comprising:
one or more displays; and
a controller executing instructions stored in a memory, wherein execution of the instructions causes the controller to at least:
cause one or more first bonus game reel spins to be displayed on the one or more displays, to cause symbols for a first bonus game outcome received from one or more server computing devices to be displayed on the one or more displays; -certain method of organizing human activity;
cause, after causing the one or more base game reel spins to be displayed on the one or more displays and per a stored first bonus game state one or more base game reel spins to be displayed on the one or more displays to provide a base game outcome received from the one or more server computing devices; -certain method of organizing human activity;
cause, after causing the one or more base game reel spins to be displayed on the one or more displays, one or more base game reel spins to be displayed on the one or more displays to provide a base game outcome received from the one or more server computing devices; -certain method of organizing human activity; and
cause, after causing the one or more displays to be populated with the one or more symbols of the first bonus game outcome and via one or more second bonus game reel spins on the one or more displays, symbols of a second bonus game outcome received from the one or more server computing devices to be displayed on the one or more displays, wherein the symbols of the second bonus game outcome include at least one symbol held from the one or more symbols of the first bonus game outcome and retrieved from the stored first bonus game state. -certain method of organizing human activity
The limitations, as underlined above, are found to recite a grouping of abstract ideas because they recite rules and/or instructions to manage a game which is analogous to a certain method of organizing human activity. For at least these reasons, the claims, as exemplified by independent Claim 6, are found to recite a grouping of abstract ideas under Step 2A-prong 1.
This judicial exception is not integrated into a practical application because the additional limitations such as: “one or more displays;” “a controller executing instructions stored in a memory, wherein execution of the instructions causes the controller to at least:”, “to be displayed on the one or more displays,” “received from one or more server computing devices to be displayed on the one or more displays;” “to be displayed on the one or more displays” “to be displayed on the one or more displays” “received from the one or more server computing devices;” “on the one or more displays” and “received from the one or more server computing devices to be displayed on the one or more displays” recite mere instructions to invoke a computer as a tool to implement the abstract idea, insignificant extra solution activity, and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). Therefore the additional limitations are not found to integrate the claim into a practical application under Step 2A-prong 2.
The claims, as exemplified by independent Claim 6 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements such as: “a gaming device”, “one or more displays”, “a controller executing instructions stored in a memory”, “on the display”, and “one or more server computing devices” when viewed individually and/or as a collection of elements recite highly-generalized computer components to be invoked to perform the abstract idea, perform insignificant extra solution activity of the abstract idea, and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(f)-(h)). For instance, Vancura (US 2010/0029381 A1) discloses a conventional gaming system comprises a controller to execute game program instructions stored in a memory to cause the game on the display that may provide at least some of the functionality at a central network server (see Vancura, Fig. 1, 0008, 0037-0040). For at least these reasons, the additional elements when viewed individually and/or as a collection of elements are not found to recite significantly more than the abstract idea under Step 2B.
With respect to independent Claims 1 and 16, the claims recite substantially the same subject matter as analyzed above with respect to independent Claim 1. The analysis has been incorporated herein. The claims differ in that they are directed to the method and non-transitory computer readable medium embodiments of the claimed subject matter. However, these differences such as “one or more servers” of independent Claim 1 and the “non-transitory computer readable medium” of independent Claim 16 does not change or alter the findings in the analysis of the recited subject matter. For at least these reasons, independent Claims 1 and 16 are found to recite a grouping of abstract ideas without significantly more.
With respect to dependent Claims 2-5, 7-15, and 17-20, the claims have been reviewed and were each found to recite additional limitations that were directed to at least one of: a grouping of abstract ideas (see MPEP 2106.04(a)), invoke a computer as a tool to implement the abstract idea (see MPEP 2106.05(f)), insignificant extra solution activity (see MPEP 2106.05(g)), and/or provide a technological environment in which to perform the abstract idea (see MPEP 2106.05(h)). For at least these reasons, claims 1-20 are found to be directed to a grouping of abstract ideas without significantly more.
Conclusion
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.
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/RYAN HSU/EXAMINER, Art Unit 3715
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