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 an abstract idea without significantly more. Claim 18 recites a method of electronic gaming implemented by at least one processor in communication with at least one memory, the method comprising: randomly determining a first segment of a travel path for a selection indicium between a starting symbol position and an intermediate symbol position. The limitation of randomly determining a first segment of a travel path for a selection indicium between a starting symbol position and an intermediate symbol position, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “memory” and “processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “memory” and “processor” language, “determining” in the context of this claim encompasses the user mentally selecting a game piece to move. Similarly, the limitations of: determining, and causing are processes that, under their broadest reasonable interpretation, covers performance of the limitation in the mind. The same interpretation is applied to the remaining steps in claim 18. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application. In particular, the claim only recites a couple additional elements – memory and processor. The memory and processor is recited at a high-level of generality (i.e., as a generic processor implementing a step) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using memory and processor amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. Similar reasoning is applied to claims 1-17, 19, and 20.
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. 11,557,168; claims 1-20 of U.S. Patent No. 11,721,161; claims 1-20 of U.S. Patent No. 12,033,456. Although the claims are not identical, the claims of the current application are encompassed by the claims of the patents.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 6-13, and 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Publication No. 2014/0162750 A1 to Ryan (hereinafter “Ryan”).
Concerning claim 1, Ryan discloses an electronic gaming device comprising: at least one memory device with instructions stored thereon; and at least one processor in communication with the at least one memory device, wherein the instructions, when executed by the at least one processor (Fig. 3, paragraphs [0038], [0066]), cause the at least one processor to:
randomly determine a first segment of a travel path for a selection indicium between a starting symbol position and an intermediate symbol position (paragraphs [0095], [0104]-[0106], [0148], [0149] – first segment of a travel path is determined having a position between a starting symbol and an intermediate symbol);
randomly determine a second segment of the travel path for the selection indicium between the intermediate symbol position and an ending symbol position (paragraphs [0095], [0104]-[0106], [0148], [0149] – second segment of the travel path is determined having a position between an intermediate symbol and an ending symbol);
cause display of the selection indicium traversing the travel path on a display device of the electronic gaming device for an electronic game (paragraphs [0095], [0104]-[0106], [0148], [0149] – the selection indicum transverses the travel path); and
provide an output for the electronic game, wherein the output is associated with the ending symbol position and comprises at least one upgrade to be applied to a next play of the electronic game (paragraphs [0147]-[0149] – output is displayed based on the ending symbol position and award is applied to next game).
Concerning claims 2 and 11, Ryan discloses wherein the at least one upgrade comprises an additional selection indicium to be displayed for the next play of the electronic game (paragraphs [0147]-[0149] – additional selection indicum are displayed for the next game).
Concerning claims 3 and 12, Ryan discloses wherein the instructions further cause the at least one processor to cause display of the selection indicium and the additional selection indicium during the next play of the electronic game, wherein the selection indicium and the additional selection indicium traverse respective randomly determined travel paths during the next play of the electronic game (paragraphs [0095], [0104]-[0106], [0148], [0149] – additional selection indicum are displayed for the next game which transverse the travel paths during the next play of the game).
Concerning claims 4 and 13, Ryan discloses wherein the at least one upgrade comprises at least one of a first jackpot symbol being upgraded to a second jackpot symbol, at least one row being added to a matrix comprising the starting symbol position, the intermediate symbol position, and the ending symbol position, at least one column being added to the matrix comprising the starting symbol position, the intermediate symbol position, and the ending symbol position, or at least one additional play of the electronic game being provided (paragraphs [0150]-[0153] – upgrades include jackpot symbols).
Concerning claims 6 and 15, Ryan discloses wherein the instructions further cause the at least one processor to cause display of the selection indicium traversing the travel path at varying speeds (paragraph [0121] - speed is increased in game).
Concerning claims 7, 16, and 19, Ryan discloses wherein the instructions further cause the at least one processor to: receive a message associated with a game outcome for the electronic game from a server; and provide the output based on the game outcome associated with the message (paragraph [0120] – message is provided with respect to the outcome).
Concerning claim 8, Ryan discloses wherein the instructions further cause the at least one processor to: receive a message associated with the travel path from a server; and randomly determine at least one of the first segment or the second segment based on the message (paragraphs [0095], [0104]-[0106], [0148], [0149] – message is provided based on the travel path).
Concerning claim 9, Ryan discloses wherein the instructions further cause the at least one processor to identify the starting symbol position for the selection indicium based on a message received from a server (paragraphs [0095], [0104]-[0106], [0148], [0149] – starting symbol is determined based on message).
Concerning claims 10 and 18, see the rejection of claim 1.
Concerning claims 17 and 20, Ryan discloses wherein the instructions further cause the at least one processor to cause the selection indicium to be displayed as traversing the travel path on the display device by transmitting at least one message associated with at least one of the travel path or the output to the electronic gaming device displaying the electronic game (paragraphs [0095], [0104]-[0106], [0148], [0149] – message related to travel path is displayed).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ryan in view of US Publication No. 2019/0392677 A1 to Halvorson (hereinafter “Halvorson”).
Concerning claims 5 and 14, Ryal lacks specifically disclosing, however, Halvorson discloses wherein the instructions further cause the at least one processor to convert each wheel segment of a plurality of wheel segments to a respective symbol position of a plurality of symbol positions for the electronic game, wherein each wheel segment and corresponding respective symbol position are associated with a respective output amount, and wherein the plurality of symbol positions includes the starting symbol position, the intermediate symbol position, and the ending symbol position (paragraph [0117] – symbol moving around a path may be presented by a wheel segment). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the use of a wheel as disclosed by Halvorson in the system of Ryan in order to provide a variety of displays in the game, thereby increasing player interest.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed in the PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MALINA D BLAISE whose telephone number is (571)270-3398. The examiner can normally be reached Mon. - Thurs. 7:00 am - 5:00 pm (PT).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at 571-272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
MALINA D. BLAISE
Primary Examiner
Art Unit 3715
/MALINA D. BLAISE/Primary Examiner, Art Unit 3715