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.
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, 13, 15-16 of US 11,475,735 B2 and claims 1, 4-5, 11-12, 14, 17-18, and 20 of U.S. Patent No. 12,033,474 B2. The claims are analyzed in the claim chart below:
Claim 1 of the instant Application
Claim 1 of the ‘735 Patent
Claims 1 and 4 of the ‘474 Patent
Similarities and Differences
An electronic gaming system comprising:
An electronic gaming machine comprising:
An electronic gaming system comprising:
The instant application recites the same electronic gaming system of Claim 1 of the ‘735 and Claim 4 of the ‘474 Patent
a memory storing instructions;
a display device; and a processor configured to execute instructions stored in a memory,
at least one memory storing instructions and a plurality of free game meters;
The instant application and Claim 1 of the ‘735 and 4 of the ‘474 Patent recite a broader embodiment of the memory storing instructions
a processor in communication with the memory, wherein the instructions, when executed by the processor, cause the processor to:
which when executed by the processor, cause the processor to at least:
and at least one processor in communication with the at least one memory, wherein the instructions, when executed by the at least one processor, cause the at least one processor to:
The instant application and the Claims of the ‘735 and ‘474 Patents are found to recite an analogous processor in communication with memory.
cause display of a base game outcome based on a first output of a random number generator (RNG);
control the display device to display a base game that generates a randomized game outcome for a plurality of symbol positions based at least in part on a first random number generator (RNG) output and one or more reel strips, the base game displaying a plurality of symbols across a first number of rows, at least one reel strip of the one or more reel strips includes one or more free game accumulation symbols;
cause display of a base game that includes a randomized game outcome for a plurality of symbol positions based at least in part on one or more reel strips including a plurality of symbols, the plurality of symbols including a plurality of types of free game accumulation symbols;
The Claims of the instant application are similar to the Claims of the ‘735 and ‘474 Patents because they recite a display of a base game outcome that is based on a first output of a random number generator (RNG).
The claims are different in that the instant application recites a broader embodiment that the subject matter of the ‘735 Patent. Claim 4 of the ‘474 Patent differs by reciting a more specific embodiment of the base game and the first RNG output for use displaying the base game.
control the display device to display at least one of the one or more free game accumulation symbols in the plurality of symbol positions as a part of the randomized game outcome based on a reel stop position on at least one reel strip, the reel stop position being identified using the first RNG output, wherein display of the at least one free game accumulation symbols in the plurality of symbol positions satisfies an accumulation condition;
cause display of at least one of the free game accumulation symbols as part of the randomized game outcome, wherein display of the at least one of the free game accumulation symbols satisfies an accumulation condition;
determine that the base game outcome satisfies a trigger condition for play of a feature game;
in response to the accumulation condition being satisfied, increment at least one free game meter of a plurality of free game meters stored in the memory, the plurality of free game meters being persistent in the memory between plays of the base game, wherein each free game meter of the plurality of free game meters is associated with one feature game of a plurality of feature games and only incremented in response to one type of accumulation symbol of a plurality of types of accumulation symbols and only incremented in response to the one type of accumulation symbol displayed during the base game, and wherein each free game meter stores a number of free games that will be awarded to a player of the electronic gaming machine when the feature game associated with the free game meter is triggered from the base game,
and in response to the accumulation condition being satisfied, increment at least one free game meter of the plurality of free game meters, the plurality of free game meters being persistent in the at least one memory between game play instances of the base game, wherein each free game meter of the plurality of free game meters is associated with one feature game of a plurality of feature games and a type of free game accumulation symbol of the plurality of types of free game accumulation symbols, each free game meter being only incremented in response to the randomized game outcome including the associated type of free game accumulation symbol, and wherein each free game meter stores a number of free games that will be awarded when the feature game associated with the free game meter is triggered from the base game.
The instant application and the Claims of the ‘735 and ‘474 Patent recite determining/in response to a trigger condition for play of a feature game.
The claims of the ‘735 and ‘474 differ by the additional steps to increment the free game meters and the persistence of the meters associated with a plurality of feature games.
select a first feature game type from a plurality of feature game types, each feature game type of the plurality of feature game types including a randomized game outcome for a plurality of symbol positions arranged in a matrix;
control the display device to display each of the plurality of free game meters during play of the base game by accessing the memory to provide a visual indication of a respective number of accumulated free games for each feature game;
The electronic gaming system of Claim 3, wherein the randomized game outcome is determined based in part on a first output of a random number generator (RNG), and wherein the instructions, when executed, further cause the at least one processor to: cause display of a first feature game is in response to the randomized game outcome including a first type of the free game accumulation symbols;
The claims of the instant application and the Claims of the ‘735 and ‘474 recite steps of a first feature game to be selected to include a randomized game outcome for a plurality of symbol positions arranged in a matrix.
The claims differ in that the ‘735 Patent recites additional steps to update free game meters and a specific embodiment of the first feature game type from a plurality of feature game types. The claims differ from the ’735 Patent in that the claims recite further particulars as the randomized game outcome comprising a random number generator to provide the RNG output.
generate a second RNG output; and configure a size of the matrix for play of the first feature game type, wherein the size of the matrix is based on the selected first feature game type and the second RNG output.
and control the display device to display at least one feature game of the plurality of feature games, wherein each feature game is associated with a respective number of rows that is different than the first number of rows associated with the base game and that is determined based on a second output of the RNG and in response to the corresponding feature game being triggered
and cause display of a second number of rows for play of the first feature game, wherein the second number of rows is determined based on a second output of the RNG.
The instant application and the Claims of the ‘735 and ‘474 Patent recite substantially the same subject matter to modify the size of the matrix based upon the selected first feature game and the second RNG output.
The claims differ in that the ‘735 and ‘474 Patents recite a narrower embodiment of the change in size of the matrix being directed to a number of rows of the display.
Although the claims at issue are not identical, they are not patentably distinct from each other because independent Claims 1, claims of the instant application and Claim 1 of the ‘735 Patent and Claims 1 and 4 of the ‘474 Patent each recite an analogous electronic gaming system comprising a memory storing instructions; a processor in communication with the memory, wherein the instructions, when executed by the processor, cause the processor to: cause display of a base game outcome based on a first output of a random number generator (RNG); determine that the base game outcome satisfies a trigger condition for play of a feature game; select a first feature game type from a plurality of feature game types, each feature game type of the plurality of feature game types including a randomized game outcome for a plurality of symbol positions arranged in a matrix; generate a second RNG output; and configure a size of the matrix for play of the first feature game type, wherein the size of the matrix is based on the selected first feature game type and the second RNG output. The claims of the instant application differ in that they recite a broader embodiment utilizing obvious variants of the terms such as i) “a first feature game type from a plurality of feature game types” in the instant application as opposed to a first feature game including an accumulation feature of the ‘735 Patent and the ‘474 Patent and ii) configuring the size of the matrix for the play of the first feature game type based on the second RNG output of the instant application and configuring the number of rows based upon the second output of the RNG in the ‘735 and ‘474 Patent. For at least these reasons, independent Claim 1 of the instant application is not found to be patentably distinct from Claim 1 of the ‘735 Patent and Claims 1 and 4 of the ‘474 Patent.
Claim 2 of the instant application is analogous limitations of Claim 1 of the ‘735 Patent. The claims differ in that it recites a matrix comprising determining a number of rows and columns which is an obvious variant that is not patentably distinct from Claim 1 of the ‘735 Patent.
Claim 3 of the instant application recites analogous subject matter as Claim 1 of the ‘735 Patent.
Claim 6 of the instant application recites substantially the same subject matter as Claim 1 of the ‘735 Patent.
Claim 7 of the instant application recites substantially the same subject matter as Claim 1 of the ‘735 Patent.
Claim 8 of the instant application recites substantially the same subject matter as Claim 1 of the ‘735 Patent.
Claim 9 of the instant application recites substantially the same subject matter as Claim 1 of the ‘735 Patent.
Claim 11 of the instant application recites substantially the same subject matter as Claim 1 of the ‘735 Patent. The claims differ in that the instant application is directed to the non-transitory computer readable storage medium of the electronic gaming device as opposed to the electronic gaming device in the ‘735 Patent. However, is well understood that if one were to have possession of the electronic gaming device than they would have the non-transitory computer storage medium of the gaming device. For at least these reasons, the claims are not patentably distinct.
Claim 12 of the instant application recites substantially the same subject matter as Claim 1 of the ‘735 Patent.
Claim 13 of the instant application recites substantially the same subject matter as Claim 1 of the ‘735 Patent.
Claim 16 of the instant application recites substantially the same subject matter as Claim 1 of the ‘735 Patent.
Claim 17 of the instant application recites substantially the same subject matter as Claim 1 of the ‘735 Patent.
Claim 18 of the instant application recites substantially the same subject matter as independent Claim 13 of the ‘735 Patent.
Claim 19 of the instant application recites an obvious variant to one of ordinary skill in the art at the time of filing the application as Claims 13 and 15 of the ‘735 Patent.
Claim 20 of the instant application recites substantially the same subject matter as Claims 13 and 16 of the ‘735 Patent.
Claim 2 of the instant application recites substantially the same subject matter of Claims 1 and 4 of the ‘474 Patent.
Claim 3 recites substantially the same subject matter as Claim 1 of the ‘474 Patent. For instance, the instant application recites the first feature game type which is analogous to the first feature game of the ‘474 Patent which includes free game meters and the accumulation feature to select the number of free games and the feature game type.
Claim 6 recites substantially the same subject matter directed to the free game accumulation systems as recited in Claim 1 of the ‘474 Patent.
Claim 7 recites substantially the same subject matter directed as Claim 1 of the ‘474 Patent directed to incrementing a free game meter in response to the accumulation condition being satisfies between game play instances of the base game.
Claim 8 recites substantially the same subject matter of Claim 1 of the ‘474 Patent.
Claim 9 recites substantially the same subject matter directed to the trigger condition being satisfied, the number of free games shown in the free game meter, awarding the number of free games by evaluating the outcome of each of the number of free games as recited in Claims 1 and 5 of the ‘474 Patent.
Claim 10 recites substantially the same subject matter as recited in Claim 1 and 11 of the ‘474 Patent.
Claim 11 recites substantially the same subject matter as independent Claim 17 of the ‘474 Patent which is directed to the non-transitory computer-readable storage medium embodiment of the invention.
Claim 12 recites substantially the same subject matter as Claim 4 of the ‘474 Patent but differs in that Claim 4 is directed to the system as opposed to the non-transitory computer readable storage medium embodiment. However, it would have been obvious to one of ordinary skill in the art at the time of filing the application that if you have the system with memory storing instructions you would have the non-transitory computer readable medium. For at least these reasons, the claims are not patentably distinct.
Claim 13 recites substantially the same subject matter as Claim 1 of the ‘474 Patent for the same reasons as discussed above.
Claim 14 recites substantially the same subject matter as Claim 1 of the ‘474 Patent for the same reasons as discussed above.
Claim 16 recites substantially the same subject matter as Claims 1 and 18 of the ‘474 Patent.
Claim 17 recites substantially the same subject matter as Claim 20 of the ‘474 Patent.
Claim 18 recites substantially the same subject matter as independent Claim 12 of the ‘474 Patent.
Claim 19 recites substantially the same subject matter as Claim 12 and 14 of the ‘474 Patent.
Claim 20 recites substantially the same subject matter as Claim 20 of the ‘474 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 idea without significantly more. The claims, as exemplified by independent Claim 1, recites limitations directed to a grouping of abstract ideas such as:
1. An electronic gaming system comprising:
a memory storing instructions; and
a processor in communication with the memory, wherein the instructions, when executed by the processor, cause the processor to:
cause display of a base game outcome based on a first output of a random number generator (RNG);
determine that the base game outcome satisfies a trigger condition for play of a feature game; -certain method of organizing human activity;
select a first feature game type from a plurality of feature game types, each feature game type of the plurality of feature game types including a randomized game outcome for a plurality of symbol positions arranged in a matrix; -certain method of organizing human activity;
generate a second RNG output; and
configure a size of the matrix for play of the first feature game type, wherein the size of the matrix is based on the selected first feature game type and the second RNG output. --certain method of organizing human activity.
The limitations of exemplary claim 1, as underlined above, are found to recite a certain method of organizing human activity because they recite a series of steps and/or instructions for managing a base game and a feature game. For at least these reasons, the claims are found to recite a grouping of abstract idea under Step 2A-prong 1.
This judicial exception is not integrated into a practical application because the additional limitations such as: “cause display of a base game outcome based on a first output of a random number generator (RNG);” and “generate a second RNG output;” recite mere instructions to invoke a computer as a tool to implement the abstract idea and/or insignificant extra solution activity (see MPEP 2106.05(f)-(g)). The remaining limitations such as: “An electronic gaming system”, “a memory storing instructions;” and “a processor in communication with memory, wherein the instructions, when executed by the processor, cause the processor to:” recite steps that 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)). For at least these reasons, the claims, as exemplified by independent Claim 1 are not found to integrate the claim into a practical application under step 2A-prong 2 .
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements such as : “a memory”, “a processor” and “a random number generator” when viewed individually and/or as a collection of elements as a whole recite well-known, routine, and conventional use of highly-generalized computer components used in their ordinary and conventional manner. For instance, Vancura (US 2010/0029381 A1) discloses a conventional electronic gaming device comprises a memory, a processor, and a random number generator that is invoked to generate random events for managing a game (see Vancura, Fig. 1, 0008, 0037-0040). It follows that the additional elements do not amount to significantly more but recite mere instructions to invoke a computer as a tool, insignificant extra solution activity, and/or provide a technological environment in which to perform the abstract idea. For at least these reasons, the claims, as exemplified by independent Claim 1, do not amount to significantly more than the abstract idea under Step 2B.
Regarding independent Claims 11 and 18 are directed to the method and non-transitory computer-readable storage medium embodiments which does not change or alter the analysis under 35 USC 101 for the same reasons as discussed with independent Claim 1 above. For at least these reasons, independent Claims 11 and 18 are found to recite a grouping of abstract ideas without significantly more.
Regarding dependent Claims 2-10, 12-17, and 19-20, the limitations have been reviewed and were found to further recite at least one of: a limitations directed to a grouping of abstract ideas (see MPEP 2106.04(d)), 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. For at least these reasons, the Claims 1-20 are found to be directed to a grouping of abstract ideas without significantly more.
Conclusion
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/RYAN HSU/EXAMINER, Art Unit 3715
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