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 .
Specification
Applicant should indicate granted US Patent number for cited parent application 17686127.
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 rejected under 35 U.S.C. 101 because the claimed invention is directed to organizing human activity in the form of fundamental economic activities directed to hedging (wagering games are recognized as a form of hedging) and a mental process without significantly more. As per step 1 examiner recognizes the claims are directed towards methods performed by gaming devices or gaming systems. Therefore step 1 is met. As per step 2A the claim(s) recite(s) “initiating a casino wagering game; displaying, on the electronic display device, an initial configuration of the active array for a first game level; generating special symbols in the active array; in response to a first predetermined number of the special symbols appearing in the active array over one or more spins, progressing from the first game level to a second game level by: expanding the active array to include additional symbol positions; animating the expansion on the electronic display device, wherein the animation includes a visual indication of a first progressive jackpot associated with the initial configuration being replaced by a visual indication of a second progressive jackpot associated with the expanded active array; and repeating the generating operation with the expanded active array for one or more additional spins; and providing an award based on the special symbols and the current game level, wherein the first jackpot value is not an available award after progressing to the second game level.” a wagering game comprising a slot game wherein during a first game level a first array is presented and based on a predetermined number of symbols occurring during a plurality of plays progress to a second game level which comprises an expanded array and the second jackpot value wherein the first jackpot value is no longer available. Specifically rules for the play of a slot game. Dependent claims further include rules such as how an array is expanded, what symbols is used as the special symbol, and how to progress from a first level to a second or third level including use of animations. As per the hedging component examiner recognizes that bolded language include the use of term “wager game”, “progressive jackpot”, and the step of awarding a jackpot. Therefore the claims are directed towards a wagering game which is a form of hedging which involve the human activity of an individual taking a financial risk in order to win a form of profit. In this case a player and a game operator put at risk monetary value based on the outcome of a game. Further paragraph [0036] of the disclosure defines a progressive jackpot as being funded by wagers and involving the payout of wagers. Therefore a financial component is present during the play of the game and the game involves wagers. As per the mental step further bolded language such as “in response to” comprises a game rule wherein the mental step of observation and a determination is made regarding a state of the game which is a step that can be performed mentally. Specifically a player can observe an outcome of a slot game, such as symbols displayed, and count the number of symbols of a special type that occur in order to make the determination if the game should progress from a first level to a second. Therefore the claims are directed towards rules for a game which can be performed in the mind. This judicial exception is not integrated into a practical application because the claims remain directed towards hedging and mental steps in the form of game rules which provide a financial reward. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the elements cited above remain directed towards playing of a game involving hedging using rules that can be performed mentally and does not include steps that goes beyond those rules or which is not addressed in step 2B. Specifically a game is a series of rules which can be performed mentally based on observation and no recited steps go beyond conventional feature or extra solution activity that cannot be performed in the mind or which does not involve hedging. The claims do not comprise a practical application such as the improvement in the function of a machine but instead go towards how to play a particular game which comprises game rules. 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.
Limitations "method of operating a gaming machine, the gaming machine including an electronic display device configured to display an active array of symbol positions", "displaying, on the electronic display device, an initial configuration of the active array for a first game level", specific animation steps, and other associated hardware 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 convention 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]). Hornik et al. (US Pub. No. 2006/0148548 A1) teaches "a video slot machine comprising conventional gaming terminal components including input devices, such as wager acceptor(s) 102, payout device 108, a main display 112, which may comprise a touch screen display portion 104, push-buttons 106, and an information reader (e.g., player-identification card reader) 110." paragraph [0022] wherein buttons include "buttons integrated with a touch-screen display, and allow players to select various options with respect to the games played on the gaming terminal 100" paragraph [0022]. Specifically it is conventional to communicate data to output to a user comprising animated reels 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 expanding arrays or advertising level changes via animation to output a feature of the game since the displaying of this step is extra solution activity and directed to the outputting of data to inform a player which is conventional to the art. The particular theme used in animation, such as how to display an award, is extra solution activity which does not provide a practical application and is recognized as being directed towards conventional gaming steps such as animation of a game outcome. The particular images shown are design and theme choices which are extra solution activity. Therefore the hardware and animation features do not provide a practical application.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-21 of U.S. Patent No. 11354982. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed towards a slot game comprising a first game array with the game progressing to a second array based on a predetermined number of feature symbols being generated with the second array comprising an expanded array. Further the progression having a first jackpot progressing to a second jackpot wherein for subsequent plays after the progression the first jackpot is no longer available. The difference between the claims is language concerning levels in the current application but examiner recognizes that this reads on the way the array and jackpot is progressed in patent 11354982. Further the claims in 11354982 does not specifically indicate animation to display these features however examiner recognizes the display steps in 11354982 would read on the action of animation since the purpose of animation would be to display these particular features. Therefore the claims are not patentably distinct.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Knight et al. (US Pat. No. 10,957,147 B1) teaches a slot game comprising the a symbol array which is expanded with additional levels of the expansion relating to features of the game.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN L MYHR whose telephone number is (571)270-7847. The examiner can normally be reached 10AM-6PM.
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/JUSTIN L MYHR/Primary Examiner, Art Unit 3715 3/3/2026