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 .
Procedural Summary
This is responsive to the claims filed 6/12/2024.
Claims 1-20 are pending.
Signed copies of the IDS’ are attached.
The Drawings filed 6/12/2024 are noted.
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 non-statutory subject matter.
Step 1:
The claims are drawn to process categories.
Thus, initially, under Step 1 of the analysis, it is noted that the claims are directed towards eligible categories of subject matter
Step 2A:
Prong 1: Does the Claim recite an Abstract idea, Law of Nature, or Natural Phenomenon?
Representative Claims 1, 8 and 15 are analyzed below, with italicized limitations indicating recitations of an abstract idea:
Claim 1: “A method of operating a gaming system, said method comprising: causing a display, by a display device, of a plurality of reels, the plurality of reels comprising a plurality of different symbols on the plurality of reels; causing a display, by the display device, of a plurality of the symbols on the plurality of reels for an activation of the reels; causing a display, by the display device, of a plurality of different paylines associated with the plurality of reels; causing a display, by the display device, of an indication of a positive determination of a randomly determined payline specific symbol replacement for a selected payline of the plurality of paylines for the play of the game; causing a display, by the display device, of a replacement of a displayed symbol along the selected payline with a replacement symbol, the displayed symbol being along the selected payline adjacent to a combination of displayed symbols along the selected payline that is a winning symbol combination; and causing a display, by the display device, of no other replacements of any of the plurality of displayed symbols along any of the other paylines except for the selected payline.”
Claim 8: “A method of operating a gaming system, said method comprising: causing a display, by a display device, of a plurality of reels, the plurality of reels comprising a plurality of different symbols on the plurality of reels; causing a display, by the display device, of a plurality of different paylines associated with the plurality of reels; causing a display, by the display device, of a plurality of the symbols on the plurality of reels for an activation of the reels, said display comprising for a selected one of the paylines, a winning combination of randomly determined symbols along the selected payline and a first randomly determined symbol along the selected payline adjacent to and after the winning combination of randomly determined symbols along the selected payline and that is not part of the winning combination of randomly determined symbols along the selected payline; causing a display, by the display device, of an indication of a positive determination of a randomly determined payline specific symbol replacement for the selected payline for the play of the game; and causing a display, by the display device, of a replacement of the first randomly determined symbol along the selected payline with a first replacement symbol, wherein the first replacement symbol extends the winning combination of randomly determined symbols along the selected payline.”
Claim 15: “A method of operating a gaming system, said method comprising: causing a display, by a display device, of a plurality of reels, the plurality of reels comprising a plurality of different symbols on the plurality of reels for an activation of the reels; causing a display, by the display device, of a plurality of different paylines associated with the plurality of reels; causing a display, by the display device, of a plurality of the symbols on the plurality of reels; after, for a selected one of the paylines, a display of a winning combination of randomly determined symbols along the selected payline and a first randomly determined symbol along the selected payline adjacent to and after the winning combination of randomly determined symbols along the selected payline and which is not part of the winning combination of randomly determined symbols along the selected payline, causing a display, by the display device, of an indication of a positive determination of a randomly determined payline specific symbol replacement for the selected payline for the play of the game; and causing a display, by the display device, of a replacement of the first randomly determined symbol along the selected payline with a first replacement symbol along the selected payline, wherein the first replacement symbol extends the winning combination of randomly determined symbols along the selected payline.”
The italicized limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG1, “certain methods of organizing human activity”, fundamental economic practices and managing interactions between people.
The claims are drawn to a wagering game; a method of exchanging consideration based on probabilities created during the dealing and displaying of outcomes; a fundamental economic practice. Here, the claims involve randomly displaying symbols on paylines and replacing symbols to realize a final combination of symbols evaluated for winning status.
Further, to the extent the claims are drawn to how a game is played, this represents interactions between players and a social activity. It also represents following rules/instructions (i.e., rules defining how the game is conducted.)
Prong 2: Does the Claim recite additional elements that integrate the exception in to a practical application of the exception?
Although the claims recite additional limitations, these limitations do not integrate the exception into a practical application of the exception. For example, the claims require additional limitations drawn to a gaming system with a display, a GUI.
These additional limitations do not represent an improvement to the functioning of a computer, or to any other technology or technical field, (MPEP 2106.05(a)). Nor do they apply the exception using a particular machine, (MPEP 2106.05(b)). Furthermore, they do not effect a transformation. (MPEP 2106.05(c)). Rather, these additional limitations amount to an instruction to “apply” the judicial exception using a computer as a tool to perform the abstract idea.
Step 2B:
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to conventional computer implementation.
For example, as pointed out above, the claimed invention recites additional elements facilitating implementation of the abstract process. However, these elements viewed individually and as a whole, are indistinguishable from conventional computing elements known in the art. Therefore, the additional elements fail to supply additional elements that yield significantly more than the underlying abstract idea.
Regarding the Berkheimer decision, U.S. Pub. No.: 2021/0233360 A1 to Hiten shows the conventionality of gaming systems with GUIs and implementing games on devices identical to the additional elements being claimed. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Additionally, Applicant’s Specifications acknowledge that generic devices including desktop computers are used to implement the claimed invention.2
It is noted that Applicant’s Specifications disclose several differences between general computing devices and electronic gaming machines.3 However, the present claims do not recite any features distinguishing them from general computing devices. Rather, the claims require gaming systems with displays. And, as described above, this only requires GUIs.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions provide conventional computer implementation of an abstract process.
Moreover, the claims do not recite improvements to another technology or technical field. Nor, do the claims improve the functioning of the underlying computer itself -- they only recite generic computing elements. Furthermore, they do not effect a transformation of a particular article to a different state or thing: the underlying computing elements remain the same.
Concerning preemption, the Federal Circuit precedent controls4:
The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct at 2354 (“We have described the concern that drives this exclusionary principal as one of pre-emption”). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. The concern is that “patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id. (internal quotations omitted). In other words, patent claims should not prevent the use of the basic building blocks of technology—abstract ideas, naturally occurring phenomena, and natural laws. While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot. (Emphasis added.)
For these reasons, it appears that the claims are not patent-eligible under 35 USC §101.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No.: 12,033,473 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims substantially disclose the pending claim limitations:
Pending Claims:
Patented Claims:
1. A method of operating a gaming system, said method comprising: causing a display, by a display device, of a plurality of reels, the plurality of reels comprising a plurality of different symbols on the plurality of reels; causing a display, by the display device, of a plurality of the symbols on the plurality of reels for an activation of the reels; causing a display, by the display device, of a plurality of different paylines associated with the plurality of reels; causing a display, by the display device, of an indication of a positive determination of a randomly determined payline specific symbol replacement for a selected payline of the plurality of paylines for the play of the game; causing a display, by the display device, of a replacement of a displayed symbol along the selected payline with a replacement symbol, the displayed symbol being along the selected payline adjacent to a combination of displayed symbols along the selected payline that is a winning symbol combination; and causing a display, by the display device, of no other replacements of any of the plurality of displayed symbols along any of the other paylines except for the selected payline.
2. The method of claim 1, wherein the replacement symbol is a wild symbol.
3. The method of claim 1, which comprises causing a display, by the display device, of replacements of a plurality of displayed symbols along the selected payline with replacement symbols, said displayed symbols being along the selected payline after the combination of displayed symbols along the selected payline that are the winning symbol combination.
4. The method of claim 3, wherein the replacement symbols are wild symbols.
5. The method of claim 1, which comprises causing the selected payline to be a same one of the plurality of paylines for each of a plurality of activations of the reels.
6. The method of claim 1, which comprises causing the selected payline to be different ones of the plurality of paylines for two different activations of the reels.
7. The method of claim 1, which comprises causing a processor to select the selected payline.
8. A method of operating a gaming system, said method comprising: causing a display, by a display device, of a plurality of reels, the plurality of reels comprising a plurality of different symbols on the plurality of reels; causing a display, by the display device, of a plurality of different paylines associated with the plurality of reels; causing a display, by the display device, of a plurality of the symbols on the plurality of reels for an activation of the reels, said display comprising for a selected one of the paylines, a winning combination of randomly determined symbols along the selected payline and a first randomly determined symbol along the selected payline adjacent to and after the winning combination of randomly determined symbols along the selected payline and that is not part of the winning combination of randomly determined symbols along the selected payline; causing a display, by the display device, of an indication of a positive determination of a randomly determined payline specific symbol replacement for the selected payline for the play of the game; and causing a display, by the display device, of a replacement of the first randomly determined symbol along the selected payline with a first replacement symbol, wherein the first replacement symbol extends the winning combination of randomly determined symbols along the selected payline.
9. The method of claim 8, wherein the first replacement symbol is a wild symbol.
10. The method of claim 8, which comprises: causing a display, by the display device, of a second randomly determined symbol along the selected payline after the winning combination of randomly determined symbols along the selected payline and which is not part of the winning combination of randomly determined symbols along the selected payline; and causing a display, by the display device, of a replacement of the second randomly determined symbol along the selected payline with a second replacement symbol, wherein the second replacement symbol further extends the winning combination of randomly determined symbols along the selected payline.
11. The method of claim 10, wherein the first and second replacement symbols are wild symbols.
12. The method of claim 8, which comprises, for each of a plurality of activations of the reels causing the selected payline to be a same one of the plurality of paylines.
13. The method of claim 8, which comprises causing a display, by the display device, of no other replacements of any of the plurality of displayed symbols along any of the other paylines except for the selected payline for the activation of the reels.
14. The method of claim 8, which comprises causing a processor to select the selected payline.
15. A method of operating a gaming system, said method comprising: causing a display, by a display device, of a plurality of reels, the plurality of reels comprising a plurality of different symbols on the plurality of reels for an activation of the reels; causing a display, by the display device, of a plurality of different paylines associated with the plurality of reels; causing a display, by the display device, of a plurality of the symbols on the plurality of reels; after, for a selected one of the paylines, a display of a winning combination of randomly determined symbols along the selected payline and a first randomly determined symbol along the selected payline adjacent to and after the winning combination of randomly determined symbols along the selected payline and which is not part of the winning combination of randomly determined symbols along the selected payline, causing a display, by the display device, of an indication of a positive determination of a randomly determined payline specific symbol replacement for the selected payline for the play of the game; and causing a display, by the display device, of a replacement of the first randomly determined symbol along the selected payline with a first replacement symbol along the selected payline, wherein the first replacement symbol extends the winning combination of randomly determined symbols along the selected payline.
16. The method of claim 15, wherein the first replacement symbol is a wild symbol.
17. The method of claim 15, which comprises causing the selected payline to be a same one of the plurality of paylines.
18. The method of claim 15, which comprises causing a display, by the display device, of no other replacements of any of the plurality of displayed symbols along any of the other paylines except for the selected payline.
19. The method of claim 15, which comprises causing a processor to select the selected payline.
20. The method of claim 15, which comprises causing a display, by the display device, of the first replacement symbol moving along the selected payline to a position of the first randomly determined symbol along the selected payline.
1. A gaming system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor in association with a play of a game, cause the processor to: cause a display, by a display device, of a plurality of reels, the plurality of reels comprising a plurality of different symbols on the plurality of reels; cause a display, by the display device, of a plurality of the symbols on the plurality of reels; cause a display, by the display device, of a plurality of different paylines associated with the plurality of reels; cause a display, by the display device, of an indication of a positive determination of a randomly determined payline specific symbol replacement for a selected payline of the plurality of paylines for the play of the game; cause a display, by the display device, of a replacement of a displayed symbol along the selected payline with a replacement symbol, the displayed symbol being along the selected payline adjacent to a combination of displayed symbols along the selected payline that is a winning symbol combination; and cause a display, by the display device, of no other replacements of any of the plurality of displayed symbols along any of the other paylines except for the selected payline.
2. The gaming system of claim 1, wherein the replacement symbol is a wild symbol.
3. The gaming system of claim 1, wherein the plurality of instructions, when executed by the processor, cause the processor in association with the play of the game to cause a display, by the display device, of replacements of a plurality of displayed symbols along the selected payline with replacement symbols, said displayed symbols being along the selected payline after the combination of displayed symbols along the selected payline that are the winning symbol combination.
4. The gaming system of claim 3, wherein the replacement symbols are wild symbols.
5. The gaming system of claim 1, wherein the plurality of instructions, when executed by the processor, cause the processor in association with each play of the game to cause the selected payline to be a same one of the plurality of paylines.
6. The gaming system of claim 1, wherein the plurality of instructions, when executed by the processor, cause the processor in association with the play of the game to select the selected payline.
7. A gaming system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor in association with a play of a game, cause the processor to: cause a display, by a display device, of a plurality of reels, the plurality of reels comprising a plurality of different symbols on the plurality of reels; cause a display, by the display device, of a plurality of different paylines associated with the plurality of reels; cause a display, by the display device, of a plurality of the symbols on the plurality of reels, said display comprising for a selected one of the paylines, a winning combination of randomly determined symbols along the selected payline and a first randomly determined symbol along the selected payline adjacent to and after the winning combination of randomly determined symbols along the selected payline and that is not part of the winning combination of randomly determined symbols along the selected payline; cause a display, by the display device, of an indication of a positive determination of a randomly determined payline specific symbol replacement for the selected payline for the play of the game; and cause a display, by the display device, of a replacement of the first randomly determined symbol along the selected payline with a first replacement symbol, wherein the first replacement symbol extends the winning combination of randomly determined symbols along the selected payline.
8. The gaming system of claim 7, wherein the first replacement symbol is a wild symbol.
9. The gaming system of claim 7, wherein the plurality of instructions, when executed by the processor, cause the processor in association with the play of the game to cause a display, by the display device, of a second randomly determined symbol along the selected payline after the winning combination of randomly determined symbols along the selected payline and which is not part of the winning combination of randomly determined symbols along the selected payline; and cause a display, by the display device, of a replacement of the second randomly determined symbol along the selected payline with a second replacement symbol, wherein the second replacement symbol further extends the winning combination of randomly determined symbols along the selected payline.
10. The gaming system of claim 9, wherein the first and second replacement symbols are wild symbols.
11. The gaming system of claim 7, wherein the plurality of instructions, when executed by the processor, cause the processor in association with each play of the game to cause the selected payline to be a same one of the plurality of paylines.
12. The gaming system of claim 7, wherein the plurality of instructions, when executed by the processor, cause the processor in association with the play of the game to cause a display, by the display device, of no other replacements of any of the plurality of displayed symbols along any of the other paylines except for the selected payline.
13. The gaming system of claim 7, wherein the plurality of instructions, when executed by the processor, cause the processor in association with the play of the game to; select the selected payline.
14. A gaming system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor in association with a play of a game, cause the processor to: cause a display, by a display device, of a plurality of reels, the plurality of reels comprising a plurality of different symbols on the plurality of reels; cause a display, by the display device, of a plurality of different paylines associated with the plurality of reels; cause a display, by the display device, of a plurality of the symbols on the plurality of reels; after, for a selected one of the paylines, display of a winning combination of randomly determined symbols along the selected payline and a first randomly determined symbol along the selected payline adjacent to and after the winning combination of randomly determined symbols along the selected payline and which is not part of the winning combination of randomly determined symbols along the selected payline, cause a display, by the display device, of an indication of a positive determination of a randomly determined payline specific symbol replacement for the selected payline for the play of the game; and cause a display, by the display device, of a replacement of the first randomly determined symbol along the selected payline with a first replacement symbol along the selected payline, wherein the first replacement symbol extends the winning combination of randomly determined symbols along the selected payline.
15. The gaming system of claim 14, wherein the first replacement symbol is a wild symbol.
16. The gaming system of claim 14, wherein the plurality of instructions, when executed by the processor, cause the processor in association with each play of the game to cause the selected payline to be a same one of the plurality of paylines.
17. The gaming system of claim 14, wherein the plurality of instructions, when executed by the processor, cause the processor in association with the play of the game to cause a display, by the display device, of no other replacements of any of the plurality of displayed symbols along any of the other paylines except for the selected payline.
18. The gaming system of claim 14, wherein the plurality of instructions, when executed by the processor, cause the processor in association with the play of the game to; select the selected payline.
19. The gaming system of claim 14, wherein the plurality of instructions, when executed by the processor, cause the processor in association with the play of the game to; cause a display, by the display device, of the first replacement symbol moving along the selected payline to a position of the first randomly determined symbol along the selected payline.
Conclusion
Additional Relevant References: See 892
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/OMKAR A DEODHAR/ Primary Examiner, Art Unit 3715
1 See MPEP 2106
2 Specifications: [0019] While various embodiments described below are directed to the gaming system providing the payline specific symbol replacement feature for play of a game that are displayed by an electronic gaming machine (“EGM”) in the form of a slot machine, it should be appreciated that such embodiments can additionally or alternatively be employed in association with a video poker machine, a video lottery terminal, a terminal associated with an electronic table game, a terminal associated with a live table game, a video keno machine, a video bingo machine, a sports betting terminal that also offers sports betting opportunities, a personal gaming device such as a desktop computer, a laptop computer, a tablet computer or computing device, a personal digital assistant, a mobile telephone, and/or other mobile computing device that offer plays of games (and in certain instances, sports betting opportunities). (Emphasis Added.)
3 Specifications, e.g., ¶¶ 123-130.
4: Ariosa Diagnostics, Inc., V. Sequenom, Inc., (Fed Cir. June 12, 2015)