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 for parent application 17710267.
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 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 step without significantly more. As per step 1 examiner recognizes the claims are directed towards gaming devices or a method using a gaming device implemented by a processor. Therefore step 1 is met. As per step 2A the claim(s) recite(s) “cause display of a plurality of reels for an electronic game, wherein the plurality of reels comprises a plurality of predetermined symbols and one or more placeholders; cause the electronic game to be initiated as including at least one instant feature that is randomly determined from a plurality of instant features; select, from a plurality of tables of symbols, a table of symbols that is associated with the at least one instant feature; and before a play of the electronic game, cause at least one of the one or more placeholders to be replaced by a randomly determined symbol from the table of symbols.” as being directed towards a slot game comprising reels which display symbols wherein a feature is randomly selected and a table is selected from the feature of a plurality of tables with the table comprising symbols which are used to replace placeholder symbols on the reels. Dependent claims are directed towards rules governing how the random selection occurs, features associated with the feature such as credits, when actions occur, and rules regarding the reels. As per the hedging feature see claims 6 and 15 are directed towards the use of credits with applicant’s disclosure at paragraph [0003] linking credits to a monetary value in a wagering game. Further the claims read on multiplying and applying the credit values which would read on a wagering game of awarding the credits based on random play. Therefore a hedging feature is involved wherein a risk is taken for a monetary gain during a play of a game. As per the mental step examiner recognizes the highlighted language regarding the actions of observation and determining an action according to the observed state of the game. Specifically the game rule of selecting a table based on a feature is the action of determining what feature was selected and then selecting from a list of available tables. This is an action that can be performed in the mind as a mental choice based on observation and involve determining an action based on the observation. Further the action of replacing symbols from a list of symbols based on the previous table selection is the mental step that can be performed by an individual since this involves modifying game symbols and is an application of a game rule. Specifically determining what symbols are available for a game is a game rule and not a function that can be performed solely by a computer since it is either following a rule or a design choice by a developer. This judicial exception is not integrated into a practical application because the claims remain directed towards a game comprising hedging and game rules that can be performed in the mind. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because determining result for hedging based on random determination or performing a mental step based on a displayed outcome. Specifically observing the state of the game and applying a rule accordingly remains a mental step and no recited steps beyond conventional feature or extra solution activity are recited that cannot be performed in the mind. Specifically following rules can be performed in the mind. Additional elements are addressed below regarding the display and hardware portions. As for a practical application examiner does not find that the claims amount to more than the play of the game and therefore do not appear to provide a technical improvement such as to the function of a machine.
As per step 2B examiner recognizes that additional elements are directed to conventional activities or extra solution activity. See below.
Limitation “electronic gaming device comprising: at least one memory with instructions stored thereon; 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: cause display of a plurality of reels for an electronic game, wherein the plurality of reels comprises a plurality of predetermined symbols and one or more placeholders;” and randomly determining and other associated hardware and computer steps. 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 conventional 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]). Specifically it is conventional to communicate data to output to a user comprising animated spinning of a wager determining device (which would include reels or wheels) 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 displaying particular animations regarding an outcome since these display steps are extra solution activity and directed to the outputting of data to inform a player which is conventional to the art. This would include display or animation steps regarding feature selection and symbol replacement since this is the outputting of a state or result of a game. 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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12051304. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed towards similar inventions regarding random selection of a feature with associated symbols and replacement of symbols with the selected associated symbols. See table below.
Current Application
12051304
Reason
An electronic gaming device comprising: at least one memory with instructions stored thereon; 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:
1. An electronic gaming device comprising: at least one processor in communication with at least one memory device with instructions stored thereon, wherein the instructions, when executed by the at least one processor, cause the at least one processor to:
Similar
cause display of a plurality of reels for an electronic game, wherein the plurality of reels comprises a plurality of predetermined symbols and one or more placeholders;
1.wherein the plurality of reels comprises a plurality of predetermined symbols and one or more placeholders
Similar
cause the electronic game to be initiated as including at least one instant feature that is randomly determined from a plurality of instant features;
1. randomly determine, based upon a first output from a random number generator (RNG), at least one instant feature of a plurality of instant features to provide in the feature game;
Similar
select, from a plurality of tables of symbols, a table of symbols that is associated with the at least one instant feature;
1.based upon the at least one instant feature, determine a table of symbols, of a plurality of tables of symbols, associated with the at least one instant feature for use in the feature game; prior to a first spin of the feature game, control display of at least one symbol from the table of symbols at at least one reel position
Similar
and before a play of the electronic game, cause at least one of the one or more placeholders to be replaced by a randomly determined symbol from the table of symbols
1.cause each of the one or more placeholders to be replaced by one or more respective randomly determined symbols from the table of symbols associated with the at least one instant feature; based upon a second output from the RNG, determine an outcome for the first spin of the feature game;
Similar. Including the replacement occurring before a play of a game.
2. wherein the instructions further cause the at least one processor to before the play of the electronic game, cause display of at least one symbol from the table of symbols at at least one reel position of the plurality of reels, wherein the at least one symbol is associated with the at least one instant feature.
1.cause each of the one or more placeholders to be replaced by one or more respective randomly determined symbols from the table of symbols associated with the at least one instant feature; based upon a second output from the RNG, determine an outcome for the first spin of the feature game;
Similar
3. wherein the instructions further cause the at least one processor to cause the plurality of reels to spin for the play of the electronic game, wherein the at least one symbol remains displayed at the at least one reel position during the play.
1. and control display of the first spin of the feature game, wherein the at least one symbol remains displayed at the at least one reel position during the first spin of the feature game.
Similar
4. wherein the instructions further cause the at least one processor randomly determine the at least one instant feature from the plurality of instant features based upon an output from a random number generator (RNG).
1. randomly determine, based upon a first output from a random number generator (RNG), at least one instant feature of a plurality of instant features to provide in the feature game;
Similar
5.wherein the instructions further cause the at least one processor to cause the at least one instant feature to be provided before the play of the electronic game.
6. wherein the instructions further cause the at least one processor to: cause display of a plurality of feature symbols during a transition from another electronic game to the feature game, wherein each of the plurality of feature symbols respectively corresponds to the plurality of instant features; and based upon the at least one instant feature being randomly determined, cause display of at least one of the plurality of feature symbols that corresponds to the at least one instant feature as being animated to communicate that the at least one instant feature will be provided in the feature game.
This would be a feature provided before play of the game
6. wherein the plurality of instant features comprises at least one of: a first instant feature comprising a credit value; a second instant feature comprising a multiplier to be applied to displayed credit values; or a third instant feature comprising a summation of displayed credit values.
4. wherein the plurality of instant features comprises: a first instant feature comprising a credit value; a second instant feature comprising a multiplier to be applied to all displayed credit values; and a third instant feature comprising a summation of all displayed credit values.
Similar
7.wherein the instructions further cause the at least one processor to randomly determine a number of instant features to be provided before the play of the electronic game.
3. wherein the instructions further cause the at least one processor to: randomly determine a number of instant features to provide in the feature game from the plurality of instant features;
Similar
8. wherein the at least one instant feature comprises two or more instant features, and wherein the instructions further cause the at least one processor to: determine an order in which to present the two or more instant features that results in a highest output with respect to at least one other order; and cause the two or more instant features to be provided in the order.
5. wherein the instructions further cause the at least one processor to: determine an order to present the at least one instant feature that results in the highest output with respect to at least one other order; and control display of the feature game including presentation of the at least one instant feature in the order.
Similar
9. wherein the instructions further cause the at least one processor to: cause an additional instant feature to be provided based upon the play of the electronic game; and cause odds of another additional instant feature being provided based upon a second play of the electronic game to be adjusted based upon the additional instant feature being provided based upon the play of the electronic game.
See claim 1 as a whole.
Similar because a second game an result in a feature being provided again and with the replacement of symbols this would comprise a modification to odds of the game.
Conclusion
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.
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, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN L MYHR/Primary Examiner, Art Unit 3715 4/9/2026
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