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 .
Response to Amendments
This office action is in response to amendments filed on 07/21/2026.
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 1-5 and 9-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more. As per step 1 examiner recognizes the claims are directed towards a gaming device or on a gaming device which comprises steps that go beyond a mental process such as animation. As per step 2A the claim(s) recite(s) “cause display of columns of symbol positions on at least one of the one or more display devices ; in response to determining that an expansion trigger condition has not previously occurred, select first symbols from a first set of reel strips having a first stack length for display in the columns of symbol positions, wherein each column in the columns of symbol positions comprises a plurality of symbol position states, and wherein each symbol position state defines a number of active symbol positions for a respective column; in response to determining that the expansion trigger condition has previously occurred, select second symbols from a second set of reel strips having a second stack length shorter than the first stack length for display in the columns of symbol positions, wherein the processor accounts for a change to symbol selection odds corresponding to addition of at least one additional active symbol position by selecting the symbols from the second set of reel strips as opposed to from the first set of reel strips to maintain the symbol selection odds despite the addition of the at least one additional active symbols position; and update a current symbol position state to a second symbol position state comprising at least one additional active symbol position in each of the column of symbol positions states; and in response to the expansion trigger condition occurring, cause at least one of the one or more display devices to display an animation showing expansion of a number of rows corresponding to the at least one additional active symbol position.” which is directed towards a slot game comprising a determination that if a trigger condition has not previously occurred that a first set of symbols will be selected and if a trigger condition has previously occurred than a second set of symbols will be selected having a second stack length which is shorter than a first stack length of the first set. Further steps include accounting for a change to symbol selection odds corresponding to addition of at least one additional active symbol position by selecting the symbols from the second set of reel strips as opposed to from the first set of reel strips to maintain the symbol selection odds. Finally a step is carried out in response to a trigger condition to expand the reels. Amended language includes elements of states being recited which are directed to the above rules and the flow of the rules in the gaming device. Further dependent claims are directed towards how outcomes are selected and displayed as well as conditions for expanding reels. As per the mental steps examiner recognizes the highlighted sections include the steps of observing a state of the game and applying a determination based on the observation. For example based on if a trigger condition has occurred previously certain symbols are selected to be used, which is a step that can be performed mentally by tracking the play of the game and making decisions based on known rules. For example an individual would be able to mentally determine a different reel set should be used based on an expanding reel event occurring. As per the odds maintaining step this is a mental process involving determining changes to the odds based on what symbols are positions are included in the game and is a design step regularly performed by developers comprising determining payouts or odds of an event occurring in a game and modifying features in order to bring those odds up to the desired amount. For example modifying how many symbols of a certain type are present in order to modify the odds is a step that an individual developing a game can perform mentally. As per the states examiner recognizes this reads on the act of storing a state of the game and acting upon the state to flow to the next state based on game rules. This is the act of carrying out the game which as indicated above is a mental step. Therefore the inclusion of states does not overcome the 101 rejection. This judicial exception is not integrated into a practical application because it remains directed to mental steps comprising game rules. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the game remains directed to rules that can be performed mentally and are for the intended purpose of carrying out a game. These do not comprise a practical application beyond playing of the game such as improvement 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 “A gaming device comprising: a processor; one or more display devices; and a memory storing instructions which, when executed by the processor, cause the processor to: instruct a display to display columns of symbol positions;”, “further cause the processor to instruct to the electronic device to display the animation.”, animations, 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 reel expansion 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 1-5 and 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11688242. Although the claims at issue are not identical, they are not patentably distinct from each other because the invention are directed to similar subject matter wherein a second set of symbols are used for expanding reels in order to maintain odds of the game. The difference is the claims use different language and have broader limitations as shown by the table below. Regarding dependent claims they are not patentably distinct and include similar language as the parent 11688242. Applicant has amended to include state language however the steps performed by the claims remain the same and therefore reads as indicated below. Specifically the states are about storing information and moving on to the next step of the game. Therefore the claims are not patentably distinct.
Current Application
11688242 Claim limitation
Reason
A gaming device comprising: a processor; and a memory storing instructions which, when executed by the processor, cause the processor to:
1. A gaming device comprising: a display; a processor; and a memory storing:
Similar
instruct a display to display columns of symbol positions;
1. a plurality of symbol position data states, each symbol position data state defining a respective number of active symbol positions in each of a plurality of columns of symbol positions
Similar. Both have reel strips with reel stirp positions.
if an expansion trigger condition has not previously occurred, select first symbols from a first set of reel strips having a first stack length for display in the columns of symbol positions;
1. detect in an instance outcome an expansion triggered condition, and in response to the expansion triggered condition: update a current symbol position data state to a second symbol position data state comprising at least one additional active symbol position in each of the plurality of columns of symbol positions; display an animation on the display showing an expansion of a number of rows corresponding to the at least one additional active symbol position in each of the plurality of columns of symbol positions; in at least a subsequent instance of the feature game, select symbols from the second set of reel strips for display in the plurality of columns of symbol positions of the second symbol position data state,
Switch to the second symbol set occurs on an expansion trigger and therefore the lack of one would have the first set
otherwise, if the expansion trigger condition has previously occurred, select second symbols from a second set of reel strips having a second stack length shorter than the first stack length for display in the columns of symbol positions,
1.detect in an instance outcome an expansion triggered condition, and in response to the expansion triggered condition: update a current symbol position data state to a second symbol position data state comprising at least one additional active symbol position in each of the plurality of columns of symbol positions; display an animation on the display showing an expansion of a number of rows
corresponding to the at least one additional active symbol position in each of the plurality of columns of symbol positions; in at least a subsequent instance of the feature game, select symbols from the second set of reel strips for display in the plurality of columns of symbol positions of the second symbol position data state,
1. wherein at least one reel strip of the second set of reel strips has a second stack length shorter than the first stack length
Switch to the second symbol set occurs on an expansion trigger. Further the second set has a shorter stack length
wherein the processor accounts for a change to symbol selection odds corresponding to addition of at least one additional active symbol position by selecting the symbols from the second set of reel strips as opposed to from the first set of reel strips to maintain the symbol selection odds despite the addition of the at least one additional active symbols position;
wherein the processor calculates a change to symbol selection odds corresponding to the addition of the at least one additional active symbol position and compensates for the change using the selection of the symbols from the second set of reel strips as opposed to from the first set of reel strips
Similar
and in response to the expansion trigger condition, instruct the display to display an expansion of a number of rows corresponding to the at least one additional active symbol position.
1. detect in an instance outcome an expansion triggered condition, and in response to the expansion triggered condition: update a current symbol position data state to a second symbol position data state comprising at least one additional active symbol position in each of the plurality of columns of symbol positions;
Similar
Response to Arguments
Applicant's arguments filed 07/21/2026 have been fully considered but they are not persuasive. Applicant argues that amended language overcomes the previous 101 rejection. Specifically the inclusion of states for both the storing of symbol positions and for the carrying out of the game based on the stored states. Examiner indicates that this reads on the conventional step of storing information regarding a state of the game in memory which is a standard computer process. The act of storing the number of active positions therefore is the conventional act of storing what state the game is currently at. The specific information stored reads on the game rules as indicated in step 2A. Therefore claim language on storing symbol positions does not overcome 101 because it is conventional in the computer art to store information regarding a game. As per the flow of states this is the mental step of carrying out rules based on the current state of the game and is a known computer science concept of state machine wherein a current state flows to the next state based on inputs. Therefore the claim amendments do not overcome the 101 rejection since the steps are conventional in nature and remain mental steps.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 9/3/2026
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