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 . This Office Action is in response to Applicant’s reply filed 03/03/26 to the restriction sent 02/09/26. Claims 1-19 were elected and claims 1-19 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 1-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,134,241 in view of U.S. Patent No. 10,970,970. Claims 1-19 of the current application are encompassed by the claims of U.S. Patent No. 10,134,241 in view of U.S. Patent No. 10,970,970.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over US Publication No. 2017/0046923 A1 to Berman et al. (hereinafter Berman ‘923) in view of US Publication No. 2021/0097811 A1 to Berman (hereinafter Berman ‘811).
Concerning claim 1, Berman ‘923 discloses a gaming apparatus comprising: a video display device including a first poker stage having a first portion of card positions and second portion of card positions, a second poker stage having a first portion of card positions and second portion of card positions, and a third poker stage having a first portion of card positions and second portion of card positions (paragraphs [0030], [0031], [0041]-[0046]- there are multiple rounds which have two portions, the first portion is the main game cards, and the second portion is the bonus cards);
a player interface including at least one button, the button configured to generate a signal in response to being activated; a wager input device structured to receive physical items representing a currency amount; a memory storing a credit amount (paragraphs [0030], [0031], [0041]-[0046] – player inputs a wager and memory stores the credit); and
game circuitry operable to: receive a signal from the wager input device indicating receipt of a physical item representing currency; increase the credit amount stored in memory based on the currency amount associated with the received physical item; receive a wager on a poker game, where an amount of the wager is deducted from the credit amount stored in the memory (paragraphs [0030], [0031], [0041]-[0046] – wager amount is deducted from player credit);
deal a first dealt poker hand of playing cards to the first portion of card positions in the first poker stage; facilitate identification of which of the plurality of cards to hold in the first dealt poker hand; automatically hold cards in the first portion of card positions in the second poker stage and the first portion of card positions in the third poker stage that positionally correspond to the held cards in the first portion of card positions in the first poker stage (paragraphs [0041]-[0046], [0050], [0053], [0055] – hold cards are identified in the different stages and are held);
replace the cards that are not held in the first dealt poker hand to form a first poker hand; replace the cards that were not automatically held in the first portion of card positions in the second poker stage and the first portion of card positions in the third poker stage to respectively generate a second poker hand and a third poker hand (paragraphs [0041]-[0046], [0050], [0053], [0055] – cards which are not held are replaced);
evaluate the first poker hand, the second poker hand, and the third poker hand for awards; determine if additional cards are to be provided to the second portion of card positions in the first poker stage, wherein when such determination results in the provision of the additional cards: deal cards to the second portion of card positions in the first poker stage to combine with the cards of the first poker hand to form a fourth poker hand, and evaluate the fourth poker hand for awards (paragraphs [0041]-[0046], [0050], [0053], [0055] – hands are evaluated to determine winning results);
determine if additional cards are to be provided to the second portion of card positions in the second poker stage, wherein when such determination results in the provision of the additional cards: deal cards to the second portion of card positions in the second poker stage to combine with the cards of the first poker hand to form a fifth poker hand, and evaluate the fifth poker hand for awards (paragraphs [0041]-[0046], [0050], [0053], [0055] – the rounds may vary and additional cards may be dealt);
determine if additional cards are to be provided to the second portion of card positions in the third poker stage, wherein when such determination results in the provision of the additional cards: deal cards to the second portion of card positions in the third poker stage to combine with the cards of the first poker hand to form a sixth poker hand, and evaluate the sixth poker hand for awards (paragraphs [0041]-[0046], [0050], [0053], [0055] – the rounds may vary and additional cards may be evaluated for payout); and
increase the credit amount based on any awards identified by the evaluations of the first poker hand, the second poker hand, the third poker hand, the fourth poker hand, the fifth poker hand, and the sixth poker hand (paragraphs [0041]-[0046], [0050], [0053], [0055] – credit is increased based on awards won by the player).
Berman ‘923 lacks specifically disclosing, however, Berman ‘811 discloses randomly determine if additional cards are to be provided to the second portion of card positions in the first/second/third poker stage, wherein when such random determination results in the provision of the additional cards (paragraphs [0053], [0063], [0064], [0071], [0076] – bonus is determined randomly which results in additional cards dealt).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a random bonus as disclosed by Berman’ 811 in the system of Berman ‘923 in order to make the game more enticing for players, thereby increasing gambling revenue.
Concerning claims 2 and 12, Berman ‘923 discloses wherein the first portion of card positions in the first poker stage, the first portion of card positions in the second poker stage, and the first portion of card positions in the third poker stage are each five card positions (paragraphs [0030], [0031], [0041]-[0046]- there are multiple rounds which have two portions, the first portion is the main game cards, and the second portion is the bonus cards).
Concerning claims 3 and 13, Berman ‘923 discloses wherein the second portion of card positions in the first poker stage, the second portion of card positions in the second poker stage, and the second portion of card positions in the third poker stage are each one card position (paragraphs [0030], [0031], [0041]-[0046]- there are multiple rounds which have two portions, the first portion is the main game cards, and the second portion is the bonus cards).
Concerning claims 4 and 14, Berman ‘923 discloses wherein the second portion of card positions in the first poker stage, the second portion of card positions in the second poker stage, and the second portion of card positions in the third poker stage are each two card positions (paragraphs [0030], [0031], [0041]-[0046]- two additional cards are provided).
Concerning claims 5 and 15, Berman ‘923 discloses wherein evaluating the first poker hand, the second poker hand, and the third poker hand for awards includes evaluating the first poker hand, the second poker hand, and the third poker hand using a first 5-card paytable (paragraphs [0041]-[0046], [0050], [0053], [0055] – hands are evaluated to determine winning results).
Concerning claims 6 and 16, Berman ‘923 discloses wherein evaluating the fourth poker hand, the fifth poker hand, and the sixth poker hand for awards includes evaluating the fourth poker hand, the fifth poker hand, and the sixth poker hand using a 7-card paytable (paragraphs [0041]-[0046], [0050], [0053], [0055] – hands are evaluated to determine winning results).
Concerning claims 7 and 17, Berman ‘923 discloses wherein evaluating the fourth poker hand, the fifth poker hand, and the sixth poker hand for awards includes: determining a best 5-card fourth poker hand from the fourth poker hand; determining a best 5-card fifth poker hand from the fifth poker hand; and determining a best 5-card sixth poker hand from the sixth poker hand (paragraphs [0041]-[0046], [0050], [0053], [0055] – hands are evaluated to determine winning results).
Concerning claims 8 and 18, Berman ‘923 discloses wherein evaluating the fourth poker hand, the fifth poker hand, and the sixth poker hand for awards further includes evaluating the best 5-card fourth poker hand, the best 5-card fifth poker hand, and the best 5-card sixth poker hand using the first 5-card paytable (paragraphs [0041]-[0046], [0050], [0053], [0055] – hands are evaluated to determine winning results).
Concerning claims 9 and 19, Berman ‘923 discloses wherein evaluating the fourth poker hand, the fifth poker hand, and the sixth poker hand for awards further includes evaluating the best 5-card fourth poker hand, the best 5-card fifth poker hand, and the best 5-card sixth poker hand using a second 5-card paytable (paragraphs [0041]-[0046], [0050], [0053], [0055] – hands are evaluated to determine winning results).
Concerning claim 10, Berman ‘923 discloses wherein the player interface includes a plurality of physical buttons corresponding to a number of card positions in the first portion of card positions in the first poker stage (paragraphs [0041]-[0046], [0050], [0053], [0055] – hold cards are identified in the different stages and are held).
Concerning claim 11, see the rejection of claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure are listed in the PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MALINA D BLAISE whose telephone number is (571)270-3398. The examiner can normally be reached Mon. - Thurs. 7:00 am - 5:00 pm (PT).
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MALINA D. BLAISE
Primary Examiner
Art Unit 3715
/MALINA D. BLAISE/Primary Examiner, Art Unit 3715
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