DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
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 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 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,043,079. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and the patent substantially claim similar limitations, with one exception. The current application fails to claim the central computer being programmed to receive identifying coded information and verify the identity of each ticket as one having been issued in said system and conduct said lottery games. However, it would have been obvious for one with ordinary skill in the art, at the time of the invention, to modify the current application to include receiving identifying coded information and verify the identity of each ticket issued in the lottery game, to allow for secure transactions in the lottery system.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9, 14-15 & 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 9, 14-15 & 24 the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-26 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wright et al. (US Patent Pub. 20060100008; referred to hereinafter as Wright) and further in view of Robb (US Patent Pub. 20050064925; referred to hereinafter as Robb).
Claims 1 & 22: Wright discloses an instant-winner lottery ticket system (abstract) comprising, a central computer or other processing system programmed to communicate via an intranet, the world-wide web and/or any remote communication means and one or more computer terminals located at one or more spaced-apart locations capable of entering into a communication network with said central computer or other processing system (figures 1-2), one or more computer terminals or displays configured to display visual identification markings of one or more instant-winner lottery games available in said system to allow selection of said games for purchase (figures 3-5 & 0076-0080 lottery dispensing unit to dispense unique instant lottery game to players), at least one of said computer terminals with a digital display screen, or adapted to communicate with a screen or screens capable of showing digital displays (0069 & 0077 display), at least one of said computer terminals having a communications device for sending and/or receiving information to and/or from said central computer or other processing system (0077-0082). Wright, however fails to explicitly disclose communicating to players advertising, advertisers' images, promotional offerings, including merchandise promotions, and/or cross-marketing coupons or other visual messages offering values and/or discounts for purchase. In analogous art, Robb teach a gaming system for conducting an instant win game in combination with a base wagering game. The gaming system includes a plurality of terminal units, with each of the terminal units including an input device that may allow a player to make a plurality of input selections operatively coupled to the display unit (0005). Robb further teach terminal units adapted to communicate to the players advertising, promotional offerings, including merchandise promotions, and/or cross-marketing coupons offering values and/or discounts for purchase before, during or after the display of a said instant-winner lottery game or games (figure 4, element 326 & 0054). It would have been obvious for one with ordinary skill in the art, at the time of the invention, to modify the lottery game system disclosed by Wright to include advertisement to players as taught by Robb to influence player behavior to increase product sales.
Claim 2: The combination of Wright and Robb teach where said displays show instant-winner lottery tickets or representations of instant-winner lottery games, such tickets or representations providing codes to allow them to be scanned or otherwise input into a computer terminal to enable the visual simulation of an instant-winner lottery game (figure 3 Wright).
Claims 3 & 23: The combination of Wright and Robb teach at least some of said instant-winner lottery games are sold at or obtained from one or more of said displays, one or more of said computer terminals, and/or one or more point-of-sale devices located at physical locations, which include supermarkets, retail stores, restaurants, bars, airports, other outlets and other public or private places (0192-0200 Wright).
Claim 4: The combination of Wright and Robb teach displays include digital displays integrated with said computer terminals, showing said games through visual digital presentation and displaying said visual identification markings to allow selection of said games for purchase (figure 3 Wright).
Claim 5: The combination of Wright and Robb teach where one or more of said games include either or both: instant-winner lottery tickets pre-printed prior to purchase or selection or, instant-winner lottery tickets printed at time of purchase or selection (0022 printed at time of purchase; Wright).
Claim 6: The combination of Wright and Robb teach where one or more of said games are provided from the processing of instant-winner lottery digital game data, which provide information to one or more of said computer terminals for the visual simulation of an instant-winner lottery game (0175 Wright).
Claim 7: The combination of Wright and Robb teach where said lottery tickets include any or all of the following: pre-printed tickets covered with a scratch-off material that when scratched reveals information; pre-printed tickets covered with material that when removed reveals information; pre-printed tickets with no covering; tickets printed at time of purchase or selection; or other variety of tickets that are designated for instant-winner lottery play (Wright figure 5 pre-printed ticket with no covering).
Claim 8: The combination of Wright and Robb teach instant-winner lottery game provides within or around the visually displayed game play shown on the computer terminals, advertising and/or advertiser’s images, and/or other promotional offerings that can be shown randomly, in a pre-set pattern, or at will, based on one or more factors related to the game play, such factors include: time elements; stages of the game; winning or losing; the occurrence of certain events; the demographics of the location or player; and, the presentation of certain numbers, letters, symbols, caricatures, game pieces, and/or other images (Robb figures 9, element 326 disclose visual advertainment images displayed when game tickets are printed with ticket numbers).
Claims 9 & 24: The combination of Wright and Robb teach the gaming system or particular game is designed to provide entertaining visual effects and/or game stages, such as, free play, extended play, second chance play, bonus play, tiered levels, incentives, and other similar games and features, which prolong the visual presentation of the game results over an extended length of time in order to provide a media better adaptable for additional promotions, advertising, and/or other game and non-game features (figure 23, bonus jackpot Wright).
Claim 10: The combination of Wright and Robb teach after receiving information from a said game, is adapted to display a uniquely identifiable machine-readable and/or human readable code that can be used for the purchase of such instant-winner lottery game via said computer terminal and/or at any point of sale device (0083 Wright).
Claims 11 & 26: The combination of Wright and Robb teach computer terminals or said displays include one or more of anyone of the following devices: remote personal and laptop computers, mobile phones and devices, or other internet communicable devices (0084 Wright).
Claims 12 & 25: The combination of Wright and Robb teach the lottery gaming system is designed to provide for games adaptable for the display of advertising, and/or advertiser's images, and/or other promotional offerings within the game (Robb figure 4, element 324, displays advertisement).
Claim 13: The combination of Wright and Robb teach a progressive jackpot game is conducted (abstract Wright).
Claim 14: The combination of Wright and Robb teach an extended play, second chance play, and/or other similar type lottery games, and/or non-lottery games, such as social network games and/or video games, are provided (Wright 0018, draw lottery in addition to instant win).
Claim 15: The combination of Wright and Robb teach extended play, second chance play, and/or other similar type lottery games, and/or non-lottery games, such as social network games and video games (Wright 0018) are provided along with the display of advertising, and/or advertisers images, and/or promotional offerings, including merchandise promotions, and/or cross-marketing coupons and/or other printed messages offering values and/or discounts for purchase on said computer terminals (Robb figure 4).
Claim 16: The combination of Wright and Robb teach wherein prizes and rewards are provided from advertisers and/or game sponsors (inherent to advertisements).
Claim 17: The combination of Wright and Robb teach computer terminals is a POS device and/or a cash register and/or ancillary device connected to or associated with a POS device and/or cash register (0150 Wright).
Claim 18: The combination of Wright and Robb teach displays are adapted with enclosed vending or dispensing machines, which provide any of the following: instant-winner lottery tickets pre-printed prior to placement in the machines; instant-winner lottery tickets printed in the machine at time of purchase or selection; or, instant-winner lottery games that can be provided in digital form (Wright figure 5 pre-printed ticket).
Claim 19: The combination of Wright and Robb teach displays present non-activated instant-winner lottery tickets, which can be processed at one of said computer terminals (Wright 0166).
Claim 20: The combination of Wright and Robb teach computer terminals has a display means for displaying jackpot win/loss information, a virtual simulation of the unfolding of the game results, and/or advertising information on a surface selected from the group consisting of: (a) said ticket, (b) a separate document, and (c) a visual display device (Robb figure 4).
Claim 21: The combination of Wright and Robb teach computer terminals are located in a single location or in a plurality of locations within a wide area selected from a subdivision of or a whole city, state or one or more countries (Wright figure 2).
Examiner’s Note
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Green (8,672,325) refers to playing an instant win gaming ticket. An instant win gaming ticket has multiple instant win games which can be played by the player. The amount won per game is dependent on the results of at least one previous game on the same ticket. The player plays the games on a single ticket and the amount the player wins for each game depends on whether previously played games on the same ticket were won or lost.
Finocchio (20060258433) refers to conducting a lottery game is described. The game may include providing a player with a free pre-printed first game piece having a first set of game play data, wherein game play data on the first game piece is insufficient to ascertain an outcome of the lottery game. The game may further include receiving information identifying the first game piece and an indication the player wishes to purchase a chance in the lottery game. Responsive to receiving the indication, the game outcome may be determined and a second set of game play data chosen based on the outcome, so that a comparison of the first set of game play data and the second set game play data is indicative of the outcome of the chance according to predetermined game rules. The second set of game data may be provided to the player on a second game piece also having data associating the second game piece with the first game piece and a unique identifier. When a claim for a prize is received from the player, the uniquue identifier may be used to confirm whether a prize is due the player. A prize with a value that depends on the game outcome may then be awarded to the player.
The referenced citations made in the rejection(s) above are intended to exemplify areas in the prior art document(s) in which the examiner believed are the most relevant to the claimed subject matter. However, it is incumbent upon the applicant to analyze the prior art document(s) in its/their entirety since other areas of the document(s) may be relied upon at a later time to substantiate examiner's rationale of record. A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). However, "the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed ...." In re Fulton, 391F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIT PANDYA whose telephone number is (571)272-2823. The examiner can normally be reached M-F 9:30-6:30PM.
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/SUNIT PANDYA/ Primary Examiner, Art Unit 3715