DETAILED ACTION
This action is in response to the amendment filed August 12, 2026. The Examiner acknowledges that claims 1-3, 5-15, & 18-20 were amended, no claims were canceled, and no new claims were added. Therefore, claims 1-20 are currently pending.
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 Arguments
With respect to the previously presented double patenting rejection, Applicant’s remarks indicated a terminal disclaimer was filed with the response to obviate the rejection. However, there appears to be no terminal disclaimer filed with the response nor thereafter, as such there is no currently accepted terminal disclaimer on file to obviate the rejection. The amended claims remain subject to the double patenting rejection as reproduced below.
With respect to the previously presented 35 U.S.C. 102 & 103 rejections, the Examiner agrees that the amended claims, particularly specifying the “surface adjacent to the gaming device” is a “floor surface” reasonably overcomes the Borissov reference. However, Mess (DE 102011107254 A1) explicitly discloses a gaming device (slot machine) having a projector mounted within the housing to specifically project images on to a floor surface in adjacent to the gaming device as illustrated in figures 1-2. Accordingly, this reference is relied upon in combination with the Borissov teachings in the updated rejections set forth below addressing the claims as presently recited.
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 1-17 of U.S. Patent No. 12,067,828. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims already recite gaming devices, systems, and methods that include a main display and projector arranged to project images onto a surface adjacent to a gaming device, control logic that conducts a game, identifies triggers, controls the projector in response to identified triggers, and recite certain multi-device configurations using video controllers that communication with multiple gaming devices to remotely control projectors. The present claims recite the same core subject matter with only obvious variations as can be readily ascertained by any skilled artisan in comparing claims 1-20 of the instant application to claims 1-17 of the above-identified patent. The differences merely specify routine implementation choices for carrying out the same projector-control behavior already claimed in the patent, and would have been within the level of ordinary skill in the art. Accordingly, claims 1-20 are not patentably distinct from patent claims 1-17.
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.
Claims 1, 4-5, 7-9, 18, & 19 are rejected under 35 U.S.C. 103 as being unpatentable over Borissov et al. (U.S. Patent Application Publication No. 2017/0337766; hereinafter “Borissov”) in view of Mess (DE 102011107254 A1, previously of record, paragraph citations herein are based on the translation copy cited in the September 19, 2024 information disclosure statement).
Claim 1: Borissov discloses the invention substantially as claimed including a gaming device, comprising:
a main cabinet configured to rest on a floor surface (figures 1-2, wherein the gaming device or slot machine clearly comprises a main cabinet that rests on a floor surface);
a display system comprising a) a main display mounted to the main cabinet (figure 1[primary display 28] and paragraph 0026) and b) a projector display (figure 2[projector 60] and paragraphs 0036-0037) configured to project an image on to a surface (paragraphs 0006, 0035-0037, 0041), wherein the projector is mechanically connected with the main cabinet (figures 2[projector 60]);
and a control system (figure 5 and paragraphs 0044-0045) comprising one or more processors and memory storing a plurality of instructions, and wherein the instructions, which, when executed, cause the one or more processors to:
conduct a base game on the main display of the gaming device (paragraphs 0024, 0030);
instruct the display system to project the image on the surface using the projector display (paragraphs 0037-0046, wherein Borissov discloses the projector projects images on the surface including attract mode imaging, jackpot information, text, numbers, photos, moving images or video, etc. and that different game states or conditions can cause updates to the imaging displayed);
control the display system to present content from the base game on the main display (paragraphs 0024, 0030, i.e. Borissov discloses presenting wagering games and as discussed above, various conditions or game states while playing a game can cause changes to the projected images);
receive a trigger condition for the projector display (paragraphs 0037-0046, wherein Borissov discloses conditions or game states that affect a change or update to projected images, e.g. an update to a jackpot amount as illustrated in figure 2);
based on the trigger condition, control the display system to update the image on the surface using the projector display while maintaining presentation of the base game on the main display (paragraphs 0037-0046, Borissov discloses displaying “information relating to a player’s play of the gaming device when the gaming device is in play” as well as conditions and game states that cause such updates, as such Borissov discloses that based upon a trigger condition, the projected imaging on the surface is updated, while maintaining the base game on the primary display).
Borissov, however, does not explicitly disclose that “the surface” as discussed above is specifically the floor surface on which the main cabinet rests, such that projected images are projected onto the floor surface adjacent the gaming device. Nonetheless, Mess, explicitly discloses a gaming device or slot machine having a main cabinet with one or more projectors that project images onto a floor surface adjacent to the gaming device for various reasons including advertising and showing winnings (figures 1-2 & paragraphs 0019-0022). As discussed above, Borissov discloses that the surface upon which images are projected can be a “remote surface”, while preferring to use a rear of the gaming device, the disclosure appears clear enough to interpret other surfaces as being a “remote surface” (paragraph 0035, “…project information onto a remote surface where the information is then visible on that remote surface…”). A person of ordinary skill in the art would have found the teachings of Mess motivational to perform a straightforward modification of the Borissov arrangement to project images onto the floor surface versus the rear of the gaming machine, such as in situations in which gaming devices are positioned up against a wall. Casino floor space is limited and utilizing it efficiently is key to enabling operators to generate more revenue, thus positioning gaming devices against walls is commonplace. In such a situation, a straightforward modification of Borissov in view of Mess would enable a skilled artisan to locate a more suitable location on the main cabinet for the projector to project images downward to a floor surface adjacent the gaming device and present substantially the same type of information Borissov already projects. For instance, a skilled artisan would have been motivated by Mess to modify Borissov by moving projector 60 as illustrated in figure 2 to the front of the gaming device and to flip it 180 degrees so as to project images downward to the floor surface adjacent the gaming device, as a prima facie obvious modification. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Borissov with the teachings of Mess in order to design an obvious variant of Borissov providing substantially the same functionality differing only with respect to the surface upon which images are projected.
Claim 3: Borissov discloses that the trigger condition is a change in a progressive jackpot and wherein the trigger condition causes the one or more processors to control the display system to display jackpot information associated with a progressive jackpot using the projector display (figure 2 and paragraphs 0037-0046, wherein Borissov discloses game states can cause an update to the projected imaging, such as updated jackpot information as illustrated in figure 2).
Claim 4: In at least one interpretation the “gaming device” comprises the system of Borissov including at least one display system as detailed above and the control system being one or more remote devices or servers that control the projector (paragraph 0045). Accordingly, Borissov discloses the control system further executes transmitting instructions to another gaming device to update a state of a projector display of another gaming device, as the remote server can control projectors at multiple gaming machines, managing projected images based on their respective game play, game states, trigger conditions and the like (paragraph 0045).
Claim 5: Borissov discloses the gaming machine of figures 1-2 can be configured as a themed gaming machine as illustrated in figures 3-4, where such a configuration includes a chair assembly attached to the main cabinet and the projector is mounted as part of the attached chair assembly (i.e. it’s mounted to the housing, the housing being the chair assembly).
Claims 7-8: Borissov discloses operations in a default state (paragraph 0044, e.g. “attract mode” when the gaming machine is not being played), and that the projector can project a first static image in the default state (paragraph 0044, advertising in attract mode, paragraph 0046, wide variety of projected images are possible including static images). Borissov also discloses, upon the appropriate condition occurring, controlling the projected to project a video image (paragraph 0046, wide variety of projected images are possible including moving images or video).
Claim 9: Borissov discloses a gaming system (figure 5 and paragraphs 0044-0045) comprising:
a first gaming device, the first gaming device having a first main cabinet configured to rest on a floor surface and at least a first projector operable to project images from the first gaming device onto a surface, wherein the first projector is mechanically connected with the first main cabinet (as discussed above with respect to claim 1 and based upon that Borissov disclosing that a remote controller/server can be connected to multiple gaming machines, Borissov discloses a first gaming device in the claimed configuration);
a second gaming device, the second gaming device having a second main cabinet configured to rest on the floor surface and at least a second projector operable to project images from the second gaming device onto a surface, wherein the second projector is mechanically connected to the second main cabinet (e.g. for at least the same reasons, Borissov discloses a second gaming device connected to the remote controller/server having substantially the same structure and functionality); and
one or more video controllers in communication with the first gaming device and second gaming device (figure 5 and paragraphs 0044-0045, wherein Borissov remotely controlling projectors by a remote controller or server interpreted as “one or more video controllers in communication with the first and second gaming devices),
wherein the one or more video controllers are configured to:
remotely control the first projector on the first gaming device to project a first image from the first gaming device onto a surface, wherein data for displaying the first image is stored in a memory accessible by the one or more video controllers (similarly to as discussed above, in the configuration in which a remote controller or server is operating the projectors at multiple gaming devices, it can remotely control the first projector at the first gaming device to project a first image from the first gaming device, the first image must be stored in a memory accessible by the one or more video controllers); and
remotely controlling the second projector on the second gaming device to project a second image from the second gaming device onto a surface, wherein the data for displaying the second image is stored in the memory accessible by the one or more video controllers (e.g. for at least the same reasons as above, the remote controller or server can remotely control a second projector at a second gaming device to project a second image from the second gaming device, the second image must also be stored in the memory accessible by the one or more video controllers).
Borissov, however, does not explicitly disclose that “the surface” as discussed above is specifically the floor surface on which the main cabinet rests, such that projected images are projected onto the floor surface adjacent the gaming device. Nonetheless, Mess, explicitly discloses a gaming device or slot machine having a main cabinet with one or more projectors that project images onto a floor surface adjacent to the gaming device for various reasons including advertising and showing winnings (figures 1-2 & paragraphs 0019-0022). As discussed above, Borissov discloses that the surface upon which images are projected can be a “remote surface”, while preferring to use a rear of the gaming device, the disclosure appears clear enough to interpret other surfaces as being a “remote surface” (paragraph 0035, “…project information onto a remote surface where the information is then visible on that remote surface…”). A person of ordinary skill in the art would have found the teachings of Mess motivational to perform a straightforward modification of the Borissov arrangement to project images onto the floor surface versus the rear of the gaming machine, such as in situations in which gaming devices are positioned up against a wall. Casino floor space is limited and utilizing it efficiently is key to enabling operators to generate more revenue, thus positioning gaming devices against walls is commonplace. In such a situation, a straightforward modification of Borissov in view of Mess would enable a skilled artisan to locate a more suitable location on the main cabinet for the projector to project images downward to a floor surface adjacent the gaming device and present substantially the same type of information Borissov already projects. For instance, a skilled artisan would have been motivated by Mess to modify Borissov by moving projector 60 as illustrated in figure 2 to the front of the gaming device and to flip it 180 degrees so as to project images downward to the floor surface adjacent the gaming device, as a prima facie obvious modification. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Borissov with the teachings of Mess in order to design an obvious variant of Borissov’s gaming device for use in a gaming system having multiple of the modified gaming devices in communication with a video controller to enable their respective projectors to project images onto the floor surface upon which the gaming devices rest and provide substantially the same functionality differing only with respect to the surface upon which images are projected.
Claim 18. Borissov discloses a method of operating one or more gaming devices, each of the one or more gaming devices comprising a main cabinet configured to rest on a floor surface (figures 1-2), one or more processors and a display system including a) a main display (figure 1) and b) an image projector (figure 2) configured to project an image on to a surface, wherein the image projector is mechanically connected with the main cabinet (figure 2), the method comprising:
conducting a game on the one or more gaming devices in response to a player input, wherein conducting the game includes presenting information regarding the game on the main display (see discussion of claims 1 & 9, Borissov discloses conducting a game on a main display, such as in response to a player input, e.g. a wager)
identifying a trigger condition (see discussion of claims 1 & 9, Borissov discloses identifying trigger conditions or game states);
communicating the trigger condition to a video controller which controls the image projector of each of the one or more gaming devices to project the image onto the surface based on the trigger condition (see discussion of claims 1 & 9, Borissov discloses game machines meeting conditions or game states and remotely controlling projectors of multiple gaming devices via a remote controller or server, thus Borissov discloses a trigger condition is communicated to the video controller which controls the image projector of each of the one or more gaming devices to project images onto a surface adjacent to the one or more gaming devices based on the trigger condition); and
projecting the image onto the surface using the video controller (see discussion of claims 1 & 9, Borissov discloses using the remote controller/server to project the images by remotely controlling projectors).
Borissov, however, does not explicitly disclose that “the surface” as discussed above is specifically the floor surface on which the main cabinet rests, such that projected images are projected onto the floor surface adjacent the gaming device. Nonetheless, Mess, explicitly discloses a gaming device or slot machine having a main cabinet with one or more projectors that project images onto a floor surface adjacent to the gaming device for various reasons including advertising and showing winnings (figures 1-2 & paragraphs 0019-0022). As discussed above, Borissov discloses that the surface upon which images are projected can be a “remote surface”, while preferring to use a rear of the gaming device, the disclosure appears clear enough to interpret other surfaces as being a “remote surface” (paragraph 0035, “…project information onto a remote surface where the information is then visible on that remote surface…”). A person of ordinary skill in the art would have found the teachings of Mess motivational to perform a straightforward modification of the Borissov arrangement to project images onto the floor surface versus the rear of the gaming machine, such as in situations in which gaming devices are positioned up against a wall. Casino floor space is limited and utilizing it efficiently is key to enabling operators to generate more revenue, thus positioning gaming devices against walls is commonplace. In such a situation, a straightforward modification of Borissov in view of Mess would enable a skilled artisan to locate a more suitable location on the main cabinet for the projector to project images downward to a floor surface adjacent the gaming device and present substantially the same type of information Borissov already projects. For instance, a skilled artisan would have been motivated by Mess to modify Borissov by moving projector 60 as illustrated in figure 2 to the front of the gaming device and to flip it 180 degrees so as to project images downward to the floor surface adjacent the gaming device, as a prima facie obvious modification. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Borissov with the teachings of Mess in order to design an obvious variant of the Borissov gaming device providing substantially the same functionality differing only with respect to the surface upon which images are projected, thereby enabling the method as recited.
Claim 19: Borissov discloses that the video controller controls the image projector of each of the one or more gaming devices such that the image projector of that gaming device projects a different image (figure 5 and paragraphs 0044-0046, wherein the remote controller/server controls projectors of multiple gaming machines, as such the projected images can be different based on the specifics occurring at each gaming device, such as an attract mode versus in-play game state). In combination with Mess, the surface upon which such imaging is projected is a floor surface adjacent the gaming device.
Claims 2, 6, & 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Borissov & Mess, as applied to claims 1, 4-5, 7-9, 18, & 19, where applicable, in further view of Hilbert et al. (U.S. Patent Application Publication No. 2009/0291757; hereinafter “Hilbert”).
Claim 2: The combination of Borissov & Mess discloses the invention substantially as claimed except for disclosing trigger conditions including proximity of a player to the gaming device, the trigger condition causing the projector to display player specific content. However, Hilbert discloses a gaming machine having sensors (figure 1[IR emitter 144 / IR sensor 146]) that enable the gaming machine to detect player presence that causes the gaming machine to perform a variety of functions such as lighting effects, suspending or initiating an attract mode, and/or enabling other player-specific effects (paragraph 0031). As such, Hilbert discloses detecting a trigger condition that includes proximity of a player to the gaming machine, the trigger condition causing the gaming machine to display at least player-specific content. Those skilled in the art would have possessed the routine skill and common knowledge to implement substantially similar functionality with the combination of Borissov & Mess with respect to the projector displays, such that upon player presence being detected the projector of a gaming machine is caused to project imaging that is player specific content in order to provide a personalized experience for the player. Therefore, it would have been prima facie obvious before the effective filing date of the claimed invention to have modified Borissov & Mess with the teachings of Hilbert for at least the reasons detailed above.
Claims 6, 10-12: The combination of Borissov & Mess discloses the invention substantially as claimed except for disclosing one or more sensors configured to determine activity proximate the gaming device that causes the projector to project an image, such as an attract mode, which is a trigger condition identified by the one or more sensors for controlling one or more projectors, such as a first projector of a first gaming machine or a second projector of a second gaming machine (where such activity is interpreted as movement near a respective gaming machine, such as a user moving near the first or second gaming machine). Hilbert, as detailed above, discloses the one or more sensors that are configured to determine activity proximate (e.g. player presence) a gaming machine and in combination with Borissov & Mess, similarly as detailed above with respect to claim 2, would have enabled a gaming device to project an image of an attract mode (Hilbert, paragraph 0031). Similarly, in a multi-device configuration of the combination of Borissov, Mess, & Hilbert, as Borissov discloses multiple gaming machines can include respective projectors, naturally as a player moves from one gaming machine of the to another, each respective gaming machine is controlled to project desired images. Therefore, it would have been prima facie obvious before the effective filing date of the claimed invention to have modified Borissov & Mess with the teachings of Hilbert to implement automated management of attraction modes or default states when machines are not being used in an attempt to attract a player to a gaming machine as the player moves about a gaming establishment.
Claims 13-17 & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Borissov & Mess, as applied to claims 1, 4-5, 7-9, 18, & 19, where applicable, in further view of Gilmore et al. (U.S. Patent Application Publication No. 2009/0124345; hereinafter “Gilmore”).
Claims 13-17: The combination of Borissov & Mess discloses the invention substantially as claimed except for disclosing:
first gaming device is located adjacent to the second gaming device, and the first image and the second image are arranged to form a composite video image;
the first image is projected at a first display area on the floor surface, and wherein the second image is displayed at a second display area on the floor surface, and the first display area is contiguous with the second display area;
the first image and the second image are each video images presented under control of the one or more video controllers, and wherein the one or more video controllers synchronize the first and second images to provide a composite video image;
the composite video image includes text scrolling sequentially across the first and second display areas;
the composite video image comprises an animation of graphic elements moving sequentially across the first and second display areas; and
the video controller controls the image projector of each of the one or more gaming devices such that each image projector of the one or more gaming devices projects a portion of the image in order to project the image onto the surface adjacent to the one or more gaming devices.
Regardless of the deficiencies, these graphical concepts were well established at the time of Applicant’s invention, such that a skilled artisan would have been motivated to utilize the projectors of two or more gaming machines of the Borissov & Mess combination in an adjacent fashion to produce the graphical effects as claimed. For example, Gilmore explicitly teaches applying graphical simulations for gaming machines across multiple gaming machine displays. The concept of Gilmore (figures 4-9) establishes that at least two gaming machines are adjacent to one another to display at least a first image and a second image, the first and second images forming a composite video image (figures 7-9, the first and second images being portions of the composite image). Those with ordinary skill in the art would have found it routine skill to implement a similar graphical simulation concept within Borissov using the projectors of each gaming machine, such that the first image is projected in a first display area and the second image is projected in a second display area that is contiguous with the first display area, similarly to Gilmore, the first and second images each being video images presented under control of the video controller in a synchronized fashion to provide the composite video image, the video image including text or animation scrolling sequentially across the first and second display areas (figures 7-9). Given Gilmore clearly discloses this functionality as applied to at least non-projector display devices of gaming machines, the Examiner respectfully positions that one of ordinary skill in the art before the effective filing date of the claimed invention would have found it prima facie obvious to have modified the combination of Borissov & Mess to implement substantially the same graphical simulation techniques using the projectors of the Borissov/Mess gaming devices in order to provide synchronized information to attract players or implement features increasing the excitement and interest across multiple gaming machines using well established graphical effect techniques.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/MILAP SHAH/Primary Examiner, Art Unit 3715
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