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 .
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 1-18 of U.S. Patent No. 11,579,754. Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose similar computer-implemented method comprising: determining that at least one skill-based game has been instantiated on at least one electronic device, the skill-based game being configured to allow selection of potential winners from a plurality of matchups in a game, wherein each of the plurality of matchups includes at least two components, associated with at least one participant in one or more real-world events, that are selected so as to produce outcomes that are generally equally weighted within the skill-based game, and wherein winners of the skill- based game are eligible to participate in a chance-based sweepstakes game; receiving, from a selecting user, an indication of a selected winner for each of the plurality of matchups in the game; determining that at least one of the real-world events associated with the matchups in the game has completed and that the selected winner was a winner according to the real-world events; and based on the determination that the selected winner of the matchups was a winner, generating an entry in the chance-based sweepstakes game for the selecting user (see claim 1 of U.S. Patent No. 11,579,754).
This is an obviousness Double Patenting Rejection.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,886,688. Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose similar computer-implemented method comprising: determining that at least one skill-based game has been instantiated on at least one electronic device, the skill-based game being configured to allow selection of potential winners from a plurality of matchups in a game, wherein each of the plurality of matchups includes at least two components, associated with at least one participant in one or more real-world events, that are selected so as to produce outcomes that are generally equally weighted within the skill-based game, and wherein winners of the skill- based game are eligible to participate in a chance-based sweepstakes game; receiving, from a selecting user, an indication of a selected winner for each of the plurality of matchups in the game; determining that at least one of the real-world events associated with the matchups in the game has completed and that the selected winner was a winner according to the real-world events; and based on the determination that the selected winner of the matchups was a winner, generating an entry in the chance-based sweepstakes game for the selecting user (see claim 1 of U.S. Patent No. 11,886,688).
This is an obviousness Double Patenting Rejection.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,394,278. Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose similar computer-implemented method comprising: determining that at least one skill-based game has been instantiated on at least one electronic device, the skill-based game being configured to allow selection of potential winners from a plurality of matchups in a game, wherein each of the plurality of matchups includes at least two components, associated with at least one participant in one or more real-world events, that are selected so as to produce outcomes that are generally equally weighted within the skill-based game, and wherein winners of the skill- based game are eligible to participate in a chance-based sweepstakes game; receiving, from a selecting user, an indication of a selected winner for each of the plurality of matchups in the game; determining that at least one of the real-world events associated with the matchups in the game has completed and that the selected winner was a winner according to the real-world events; and based on the determination that the selected winner of the matchups was a winner, generating an entry in the chance-based sweepstakes game for the selecting user (see claim 1 of U.S. Patent No. 12,394,278).
This is an obviousness Double Patenting Rejection.
Conclusion
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/ADETOKUNBO O TORIMIRO/Primary Examiner, Art Unit 3715
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