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 .
Claims Status
Claims 8, 12 and 15 have been cancelled.
Claims 1-7, 9-11, 13-14 and 16-20 remain pending and stand rejected.
Response to Arguments
I. Applicant’s arguments made with respect to the rejection under 35 USC 101 have been fully considered but are not persuasive.
Applicant’s arguments on pages 8-9, including references to OIP Techs, Inc. v. Amazon.com, Inc. and Planet Bingo, LLC v. VKGS LLC are acknowledges but not persuasive. The Examiner reminds Applicant that Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim.
With this in mind, the Examiner maintains that the claims clearly set forth “fundamental economic practices or principals” including a lottery bonus game. Not only this, but the claims can also be understood to recite following rules or instructions (e.g., for performing a lotter bonus game), which is considered a form of “managing personal behavior” (see also: MPEP 2106.04(a)(2)(II)(C)). Ultimately, the claims clearly “recite” an abstract idea, and evaluation of any additional elements occurs under Prong Two and Step 2B.
Concerning Applicant’s arguments regarding In re Smith, the Examiner disagrees. The court in In re Smith did not go so far as to say that any new game elements are eligible, but only “a new or original deck of cards”. Moreover, the court merely acknowledged that they could envisage “conducting a game using a new or original deck of cards potentially surviving step two of Alice” sans any further discussion of what that might entail. Notably, the claims in In re Smith were found ineligible.
Contrary to Applicant’s assertion that the invention provides “new and novel components for play of a game that is unrelated to any underlying economic principal/concept of the game”, the Examiner reiterates that the claims clearly set forth “fundamental economic practices or principals” including a lottery bonus game, as well as following rules or instructions (e.g., for performing a lotter bonus game), which is considered a form of “managing personal behavior”. Notably, each of “fundamental economic principals or practices” and “managing personal behavior” falls under the category of “certain methods of organizing human activity”.
Moreover, the crux of the invention lies within the abstract idea itself – e.g., the particular manner of managing the game outcome, rather than any “new or novel card deck” as mentioned in In re Smith. There is nothing within the claims that goes beyond the mere instructions to implement this abstract idea on a generic computer, or otherwise integrate the abstract idea into a practical application or provide “significantly more”.
Accordingly, the rejection under 35 USC 101 has been maintained.
II. Applicant’s arguments made with respect to the rejection under 35 USC 103 have been fully considered but are moot in view of new grounds of rejection. Applicant’s amendment necessitate the new grounds.
Additionally, newly amended limitation providing instructions to the player to place each of the game tiles they receive in one of the first or second game tile spaces selected by the player to create a sequential string on the game board that includes at least one of the first game tiles and at least one of the second game tiles and wherein the string equates to a result required by the bonus game for an award is obvious over Rogers and Brouillard. The Examiner first notes that the content of the instructions is little more than non-functional descriptive material. This limitation does not require – as part of the performed operations - actively receiving selection or actively placing one of the first or second game tiles by a player into a space. Instead, the limitation merely provides “instructions” to do so. The content of the instructions carries little patentable weight and does not patentably distinguish the claimed invention from the prior art.
Even assuming arguendo the limitation is given patentable weight, Brouillard teaches that the playable letters (i.e., game tiles) may be played into a space selected by the player in order to create a word (i.e., sequential string) on the game board (see: Fig. 2-3, 0005, 0010).
Claim Rejections - 35 USC § 101 – Judicial Exception
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 1-7, 9-11, 13-14 and 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Regarding claims 1-20, under Step 2A claims 1-20 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 1 as representative, claim 1 recites a method for play of a lottery bonus game that provides an opportunity for players in a primary lottery game to win an award in the bonus game, the method comprising:
providing lottery tickets in the primary lottery game with a code that entitles a player to receive a game tile for use in play of the bonus game;
wherein the game tile is selected from a set of first game tiles having a first type of graphic symbol thereon or from a set of second game tiles having a second type of graphic symbol thereon;
supplying a unique game board to the player, the game board having a randomly generated array of game spaces that includes a plurality of first game tile spaces for placement of any one of the first game tiles and a plurality of second game tile spaces for placement of any one of the second game tiles;
upon the player scanning the code on the lottery ticket, providing the player with the first game tile or the second game tile associated with the lottery ticket;
providing instructions to the player to place each of the game tiles they receive in one of the first or second game tile spaces selected by the player to create a sequential string on the game board that includes at least one of the first game tiles and at least one of the second game tiles and wherein the string equates to a result required by the bonus game for an award; and,
awarding the award in the bonus game to the player based on a number of the first and second game tiles used to achieve the result.
These limitations recite ‘certain methods of organizing human activity' (see: MPEP 2106.04(a)(2)(II)) because:
The above limitations set forth or describe fundamental economic principals or practices, including concepts relating to the economy and commerce such as a lottery bonus game including awarding an award in the bonus game (see: MPEP 2106.04(a)(2)(II)(A)). Notably, the term “fundamental” is not used in the sense of necessarily being “old” or “well-known.” See, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364, 115 U.S.P.Q.2d 1090, 1092 (Fed Cir. 2015) (a new method of price optimization was found to be a fundamental economic concept); In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016) (describing a new set of rules for conducting a wagering game as a “fundamental economic practice”). (see also: MPEP 2106.04(a)(2)(II)(A). The Examiner also draws attention to Planet Bingo, LLC v. VKGS LLC, No. 2013-1663 (Fed. Cir. 2014), where the court held managing a game of bingo to be abstract and ultimately ineligible.
Additionally, the manner of managing the lottery game including the award structure may be understood as encompassing commercial interactions because they set forth or describe agreements in the form of contracts, or legal obligations (see MPEP 2106.04(a)(2)(II)(B)).
Lastly, the above limitations set forth or describe following rules or instructions (e.g., for performing a lottery bonus game), which is considered a form of “managing personal behavior” (see also: MPEP 2106.04(a)(2)(II)(C)).
Accordingly, under step 2A (prong 1) claim 1 recites an abstract idea because claim 1 recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. Initially, the Examiner observes that the claimed invention does not set forth additional elements for consideration, and thus fails to integrate the recited exception into a practical application.
Even assuming arguendo elements such as the lottery ticket, game tiles and game board are considered additional elements, the invention is nothing more than the mere automation of a manual process using physical aids (see MPEP 2106.05(a)(I)(iii “mere automation of manual processes”)), or the generic computerization of a lottery bonus game. Concerning the latter, the additional elements of claim 1 are recited at a high level of generality (i.e. at best as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea).
The additional elements are also insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to representative claim 1, the Examiner reiterates similar analysis as applied in Prong Two above. That is, claim 1 does not set forth additional elements. Further, even taken certain elements as additional, the invention is nothing more than the mere automation of a manual process using physical aids (see MPEP 2106.05(a)(I)(iii “mere automation of manual processes”)), or the generic computerization of a lottery bonus game. Concerning the latter, the additional elements of claim 1 are recited at a high level of generality (i.e. at best as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself).
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding dependent claims 2-7, 9-11 and 13, dependent claims 2-7, 9-11 and 13 recite more complexities descriptive of the abstract idea itself, and at least inherit the abstract idea of claim 1. As such, claims 2-13 are understood to recite an abstract idea under step 2A (prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 2-7, 9-11 and 13 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, claims 2-7, 9-11 and 13 rely upon similar additional elements as addressed with respect to claim 1. Further additional elements (e.g., a digital electronic game and a computer or mobile smart device (claim 2)) are also recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Lastly, under step 2B, claims 2-7, 9-11 and 13 also fail to result in “significantly more” than the abstract idea under step 2B. This is again because the claims merely apply the exception on generic computing hardware and generally link the exception to a technological environment. Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
In view of the above, claims 2-7, 9-11 and 13 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Regarding claims 14 and 16-20, claims 14and 16-20 recite at least substantially similar concepts and elements as recited in claims 1-7, 9-11 and 13 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. This is also applicable to the newly amended computerized features (e.g., digital electronic lottery bonus game, a central server, a computer or mobile smart device). That is, similar analysis as applied under Prong Two and Step 2B above is also applicable to the additional elements of claims 14 and 16-20. As such, claims 14 and 16-20 are rejected under at least similar rationale.
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.
Claim(s) 1-5 and 7, 9-11, 13-14 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rogers (US 2016/0101352) in view of Brouillard (US 2018/0169513) and Elum (US 5,566,942).
Regarding claim 1, Rogers discloses a method for play of a lottery bonus game that provides an opportunity for players in a primary lottery game to win an award in the bonus game, the method comprising:
providing lottery tickets in the primary lottery game with a code that entitles a player to receive a game tile for use in play of the bonus game (see: Fig. 3A (40), 0009-0010, 0043);
wherein the game tile is selected from a set of first game tiles having a first type of graphic symbol thereon or from a set of second game tiles having a second type of graphic symbol thereon (see: Fig. 3D, 0013, 0047);
Note: the pieces or “bonus game symbols” are analogous to tiles. The bonus game symbols may be of a first type (e.g., property such as Boardwalk) or a second type (e.g., house or hotel).
supplying a game board to the player, the game board having an array of game spaces that include first game tile spaces and second game tile spaces (see: Fig. 3E, 0042 (hard game board, or electronic game board), 0043 (locations on game board));
upon the player scanning the code on the lottery ticket, providing the player with the first game tile or the second game tile associated with the lottery ticket (see: Fig. 3B, 0031 (ticket is “entered” and is uniquely identified by a code), 0045, 0030, 0064);
Note: lottery tickets are associated with game indicia including a code, the tickets entered using the code. Notably, 0030 discloses the indicia to include a bar code, and 0064 discloses the terminal including a reader configured to read bar codes.
awarding the award in the bonus game to the player based on a number of the first and second game tiles used to achieve the result (see: 0033 (increase a price awarded in bonus game), 0038, 0040).
Though disclosing the above, Rogers does not disclose:
a unique game board having an a randomly generated array of game spaces;
providing instructions to the player to place each of the game tiles they receive in one of the first or second game tile spaces available on the game board to create a string that includes at least one of the second game tiles and wherein the string equates to a result required by the bonus game for an award.
To this accord, Brouillard teaches a lottery game system that includes a crossword-based game product playable as a bonus or second chance game different than a lottery ticket (base game) (see: 0015), the bonus game including:
a unique game board having an a randomly generated array of game spaces (see: 0011, 0020 (randomizer component 77 operates to randomly select grids and/or words), 0023);
providing instructions to the player to place each of the game tiles they receive in one of the first or second game tile spaces selected by the player to create a sequential string on the game board that includes at least one of the first game tiles and at least one of the second game tiles and wherein the string equates to a result required by the bonus game (see: Fig. 1 (60, 31, 33), 0005, 0009-0010, Fig. 2 (“Completed the word that connects the two puzzles and win $50”), Fig. 3). Additionally, the content of the instructions is little more than non-functional descriptive material. The content of the instructions carries little patentable weight and does not patentably distinguish the claimed invention from the prior art.
Lastly, the tickets of Brouillard are disclosed as comprising barcodes (e.g., Fig. 2), 0015 player enters the code).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the invention of Rogers to have utilized the known type of bonus game employing the unique game board and instructions as taught by Brouillard in order to have communicated to users the availability of a bonus game that offered more available prizes in the game (see: Brouillard: 0003, 0005), thereby making both games more appealing to potential players.
Lastly, neither Rogers nor Brouillard teach supplying a unique game board to the player, the game having a randomly generated array of game spaces that includes a plurality of first game tile spaces for placement of any one of the first game tiles and a plurality of second game tile spaces for placement of any one of the second game tiles.
To this accord, Elum teaches a crossword puzzle game similar to that of Brouillard in which a game board comprises array of game spaces that includes a plurality of first game tile spaces for placement of any one of the first game tiles (e.g., consonants) and a plurality of second game tile spaces for placement of any one of the second game tiles (e.g., vowels) (see: Fig. 1 (H, H’), col. 3 lines 8-25, col. 4 lines 8-29).
Furthermore, by providing this indicia may also be understood as providing instructions to the player to place each of the game tiles they receive in one of the first or second game tile spaces selected by the player to create a sequential string on the game board that includes at least one of the first game tiles and at least one of the second game tiles and wherein the string equates to a result required by the bonus game.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the invention of Rogers in view of Brouillard to have utilized the added indicia taught by Elum on the board of Rogers in view of Brouillard in order to have provided assistance to the user in in determining correct answers (see: Elum: abstract).
2. The method for play of a lottery bonus game according to claim 1, wherein the bonus game is a digital electronic game played by the player on a computer or mobile smart device, the game board and game tiles supplied to the player in digital form (see: Rogers: 0014, 0017, 0042, 0059; Brouillard: 0015, 0017).
3. The method for play of a lottery bonus game according to claim 2, wherein the player has a personalized digital account with a lottery provider, the game board and game tiles stored in the player digital account (see: Rogers: 005 (online account), 0014, 0044; Brouillard: 0019).
4. The method for play of a lottery bonus game according to claim 1, wherein the game board contains a grid of spaces, the first and second game tile spaces randomly designated in the grid of spaces (see: Brouillard: Fig. 1, 0011, 0020, 0023).
5. The method for play of a lottery bonus game according to claim 4, wherein the grid of spaces includes one or more randomly designated blocked spaces that cannot be used for play any of the first or second game tiles (see: Brouillard: Fig. 1-2 (dark/gray spaces are not playable)).
Regarding claims 7 and 9-10, the limitations of claims 7 and 9-10 are little more than a design choice that provides no additional functioning of the method, with the types of symbols and the information conveyed being nothing more than non-functional descriptive material. The claims differed from the prior art solely by the descriptive material provided via the tiles. Except for the meaning to the human mind, the data identifying the price that will be paid does not functionally change the manner in which the method is performed. That is, such a scenario presents no new and unobvious functional relationship between the descriptive material and the method steps (see: MPEP 2111.05).
Moreover, claims 7 and 9-10 do not set forth further active method steps to be performed, instead only passively describe the types of symbols and rules that may be used (rather than requiring performance of specific steps or functions).
Accordingly, claims 7 and 9-10 do not patentably distinguish the claimed invention over the combination of Rogers and Brouillard.
Regarding claims 11 and 13, the limitations of claims 11 and 13 are little more than a design choice that provides no additional functioning of the method, with the types of symbols and the information conveyed being nothing more than non-functional descriptive material. The claims differed from the prior art solely by the descriptive material provided via the tiles. Except for the meaning to the human mind, the data identifying the price that will be paid does not functionally change the manner in which the method is performed. That is, such a scenario presents no new and unobvious functional relationship between the descriptive material and the method steps (see: MPEP 2111.05).
Moreover, claims 11 and 13 do not set forth further active method steps to be performed, instead only passively describe the types of symbols and rules that may be used (rather than requiring performance of specific steps or functions).
Accordingly, claims 11 and 13 do not patentably distinguish the claimed invention over the combination of Rogers and Brouillard.
Regarding claims 14 and 16-20, claims 14 and 16-20 recite at least substantially similar concepts and elements as recited in claims 1-4, 7, 9 and 11 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 14 and 16-20 are rejected under at least similar rationale.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rogers in view of Brouillard and Elum as applied to claim 1 and 4 above, and further in view of Burger (US 6,325,374).
Regarding claim 6, Rogers in view of Brouillard and Elum teaches all of the above as noted including wherein the grid of spaces includes one or more randomly designated spaces (see: Brouillard: 0011, 0020, 0023, Fig. 1-2). The combination, however, does not teach board to comprise wild card spaces that be used for play either of the first or second game tiles.
Wild spaces were notoriously well-known in the art before the effective filing date of the invention and would have been obvious to one of ordinary skill.
For example, Burger teaches a board comprising wild card spaces that be used for play either of the first or second game tiles (see: Fig. 1 (18), col. 2 lines 53-59, Fig. 4 (68), col. 4 lines 25-31).
One of ordinary skill in the art would have recognized that the known technique of Burger would have been applicable to the invention of Rogers in view of Brouillard as both share common functionality and purpose - namely, to provide a game board.
It would have been obvious to one of ordinary skill in the art at before the effective filing date of the invention to have utilized the known technique for providing wild spaces as taught by Burger in the game board of Rogers in view of Brouillard and Elum since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable – namely, a game board comprising wild (free) spaces for use during gameplay.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kaspik (US 20120187626) discloses a game board used for placing tiles to make “runs” (see: Fig. 3, Fig. 6, 0044)
Arnone (US 20150339039) discloses a word building game with specialized spaces (see: Fig. 15A)
Audet (US 7,377,992) discloses a sequence-based game having a game board with defined spaces for playing corresponding pieces (see: Fig. 1, abstract)
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J ALLEN whose telephone number is (571)272-1443. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM J. ALLEN
Primary Examiner
Art Unit 3625
/WILLIAM J ALLEN/Primary Examiner, Art Unit 3619
Prosecution Insights