DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21, 22, and 24-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As set forth in the previous office acton;
“Claim 21 as amended calls for a single number to be rolled a number of times “non-consecutively”. Such is not considered originally disclosed and is new matter. On pg. 9, 2nd para, the bet is disclosed as “sequentially or not”. The word “consecutive” does not appear to be used nor is a synonymous term considered to be used.
Similarly, “a plurality of rolls, which is at least one greater” does not appear disclosed. Instead, the “repeater bet” is paid when a predetermined number is rolled specified number of times “before the shooter ‘sevens out’”. It does not appear disclosed that the number of rolls must be “at least one greater” as is now recited in the amended claim 21.”
It is not disclosed that such bets must be rolled non-sequentially. Instead, it is disclosed on pg. 1, ln. 11 and throughout the specification that such may be, “either sequentially or not”. The scope of claim 21 as now recited, that attempts to eliminate the possibility of sequential rolls is simply not disclosed. Applicant argues that the example of rolling two 2’s in a row as in Cacas would not be covered by claim 21. However, such is not disclosed as the specification clearly sets forth only the both sequential and non-sequential rolls would be a win. Hence, this grounds for rejection remains and has not been overcome by applicant.
Claim Rejections - 35 USC § 101
Claims 21-31 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more,
ANALYSIS To determine patent-eligibility, we perform a two-step analysis. First, we determine if the claims are directed to a patent-ineligible concept like an abstract
idea. Alice Corp. Pty. Ltd. V. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014). If so, we
determine if the claims contain an "inventive concept" that transforms the abstract idea
into a patent-eligible application.
Alice Step One: Are the Claims Directed to an Abstract Idea?
Claim 22 is directed to an abstract idea of a new set of rules for playing a game. Any recitation of the dice, electronic light emitting tracking indicia and game layout are not essential to game play rules and do not undergo physical transformation.
Game rules in general involve mental activity like forming a judgment, observation, evaluation, or opinion, interpersonal interactions or relationships, human behavior such as following rules or instructions, and instructions as to how business should be conducted. Such methods of conducting games found to be unpatentable In re Smith, 815 F.3d 816 (Fed. Cir. 2016) and Planet Bingo, LLCv.VKGSLLC, 576 F. More recently and on point with respect to dice games, such has been found not patent eligible by Court in In re Marco Guldenaar Holdings B.V. (Fed. Cir. 2018).
In re Smith, a precedential decision, held that claims directed to rules for conducting a wagering game are comparable to fundamental economic practices held to be abstract ideas such as a method of exchanging financial obligations in Alice and a method of hedging risk in Bilski V. Kappos, U.S. 593, 611 (2010). Smith, 815 F.3d at 818-19. That the method used physical cards did not make the idea non-abstract. Smith, 815 F.3d at 819.
Here the claimed game play and wagering rules is distinguishable from the wagering game rules in Smith or Marco. The claims are largely directed to an abstract idea of "organizing human activities" and managing a game like the bingo game in Planet Bingo. No comparable improvement to gaming technology, dice play, or gaming tables. Any "improvement" resulting from the claims in the rules of wagering allegedly occurs, if at all, in the minds of the players as increased interest and player excitement.
Alice Step Two: Do the Claims Contain an "Inventive Concept"?
The claims are directed to conventional industry practice in wagering on dice that does not solve a technological problem but instead recites rules that guide actions of players of a wagering game under certain conditions. The game of craps is conventional to allow player to roll the dice and wager on a single roll or sequence of a plurality of rolls. Here applicant claims conventional steps of wagering, which are fundamental gaming industry practices recited at a high level of generality and not tied to solving any known problem or producing an improvement. Instead, the rules pertain to an alternative proposition wagering in a sequence of outcomes of the dice. Such a new proposition convey as a particular ordered combination of game play rules does not claim significantly more than the abstract idea itself because the claimed rules do not solve a particular technological problem, but instead rely on the impressions and subjective actions of players, which are not a concrete or tangible result; they simply append more conventional steps specified at a high level of generality, which does not supply an inventive concept. The rearranging game play and wagering rules of a craps game does not amount to an improvement, and no evidence has been provided of an improvement or unexpected results.
The tracking indicia and lights are considered printed matter. Using a talley or score sheet to track and record game events is conventional. Likewise, the use of an electronic controller does not suggest significantly more. If a patent claim recites a method with instructions to implement an abstract idea on a device, even a computer, the device cannot impart patent eligibility. Alice, 134 S. Ct. at 2358; Planet Bingo, 576 F. App'x at 1008.
The examiners position is rooted in Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski V. Kappos. One factor suggesting claims are directed to patent ineligible subject matter are;
-Mental activity (e.g., forming a judgment, observation, evaluation, or opinion);
-Interpersonal interactions or relationships (e.g., conversing, dating);
-Human behavior (e.g., exercising, wearing clothing, following rules or
instructions);
-instructing "how business should be conducted."
All these factors are considered descriptive of rules for playing games that are considered "instructing" how a game (i.e. business) should be conducted and directed
to human behavior and interpersonal interactions (i.e. following rules) to engage in
mental activity requiring of forming judgment, observation and evaluation. Most games
require an apparatus played upon or game paraphernalia. In some cases, the paraphernalia for playing a game is SO specific to the step being performed that they
could considered a "particular machine" to render claims patent eligible. This appears
to be the distinguishing issue between the cases by the Board that seeming has ruled
both ways in appeals dealing with games in general. Rules in general define the relationship of any paraphernalia to the players and the play of the game and its
interpretation. Game paraphernalia most generally serves as substrates for generating and/or displaying indicia and/or recording game events, as in a computer. Such is just considered a manipulation of data and extra solution activity. There must be something more in the paraphernalia or function of its indicia that is recited that is used by the steps of the game. Where many known and disclosed types of paraphernalia for recording game events and outcomes could be used in accordance with the steps, such is considered to weigh against patent eligibility as they are not considered essential to the performance of the step and rules of the game itself.
Claim Rejections - 35 USC § 103
Claims 21-31 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Cacas 2006/0181024 as set forth in the previous office action in view of Presley 2008/0054560 and further in view of Stasi 7,100,919 as set forth in the previous office action and below in response to applicant’s remarks.
Conclusion
Applicant's arguments filed 1/8/24 have been fully considered but they are not persuasive.
With respect to the rejection under 35 U.S.C. 101, applicant argues that he as amended the claims to include the structure of the illuminated tracking device. However, such does not contribute significantly more to the idea itself. The mere addition a simple machine or device to a abstract idea is not enough alone to transform applicant’s previously ineligible idea. Here there use of indicator lights are merely the addition of an insignificant extra-solution activity that is not central to the idea itself of in the attempt to patent the steps by which to play a game. Game tables and surfaces in general, as shown by the art of record, are known to use illuminated recording devices to track game events in general and are not particular to the play of applicant’s game attempting to be recited. Such are not necessary to any steps of the game being recited. See Bilski v. Kappos, 561 U.S. 593, 611-12, 95 USPQ2d 1001, 1010 (2010) (well-known random analysis techniques to establish the inputs of an equation were token extra-solution activity). Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Here, the additional element does not amount to significantly more on its own or in combination. Simply appending conventional activities to track game events previously known have been found to be not enough to qualify as adding significantly more. Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984. If a claim fails the Alice/Mayo test (i.e., is directed to an exception at Step 2A and does not amount to significantly more than the exception in Step 2B), then the claim is ineligible even if it passes the M-or-T test. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256, 113 USPQ2d 1097, 1104 (Fed. Cir. 2014) ("[I]n Mayo, the Supreme Court emphasized that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an 'inventive concept.'" Here the illumination are merely a tool to perform the steps of tracking in the game. For example, as described in MPEP § 2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. See, e.g., Versata Development Group v. SAP America, 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). As such, applicant’s amendments and remarks fail to overcome this grounds for rejection.
With respect to the obviousness rejection of claim 21, applicant argues that the claim now requires the predetermined to be rolled “non-sequentially:” This term is semantic to the previously used term of “non-consecutively” and does not change the scope of the claim nor the interpretation set forth in the previous grounds for rejection. Applicant argues that rolling tow 2’s would not be covered by claim 21. However, applicant’s analogy does not distinguish over the resolution of the field bets alone in craps where a wager on the number two is awarded if the number two is rolled twice non-sequentially. The field bets (such as discussed with respect to Stasi) are resolved allowing interleaving rolls of the dice. Similarly, with respect to claim 32, where a third roll of the number two is rolled field bet wagers are resolved when three non-sequential rolls of the dice are performed and meets the limitations of the scope of the claim. In each case bets rolled, “a specified number of times non-sequentially”, in this case three, are rolled in order to receive a payout. As such, the scope of claims still fail to positively distinguish over the art and the grounds for rejection remains.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Melba Bumgarner at (571)272-4709.
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/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
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