DETAILED ACTION
This action is in response to the amendment filed July 1, 2026. The Examiner acknowledges that claims 1-20 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
Applicant’s remarks in combination with the amendments to claims 1-20 are reasonably persuasive to overcome the previously presented 35 U.S.C. 101 rejection, therefore the rejection is withdrawn.
Applicant’s remarks indicated the previously presented double patenting rejection to be held in abeyance until the claims were otherwise in condition for allowance. The Examiner respectfully positions that, even after the amendments to claims 1-20, the amended claims reasonably warrant the same standing of double patenting as previously presented and reproduced below.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,094,298. Although the claims at issue are not identical, they are not patentably distinct from each other because the invention set forth in the instant claims substantially overlaps with novel scope of the invention(s) as set forth in the patent claims. The presently claimed invention directed to modifying reels trips, utilizing the modified real strips in a game, and evaluating whether a first trigger system is presented to implement a further game feature along with sets of ordered multiplier values is similarly set forth in the patent claims. A person of ordinary skill in the art comparing each of the inventions, as claimed, would have ascertained the substantial overlap insomuch that a standing of non-statutory double patenting is warranted for which a terminal disclaimer may be submitted to obviate the rejection. For the sake of compact prosecution a detailed side-by-side claim analysis is omitted, as it appears the substantial overlap is readily apparent by glance, however, if Applicant prefers a detailed analysis, the Examiner can furnish such upon request.
Claims rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,957,155. Although the claims at issue are not identical, they are not patentably distinct from each other because the invention set forth in the instant claims substantially overlaps with novel scope of the invention(s) as set forth in the patent claims. The presently claimed invention directed to utilizing a set of multiplier values, applying an active or current multiplier to a game outcome, and upon presence of a trigger or designated symbol, advancing or increasing the current multiplier to a next higher multiplier in the set of multipliers to apply in a subsequent play. A person of ordinary skill in the art comparing each of the inventions, as claimed, would have ascertained the substantial overlap insomuch that a standing of non-statutory double patenting is warranted for which a terminal disclaimer may be submitted to obviate the rejection. For the sake of compact prosecution a detailed side-by-side claim analysis is omitted, as it appears the substantial overlap is readily apparent by glance, however, if Applicant prefers a detailed analysis, the Examiner can furnish such upon request.
Conclusion
THIS ACTION IS MADE FINAL. 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 MILAP SHAH whose telephone number is (571)272-1723. The examiner can normally be reached Monday - Friday, 9:30-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KANG HU can be reached at 571-270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/MILAP SHAH/Primary Examiner, Art Unit 3715
Prosecution Insights