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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/896229 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. More particularly, both sets of claims are directed to systems, methods, and/or computer-readable media for a roulette game in which two roulette wheels are operated. In both applications, a player is able to place bets on outcomes of the two roulette wheels. Both sets of claims provide for one or more players to view at least one player station arranged at the roulette game. Additionally, both sets of claims provide various electronic elements, such as a player interface, a camera, a dealer interface, a processor, and a memory. In both applications, the camera is operable to provide a video feed of at least part of the first and second roulette wheels to displays, either locally or remotely over a network. Both sets of claims encompass a physical gaming table or housing that contains or supports the features discussed hereinabove.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 101
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claims fall into one of the four statutory categories of invention. The claims are directed an apparatus, a method, and a computer readable medium, which fall into the four statutory categories. However, claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 309 (1980).
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the invention relates “to the field of gaming, particularly electronic table games.” Spec. ¶ 2. Representative claim 1 recites the following (with emphasis):
1. A live roulette gaming system, comprising:
a roulette gaming table comprising a first roulette wheel and a second roulette wheel; and
at least one computing device comprising a processor and a memory, the memory comprising instructions, which when executed by the processor, causes the at least one computing device to:
accept, during a first betting window, a first bet from an interactive gaming interface, wherein the bet is for a first gaming event to be played on a first roulette wheel at the roulette gaming table;
at a dealer console at the roulette gaming table, begin the first gaming event by initiating a wheel spin of the first roulette wheel;
during the wheel spin of the first roulette wheel, open a second betting window for a second gaming event associated with the second roulette wheel at the roulette table;
accept, during the second betting window, a second bet from the interactive gaming interface; close the second betting window when the wheel spin of the first roulette wheel ends; and
after a result of the first gaming event is confirmed at the dealer console, initiate a wheel spin of the second roulette wheel to begin the second gaming event.
The underlined portions of representative claim 1 generally encompass the abstract idea, with similar features in independent claims 8 and 18. It is clear that the inventive concept here is a set of rules for one or more games, which may provide one or more awards to a player. Dependent claims 2-7 and 9-17 further define the abstract idea by introducing various rules to the game (e.g., locating player stations in a casino, providing betting layouts, displaying time left for betting, resolving bets for gaming events, etc.) and/or relate to implementing the game (discussed further below). The abstract idea may be viewed, for example, as:
a method of exchanging financial obligations (e.g., an award-providing game, which is effectively a method of exchanging and resolving financial obligations based on probabilities created during the game) as discussed in Alice Corp. v. CLS Bank, In re Smith (Fed. Cir. 2016), and In re Marco Guldenaar Holding B.V. (Fed. Cir. 2018),
a fundamental economic practice (e.g., rules for conducting a game) as discussed in In re Smith, and In re Marco Guldenaar Holding B.V.,
a method of managing a game similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC (Fed. Cir. 2014);
a set of game rules similar to increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results, as discussed in Bot M8 LLC v. Sony Corp. of America (Fed. Cir. 2021); and/or
a method of organizing human activities (e.g., allowing a human player to play an award-providing game according to rules of the game method) as discussed in Bilski v. Kappos and Alice Corp. v. CLS Bank.
The claimed abstract idea reproduced above is effectively a method of exchanging and resolving financial obligations between one or more players and an operator of the gaming machine based on probabilities created during the game (see Smith, In re Marco Guldenaar Holding B.V., and Alice). Based on the reasoning in Smith, and In re Marco Guldenaar Holding B.V., the recited steps of conducting a game in the instant claims relate to the “fundamental economic practice” of rules for conducting a game. The abstract idea is also similar to that of Planet Bingo, in which a method of managing a bingo game was found to be an abstract idea. Though the instant claims are not limited to bingo games, they encompass the management of similar games. The abstract idea is also comparable to the game rules presented on gaming machines in Bot M8 LLC v. Sony Corp. of America, in which a reward probability could be increased or decreased based on aggregating previous game outcomes placed on the gaming machines. The Bot M8 decision also found that such abstract idea is “more broadly the difficulty[] of a multiplayer game.” Finally, the claims allow a player to win an award, which is a financial transaction based on the rules of the game (e.g., as determined by a random number generator). Such transactions are akin to the sort of organizing of human activities, i.e., risk hedging, discussed in Bilski (and shadow accounts in Alice).
Under prong 1, the above analysis demonstrates that the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity. Under prong 2, the instant claims do not integrate the abstract idea into a practical application because they merely provide instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea, add only extra solution activity to the abstract idea, and/or generally link the use of the abstract idea to a particular technological environment or field of use. While certain physical elements (i.e., elements that are not an abstract idea such as a computer, an input device, a display device, wheels, etc.) are present in the claims, such features do not effect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (only generic gaming components), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (e.g., a casino or similar environment), such that the claim, as a whole, is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h). Therefore, the claims are directed to the judicially recognized exception of an abstract idea.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The claims encompass the following additional element(s) or combination of elements in the claim(s) other than the abstract idea per se: a gaming table having a first and second roulette wheel, a computing device having a processor and memory to carry out the abstract idea, a display device, and one or more player stations within a particular environment such as an arena, and a live video feed of the roulette wheel(s). Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
The claimed additional features are generic, conventional, and well-known in the art of wager gaming and/or are devices that represent extra-solution activity. For instance, the specification describes the player interface as a player station or other device such as a tablet, laptop, or mobile computing device. Spec. ¶ 44. This illustrates that the computer devices for players need only be generic and conventional components. Similarly, the computer components for the game outcomes are described in generic and functional terms: “the techniques may be distributed between the computing device(s) and the controller(s)…Figure 9 illustrates an exemplary block diagram of a computing system that includes hardware modules, software module, and a combination thereof and that can be implemented as the computing device and/or as the server.” Spec. ¶ 72. This provides additional indications that the computer components recited by the claims may be well-understood, routine, and conventional computer components. It is noted that the claimed “arena” represents an environment in which the abstract idea is applied, which does not impart any particularity to the claimed abstract idea.
The claims additionally recite providing a live video display of the outcomes of roulette wheels. The specification explains that this may be done using video cameras and displaying the results using picture-in-picture (PIP) format. Spec. ¶¶ 32-34. The Examiner notes that live video feeds using cameras and display formats providing PIP have been known in the art of video production for consumer grade electronics at least as early as the 1990s, with professional grade electronics able to provide such features as early as the 1970s. See “Picture-in-picture,” Wikipedia. Furthermore, the inventive concept of wagering on multiple roulette wheels is not materially affected by such cameras or display formats, which indicates that these features are extra-solution activities.
In light of these factual findings, the additional claim features are well-understood, routine, and conventional and/or constitute extra-solution activities.
Several other references have been cited in this or a parent application to demonstrate features that are well-understood, routine, and conventional in the art. Each of these references is incorporated herein by reference to demonstrate the state of the art.
Taking the claimed elements individually yields no difference from taking them in combination because each element simply performs its respective function as discussed above. The claims do not purport to improve the functioning of a computer itself, nor do they effect an improvement in any other technology or technical field. Instead, the additional features merely amount to an instruction to apply the abstract idea using generic, functional, and conventional components well-known in the art. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
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 1-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0092037 to Snow et al. (hereinafter Snow).
Regarding claims 1, 8, 9, and 18, Snow teaches a live roulette gaming system, and method and computer readable medium therefor, comprising:
a roulette gaming table comprising a first roulette wheel and a second roulette wheel (e.g., Fig. 3); and
at least one computing device comprising a processor and a memory (e.g., Fig. 20), the memory comprising instructions, which when executed by the processor, causes the at least one computing device to:
accept, during a first betting window, a first bet from an interactive gaming interface, wherein the bet is for a first gaming event to be played on a first roulette wheel at the roulette gaming table (e.g., ¶¶ 44-46, 50, and 52);
at a dealer console at the roulette gaming table, begin the first gaming event by initiating a wheel spin of the first roulette wheel (e.g., ¶¶ 44-46, 50, and 52);
[…] open a second betting window for a second gaming event associated with the second roulette wheel at the roulette table (e.g., betting on a second or subsequent roulette wheel 304; see at least ¶ 55-59);
accept, during the second betting window, a second bet from the interactive gaming interface (e.g., betting on a second or subsequent roulette wheel 304; see at least ¶ 55-59);
close the second betting window (e.g., no more bets accepted for the second or subsequent roulette wheel) […]; and
after a result of the first gaming event is confirmed at the dealer console, initiate a wheel spin of the second roulette wheel to begin the second gaming event (e.g., The second of the multiple (e.g., three) roulette wheels 304 may be operated, after or concurrently with the first of the roulette wheels 304 in ¶ 206).
Snow teaches the invention substantially as described above, and makes clear that the multiple bets placed on the multiple roulette wheels maybe operated sequentially or concurrently (e.g., ¶ 206). However, Snow does not explicitly teach the overlapping time periods of the claimed invention in which the second betting window is opened ‘during the wheel spin of the first roulette wheel’ and the second betting window is closed ‘when the wheel spin of the first roulette wheel ends.’ The claimed overlapping time period is essentially a mixture of sequential and concurrent game play because the game rounds only partially overlap. Snow does not expressly teach this partial overlap. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the teachings of Snow to provide overlapping time periods of the claimed invention in which the second betting window is opened ‘during the wheel spin of the first roulette wheel’ and the second betting window is closed ‘when the wheel spin of the first roulette wheel ends’ in order to provide players with sufficient time to decide whether to make a second wager while also keeping a faster pace of game outcomes that benefits the gaming establishment with greater profits.
Regarding claim 2, Snow teaches or suggests one or more player stations arranged around the roulette gaming table, wherein each of the player stations comprise a display providing the interactive gaming interface (e.g., ¶ 53 and Figs. 2 and 17).
Regarding claim 3, Snow teaches or suggests wherein the one or more player stations are located in an arena on a casino floor, wherein the arena comprises an interior area and a perimeter, and the one or more player stations face the roulette gaming table (e.g., ¶¶ 44-46 and Figs. 3 and 17).
Regarding claim 4, Snow teaches or suggests wherein the interactive gaming interface display comprises a first area comprising a betting layout associated with the first roulette wheel, and a second area comprising a betting layout associated with the second roulette wheel (e.g., betting layout in Figs. 2 and 14).
Regarding claims 5 and 11, Snow teaches or suggests wherein the first area further comprises a live video feed of the first roulette wheel, and the second area further comprises a live video feed of the second roulette wheel (e.g., video feeds in ¶¶ 44-46, 127, and 160).
Regarding claims 6, 9, and 10, Snow teaches or suggests wherein the interactive gaming interface (or dealer console) displays at least one of: a time left in the second betting window and a result of the first gaming event (e.g., roulette outcomes may be displayed in ¶¶ 44-46, 127, and 160).
Regarding claims 7 and 12, Snow teaches or suggests wherein the at least one computing device is further configured to: automatically resolve the bet for the first gaming event after the result of the first gaming event is confirmed (e.g., via partially or fully automated table games or network games in ¶ 45).
Regarding claim 13, Snow suggests during the wheel spin of the second roulette wheel, opening a third betting window for a third gaming event associated with the first roulette wheel at the dual roulette table (e.g., the third roulette wheel in Fig. 3) for the same reasons discussed with respect to claim 1 above.
Regarding claim 14, Snow teaches or suggests wherein the at least one player interface is associated with one or more player stations positioned within a same location as the roulette gaming table (e.g., Figs. 3 and 17).
Regarding claim 15, Snow teaches or suggests wherein the one or more player stations are positioned to enable a player to view the first roulette wheel and the second roulette wheel (e.g., Figs. 3 and 17).
Regarding claim 16, Snow suggests wherein the one or more player stations are arranged in a stadium configuration, wherein the stadium configuration comprises a plurality of rows extending outwardly from the roulette gaming table, and wherein the one or more player stations face the roulette gaming table because the players may participate at individual electronic gaming machines located on a casino floor, which are known to be arranged in a plurality of rows, in ¶ 125 and/or at other tables or electronic devices. The particular choice of where to locate games within a casino is an obvious matter of choice within the ordinary level of skill of casino managers because the particular location of the devices does not alter their functioning.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Snow in view of US 2013/0084947 to Nicely (hereinafter Nicely).
Regarding claim 17, Snow teaches or suggests the invention substantially as described above, but lacks in explicitly teaching setting, at the dealer console, a spin direction of the first roulette wheel prior to beginning the first gaming event, and setting, at the dealer console, a spin direction of the second roulette wheel before beginning the second gaming event. In a related disclosure, Nicely teaches a roulette type game having a variety of roulette dealer attributes, including direction of roulette wheel attributes (e.g., clockwise or counter-clockwise) (see ¶ 92). It would have been obvious to one of ordinary skill in the art before the effective date to modify the system of Snow to include a dealer-selectable roulette wheel rotation direction, as taught or suggested by Nicely, in order to provide players with greater variety of gameplay.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715
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