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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/12/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/907,785 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and co-pending application substantially claims similar limitations with one exception. The current application additionally claims a timer indicative of time period for the area of effective symbol accumulation sequence; which is lacking in the co-pending application. However, it would have been obvious for one with ordinary skill in the art, at the time of invention, to modify the co-pending application to include time related factor to increase player participation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cohn et al. (US Patent Pub. 20210366226; referred to hereinafter as Cohn), and further in view of Baerlocher (US Patent Pub. 20110111818; referred to hereinafter as Baerlocher).
Claims 1, 11 & 17: Cohn disclose a gaming system (abstract), comprising, a processor, and a memory device that stores a plurality of instructions that, when executed by the processor (figure 2), cause the processor to: cause a display, by a display device, of symbol displays (figure 3), cause a display, by the display device, of an area of effect indicator in association with one of the symbol displays (figures 5), wherein the area of effect indicator comprises: a symbol accumulation indicator area that indicates a quantity of symbols that can be accumulated in that area of effect indicator during a time period for an area of effect symbol accumulation sequence (0053 & figures 5A-5C, elements 222, 224, 226, 228 & 230), and an accumulated symbol display area in which accumulated symbols are displayed during the area of effect symbol accumulation sequence (figures 6-7, elements 222, 224, 226, 228 & 230). Cohn, further discloses a timer that indicates the time period for the area of effect symbol accumulation sequence (0106 & 0111 disclose time element to accumulate symbols during), cause a display, by the display device, of activations of the symbol displays during the time period for the area of effect symbol accumulation sequence, cause a display, by the display device, of symbols being accumulated in the accumulated symbol display area during the time period for the area of effect symbol accumulation sequence (figures 5-8 & 0053-0058) and cause a display, by the display device, of indications of the accumulated symbols in the symbol accumulation indicator area that are accumulated in the accumulated symbol display area during the time period for the area of effect symbol accumulation sequence (0059-0065). Cohn, however fails to explicitly disclose a timer display to indicate the time period. In an analogous art, Baerlocher teaches of a gaming system that receives a wager from a player, determines a number of the designated number of elements which will function as or be designated as payout elements, determines which of the designated number of elements to make the payout elements, for each payout element, determines the payout value associated with that payout element; and determines a game ending condition. Furthermore, Baerlocher teaches of a timer display to display time remaining to satisfy game requirements (figure 7, element 23). It would have been obvious for one with ordinary skill in the art, at the time of the invention to modify the current game disclosed by Cohn, to include a timer display, as taught by Baerlocher, thereby creating an entertaining and challenging game for participants.
Claims 2 & 12: The combination of Cohn and Baerlocher teach, wherein only value symbols on one of the symbol displays can be accumulated in the area of effect indicator (Cohn figures 6-7, elements 222, 224, 226, 228 & 230).
Claims 3-6, 13-15 & 18: The combination of Cohn and Baerlocher teach the timer indicating continual decreases of the time period during the area of effect symbol accumulation sequence and activation (Baerlocher 0151-0152).
Claim 7: The combination of Cohn and Baerlocher teach of no additional accumulation of symbols in the area of effect indicator after an expiration of the time period as indicated by the timer (obvious, as the timer expires so does the game).
Claims 8-10, 16 & 19-20: The combination of Cohn and Baerlocher teach of no additional accumulation of symbols in the area of effect indicator after all of the quantity of symbols that can be accumulated in that area of effect indicator are accumulated during the area of effect symbol accumulation sequence, and regardless of a remaining amount of the time period as indicated by the timer (figure 7C, 224, wherein no additional accumulation can occur).
Examiner’s Note
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Colin (6,346,043) refers to an image matching gaming method suitable for use as bonus game on a slot machine is provided. The method includes allowing the player to have an active role in selecting the bonus award. The player is allowed to see all the awards associated with possible selection after his choices have been made.
Schaefer (10,275,995) refers to a skill-based wagering game with an available supplemental skill award. In various embodiments, the skill-based wagering game is a matching game. During play, the player makes skill inputs to attempt to correctly match moving objects to corresponding targets. The gaming system determines a primary award based on how many correct matches the player achieves, which is directly tied to the player's skill level during play. The primary award generally increases as the quantity of correct matches increases. For players who exhibit a high skill level during play (e.g., correctly match all of the moving objects to the targets), the gaming system may also provide a supplemental skill award. The probability of the supplemental skill award being large generally increases as the player's skill level during play increases.
The referenced citations made in the rejection(s) above are intended to exemplify areas in the prior art document(s) in which the examiner believed are the most relevant to the claimed subject matter. However, it is incumbent upon the applicant to analyze the prior art document(s) in its/their entirety since other areas of the document(s) may be relied upon at a later time to substantiate examiner's rationale of record. A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). However, "the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed ...." In re Fulton, 391F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIT PANDYA whose telephone number is (571)272-2823. The examiner can normally be reached M-F 9:30-6:30PM.
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/SUNIT PANDYA/Primary Examiner, Art Unit 3715
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