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 .
Status of Claims
This action is in response to the preliminary amendment filed February 12, 2025 and the Application as filed on October 7, 2024. Claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 12, 2025 is in compliance with the provisions of 37 CFR § 1.97. Accordingly, the IDS has been 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 in view of art of record in the attached notice of references cited.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claims 1, 6, 9, and 16 are objected to because of the following informalities:
Claims 1 and 9 also include the language -- accumulated in the accumulated symbol display area symbol of the area of effect indicator-- with similar language in claim 16. There is no “accumulated symbol display area symbol” recited in the claims. Therefore, it is believed this should read -- accumulated in the accumulated symbol display area of the area of effect indicator --. Appropriate correction is required.
Claims 6 including the language “and the second quantity is more one.” This should read -- and the second quantity is more than one --. Appropriate correction is required.
Claim 9 includes the language “of one of the value symbol.” This should read -- of one of the value symbols --. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-20 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
In re claim 1, the language “an indication of symbols along a same payline as the area of effect indicator changing to game symbols” is indefinite. It is not clear what is meant by “changing” in the context of the claim. It is unclear whether the symbols are displayed and then changed to game symbols as part of this operation, or that symbols were previously displayed along the payline and are then changed by this operation. Moreover, it is unclear whether an indication of symbols along a same payline refers to all symbols on the payline and whether all symbols on the payline are changed to game symbols. For purposes of examination, the claim is interpreted according the specification and drawings as previously displayed symbols on a payline are all changed to a game symbol (See, e.g., Figs. 2J and 2K).
In re claim 9, the claim recites “that value symbol” at lines 21-22 and 25. It is unclear which previously recited symbol is “that value symbol” referred to in the claim. For purposes of examination, “that symbol” is interpreted as the “one of the value symbols” displayed in the display area of the area of effect indicator. It is not clear what is meant by “changing” in the context of the claim. It is unclear whether the symbols are displayed and then changed to game symbols as part of this step, or that symbols that were previously displayed along the payline are then changed. Moreover, it is unclear what is meant by “an indication of a plurality of the game symbols along a same payline as the area of effect indicator changing to same ones of the game symbols.” For purpose of examination, this is interpreted as --an indication of a plurality of the game symbols along a same payline as the area of effect indicator are changed to indicate a common game symbol--.
In re claim 11, the claim recites the limitation “the game symbols.” This limitation lacks clear antecedent basis for these limitations in the claim. It is unclear whether the game symbols refers to the “plurality of game symbols along a same payline” or the “changed to some ones of the game symbols.”
In re claim 16, the claim is rejected for the same reasons given for claims 1 and 9.
In re claim 19, the claim recites the limitations “the first wild symbols” at line 5. There is insufficient antecedent basis for these limitations in the claim.
Claims 2-8, 10-15, and 17-20 depend from a rejected base claim, and therefore are rejected for at least the reasons provided for the base claim.
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 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
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 claimed invention is directed to a process, machine, manufacture or composition of matter.
Claims 1-20 are directed to gaming systems. As such, the claimed invention falls into the broad categories of invention. However, even 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. at 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 present disclosure relates to area of effect symbol accumulation sequences with varying uses of accumulated symbols and varying amount determinations for gaming environments.” (par. 2). In addition, “Gaming machines may require a player to place a wager to activate a play of a primary game. Gaming machines may provide one or more awards in a play of a primary game. Gaming machines may determine such awards based on a winning symbol or a winning symbol combination.” (par.3).
Representative claim 9 recites the following (with emphasis):
A gaming system comprising:
a processor; and
a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to:
cause a display, by a display device, of symbol displays comprising game symbols and value symbols;
cause a display, by the display device, of an area of effect indicator overlayed over one of the symbol displays, wherein the displayed area of effect indicator comprises:
an accumulated symbol display area, and
a symbol accumulation indicator area that indicates a first quantity of value symbols that can be accumulated in the accumulated symbol display area of the area of effect indicator;
cause a display, by the display device, of activations of the symbol displays during an area of effect symbol accumulation sequence;
for each of a plurality of the activations of the symbol displays during the area of effect symbol accumulation sequence:
cause a display, by the display device, of one of the value symbol in the accumulated symbol display area of the area of effect indicator,
cause a display, by the display device, of an indication of that value symbol in the symbol accumulation indicator area of the area of effect indicator, and
cause a display, by the display device, of an indication of an award amount associated with that value symbol; and
cause a display, by the display device, for the area of effect symbol accumulation sequence, of an indication of a plurality of the game symbols along a same payline as the area of effect indicator changing to same ones of the game symbols after a second quantity of the value symbols are accumulated in the accumulated symbol display area symbol of the area of effect indicator.
The underlined portions of claim 9 generally encompass the abstract idea, with substantially similar features in the system claims 1 and 16. The dependent claims further define the abstract idea by introducing various rules to the game (e.g., prize multipliers, types of symbols, quantities of symbols, etc.). The abstract idea may be viewed, for example, as:
a fundamental economic practice (e.g., rules for conducting a wagering game) as discussed in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014), In re Smith, 815 F.3d 816 (Fed. Cir. 2016), and In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018),
a method of managing a game similar to that of managing a game of bingo in Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (non-precedential) and Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24); 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, 561 U.S. 593 (2010) and Alice Corp. v. CLS Bank.
The claims relates to area of effect symbol accumulation sequences with varying uses of accumulated value symbols and varying amount determinations for gaming environments that are presented to the player prior, during, and after the game session based on probabilities created during the game (see Smith, Marco Guldenaar, and Alice). Based on the reasoning in Smith and Marco Guldenaar, 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 and Savvy Dog, in which a method of managing a bingo game and/or display of a 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. Finally, the claims allow a player to accumulate value or awards, which is a financial transaction based on the rules of the game. Such transactions are akin to the sort of organizing of human activities, i.e., risk hedging, discussed in Bilski (and shadow accounts in Alice). In addition, the claims are related to rules for a wagering game. While the independent claims do not specifically mention wagering, (1) the claims would cover wagering game rules, (2) this is further made evident by the fact the symbols have value and are associated with awards and paylines (i.e., indications of when and how much to pay) and (3) the specification is clear that this is entirely for use in a wagering game. In addition, the determination of a specific quantity of value symbols being accumulated in the accumulated symbol display area as a trigger for game conditions can also be construed as a mental process (i.e., observations, evaluations, judgments, and opinions).
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 (e.g., elements that are not an abstract idea such as a processor, a memory, and a display) are present in the claims, such features do not affect 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.
Under Step 2A, 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 recited), (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 gaming machine), 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 system comprising: a processor; and a memory configured to cause the processor to implement the abstract idea. 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 specification with regard to gaming devices admits, that “The master gaming controller 1012 includes at least one processor 1010. The at least one processor 1010 is any suitable processing device or set of processing devices, such as a microprocessor, a microcontroller-based platform, a suitable integrated circuit, or one or more application-specific integrated circuits (ASICs), configured to execute software.” (Spec. 133).
Additionally, the specification indicates with regard to memory components “The master gaming controller 1012 also includes at least one memory device 1016, which includes: (1) volatile memory (e.g., RAM 1009, which can include non-volatile RAM, magnetic RAM, ferroelectric RAM, and any other suitable forms); (2) non-volatile memory 1019 (e.g., disk memory, FLASH memory, EPROMs, EEPROMs, memristor-based non-volatile solid-state memory, etc.); (3) unalterable memory (e.g., EPROMs 1008); (4) read-only memory; and/or (5) a secondary memory storage device 1015, such as a non-volatile memory device, configured to store gaming software related information (the gaming software related information and the memory may be used to store various audio files and games not currently being used and invoked in a configuration or reconfiguration). Any other suitable magnetic, optical, and/or semiconductor memory may operate in conjunction with the EGM of the present disclosure.” (Spec. 134).
Finally the specification indicates “The at least one output device 1020 includes at least one display device 1035 configured to display any game(s) displayed by the EGM and any suitable information associated with such game(s)” and that “the display devices include, without limitation: a monitor, a television display, a plasma display, a liquid crystal display (LCD), a display based on light emitting diodes (LEDs), a display based on a plurality of organic light-emitting diodes (OLEDs), a display based on polymer light-emitting diodes (PLEDs), a display based on a plurality of surface-conduction electron-emitters (SEDs), a display including a projected and/or reflected image, or any other suitable electronic device or display mechanism. In certain embodiments, as described above, the display device includes a touch-screen with an associated touch-screen controller. The display devices may be of any suitable sizes, shapes, and configurations.” (Spec. 134).
Therefore, the specification describes the gaming devices use of a processor, a memory, and a display device in generic and functional terms, which illustrates that these are merely off-the-shelf computer components arranged in conventional ways. As a result, nothing in Applicant’s specification indicates the computer system performs anything other than well understood, routine, and conventional functions, such as receiving, storing, and processing. See, Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (ed. Cir. 2016) (“Nothing in the claims, understood in light of the [S]pecification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”); see also Alice, 573 US. at 224—26 (receiving, storing, sending information over networks insufficient to add an inventive concept); buySAFE, Inc. v. Google, Inc., 765 F.3d 1340, 1355 (ed. Cir, 2014) (That a computer receives and sends the information over a network-—with no further specification—is not even arguably inventive.”). At best, Applicant’s claimed subject matter simply uses generic processing circuitry to perform the abstract idea of converting input data from one form to another (e.g., on symbol display to another symbol display). As noted above, the use of a generic computer system does not alone transform an otherwise abstract idea into patent-eligible subject matter. As our reviewing court has observed, “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
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, claims 1-20 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).
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.
US 7455585 teaches accumulation of award opportunities including accumulation of symbols with a indicate of the number of accumulated symbols. US 10896568 teaches accumulation of a collectable symbol and a specified game position to trigger a wild feature. US 20160321859 teaches expansion of a game symbol along a payline in response to a trigger condition.
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/ANDREW BODENDORF/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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