DETAILED ACTION
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 and 3-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 11-13, and 16-21 of U.S. Patent No. 12,138,548 (hereinafter ‘548) in view of Rappaport, US 9,044,682. Claim 1 of ‘548 teaches all of the limitations of Claim 1 of the present application with the exception of “wherein the in-game service provider identifies players of the electronic game associated with particular transactions;” as mapped below. Rappaport teaches these missing limitations as described below. Similar correspondence is found between Claim 11 of the present application and Claim 11 of ‘548, as well as between Claim 17 of the present application and Claim 18 of ‘548.
Present Application Claim 1
US 12,138,548 Claim 1
A computing system comprising: at least one processor; and at least one non-transitory memory storing instructions that, when executed by the at least one processor, cause the computing system to:
A computing system comprising: at least one processor; and at least one non-transitory memory storing instructions that, when executed by the at least one processor, cause the computing system to:
receive an indication, within an electronic game provided by the computing system,
of a source of funds for a transaction,
collect, within an electronic game provided by the computing system, credit or debit card data associated with a particular player of the electronic game,
wherein the source of funds is administered by a transaction processing entity that is
unaffiliated with the electronic game;
wherein the credit or debit card data is administered by a transaction processing entity that is unaffiliated with the electronic game;
link the source of funds to a player of the electronic game with an in-game service
provider,
collect, within an electronic game provided by the computing system, credit or debit card data associated with a particular player of the electronic game,
wherein the in-game service provider identifies players of the electronic game
associated with particular transactions;
store payment instrument data including an encrypted token that represents the source
of funds,
store payment instrument data including an encrypted token that represents the credit or debit card data that is used by the transaction processing entity to identify the particular player,
wherein the encrypted token is stored in association with the electronic game instead
of storing the source of funds;
wherein the encrypted token is stored in association with the electronic game instead of storing the credit or debit card data;
assign an in-game virtual object as a reward for completion of a real-world transaction using the source of funds with a real-world merchant;
assign an in-game virtual object as a reward for the particular player completing a set of particular real-world transactions using the credit or debit card data with a real-world merchant;
determine, based on a transaction record obtained from the transaction processing
entity, that real-world transaction has been completed,
determine that the particular player has completed the set of particular real-world transactions based on a transaction record obtained from the transaction processing entity,
wherein the transaction record is generated by the transaction processing entity and
includes the encrypted token and an indication that confirms completion of the real-world
transaction using the source of funds linked to player;
wherein the transaction record is generated by the transaction processing entity and includes the encrypted token and an indication that confirms completion of the set of particular real-world transactions using the credit or debit card data associated with the particular player;
attribute the in-game virtual object to the player within the electronic game in response to the indication that confirms completion of the real-world transaction.
attribute the in-game virtual object to the particular player within the electronic game in response to the indication that confirms completion of the set of particular real-world transactions by the particular player.
Rappaport, US 9,044,682 teaches the missing limitations of wherein the in-game service provider identifies players of the electronic game associated with particular transactions (Fig. 11 and Col. 36 Lines 28-39 which teaches where the game system the provides the players the games has a player information store which includes a purchase history which associates the player to particular purchases transactions, and records various details of each transaction).
It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to modify ‘548 to include a stored purchase history for each player as taught by Rappaport to help in resolving customer service problems as well as allowing players to view their own transactions in order to better track their own spending in the game system.
Dependent Claims 3-10 of the present application are taught by claims 2-9 of ‘548 respectively.
Dependent Claims 12-13 of the present application are taught by claims 12-13 of ‘548 respectively.
Dependent Claim 14 of the present application is taught by claim 11 of ‘548.
Dependent Claims 15-16 of the present application are taught by claims 16-17 of ‘548 respectively.
Dependent Claims 17-20 of the present application are taught by claims 18-21 of ‘548 respectively.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In Reference to Claim 1
Claim 1 recites the limitation "the token" in line 15. There is insufficient antecedent basis for this limitation in the claim. Line 13 of the claims recites the limitation “…including token…”, however, this does not provide proper antecedent basis. As best understood this should be amended to “…including a token…”
Claim 1 recites the limitation “…that real-world transaction has been completed,” in line 20. It is not explicit which real-world transaction is being referred to by this limitation. As best understood, this limitation should be amended to “…that the real-world transaction has been completed,”.
In Reference to Claim 11
Claim 11 recites the limitation "the token" in line 14. There is insufficient antecedent basis for this limitation in the claim. Line 5 of the claims recites the limitation “…including token…”, however, this does not provide proper antecedent basis. As best understood this should be amended to “…including a token…”
In Reference to Claim 17
Claim 17 recites the limitation "the token" in line 16. There is insufficient antecedent basis for this limitation in the claim. Line 8 of the claims recites the limitation “…including token…”, however, this does not provide proper antecedent basis. As best understood this should be amended to “…including a token…”
Claim 17 recites the limitation “…that real-world transaction has been completed,” in line 14. It is not explicit which real-world transaction is being referred to by this limitation. As best understood, this limitation should be amended to “…that the real-world transaction has been completed,”.
Allowable Subject Matter
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 1 and 3-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, and if the rejection under non-statutory Double Patenting were overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rappaport, US, 9.044,682 teaches a system for providing in-game assets based on purchases of real-world physical goods. Modi et al., US 2019/0228417 teaches a gaming device which stores payment information for in-game and shopping transactions by a player as a token representing the payment information.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARL V LARSEN whose telephone number is (571)270-3219. The examiner can normally be reached Monday through Friday; 10:00 am - 6:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARL V LARSEN/Examiner, Art Unit 3715
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