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.
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Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,190,681. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application appear to be substantially overlapping and encompassed within the claims of the patent. The following table provides a side-by-side comparison of claim 1 of the present application to claim 1 of the patent, which clearly indicates the substantial overlap. For the sake of brevity and compact prosecution, each and every claim is not reproduced below, however, any skilled artisan would have readily ascertained that both sets of claims are reciting substantially the same patentably indistinct invention pertaining to aggregating value-bearing symbols.
Claim 1 of App. No. 18/945,808
Claim 1 of U.S. Patent No. 12,190,681
1. A gaming machine comprising:
a presentation assembly configured to present a plurality of symbol positions selectively populated with symbols randomly selected from one or more sets of available symbols for a game, the one or more sets of available symbols including one or more value-bearing symbols, each value-bearing symbol including award indicia visibly indicating a respective award associated with the value-bearing symbol; and
game-logic circuitry in communication with the presentation assembly, the game-logic circuitry configured to:
cause the presentation assembly to present a first game outcome for the game, the first game outcome including populating one or more symbol positions of the plurality of symbol positions with respective value-bearing symbols of the one or more value-bearing symbols;
cause the presentation assembly to lock the respective value-bearing symbols in their symbol positions to remain in their symbol positions;
cause the presentation assembly to present a second game outcome following the first game outcome, the second game outcome including an aggregation symbol occupying a first symbol position of the plurality of symbol positions;
in response to detecting the aggregation symbol, identifying any of the value-bearing symbols linked to the aggregation symbol based on a predetermined positional relationship between the first symbol position and each symbol position of the one or more symbol positions;
in response to identifying one or more linked value-bearing symbols, cause the presentation assembly to update award indicia of the aggregation symbol at least partially as a function of the respective awards of the one or more linked value-bearing symbols; and
cause the presentation assembly to animate removing the linked value-bearing symbols from the plurality of symbol positions.
1. A gaming machine comprising:
a presentation assembly configured to present a plurality of symbol positions selectively populated with symbols randomly, in response to data output from a random number generator, selected from one or more sets of available symbols for a game feature, the one or more sets of available symbols including one or more value-bearing symbols, each value-bearing symbol including award indicia visibly indicating a respective award associated with the value-bearing symbol; and
game-logic circuitry in communication with the presentation assembly, the game-logic circuitry configured to:
communicate data that results in causing the presentation assembly to present a first game outcome for the game feature, the first game outcome including populating one or more symbol positions of the plurality of symbol positions with respective value-bearing symbols of the one or more value-bearing symbols;
communicate data that results in causing the presentation assembly to lock the respective value-bearing symbols in their symbol positions to remain in their symbol positions;
communicate data that results in causing the presentation assembly to present a second game outcome following the first game outcome, the second game outcome including an aggregation symbol occupying a first symbol position of the plurality of symbol positions not including the one or more symbol positions having respective value-bearing symbols locked therein;
in response to detecting the aggregation symbol, identifying one or more of the value-bearing symbols as being linked to the aggregation symbol based on a predetermined positional relationship between the first symbol position and each symbol position of the one or more symbol positions;
in response to identifying the one or more linked value-bearing symbols, cause the presentation assembly to provide award indicia on the aggregation symbol visibly indicating a respective award associated with the aggregation symbol, the respective award associated with the aggregation symbol being at least partially a function of the respective awards of the one or more linked value-bearing symbols; and
communicate data that results in causing the presentation assembly to remove the one or more linked value-bearing symbols from the plurality of symbol positions;
wherein: the aggregation symbol has a first aggregation symbol type or a second aggregation symbol type, the first aggregation symbol type remaining unlinked to any value-bearing symbols from subsequent game outcomes after the second game outcome, and the second aggregation symbol type linking the aggregation symbol to value-bearing symbols from subsequent game outcomes after the second game outcome based on the predetermined positional relationship.
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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without reciting additional elements that amount to significantly more than the judicial exception.
Step 1 – Statutory subject matter?
Claims 1-8 are directed to machines and claims 8-22 are directed to processes. Accordingly, these fall within statutory categories of invention under 35 U.S.C. 101.
Step 2A, Prong One – Judicial exception?
Claims 1-22 recite the abstract idea of applying game rules to evaluate symbol positions and values, determine symbol eligibility, aggregate selected values, alter symbol states, control the duration of a bonus game, and make award determinations, amongst a plethora of other “game rules”.
The abstract idea is a mental process, because a person can inspect a game board or symbol grid, determine whether values symbols share some positional relationship (e.g. row or column) with an aggregation symbol, apply rules to select eligible symbols, aggregate their values, remove selected symbols, preserve held symbols, track remaining turns, and determine an award. The claim limitations may be performed using physical game elements, a game board, and manual scoring.
The claims also recite following rules for playing a game, which falls within the “certain methods of organizing human activity” grouping. The 2019 PEG identifies game rules, including a set of rules for playing a dice game, as an example of following instructions or managing personal behavior.
More specifically:
Claim 1 recites the game rules of identifying linked value-bearing symbols based on a positional relationship, aggregating their values into an aggregation symbol and removing linked symbols;
Claims 2-3 further define the rule by limiting linkage to shared rows, columns or directions;
Claims 4-5 further define the rule through different aggregation-symbol types and position-based assignments of those types;
Claims 6-7 further define the rule through removal triggers, expiration conditions, and extension events;
Claim 8 recites holding selected symbols, respinning others, applying first and second level aggregation rules, repeating the rules over a series of spins, and determining an award from final values; and
Claims 9-22, for brevity herein, generally further define the game rules by specifying random value assignment, post-landing designation of symbol types, temporal conditions for aggregation, row/column/side restrictions, symbol removal, additional and locked rows, spin counter adjustments, and animated presentations of aggregation results.
Accordingly, claims 1-22 recite an abstract idea under Step 2A, Prong One.
Step 2A, Prong Two – Practical application?
The additional elements include a game machine, game-logic circuitry, a presentation assembly, a real or symbol array, random symbol/value selection, held and locked symbol positions, spinning and stopping reels, display updates, animation, and payment of an award.
These additional elements do not integrate the abstract idea into a practical application. Rather, they use generic gaming machine components as a technological environment for executing and displaying the claimed game rules.
The claims do not recite an improvement to computer operation, electronic gaming machine operation, reel control, random number generation, display technology, graphics processing, data storage, network communication, accounting, security, or payout technology. The claimed components perform their ordinary functions:
The game-logic circuitry applies game rules;
The presentation assembly displays symbols, values, results, etc.;
The reels or symbol positions supply locations for game symbols;
Random selection supplies game inputs;
Holding, locking, unlocking, and removing symbols preserve or change game states required by the game rules;
Animations display the result of aggregation; and
Payment supplies the final result of application of the game rules.
The positional limitations, multiple aggregation types, removal rules, dynamic rows, spin counter modifications, etc. do not provide a technical solution. Instead, they define the scope and sequence of the abstract game mechanics, such as which symbols qualify, what value transfers, what symbols remain, and how long the game commences.
The recitation of a gaming machine is insufficient because it merely implements the identified concept of game rules in a particular field of use. Similarly, presenting symbols, updating award indicia, animating aggregation, and paying an award are conventional data display or post-solution activities that do not meaningfully limit the abstract idea.
Accordiingly, claims 1-22 do not integrate the judicial exception into a practical application.
Step 2B – Significantly more?
The claims do not recite an inventive concept sufficient to transform the abstract idea into a patent-eligible subject matter.
The game machine, game-logic circuitry, presentation assembly, reels, random symbol selection, display functions, animation, and award payment are recited functionally and at a high level of generality. These elements perform only their conventional functions of generating game outcomes, processing game rules, display information, managing game states, and issues results.
Considered as an ordered combination, the claims merely automate a sequence of conventional game rule activities including: 1) present and generate symbols and values; 2) evaluate positional and rule-based eligibility; 3) aggregate selected values; 4) update the resulting symbol value; 5) hold, remove, lock, or unlock symbols, rows, etc. according to the game rules; 6) repeat the sequence until the game concludes; and 7) determine and provide a final award
The ordered combination may produce a new set of game rules or new bonus game experience, not an improvement to gaming machine technology. The alleged inventive aspects, for example, multi-level aggregation, row/column/direction restrictions, held symbols, dynamic rows, removal conditions, extended spins, and animations, are part of the identified abstract idea and therefore cannot themselves supply the required inventive concept.
Accordingly, claims 1-22 do not recite additional elements, individually or in combination, that amount to significantly more than the judicial exception. Therefore, claims 1-22 are not patent-eligible under 35 U.S.C. 101.
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 8-22 are 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.
Claim 8 recites “the landed symbols” which lacks antecedent basis. Examiner suggests incorporating steps that specifically set forth an initial outcome or similar has occurred before the holding step, so as to particularly point out and distinctly claim the process as intended, i.e. a first spin of the series of spins of the recited bonus game must occur prior to any holding of any “landed” symbols.
Claim 8 recites “paying an award based on the values borne by all symbols in the array”, and while this step is recited last in the claim, there appears to be language the positively sets forth that this paying award is performed after the series of spins of the bonus game, as such it appears unclear at which point in the process the paying step is performed, as the method merely comprises the list of steps, ultimately leading to ambiguity as to the scope of the method claimed.
Claim 20 recites “the spin counter” which lacks antecedent basis.
Claim 21 recites a limitation that appears to be redundant to claim 10, i.e. both claims depend from claim 8 and include substantially the same subject matter that a value of a symbol landing in the array is randomly assigned upon landing or being newly landed.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 6, & 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mizzi et al. (U.S. Patent Application Publication No. 2022/0051525; hereinafter “Mizzi”).
Claim 1: Mizzi discloses a gaming machine comprising:
a presentation assembly configured to present a plurality of symbol positions selectively populated with symbols randomly selected from one or more sets of available symbols for a game, the one or more sets of available symbols including one or more value-bearing symbols, each value-bearing symbol including award indicia visibly indicating a respective award associated with the value-bearing symbol (figures 5-12 and paragraphs 0062-0090, wherein Mizzi discloses a presentation assembly displaying a plurality of symbol positions in which selected symbols, including value-bearing symbols with visible award indicia are presented); and
game-logic circuitry in communication with the presentation assembly (figures 2, 5, wherein Mizzi discloses the hardware components of the gaming machine including game-logic circuitry configured to perform the logic flow of figure 5), the game-logic circuitry configured to:
cause the presentation assembly to present a first game outcome for the game, the first game outcome including populating one or more symbol positions of the plurality of symbol positions with respective value-bearing symbols of the one or more value-bearing symbols (figures 5-12 and paragraphs 0062-0090, wherein Mizzi discloses presenting a first game outcome that populates at least some symbol positions with respective value-bearing symbols);
cause the presentation assembly to lock the respective value-bearing symbols in their symbol positions to remain in their symbol positions (figures 5-12 and paragraphs 0062-0090, wherein Mizzi discloses locking value-bearing symbols when there is at least no designated symbol);
cause the presentation assembly to present a second game outcome following the first game outcome, the second game outcome including an aggregation symbol occupying a first symbol position of the plurality of symbol positions (figures 5-12 and paragraphs 0062-0090, wherein Mizzi discloses in subsequent outcomes of a feature game including the first game outcome, a second game outcome can include an aggregation or designated symbol occupying one of the symbol positions);
in response to detecting the aggregation symbol, identifying any of the value-bearing symbols linked to the aggregation symbol based on a predetermined positional relationship between the first symbol position and each symbol position of the one or more symbol positions (figures 5-12 and paragraphs 0062-0090, wherein Mizzi discloses upon a designated symbol occurring, linked value-bearing symbols are identified as any value-bearing symbol in other symbol positions, implying a positional relationship thereof);
in response to identifying one or more linked value-bearing symbols, cause the presentation assembly to update award indicia of the aggregation symbol at least partially as a function of the respective awards of the one or more linked value-bearing symbols (figures 5-12 and paragraphs 0062-0090, wherein Mizzi discloses merging or aggregating by updating award indicia of the aggregation symbol as a function of the linked value-bearing symbols, as illustrated); and
cause the presentation assembly to animate removing the linked value-bearing symbols from the plurality of symbol positions (figures 5-12 and paragraphs 0062-0090, wherein Mizzi discloses graphically, such as by animation, removing linked value-bearing symbols from the plurality of symbol positions after being aggregated to the designated symbol position with updated award indicia; see also abstract indicating the “merge may signaled by a graphic such as an animation”, and step 580 of figure 5).
Claim 2: Mizzi discloses that the plurality of symbol positions forms a symbol array having rows and columns (of symbol positions, and wherein the predetermined positional relationship includes the symbol positions of the one or more linked value-bearing symbols sharing a row or a column of the symbol array with the first symbol position (figures 5-12 and paragraphs 0062-0090, wherein Mizzi discloses the symbol array as illustrated comprises rows and columns, such that the symbol positions of linked value-bearing symbols may share a row or column with the designated symbol).
Claim 6: Mizzi discloses that respective value-bearing symbols are locked in their position and are associated with a removal trigger that includes the value-bearing symbol being linked to an aggregation or designated symbol (i.e. the game’s logic flow as illustrated in figure 5 holds or locks value-bearing symbols until a designated symbol appears that links those value-bearing symbols to the designated symbol for merging according to the game mechanics of Mizzi).
Claim 7: Mizzi discloses a predefined number of game outcomes for the game sequence based on a counter, which can be dynamically extended through extension trigger events occurring within the game (figure 5 and paragraph 0082, wherein the counter resets to an initial value upon occurrence of a designated symbol.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited (PTO-892).
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/MILAP SHAH/Primary Examiner, Art Unit 3715
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