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 .
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 a judicial exception (abstract idea) without significantly more.
Step 1 – Statutory category?
Claims 1-7 recite methods, claims 8-14 recite apparatuses, and claims 15-20 recite articles of manufacture, therefore, each of the claims are directed to one of the four statutory classes of invention.
Step 2A, Prong One – Abstract idea?
Claims 1, 8, & 15 are independent claims and recite substantially functionality, thus, claim 1 is representative herein.
Claim 1 recites:
receiving messages to advance play of a game;
associating one or more user devices with one or more player identifiers;
determining one or more game outcomes based on player identifiers;
receiving indication of a user device is in a casino;
causing output of game outcomes to be displayed
These limitations recite evaluating and using information about a player, device, outcome, and condition in order to determine and communicate a player-specific result. The limitations fall within the mental process grouping of abstract ideas because they encompass observations, evaluations, judgments, and determinations based on information. The claims do not require a particular technical algorithm or technological method for associating a device and identifier, determining an outcome, evaluating an indication of presence, or selecting/producing the output.
Alternatively, these limitations recite a certain method of organizing human activity because they manage an interaction between a casino and players concerning participation in games. The claimed activity identifies a player, determines a player associated result, determines whether a presence condition is satisfied, and provides the result in the casino environment.
Dependent claims 2-7, 9-14, & 16-20 add details concerning identifiers, wagering games, gaming parameters, player tracking, user device indications, and player accounts. These additional limitations further specify the information used in the claimed identification, outcomes, condition-evaluation steps, and communication process, but do not remove the claims from the identified abstract idea.
Step 2A, Prong Two – Integrated into a practical application?
The additional elements do not integrate the abstract idea into a practical application.
The claim recites generic technological components and functions, including user devices, text messages, processors, memory, non-transitory media, electronic casino gaming devices, player tracking units, user device indications, display devices, etc. These elements are used to receive information, association information with a player identifiers, determine an outcome, receive a presence indication, and output information.
The claims do not recite a technological improvement to computer functionality, text message communications, player tracking technology, location/presence detection, special purpose gaming functionality, or display technology. For example, the claims do not recite a particular protocol for processing text messages, a particular authentication technique for associating user devices and player identifiers, a particular mechanism for determining whether a user device is present in the casino, a particular method for determining a game outcome, or a particular technique for controlling a display device of an electronic gaming device.
The recitation of electronic casino gaming devices and casino associated display devices merely limits the claimed abstract idea to a casino gaming environment. The claims do not require the determined outcome to alter the operation of the gaming device. Rather, the claims require only that an associated display device output the determined game outcome.
Similarly, the claimed casino presence indication is merely a condition applied to the disclosure of the game outcome. The claims do not recite an improvement to the manner in which the presence is detected or verified. Receiving a presence indication from a user or gaming device or player tracking unit (e.g. claims 5, 6), identifies a source of information but does not recite a technological improvement to any device operations, player tracking, or presence determination.
Moreover, the additional limitations of certain dependent claims (i) specifying wagering games, amount to field of use, (ii) concerning pay tables, game configurations, wager protocols, and bonuses, amount to additional information determinations without requiring that the identified parameters improve operation of a gaming device or another technology, or (iii) concerning player accounts, amount similarly to additional information association determinations.
Accordingly, the claims do not require a particular machine that meaningfully limits the abstract idea. Although electronic casino gaming devices and associated displays are recited, the claims use those components as sources of information and destinations for output. The claims do not require a particular machine operation integral to carrying out the claimed abstract idea beyond generic receipt and display of information. The claims also do not recite a transformation or reduction of a particular article to a different state or thing. Therefore, claims 1-20 do not integrate the judicial exception into a practical application.
Step 2B – Significantly more than the abstract idea? Inventive concept?
The additional elements, considered individually and in combination, do not amount to significantly more than the abstract idea.
The claims recite generic information and processing functionality performed with generic technological components: receiving text messages, associating a device with a player identifier, determining a player’s game outcome, receiving a presence indication, and displaying the player’s game outcome. These claims do not recite a particular technological implementation that provides an inventive concept beyond the abstract idea itself.
The recited processors, memory, computer-readable media, user devices, electronic casino gaming devices, player tracking units, display devices, etc. are invoked as tools to implement the claimed abstract information processing workflow. The claimed ordered combination merely applies the abstract idea by receiving information, correlating identity information, determining a result, checking a condition, and communication the result using generic input and output components.
The claim language does not recite non-conventional arrangements of technical components, a specific technical solution to a technical problem, or a technological result beyond providing a player specific outcome in a casino setting. The limitations added by the dependent claims do not alter this conclusion based on the discussion above, because they further define the information sued or the environment in which the abstract idea is performed, without adding a technological implementation that amounts to the required significantly more.
For at least these reasons, the Examiner must respectfully position that claims 1-20 are patent-ineligible under 35 U.S.C. 101.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,183,153. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the present claims is substantially encompassed within the scope of the patent claims. For example, claim 1 of the present application is directed to receiving text messages to advance play of games at gaming devices in a casino, associating user devices with identifiers, determining game outcomes, receiving presence indications, and causing output of a game outcome at a display device of the gaming device in the casino. This functionality is substantially incorporated in claim 1 of the patent. Accordingly, claim 1 of the present application’s subject matter materially overlaps the subject matter of patent claim 1. For the sake of brevity, not every claim is compared herein. Nevertheless, a person of ordinary skill in the art would readily recognize that the scope of the patent claims substantially overlaps with that of the present claims and that the present claims are not patentably distinct therefrom, thereby supporting a nonstatutory double patenting rejection. An approved terminal disclaimer may overcome such a rejection.
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).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MILAP SHAH whose telephone number is (571)272-1723. The examiner can normally be reached Monday - Friday, 9:30-6PM.
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, KANG HU can be reached at 571-270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/MILAP SHAH/Primary Examiner, Art Unit 3715
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