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 .
Priority
The instant claims are held to have an effective filing date of the grand parent case, September 11, 2020, there being no support in the great grand parent case for the limitation “caus[ing], by the gaming device, a display device to present a sequence of video segments corresponding to the performance of the sports player during the performance period” cited in the independent claims.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1-20 of prior U.S. Patent No. 11,620,875. This is a statutory double patenting rejection.
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 1-4, 6, 10-13, 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 11, 13, 15, 11, 13 and 15 respectively of U.S. Patent No. 12,148,268. Although the claims at issue are not identical, they are not patentably distinct from each other because the respective claims of the ‘268 anticipate the instant claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-3, 9-11, 13-16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lukasik (pub. no. 20180190076) in view of Knowles et al. (pub. no. 20070087804).
Regarding claim 1, Lukasik discloses a method, comprising: receiving, by a gaming device comprising one or more processor, first data identifying a sports player within a listing of sports players (“Methods and systems are described herein for a game using historical performance data. Credits (e.g., coins, tickets, money, tokens, credit card information, debit card information, etc.) can be received from a user to initiate a round of a game. A listing of entities ca13n be provided to a user. The entities can include, for example, sports players, stocks, or other entities as can be appreciated. In an aspect, the listing of entities may be provided as a subset of entities selected from a pool of entities. In such an aspect, the subset of entities may be selected randomly from the pool of entities. In an aspect, the entities may be organized into groups. For example, the groups may include performance tiers, sports team positions, or other groups. In such an aspect, the listing of entities may be provided according to the respective groups”, [0022];
“A selection of one or more of the entities can be received from a user. In aspects in which the entities are organized into groups, this can include a selection of a predefined number of entities from each of the groups”, [0023]);
receiving, by the gaming device, second data identifying a performance benchmark within a listing of performance benchmarks (“Chance-based components can include which entities are presented to a user for selection, which performance period is selected for a given selected entity, and what performance benchmark is used for comparison to the historical data for a given entity and performance period”, [0026]; a random selection of a performance benchmark is interpreted to be receiving data identifying a performance benchmark from the algorithm programmed by the game developer);
selecting, by the gaming device, a performance period corresponding to the sports player (“A performance period can then be selected for each of the selected entities. The performance period can include a particular game, season, date range, or other period for each of the selected entities. In aspects in which the selected entities correspond to a particular temporal constraint, the performance period can be selected from within the temporal constraint. For example, for a sports player corresponding to a particular season as a temporal constraint, the performance period may correspond to a game or series from within the particular season”, [0023]);
determining, by the gaming device, that a performance of the sports player during the performance period meets or exceeds the performance benchmark (“For each of the selected entities, it is determined whether the respective selected entity met a performance benchmark in their corresponding selected performance period according to historical performance data. For example, assume that the performance period is a randomly selected game for each selected player. Historical performance data for that particular player and game is accessed to determine if the player met a performance benchmark. The performance benchmark could include a number of runs or points scored, a number of yards gained, a number of successful or attempted shots, or other performance benchmark as can be appreciated”, [0024]).
Regarding claim 1, it noted that Lukasik does not disclose present[ing] a sequence of video segments corresponding to the performance of the sports player during the performance period. Knowles however, teaches presenting a sequence of video segments corresponding to the performance of the sports player during the performance period (“In step 622 optional wagering opportunities for outcomes of an event of one or more EPWG may be offered to a player on the display. A player may optionally accept the offered wagering opportunities on the outcomes of an event as shown in step 624 or decline the offered wagering opportunities as shown”; [0111];
“The event and action by the competitors and the outcome of the wagering event may be displayed to players in step 632. This may comprise a live display or simulated event display that encourages player involvement or interest. Resolution of wagers to each player may occur at step 634 based on the players' prior wagers in step 624 described above. In any type of EPWG, players' wins and losses may be determined and awarded in a manner consistent with the description above in either of a tennis game or a golf game of an EPWG”, [0113]).
Exemplary rationales that may support a conclusion of obviousness include combining prior art elements according to known methods to yield predictable results. Here Lukasik and Knowles are directed to systems for wagering on sporting events. To display the wagered event and action by competitors in the Lukasik invention would be to combine a prior art element according to a known method to yield a predictable result. Therefore, it would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to modify Lukasik to include the display of the wagered on events. To do so would provide an exciting wager resolution thereby increasing the entertainment value of the system.
Regarding claim 2, Lukasik discloses the performance period comprises a game within a tournament season, and wherein the selecting comprises selecting the game randomly from multiple games within the tournament season (“In aspects in which the selected entities correspond to a particular temporal constraint, the performance period can be selected from within the temporal constraint. For example, for a sports player corresponding to a particular season as a temporal constraint, the performance period may correspond to a game or series from within the particular season”, [0023];
“Chance-based components can include which entities are presented to a user for selection, which performance period is selected for a given selected entity, and what performance benchmark is used for comparison to the historical data for a given entity and performance period”, [0026]).
Regarding claim 3, Lukasik discloses obtaining historical performance data from a game server remotely located relative to the gaming device, the historical performance data corresponding to the sports player and the performance period; and determining, using the historical performance data, that the performance of the sports player meets or exceeds the performance benchmark (“For each of the selected entities, it is determined whether the respective selected entity met a performance benchmark in their corresponding selected performance period according to historical performance data. For example, assume that the performance period is a randomly selected game for each selected player. Historical performance data for that particular player and game is accessed to determine if the player met a performance benchmark”, [0024];
“The master gaming controller 1008 can control the game play on the gaming machine 1002 according to instructions and/or game data from game server 1022 and/or stored within gaming machine 1002 and/or can receive or send data to various input/output devices 1011 on the gaming machine 1002”, [0048]).
Regarding claim 9, Lukasik discloses receiving, by the gaming device, third data identifying a second sports player within the listing of sports players; receiving, by the gaming device, fourth data identifying a second performance benchmark within the listing of performance benchmarks; selecting, by the gaming device, a second performance period corresponding to the second sports player; determining, by the gaming device, that a performance of the second player during the second performance period fails to meet the second performance benchmark (in the case of a subsequent wager).
Regarding claim 9, it noted that Lukasik does not disclose present[ing] a sequence of video segments corresponding to the performance of the sports player during the performance period. Knowles however, teaches presenting a sequence of video segments corresponding to the performance of the sports player during the performance period ([0113]).
Exemplary rationales that may support a conclusion of obviousness include combining prior art elements according to known methods to yield predictable results. Here Lukasik and Knowles are directed to systems for wagering on sporting events. To display the wagered event and action by competitors in the Lukasik invention would be to combine a prior art element according to a known method to yield a predictable result. Therefore, it would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to modify Lukasik to include the display of the wagered on events. To do so would provide an exciting wager resolution thereby increasing the entertainment value of the system.
Claims 10, 11 and 13 are directed to the apparatus that implements the method of claims 1, 3 & 9 respectively and are rejected for the same reasons as claims 1, 3 & 9 respectively.
Regarding claim 14, Lukasik discloses the computing apparatus comprises one of a mobile computing device or a tethered pseudo-stationary gaming machine (“It is to be understood that gaming machine 2 is but one example from a wide range of gaming machine designs on which the methods and systems described herein can be implemented. For example, not all suitable gaming machines have top boxes or player tracking features. Further, some gaming machines have only a single game display-mechanical or video, while others are designed for bar tables and have displays that face upwards. As another example, a game can be generated on a host computer and can be displayed on a remote terminal or a remote gaming device. The remote gaming device can be connected to the host computer via a network of some type such as a local area network, a wide area network, an intranet or the Internet. The remote gaming device can be a portable gaming device such as but not limited to a cell phone, a personal digital assistant, or a wireless game player”, [0031]).
Claims 15, 16 and 20 are directed to the system that implements the method of claims 1, 3 & 9 respectively and are rejected for the same reasons as claims 1, 3 & 9 respectively.
Claims 4-8, 12 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lukasik (pub. no. 20180190076) in view of Knowles et al. (pub. no. 20070087804) as applied respectively to claims 1, 10 and 15 above and further in view of Moore (pub. no. 20110246889).
Regarding claims 4 & 5, it is noted that Lukasik does not explicitly disclose generating a request for the performance data, sending the request to a server, receiving the data from the server or that the request comprises an URL or HTTP message. Moore however, teaches generating a request for performance data, sending the request to a server, receiving the data from the server or that the request comprises an URL or HTTP message (“As noted, the database can contain a selection of static data used for search purposes by users on the web site. The static data can include, without limitation: (1) season data (e.g., games, dates and/or the like); (2) all teams (e.g., plus venues); (3) roster for all teams; (4) player height, weight, sport specific test results (e.g., 40 yard dash, vertical jump/leap and/or the like), penalties, states, positions, teams, camps, combines, venue, event type, year, school year, player experience, ratings and/or the like. Again, the above examples represent a small portion of the number of search fields that can be provided to the end user to allow them to "drill down" through an enormous amount of data to locate the exact information they are looking for.
With that in mind, there is provided a method to do advanced searches for those with specific needs by simply allowing the user to type in a known tag criteria or subject matter term or phrase such as "team name," "player name" (e.g., first or last or both), "city," and/or "state". This functionality is provided by using standards compliant web pages, only using the newest technology where required to provide maximum user benefit. By limiting the technologies to standards that are in wide use and highly compatible, maximization is achieved of the platform portability and the system of the present invention can be extended to a wider audience. In this manner, the system of the present invention can be accessed through more Internet-enabled devices, such as mobile phones, mobile Internet tablets, handheld gaming devices, and home gaming consoles”, [0056] & [0057]).
Exemplary rationales that may support a conclusion of obviousness include combining prior art elements according to known methods to yield predictable results. Here Lukasik and Moore are directed to systems that supply historical sport data. To use a server with a database containing historical performance data and that supplies that data in response to requests’ using standard internet protocols in the Lukasik invention would be to combine a prior art elements according to a known method to yield a predictable result. Therefore, it would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to modify Lukasik to include using a server with a database containing historical performance data and that supplies that data in response to requests’ using standard internet protocols as taught by Moore. To do so would centralize the data repository for purposes of backup and updating and reduce development time by using time tested techniques.
Regarding claims 6-8, 12 & 17-19, it is noted that Lukasik does not explicitly disclose obtaining the sequence of video segments from a remote computing system, generating a request for the video segments, sending the request to the remote computing system, receiving the data from the remote commuting system or that the request comprises an URL or HTTP message. Moore however, teaches obtaining the sequence of video segments from a remote computing system, generating a request for video segments, sending the request to a remote computing system, receiving the data from the remote computing system or that the request comprises an URL or HTTP message (“The present invention includes a system for creating a data storage system (e.g., a database, server and/or the like) for use in the uploading, storing, identifying and retrieving of sports-based visual clips (which can be in the form of video, film, digital recordings, and/or the like) as well as any corresponding statistical and/or textual information. For the purposes of brevity, the term "video clips" will be used to refer to any visual image clips, whether it is based on videotape, film, digital recordings, and/or the like. Although the examples in the following description relate specifically to football, it should be appreciated that the present invention is equally applicable to many different sports.
In accordance with one aspect of the present invention, the system can include three major sub-systems: (1) the data administration or "uploader" sub-system, that is used to create, compress and/or tag data, and then upload it to a game/play information database and/or video clip server; (2) the actual database and data modification processes or "database" sub-system, that can reside on a central server; and (3) the end user application or the "web site" sub-system, that also includes the actual server
By way of a non-limiting example, the uploader sub-system can be a desktop application which can run on a personal computer or other data processor, and can be used to view and select video clips of a live and/or prerecorded sporting event. The selected video clips can then be tagged or linked with various attributes to allow retrieval at a later date, e.g., at a web site. In accordance with one aspect of the present invention, a dual screen view can be employed for live or historical video clip capture and playback.“, [0034] – [0036];
“Referring to FIG. 18, there is shown an illustrative schematic illustration of a system 1800 for the capturing, storing, searching and display of both statistical and visual sports information of both players and teams across a wide spectrum of game situations. By way of a non-limiting example, the uploader sub-system 1802 includes game video data, e.g., via a satellite broadcast, that is received by a satellite receiver 1804 (via a satellite dish 1806 in communication with a satellite 1808). The game video data is transferred to a network storage device 1810, and then transferred to a workstation 1812 for updating, annotating, tagging, and uploading, e.g., via a VPN tunnel 1814, to a database sub-system 1816. The uploaded data is routed through a secure router 1818 to a web server system 1820 and the uploaded video data is routed through a secure router 1822 to a video server system 1824. The video clips are processed through and update server/video encoder system 1826 and the data queries (e.g., statistical search requests) are processed through a SQL query server system 1828 (which is replicated by a SQL master/backup system 1830). The web site sub-system 1832, permits end users to access the data center network (as opposed to the data center private secure net) via wireless devices 1834 (e.g., cells phones and the like) or wired devices 1836 (e.g., desktop computers with Internet connections) through the Internet 1838 with search requests that will allow the end users to retrieve text, statistics and video clips that are relationally linked “, [0074];
“As noted, the database can contain a selection of static data used for search purposes by users on the web site. The static data can include, without limitation: (1) season data (e.g., games, dates and/or the like); (2) all teams (e.g., plus venues); (3) roster for all teams; (4) player height, weight, sport specific test results (e.g., 40 yard dash, vertical jump/leap and/or the like), penalties, states, positions, teams, camps, combines, venue, event type, year, school year, player experience, ratings and/or the like. Again, the above examples represent a small portion of the number of search fields that can be provided to the end user to allow them to "drill down" through an enormous amount of data to locate the exact information they are looking for.
With that in mind, there is provided a method to do advanced searches for those with specific needs by simply allowing the user to type in a known tag criteria or subject matter term or phrase such as "team name," "player name" (e.g., first or last or both), "city," and/or "state". This functionality is provided by using standards compliant web pages, only using the newest technology where required to provide maximum user benefit. By limiting the technologies to standards that are in wide use and highly compatible, maximization is achieved of the platform portability and the system of the present invention can be extended to a wider audience. In this manner, the system of the present invention can be accessed through more Internet-enabled devices, such as mobile phones, mobile Internet tablets, handheld gaming devices, and home gaming consoles”, [0056] & [0057]).
Exemplary rationales that may support a conclusion of obviousness include combining prior art elements according to known methods to yield predictable results. Here Lukasik and Moore are directed to systems that supply historical sports data. To use a server with a database containing historical video segments and that supplies those segments in response to requests’ using standard internet protocols in the Lukasik invention would be to combine a prior art elements according to a known method to yield a predictable result. Therefore, it would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to modify Lukasik to include using a server with a database containing historical video segments and that supplies those segments in response to requests’ using standard internet protocols as taught by Moore. To do so would centralize the data repository the for purposes of backup and updating and reduce development time by using time tested techniques and reduce development time by using time tested techniques.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE STEFAN GALKA whose telephone number is (571)270-1386. The examiner can normally be reached M-F 6-9 & 12-5.
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/LAWRENCE S GALKA/Primary Examiner, Art Unit 3715
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