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 1-6, 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. US 12,183,168 (‘168). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claims 1, 10, and 16 of the present application are taught by Claim 1 of ‘168, as well as additional language reciting reels, columns, and a fixed direction for the directional modifier.
Dependent Claims 4, 9, 13, and 19 of the present application are taught by Claim 1 of ‘168.
Dependent Claims 2, 5, 11, 14, 17, and 20 of the present application are taught by Claims 1 and 2 of ‘168.
Dependent Claims 3, 6, 12, 15, and 18 of the present application are taught by Claims 1 and 3 of ‘168.
Claims 7-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 12,183,168 (‘168) in view of Hornik et al., US 2006/0160613. Hornik et al. teaches the missing limitation of Claims 7-8 as described in reference to Claims 7-8 below. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to modify ‘168 to include triggering of feature symbols only on a payline or active payline as taught by Hornik et al. for similar reasons as described below.
Claim 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11,521,468 (‘468) in view of MacGregor, US 2019/0005770. Claims 1 of ‘468 teaches all of the limitations of claims 1, 10, and 16 of the present invention with the exception of teaching a central determination system. MacGregor teaches where a gaming machine can be operating via central determination which transmits game outcomes from a remote controller of a network (Fig. 2 and Par. 66 and 86). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to modify the system, method, and computer readable medium to used Central Determination of outcomes as taught by MacGregor in order to assist in keeping reliable records and increase security by generating outcomes in a central location that is easier to monitor.
Dependent Claims 4, 9, 13, and 19 of the present application are taught by Claim 1 of ‘468.
Dependent Claims 2, 5, 11, 14, 17, and 20 of the present application are taught by Claims 1 and 2 of ‘468.
Dependent Claims 3, 6, 12, 15, and 18 of the present application are taught by Claims 1 and 3 of ‘468.
Dependent Claims 7 and 8 of the present application are taught by Claims 4 and 5 of ‘468.
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 8 and 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Specifically the claims are directed to the abstract idea of Certain method of Organizing Human Activity. Specifically, the “Fundamental Economic Practice” of rules for a wagering game, see MPEP2106.04(a)(2). The claims recite “generate a game outcome;”, “…present the game outcome at display positions…,” “wherein a first symbol of the game outcome is presented at a first display position of the display positions, and wherein a second symbol of the game outcome is presented at a second display position of the display positions; and in response to the first symbol presenting a first directional modifier that identifies the second display position by pointing toward the second display position,” “…hold one or more other symbols of the game outcome at their respective display positions and replace the second symbol of the game outcome with a first replacement symbol presented at the second display position.” and in reference to Claim 7 “confirm that the first directional modifier is displayed along a payline of a plurality of paylines before replacing the second symbol” and in reference to Claim 8 “confirm that the first directional modifier is displayed along an activated payline of a plurality of paylines before replacing the second symbol.” Examiner notes that “paylines” are a term of art for wagering games and review of applicant’s specification suggests that the payline are indeed an element which the player wagers on in order to obtain a reward (See for example Par. 53 of applicant’s specification). Thus although applicant does not explicitly recite a wager, in the examiner’s opinion Claims 8 and 9 recite abstracts rules governing symbol positioning for a wagering game using paylines.
This judicial exception is not integrated into a practical application because the additional elements of a display, processor, memory, are merely instructions to implement the abstract idea on a computer. Further a central determination system in communication with a gaming machine for providing a game outcome is insignificant data gathering activity as claimed. See MPEP 2106.05(g). As such these limitations fail to integrate the abstract idea into a practical application. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because recitation of a display, processor and memory are simply recitation of generic computer functionality well known in the art. Further the courts have held that “Receiving or transmitting data over a network” (See buySAFE, Inc. v. Google, Inc.) is well-understood, routine and conventional activity when claimed generically at a high level. Further, see Jaffe, US 2009/0075717 which teaches that it is well known to those of ordinary skill in the art to have gaming machines operating in a “thin client” configuration where a server determines game outcomes for the gaming machine (Par. 40). As such, even when considered with the claims as a whole, these element fail to add significantly more than the abstract idea itself.
Claim Rejections - 35 USC § 103
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.
Claims 1-3, 9-12, and 16-18 rejected under 35 U.S.C. 103 as being unpatentable over Loat et al., US 2011/0136562, in view of MacGregor, US 2019/0005770.
In Reference to Claim 1
Loat et al. teaches a system, comprising a controller; and a memory storing instructions which, when executed by the controller, cause the controller to: generate a game outcome (Fig. 2 and Par. 34-36); cause a gaming machine (Fig. 1) coupled to the determination system to present the game outcome at display positions of the gaming machine (Fig. 3A and Par. 7 and 38), wherein a first symbol of the game outcome is presented at a first display position of the display positions (Fig. 3A and Par. 7-8 and 38 “special symbols”), and wherein a second symbol of the game outcome is presented at a second display position of the display positions (Fig. 3A); and in response to the first symbol presenting a first directional modifier that identifies the second display position by pointing toward the second display position, cause the gaming machine to hold one or more other symbols of the game outcome at their respective display positions and replace the second symbol of the game outcome with a first replacement symbol presented at the second display position (Fig. 3B, Par. 7-8 and Par. 39-43 “If there are wild symbols, as shown in FIG. 3A and identified in step 68, the wild symbol reels are held, and the reels in the same column as the wild symbols (dictated by the vertical arrow next to the wild symbols) are respun. All other reels are held. The arrows next to the wild symbols may designate any direction identifying which reels are to be respun.”).
Further Loat et al. teaches where the gaming machine can be in network communication with a gaming server (Fig. 2 and Par. 35). However, Loat et al. does not teach a central determination system with a processor and memory where the central determination system determines a game outcome and causes the gaming machine to display its output.
MacGregor teaches a gaming system which includes a central determination system with a processor and memory where the central determination system determines a game outcome and causes the gaming machine to display its output (Fig. 2 and Par. 66 and 86).
It would be desirable to modify the system of Loat et al. to use a central determination server, as taught by MacGregor in order to have game outcomes be generated with higher security and easier control on device and electronics that is not physically present on a casino floor.
Therefore it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to modify the system of Loat et al. to use a central determination server, as taught by MacGregor.
In Reference to Claim 10
Loat et al. teaches a method of a gaming device, the method comprising:
receiving a game outcome (Fig. 1-2 and Par. 34-36); presenting the game outcome at display positions of the gaming device, wherein a first symbol of the game outcome is presented at a first display position of the display positions (Fig. 3A and Par. 7 and 38), wherein a first symbol of the game outcome is presented at a first display position of the display positions (Fig. 3A and Par. 7-8 and 38 “special symbols”), wherein a second symbol of the game outcome is presented at a second display position of the display positions (Fig. 3A); and wherein the first symbol and the second symbol are from a set of symbols including one or more respin symbols that each point in a respective fixed direction (Fig. 3A-3C, Fig. 6 and Par. 42 and 52); and in response to the first symbol being a first respin symbol and its fixed direction pointing toward the second display position, holding one or more other symbols of the game outcome at their respective display positions and replacing the second symbol of the game outcome with a first replacement symbol from the set of symbols (Fig. 3B, Par. 7-8 and Par. 39-43 “If there are wild symbols, as shown in FIG. 3A and identified in step 68, the wild symbol reels are held, and the reels in the same column as the wild symbols (dictated by the vertical arrow next to the wild symbols) are respun. All other reels are held. The arrows next to the wild symbols may designate any direction identifying which reels are to be respun.”).
Further Loat et al. teaches where the gaming machine can be in network communication with a gaming server (Fig. 2 and Par. 35). However, Loat et al. does not teach a central determination system with a processor and memory where the central determination system determines a game outcome and causes the gaming machine to display its output.
MacGregor teaches a gaming system which includes a central determination system with a processor and memory where the central determination system determines a game outcome and causes the gaming machine to display its output (Fig. 2 and Par. 66 and 86).
It would be desirable to modify the system of Loat et al. to use a central determination server, as taught by MacGregor in order to have game outcomes be generated with higher security and easier control on device and electronics that is not physically present on a casino floor.
Therefore it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to modify the system of Loat et al. to use a central determination server, as taught by MacGregor.
In Reference to Claim 16
Loat et al. teaches a non-transitory computer readable storage medium comprising instructions that, in response to be executed by a gaming system, cause the gaming system to generate one or more signals that cause a gaming device (Fig. 1-2 and Par. 34-36) to present the game outcome at display positions of the gaming machine (Fig. 3A and Par. 7 and 38), wherein a first symbol of the game outcome is presented at a first display position of the display positions (Fig. 3A and Par. 7-8 and 38 “special symbols”), and wherein a second symbol of the game outcome is presented at a second display position of the display positions (Fig. 3A); and in response to the first symbol pointing toward the second display position, cause the gaming device to hold one or more other symbols of the game outcome at their respective display positions and replace the second symbol of the game outcome with a first replacement symbol. (Fig. 3B, Par. 7-8 and Par. 39-43 “If there are wild symbols, as shown in FIG. 3A and identified in step 68, the wild symbol reels are held, and the reels in the same column as the wild symbols (dictated by the vertical arrow next to the wild symbols) are respun. All other reels are held. The arrows next to the wild symbols may designate any direction identifying which reels are to be respun.”).
Further Loat et al. teaches where the gaming machine can be in network communication with a gaming server (Fig. 2 and Par. 35). However, Loat et al. does not teach a central determination system with a processor and non-transitory computer readable medium where the central determination system determines a game outcome and causes the gaming machine to display its output.
MacGregor teaches a gaming system which includes a central determination system with a processor and non-transitory computer readable medium where the central determination system determines a game outcome and causes the gaming machine to display its output. (Fig. 2 and Par. 66 and 86).
It would be desirable to modify the system of Loat et al. to use a central determination server, as taught by MacGregor in order to have game outcomes be generated with higher security and easier control on device and electronics that is not physically present on a casino floor.
Therefore it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to modify the system of Loat et al. to use a central determination server, as taught by MacGregor.
In Reference to Claims 2, 11, and 17
Loat et al. and MacGregor teach present the game outcome with a third symbol of the game outcome at a third display position of the display positions; and in response to the first replacement symbol including a second directional modifier that identifies the third display position by pointing toward the third display position, hold one or more other symbols of the game outcome at their respective display positions and replace the third symbol of the game outcome with a second replacement symbol presented at the third display position (Loat et al. Fig. 3A-3C and Par. 38-45 which teaches that multiple symbols along the row or column identified by the arrow on the special symbol may be respun and if the respin generates another special symbol performing an additional respin along the direction while holding other symbols in the array).
In Reference to Claims 3, 12, and 18
Loat et al. and MacGregor teach in response to the first replacement symbol including a second directional modifier that identifies the first display position by pointing toward the first display position to hold one or more other symbols of the game outcome at their respective display positions; and replace the first symbol of the game outcome with a second replacement symbol presented at the first display position (Loat et al. Fig. 3A-3C and Par. 38-45 which teach additional respins from subsequent respin symbols. Fig. 6 which teaches various respin arrow orientations including multiple arrows that will point along the same column or row. And Par. 51 which teaches that in an alternative embodiment rather than holding all wild symbols every reel in a column or row could be respun. As such, a wild symbol could occur, respin a column and generate another wild symbol point up or down the same column (rather than along the row as shown in Fig. 3B) and thus respin and replace, for a second time, the first symbol at the first display position. In this case, other symbols in the grid nor in thin column would remain held).
In Reference to Claim 9
Loat et al. and MacGregor teach where execution of the instructions causes the controller to determine that the second symbol is in a column of display positions adjacent to the first symbol before replacing the second symbol (Loat et al. Fig. 3A-3B and Par. 44 which teaches that a special symbol in a first column pointing along a row causes the respin of a symbol in an adjacent column).
Claims 4-5, 13-14, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Loat et al., US 2011/0136562, MacGregor, US 2019/0005770, further in view of Gauselmann, US 2007/0155474.
In Reference to Claims 4, 13, and 19
Loat et al. and MacGregor teach present the game outcome in columns of the display positions, wherein a first column of the display positions includes the first display position that presents the first symbol, and wherein a second column of the display positions includes the second display position that presents the second symbol; and replace the second symbol with the first replacement symbol by replacing a symbol
presented in the second column of the display positions with the replacement
symbol (Loat et al. Fig. 3A-3B and Par. 44 which teaches that a special symbol in a first column causes the respin of a symbol in an adjacent column).
Further, Loat et al. teaches variations of what is respun including respinning more rows and columns at the same time (Fig. 5-6). However, Loat et al. does not explicitly teach replacing symbols presented in the second column of the display positions with second replacement symbols.
Gauselmann teaches a gaming machine with a respin feature where a trigger symbol appearing causes an entire adjacent column of symbols to be respun to generate replacement symbols (Fig. 3A-3E and Par. 27-28).
It would be desirable to respin all the symbols in the array in a direction from the trigger symbol rather than only symbols in the particular rows or columns in the direction as taught by Gauselmann in order to increase the enjoyment and excitement of the player by respinning more reel positions to provide the seeming potential for more symbol positions to generate addition wild symbols and trigger additional respins and awards.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to modify the system of Loat to respin all the symbols in the array in a direction from the trigger symbol rather than only symbols in the particular rows or columns in the direction as taught by Gauselmann.
In Reference to Claims 5, 14, and 20
Loat et al., MacGregor and Gauselmann teach present a third symbol of the game outcome at a third display position in a third column of the display positions; and in response to a second directional modifier of the second replacement symbols identifying the third column of display positions by pointing toward the third display position in the third column of display positions, replace the third symbol and other symbols in the third column with third replacement symbols (Loat et al. Fig. 3A-3C and Par. 38-45 which teach that respinning can generate additional special symbols which prompt additional respins. And Gauselmann Fig. 3A-3E and Par. 28-35 which teach the each respin can sequentially create an additional column with a special respin trigger symbol. Showing three sets of respins of the columns).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Loat et al., US 2011/0136562, MacGregor, US 2019/0005770, further in view of Hornik et al., US 2006/0160613.
In Reference to Claims 7-8
Loat et al. and MacGregor teach e system as described above in reference to Claim 1, including special symbols with directional modifiers which trigger a feature to replace a second symbol. However, they do not teach causing the controller to confirm that the special symbol is displayed along a payline of a plurality of paylines before triggering the feature or causing the controller to confirm that the special symbol is displayed along an activated payline of a plurality of paylines before triggering the feature.
Hornik et al. teaches a gaming machine causing the controller to confirm that the special symbol is displayed along a payline of a plurality of paylines before triggering the feature or causing the controller to confirm that the special symbol is displayed along an activated payline of a plurality of paylines before triggering the feature.
(Par. 41 which teaches that bonus trigger and wild symbol features are only activated when the reel symbol in on an active payline. Where a symbol on an active payline will also be on a payline. See also Par. 35).
It would be desirable to modify the system of Loat et al. and MacGregor to include triggering symbols on active paylines as taught by Hornik et al. in order encourage player to make larger wagers on each game to activate more paylines and cause more of the generated special symbols to trigger the exciting respin feature.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to modify the system of Loat et al. and MacGregor to include triggering symbols on active paylines as taught by Hornik et al.
Allowable Subject Matter
Claims 6 and 15 would be allowable if the double patenting rejections put forth in this office action were overcome, and if the claims were rewritten to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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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