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 .
Information Disclosure Statement
The information disclosure statement entered January 15th, 2025 has been considered. A copy of the cited statement(s) including the notation indicating its respective consideration is attached for the Applicant's records.
Claim Objections
Claims 4, 11, and 18 are objected to because of the following informalities:
The listed claims commonly reference “the reel display area” however there is not antecedent basis presented in the listed claims or respective parent claims for the references reel display. While this reference is does not rise to the point of rendering the claims indefinite when considered under 35 USC 112(b) clarification is none the less required in order to ensure clarity of the claimed invention.
For the purposes of examination, the reel display refenced in the presented claims has been understood as equivalent to the “symbol display area” presented in the respective independent claims 1, 8, and 15.
Appropriate correction is required.
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 1-20 of U.S. Patent No. 12,190,679. Although the claims at issue are not identical, they are not patentably distinct from each other because both the patented claims and the pending claim set are substantially similar to one another with the exception that the patented claims include the additional features of a hardware random number generator and the display of the credit symbols first without the display of the corresponding award values and subsequently displaying the corresponding award values in the same order as the values are selected.. The Examiner gives Official Notice that the use of Hardware Random Number Generators and the sequential presentation of game awards on a gaming device were exceptionally old and well known in the technology of electronic gaming prior to the earliest effective filing date of the claimed invention. It would have been obvious to one of ordinary skill in the art at the time of invention to have incorporated the features of a hardware random number generator and the display of the credit symbols first without the display of the corresponding award values and subsequently displaying the corresponding award values in the same order as the values are selected in the pending claims because such would have provided the predictable and expected result of providing random game outcomes to the players in a fashion that linked the game outcome to particular parts of the game presentation.
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 as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As summarized in MPEP § 2106, subject matter eligibility is determined based on a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. The instant application includes claims concerning a system(i.e., a machine) in claims 1-7, and a non-transitory computer readable media (i.e. a manufacture) in claim 8-14, and a method (i.e., a process) in claims 15-20
In Prong 1 of Step 2A, it must be determined whether the claimed invention recites an Abstract Idea, Law of Nature or a Natural Phenomenon.
In particular exemplary presented claim 1 includes the following underlined claim elements:
1. A system comprising:
one or more displays,
one or more processors, and
one or more memory devices, the one or more memory devices storing computer-executable instructions which, when executed by the one or more processors, cause the one or more processors to:
determine an award value or award values to associate with at least one credit symbol of a plurality of symbols displayed in a symbol display area in association with a play of a game of chance by selecting, for each such credit symbol, an award value from an award value list, wherein each selection of an award value from the award value list is of an award value that is in a list position in the award value list that is offset by a first number of list positions from the list position of the award value most recently selected from the award value list in association with the play of the game of chance, wherein the first number is greater than or equal to zero; and
cause each award value selected for each such credit symbol to be displayed in association with that credit symbol in the symbol display area.
The claim elements underlined above, concern the court enumerated abstract ideas of Mental Processes including observation, evaluation, and judgement because the claims are directed to series of steps for observing and evaluating a game outcome and making as judgement of an award as well as Certain Methods of Organizing Human Activity including managing personal behavior including interactions between people including social activities and following rules or instructions because the claims set forth the interactions involving one or more parties in the context of a determining and presenting a game outcome.
As the exemplary claim recites an Abstract Idea, Law of Nature or a Natural Phenomenon it is further considered under Prong 2 of Step 2A to determine if the claim recites additional elements that would integrate the judicial exception into a practical application. Wherein the practical applications are set forth by MPEP §2106.05(a-c,e) are broadly directed to: the improvement in technology, use of a particular machine and applying or using the judicial exception in a meaningful way beyond generally linking the use thereof to a technology environment. Limitations that explicitly do not support the integration of the judicial exception in to a practical application are defined by MPEP 2106.05(f-h) and include merely using a computer to implement the abstract idea, insignificant extra solution activity, and generally linking the use of the judicial exception to a particular technology environment or field of use.
With respect to the above the claimed invention is not integrated into a practical application because it does not meet the criteria of MPEP §2106.05(a-c,e) and although it is performed on display(s), processor(s) and a memory(s) it is not directed to a particular machine because the hardware elements are not linked to a specific device/machine and would reasonably include other devices such as generic computers, smart phones, game consoles, and the like. Accordingly, the claims limitations are not indicative of the integration of the identified judicial exception into a practical application, and the consideration of patent eligibility continues to step 2B.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional element(s) or combination of elements in the claim(s) other than the abstract idea(s) per se including display(s), processor(s), a memory(s) and mom-transitory computer-readable media amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structures that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry per the applicant’s description (Applicant’s specification Paragraphs [0074], [0087]-[0089]). Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Accordingly, as presented the claimed invention when considered as a whole amounts to the mere instructions to implement an abstract idea [i.e. software or equivalent process steps] on a generic computer [i.e. controller or processor] without causing the improvement of the generic computer or another technology field.
The applicant’s specification is further noted as supporting the above rejection wherein neither the abstract idea nor the associated generic computer structure as claimed are disclosed as improving another technological field, improvements to the function of the computer itself, or meaningfully linking the use of an abstract idea to a particular technological environment (Applicant’s specification Paragraphs [0074], [0087]-[0089]). In particular the applicant’s specification only contains computing elements which are conventional and generally widely known in the field of the invention described, and accordingly their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art per the requirements of 37 CFR 1.71. Were these elements of the applicant’s invention to be presented in the future as non-conventional and non-generic involvement of a computing structure, such would stand at odds with the disclosure of the applicant's invention as found in their specification as originally filed.
“[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132S. Ct. at 1301). In this case, the claims recite a generic computer implementation of the covered abstract idea.
The remaining presented claims 2-20 incorporate substantially similar abstract concepts as noted with respect to the exemplary claim 1, while the additional elements recited by the additional claims including one or more of a computer readable storage medium, a computer, a server system, and a gaming device as respectively presented that when considered both individually and as a whole in the respective combinations of the additional claims are not sufficient to support patent eligibility under prong 2 of step 2A or step 2B for the reasons set forth above with respect to the exemplary claim 1 and further present substantially similar abstract concepts as noted with reflection to exemplary claim 1 above and therefore are similarly directed to or otherwise include abstract ideas.
Therefore, the listed claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) & 102 (a)(2) as being anticipated by Baerlocher et al (US 6,648,754)
Claim 1: Baerlocher teaches a system comprising:
one or more displays (Baerlocher Figure 2: Elements 30, 32),
one or more processors (Baerlocher Figure 2; Element 38), and
one or more memory devices, the one or more memory devices storing computer- executable instructions which, when executed by the one or more processors (Baerlocher Figure 2; Element 40;Col 5:24-40), cause the one or more processors to:
determine an award value or award values to associate with at least one credit symbol of a plurality of symbols displayed in a symbol display area in association with a play of a game of chance by selecting, for each such credit symbol, an award value from an award value list(-Describing the selecting for each revealed symbol 108, a corresponding award value 102- Baerlocher Figure 5C: Element 102, 120, 122 ), wherein each selection of an award value from the award value list is of an award value that is in a list position in the award value list that is offset by a first number of list positions from the list position of the award value most recently selected from the award value list in association with the play of the game of chance, wherein the first number is greater than or equal to zero (-wherein the award value 70 is presented on list 100 position “15” offset by the most recently selected list position “7” that is greater or equal to zero- Baerlocher Figures 5B & 5C; Elements 102, 120, 122); and
cause each award value selected for each such credit symbol to be displayed in association with that credit symbol in the symbol display area (-Correlated to the displayed at areas 102, 122, correlated to the credit symbol indicated at 120 in figures 5B & 5C Respectively- Baerlocher Figures 5B & 5C; Elements 102, 120, 122 ).
Claim 2: Baerlocher teaches the system of claim 1, wherein the one or more memory devices store further computer-executable instructions which, when executed by the one or more processors, further cause the one or more processors to, for each selection of one of the award values, randomly select the first number from a first set of positional offsets (-Wherein each selection subsequent to the first selection utilizes a randomly determined offset amount such as the offset of “7” randomly assigned to position 108g that is in turn utilized in the subsequent determination at figure 5c- Baerlocher Figures 5B & 5C; Elements 102, 120, 122; Col 10:29-62 ).
Claim 3: Baerlocher teaches the system of claim 2, wherein the one or more memory devices store further computer-executable instructions which, when executed by the one or more processors, further cause the one or more processors to:
determine an initial award value to associate with a first credit symbol of the plurality of symbols prior to determining the award value or award values to associate with the at least one credit symbol of the plurality of symbols (-Offer “30” initially determined prior to award value “70”- Baerlocher Figures 5B & 5C; Elements 102, 120, 122;); and
select the first set of positional offsets from a plurality of sets of positional offsets based on information associated with the initial award value (- Wherein the first positional offset is “7” steps- Baerlocher Figure 5B; Elements 112, 120, 122;).
Claim 4: Baerlocher teaches the system of claim 1, wherein the one or more memory devices store further computer-executable instructions which, when executed by the one or more processors, further cause the one or more processors to cause the award value associated with each credit symbol to be displayed in association with display of that symbol in the reel display area (-understood to reasonably include the presentation of the award value associated with the presentation of each credit symbol- Baerlocher Figures 5B & 5C; Elements 102, 120, 122;).
Claim 5: Baerlocher teaches the system of claim 4, wherein the one or more memory devices store further computer-executable instructions which, when executed by the one or more processors, further cause the one or more processors to cause the displays of the award values associated with the credit symbols to be initiated sequentially in the same order as the award values are determined for association with the credit symbols (-Wherein the award values are initiated, determined and presented sequentially with each phase of the game Baerlocher Figures 5B-5D; Elements 102, 120, 122; Col 9:39-10:15).
Claim 6: Baerlocher teaches the system of claim 1, wherein the award values are listed in ascending order in the award value list (-Wherein the award values “offers” are presented in ascending order when read from the bottom of the screen to the top- Baerlocher Figures 5B-5D; Elements 100).
Claim 7: Baerlocher teaches the system of claim 1, wherein the award values are listed in descending order in the award value list (-Wherein the award values “offers” are presented in descending order when read from top of the screen to the bottom- Baerlocher Figures 5B-5D; Elements 100).
Claim 8: Baerlocher teaches one or more non-transitory, computer-readable media storing computer-executable instructions(Baerlocher Figure 2; Element 40;Col 5:24-40) which, when executed by one or more processors (Baerlocher Figure 2; Element 38), cause the one or more processors to:
determine an award value or award values to associate with at least one credit symbol of a plurality of symbols displayed in a symbol display area on one or more displays of a gaming device in association with a play of a game of chance on the gaming device by selecting, for each such credit symbol, an award value from an award value list (-Describing the selecting for each revealed symbol 108, a corresponding award value 102- Baerlocher Figures 2, 5C: Element 30, 32, 102, 120, 122), wherein each selection of an award value from the award value list is of an award value that is in a list position in the award value list that is offset by a first number of list positions from the list position of the award value most recently selected from the award value list in association with the play of the game of chance, wherein the first number is greater than or equal to zero (-wherein the award value 70 is presented on list 100 position “15” offset by the most recently selected list position “7” that is greater or equal to zero- Baerlocher Figures 5B & 5C; Elements 102, 120, 122); and
cause each award value selected for each such credit symbol to be displayed on the one or more displays of a gaming device in association with that credit symbol in the symbol display area (-Correlated to the displayed at areas 102, 122, correlated to the credit symbol indicated at 120 in figures 5B & 5C Respectively- Baerlocher Figures 5B & 5C; Elements 102, 120, 122).
Claim 9: Baerlocher teaches the one or more non-transitory, computer-readable media of claim 8, further storing additional computer-executable instructions which, when executed by the one or more processors, further cause the one or more processors to, for each selection of one of the award values, randomly select the first number from a first set of positional offsets (-Wherein each selection subsequent to the first selection utilizes a randomly determined offset amount such as the offset of “7” randomly assigned to position 108g that is in turn utilized in the subsequent determination at figure 5c- Baerlocher Figures 5B & 5C; Elements 102, 120, 122; Col 10:29-62).
Claim 10: Baerlocher teaches the one or more non-transitory, computer-readable media of claim 9, further storing additional computer-executable instructions which, when executed by the one or more processors, further cause the one or more processors to:
determine an initial award value to associate with a first credit symbol of the plurality of symbols prior to determining the award value or award values to associate with the at least one credit symbol of the plurality of symbols (-Offer “30” initially determined prior to award value “70”- Baerlocher Figures 5B & 5C; Elements 102, 120, 122); and
select the first set of positional offsets from a plurality of sets of positional offsets based on information associated with the initial award value (- Wherein the first positional offset is “7” steps- Baerlocher Figure 5B; Elements 112, 120, 122).
Claim 11: Baerlocher teaches the one or more non-transitory, computer-readable media of claim 8, further storing additional computer-executable instructions which, when executed by the one or more processors, further cause the one or more processors to cause the award value associated with each credit symbol to be displayed in association with display of that symbol in the reel display area (-understood to reasonably include the presentation of the award value associated with the presentation of each credit symbol- Baerlocher Figures 5B & 5C; Elements 102, 120, 122).
Claim 12: Baerlocher teaches the one or more non-transitory, computer-readable media of claim 11, further storing additional computer-executable instructions which, when executed by the one or more processors, further cause the one or more processors to cause the displays of the award values associated with the credit symbols to be initiated sequentially in the same order as the award values are determined for association with the credit symbols (-Wherein the award values are initiated, determined and presented sequentially with each phase of the game Baerlocher Figures 5B-5D; Elements 102, 120, 122; Col 9:39-10:15).
Claim 13: Baerlocher teaches the one or more non-transitory, computer-readable media of claim 8, wherein the award values are listed in ascending order in the award value list (-Wherein the award values “offers” are presented in ascending order when read from the bottom of the screen to the top- Baerlocher Figures 5B-5D; Elements 100).
Claim 14: Baerlocher teaches the one or more non-transitory, computer-readable media of claim 8, wherein the award values are listed in descending order in the award value list (-Wherein the award values “offers” are presented in ascending order when read from the bottom of the screen to the top- Baerlocher Figures 5B-5D; Elements 100).
Claim 15: Baerlocher teaches a method comprising:
determining, by one or more processors of a gaming system (Baerlocher Figure 2; Element 38), an award value or award values to associate with at least one credit symbol of a plurality of symbols displayed in a symbol display area on one or more displays of a gaming device in association with a play of a game of chance on the gaming device by selecting, for each such credit symbol, an award value from an award value list (-Describing the selecting for each revealed symbol 108, a corresponding award value 102- Baerlocher Figure 5C: Element 102, 120, 122 ), wherein each selection of an award value from the award value list is of an award value that is in a list position in the award value list that is offset by a first number of list positions from the list position of the award value most recently selected from the award value list in association with the play of the game of chance, wherein the first number is greater than or equal to zero (-wherein the award value 70 is presented on list 100 position “15” offset by the most recently selected list position “7” that is greater or equal to zero- Baerlocher Figures 5B & 5C; Elements 102, 120, 122); and
causing, by the one or more processors of the gaming system, each award value selected for each such credit symbol to be displayed on the one or more displays of a gaming device in association with that credit symbol in the symbol display area (-Correlated to the displayed at areas 102, 122, correlated to the credit symbol indicated at 120 in figures 5B & 5C Respectively- Baerlocher Figures 5B & 5C; Elements 102, 120, 122).
Claim 16: Baerlocher teaches the method of claim 15, further comprising randomly selecting the first number from a first set of positional offsets (-Wherein each selection subsequent to the first selection utilizes a randomly determined offset amount such as the offset of “7” randomly assigned to position 108g that is in turn utilized in the subsequent determination at figure 5c- Baerlocher Figures 5B & 5C; Elements 102, 120, 122; Col 10:29-62).
Claim 17: Baerlocher teaches the method of claim 16, further comprising:
determining an initial award value to associate with a first credit symbol of the plurality of symbols prior to determining the award value or award values to associate with the at least one credit symbol of the plurality of symbols (-Offer “30” initially determined prior to award value “70”- Baerlocher Figures 5B & 5C; Elements 102, 120, 122;); and
selecting the first set of positional offsets from a plurality of sets of positional offsets based on information associated with the initial award value (- Wherein the first positional offset is “7” steps- Baerlocher Figure 5B; Elements 112, 120, 122;).
Claim 18: Baerlocher teaches the method of claim 15, further comprising causing the award value associated with each credit symbol to be displayed in association with display of that symbol in the reel display area (-understood to reasonably include the presentation of the award value associated with the presentation of each credit symbol- Baerlocher Figures 5B & 5C; Elements 102, 120, 122;).
Claim 19: Baerlocher teaches the method of claim 18, further comprising causing the displays of the award values associated with the credit symbols to be initiated sequentially in the same order as the award values are determined for association with the credit symbols (-Wherein the award values are initiated, determined and presented sequentially with each phase of the game Baerlocher Figures 5B-5D; Elements 102, 120, 122; Col 9:39-10:15).
Claim 20: Baerlocher teaches the method of claim 15, wherein the award values are listed in ascending or descending order in the award value list (-Wherein the award values “offers” are presented in ascending order when read from the bottom of the screen to the top & Wherein the award values “offers” are presented in descending order when read from top of the screen to the bottom- Baerlocher Figures 5B-5D; Elements 100).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E MOSSER whose telephone number is (571)272-4451. The examiner can normally be reached M-F 6:45-3:45.
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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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ROBERT E. MOSSER
Primary Examiner
Art Unit 3715
/ROBERT E MOSSER/
Primary Examiner, Art Unit 3715
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