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 December 4th, 2024 has been considered. A copy of the cited statement(s) including the notation indicating its respective consideration is attached for the Applicant's records.
Specification
The disclosure is objected to because of the following informalities: Paragraph [0001] of the applicant’s specification as filed references U.S. Patent Application No. 18/342,987, filed on June 28, 2023, which application is a continuation of, claims the benefit of and priority to U.S. Patent Application No. 18/342,217, filed on June 27, 2023 but does not identify the respective corresponding U.S Patent Numbers 12,183,161 & 12,183,160 maturing therefrom.
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 1-12 of U.S. Patent No. US 11,735, 008. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented and pending claims are substantially similar to one another with the exception that the patented claims further describe the play of the game as being free while the pending claims do not. It is applicant admitted prior art that the inclusion of free game plays was known at the time of invention (Applicant’s specification Paragraph [0003]). The substitution of game plays with free game plays would have been readily recognized as obvious variants of one another to one of ordinary skill in the art before the earliest effective filing date of the pending application and patented application and would have provided the alternative benefit of lowering the risk and expense to players during one or more portions of game play.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-13 of U.S. Patent No. US 11,222,508. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented and pending claims are substantially similar to one another with the exception the pending claims being directed to the method statutory class of invention, while the patented claims are directed to a machine statutory class of invention. The practice of the claimed method performable on a machine and a claimed machine performing the same method would have been recognized as obvious variants to one of ordinary skill at the earliest effective filing date of the instant application and patent and would have provided the alternative benefits of realizing the invention in a readily duplicatable software format independent of hardware and as a customer engageable hardware product configured to perform the invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-20 of U.S. Patent No. US 12,175,839. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims of the instant application and the patented application are substantially similar to one another with the exception that the claims of the patented application exclude one of the paylines from the previous free play sequence while the instant pending claims do not include this feature. The exclusion of a payline utilized in a previous game play in a game sequence and utilization of previously utilized paylines in a sequence would have been readily recognized as obvious variants of one another to one of ordinary skill in the art before the earliest effective filing date of the pending application and patented application and would have provided the benefit of reducing duplicative elements with each iteration of the sequence and/or introducing additional variances in the utilized pay lines for each iteration of the sequence through employing alternative paylines.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-20 of U.S. Patent No. US 12,183,160. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented and pending claims are substantially similar to one another with the exception the pending claims being directed to the method statutory class of invention, while the patented claims are directed to a machine statutory class of invention. The practice of the claimed method performable on a machine and a claimed machine performing the same method would have been recognized as obvious variants to one of ordinary skill at the earliest effective filing date of the instant application and patent and would have provided the alternative benefits of realizing the invention in a readily duplicatable software format independent of hardware and as a customer engageable hardware product configured to perform the invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-20 of U.S. Patent No. US 12,183,161. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented and pending claims are substantially similar to one another with the exception the pending claims being directed to the method statutory class of invention, while the patented claims are directed to a machine statutory class of invention. The practice of the claimed method performable on a machine and a claimed machine performing the same method would have been recognized as obvious variants to one of ordinary skill at the earliest effective filing date of the instant application and patent and would have provided the alternative benefits of realizing the invention in a readily duplicatable software format independent of hardware and as a customer engageable hardware product configured to perform the invention.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 12,183,162. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims of the instant application and the patented application are substantially similar to one another with the exception that the claims of the patented application include the additional use of a multiplier that is greater than the multiplier utilized in a previous play in the sequence while the instant pending claims do not include this feature. The inclusion of a multiplier that is greater than the multiplier utilized in a previous play of the sequence in the sequence and the absence of an additional multiplier would have been readily recognized as obvious variants of one another to one of ordinary skill in the art before the earliest effective filing date of the pending application and patented application and would have provided the additional benefit of further increasing the amount of payouts providing by the selected paylines in each iteration of game play sequence and providing an additional amount of anticipation for game outcomes with each iteration of the sequence.
Claims 1-20 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18966927 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims of the instant application and the copending application are substantially similar to one another with the exception that the claims of the copending application references modifying the ways to win while the instant application references this element as paylines. The description of paylines and “ways to win” would have been readily recognized as obvious variants of one another to one of ordinary skill in the art before the earliest effective filing date of the copending application and instant application and the substitution of these elements would have provided the benefit of identifying a specific mechanic for describing a way to win of paylines and/or allowed the use of the claimed invention on game types that do not utilize paylines as specific way to win.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18969738 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims of the instant application and the copending application are substantially similar to one another with the exception that the copending claims further describe the play of the game as being free while the instant pending claims do not. It is applicant admitted prior art that the inclusion of free game plays was known at the time of invention (Applicant’s specification Paragraph [0003]). The substitution of game plays with free game plays would have been readily recognized as obvious variants of one another to one of ordinary skill in the art before the earliest effective filing date of the instant pending application and copending application and would have provided the alternative benefit of lowering the risk and expense to players during one or more portions of game play.
Claims 1-20 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18971610 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims of the instant application and the copending application are substantially similar to one another with the exception that additional use of a multiplier that is greater than the multiplier utilized in a previous play in the sequence recited in the copending claims while the instant pending claims do not include this feature. The inclusion of a multiplier that is greater than the multiplier utilized in a previous play of the sequence in the sequence and the absence of an additional multiplier would have been readily recognized as obvious variants of one another to one of ordinary skill in the art before the earliest effective filing date of the pending application and patented application and would have provided the additional benefit of further increasing the amount of payouts providing by the selected paylines in each iteration of game play sequence and providing an additional amount of anticipation for game outcomes with each iteration of the sequence.
Conclusion
The following prior art is made of record and though not relied upon is considered pertinent to applicant's disclosure:
Gomez et al (US 8,317,587) teaches a gaming system having free spin enhancement features; and
Caputo et al (US 8,277,305) teaches a gaming device and method for providing a free spin game with payline multipliers
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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