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 .
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 1-18 of U.S. Patent No. 12,165,474. Although the claims at issue are not identical, they are not patentably distinct from each other because both the patent and instant application are directed to providing a game utilizing a positive, negative, and credit accumulator value, initiating a bonus game based on satisfaction of a condition, the outcome of the bonus game is determined based on a randomly generated value, the positive, and negative accumulator values.
While the patent is narrower in scope compared to the application due to the additional limitations in the claims, the invention of the patent is still directed to the same invention as the application, with a bonus game separate from a base game in a slot machine game having its outcome influenced by the values of positive and negative accumulators changed during the slot machine game. The broadening of scope of the application ensures that the patent would wholly anticipate the claimed invention were it considered prior art.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-7, 9-17, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) and (2) as being anticipated by Schwartz et al (US 2008/0058099).
Re claim 1, Schwartz discloses a system comprising: one or more processors coupled to non-transitory memory (par. [0037]-[0038] and [0053]); the one or more processors are to: increment a positive accumulator value (fig. 1, the game offers 7 safe choices, see [0025]-[0027]), a negative accumulator value (fig. 1, 5 risky choices with associated negative impacts, see table after [0027]), and a credit accumulator value (fig. 1, credits meter is visible in the bottom-right corner) based on a plurality of updates to a game state of a virtual slot machine game (see at least [0028]-[0035] describing the flow of gameplay) presented via a first user interface (fig. 1); determine, based on the game state of the virtual slot machine game, that a condition to initiate a bonus game has been satisfied (fig. 1, 12, 14, and 16 illustrating various game states for bonus games, see also [0067] which describes other outcomes leading to bonus outcomes); responsive to determining that the condition has been satisfied, transition the first user interface to a second user interface presenting the bonus game, the bonus game different from the virtual slot machine game ([0067], p. 10, spell-out prizes invoke “bonus rounds” of game play different than the base game, such as a new playfield consisting of a grid of fifteen squares), wherein an outcome of the bonus game is determined based on a randomly generated value ([0067], the credit values are randomized), the positive accumulator value (see table under [0027], with safe selection outcomes including reduction of loss, prevention of the ending of the game), and the negative accumulator value (again see the aforementioned table, with associated negative impacts described); and adjust a credit balance based on the credit accumulator value responsive to the outcome of the bonus game satisfying a win condition ([0067], players are awarded credit values based upon the “Coin-In” level of play and the revealed elements).
Re claim 2, Schwartz discloses a presentation of the accumulator values on the second user interface (fig. 1 illustrates inner display area 24 which displays the game and the outer interface area 22 which presents an ongoing display of the accumulators, therefore remaining on screen regardless of the game presented to the player).
Re claim 3, Schwartz discloses providing the first user interface for display at a client device and receiving one or more interactions to update the game state of the virtual slot machine game from the client device (fig. 2).
Re claim 4, Schwartz discloses adjusting the credit balance further based on an arrangement of a plurality of symbols corresponding to a play of the virtual slot machine game ([0067] describing various payouts and gaming situations based on winning symbol outcomes).
Re claim 5, Schwartz discloses updating the game state of the virtual slot machine game based on an arrangement of a plurality of symbols generated for a play of the virtual slot machine game ([0067], symbol combinations can lead to monetary payouts or bonus games).
Re claim 6, Schwartz discloses adjusting the credit balance based on the game state of the virtual slot machine game prior to initiating the bonus game ([0067]).
Re claim 7, Schwartz discloses causing presentation of the accumulator values via the first user interface (fig. 1, 22).
Re claim 9, Schwartz discloses detecting the condition to initiate the bonus game responsive to receiving a request to initiate the bonus game from the client device ([0067]).
Re claim 10, Schwartz discloses determining the outcome of the bonus game based on a comparison of at least two randomly generated values, the positive and negative accumulator values ([0067], the symbols and credit values are randomly generated, with the effects of the accumulators having been discussed above).
Re claims 11-17 and 19-20, see the above rejections, mutatis mutandis.
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.
Claim(s) 8 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwartz in view of Marks et al (US 2004/0058727).
Re claims 8 and 18, while Schwartz has disclosed a bonus game, there is no disclosure of a condition to initiate the bonus game responsive to a determination that a predetermined number of plays of the virtual slot machine game have been conducted since the bonus game was last executed.
Marks teaches a game wherein players may accumulate points in a “bonus meter” accruing towards an eventual participation in a bonus game ([0051]). As such, eventually, the bonus game will be initiated upon a predetermined number of plays of the game being conducted.
It would have been obvious to implement the guaranteed bonus game participation of Marks with the game of Schwartz in order to ensure that all players eventually get to participate in the bonus game regardless of luck, increasing the enjoyment and retention rate of players.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Y Kim whose telephone number is (571)270-3215. The examiner can normally be reached Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEVIN Y KIM/Primary Examiner, Art Unit 3715
Prosecution Insights