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 non-statutory 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 non-statutory 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 non-statutory 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,211,342. Although the claims at issue are not identical, the subject matter of claim 1 of the instant application is an obvious variation of, and/or anticipated by, the subject matter claimed in claim 1 of U.S. Patent No. 12,211,342. Specifically, claim 1 of U.S. Patent No. 12,211,342 claims a gaming machine comprising a cabinet, display device, and control unit configured to initiate a game by randomly selecting a reel set comprising adjacent coupled reels, selecting a special symbol for a variable symbol position group extending across adjacent columns and at least two rows, selecting an oversized symbol associated with the special symbol, and animating the coupled reels to spin and stop together with the oversized symbol displayed overlaying the variable symbol positions group. Independent claim 1of the present application merely recites a broader recitation of the same inventive concept without any patently distinguishing features. To the extent claim 1 omits minor implementation details recited in claim 1 of the ‘342 patent (e.g., explicitly claiming five reels, a non-coupled reel, or accessing specific reel set and variable symbol data files), such omissions represent obvious design choices and/or obvious generalization well within the ordinary skill in the art.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Eligibility Guidance (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a system and/or process, which are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether they are directed to a judicial exception.
Independent claim 1 recites the following, with the abstract ideas highlighted in bold, including an indication as to the abstract idea grouping(s) to which the indicated limitations belong to, according to the 2019 Revised Patent Subject Matter Guidance:
1. A gaming machine for displaying computer-animated images, comprising:
a gaming cabinet;
a display device mounted to the gaming cabinet and including a graphical user interface (GUI) display screen displaying computer-generated images thereon;
a game control unit operably coupled the display device, the game control unit including a memory device storing image data, a random number generator, and one or more processors programmed to execute an algorithm to display a computer-animated sequence of computer-generated images on the display device GUI including the steps of:
displaying a game screen on the display device GUI including a plurality reels, each reel displaying a plurality of symbols (Certain Methods of Organizing Human Activity); and
initiating an instance of the game by:
randomly selecting a reel set from a plurality of reel sets, the selected reel set including a group of adjacent coupled reels that spin and stop together, the group of adjacent coupled reels including a variable symbol position group extending across each of the adjacent coupled reels, the variable symbol position group including adjacent columns of variable symbol positions and at least two adjacent rows of variable symbol positions (Certain Methods of Organizing Human Activity and/or Mental Processes);
randomly selecting a special symbol displayed in the variable symbol position group, the special symbol being displayed in each variable symbol position of the variable symbol position group (Certain Methods of Organizing Human Activity and/or Mental Processes);
selecting an oversized symbol associated with the special symbol (Certain Methods of Organizing Human Activity and/or Mental Processes); and
animating the plurality of reels to spin and stop such that the group of adjacent coupled reels spins and stops together and the oversized symbol is displayed overlaying the variable symbol position group (Certain Methods of Organizing Human Activity).
The limitations in claim 1 recite an abstract idea included in the groupings of Certain Methods of Organizing Human Activity and/or Mental Processes, connected to technology only through application thereof using generic computing elements (e.g., a cabinet, a display device, a control unit, etc.) and/or insignificant extra-solution activity. According to the 2019 Revised Patent Subject Matter Guidance:
Mental Processes include concepts performed in the human mind (including an observation, evaluation, judgement, opinion); and
Certain Methods of Organizing Human Activity include:
1. Fundamental Economic Principles or Practices (including hedging (i.e., wagering), insurance, mitigating risk);
2. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
3. Managing Personal Behavior or Relationships or Interactions Between People (e.g. social activities, teaching, and following rules or instructions). The interaction encompasses both activity of a single person (for example a person following a set of instructions) and activity that involves multiple people (such as a commercial or legal interaction). Thus, some interactions between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within this
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
A. Following rules and/or instructions (i.e., rules of a game): The instant claims recite displaying a game screen with reels, initiating an instance of the game by randomly selecting a reel set having coupled reels that spin and stop together, selecting a special symbol for a variable symbol position group, selecting an associated oversized symbol, and animating the reels to spin and stop together with the oversized symbol displayed overlaying the variable symbol positions group. These limitations define the specific rules, mechanics, and visual presentation of playing an electronic gaming machine. Following rules or instructions, including rules of playing a game, is an abstract idea falling squarely within the grouping of Certain Methods of Organizing Human Activity (See MPEP 2106.04(a)(2)(III)).
B. Concepts performed in the human mind: The instant claims recite “randomly selecting a reel set from a plurality of reel sets”, “randomly selecting a special symbol”, and “selecting an oversized symbol associated with the special symbol”. These selection and matching steps fall within the grouping of Mental Processes because evaluating options, making selections from predetermined sets, and associating one symbol with another are processes which can practically be performed in the human mind or using pen and paper (See MPEP 2106.04(a)(2)(III)).
Step 2A-Prong 2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a considers whether the judicial exception is integrated into a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
-Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Claim 1 does not integrate the judicial exceptions (i.e., rules of a game and mental processes) into a practical application because the claim limitations do not improve the function of a computer or other technology, nor do they apply the judicial exceptions in any other meaningful way beyond generic computer implementation.
Specifically, the claimed hardware elements (i.e., a gaming cabinet, a display device with a GUI display screen, a game control unit, a memory device, a random number generator, and one or more processors), are recited at a high level of generality without any specific technical improvements to their internal structure or operation. These components are merely invoked as generic tools to execute and present the claimed game rules (See MPEP 2106.05(f)).
Furthermore, the operational steps of displaying reels, randomly selecting reel sets and symbols, and animating the reels to spin and stop such that coupled reels stop together and display an oversized symbol do not improve the underlying graphic processing, display hardware, or computer system (See MPEP 2106.05(a)). Rather, generating and displaying these computer-animated images simply serves as the generic means for conveying game results and game rules to a player. Limiting the execution of these game rules to a gaming machine environment amounts to nothing more than generally linking the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05(h)).
Accordingly, the judicial exceptions are not integrated into a practical application and claim 1 is directed to an abstract idea under Step 2A of the 2019 Revised Patent Subject Matter Eligibility Guidance.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, claim 1, as a whole, is analyzed to determine whether any element, or combination of elements is sufficient to ensure that the claim amounts to “significantly more” than the exception.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the non-abstract elements, considered both individually and as an ordered combination, merely recite well-understood, routine, and conventional computer and gaming hardware performing their basic computational functions.
Specifically, the physical and hardware components recited in claim 1 comprise: a gaming cabinet, a display device including a graphical user interface (GUI), a game control unit including a memory device, a random number generator, and one or more processors. These elements are recited at a high level of generality and fail to impose meaningful technical limitations to impart patent eligibility. Merely reciting generic computer components to implement ana abstract idea does not imply an inventive concept.
Whether claim elements represent well-understood, routine, and conventional activity is a factual determination (See MPEP 2106.05(d) and Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)). Conventional gaming machines utilizing generic hardware elements, as currently claimed (i.e., a gaming cabinet, a display device including a graphical user interface (GUI), a game control unit including a memory device, a random number generator, and one or more processors) are widely known in the gaming art, as evidenced by U.S. 2004/0204228, which discloses that a conventional electronic gaming machine include elements such as a gaming cabinet, a display device including a graphical user interface (GUI), a game control unit including a memory device, a random number generator, and one or more processors to control the overall operation of the gaming machine (¶58).
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hornik et al (US 2017/0024956).
Regarding claim 1, Hornik discloses:
a gaming machine for displaying computer-animated images (abstract), comprising:
a gaming cabinet (¶16, Fig. 1, gaming cabinet 12);
a display device mounted to the gaming cabinet and including a graphical user interface (GUI) display screen displaying computer-generated images thereon (¶16-17, Fig. 1, primary display 18);
a game control unit operably coupled the display device, the game control unit including a memory device storing image data, a random number generator, and one or more processors programmed to execute an algorithm to display a computer-animated sequence of computer-generated images on the display device GUI (¶20-24, game-logic circuitry 40 which includes a processor 42 which executes instructions stored on main memory 44, main memory 44 stores programming for a random number generator, game out-come logic, and game assets) including the steps of:
displaying a game screen on the display device GUI including a plurality reels, each reel displaying a plurality of symbols (¶32, ¶43, Fig. 4A, Fig. 4F, bonus game screen including a plurality of reels displaying game symbols 420); and
initiating an instance of the game by:
randomly selecting a reel set from a plurality of reel sets (¶24-25, ¶32, a random selection from a pool of outcomes indicating which outcome is to be presented to the player on each reel of matrices 440, 460 and 480), the selected reel set including a group of adjacent coupled reels that spin and stop together (¶34, Fig. 4B, 4C, reels of matrices 440, 460 and 480 which are spun and stopped to display the randomly selected reel set outcome during the bonus game), the group of adjacent coupled reels including a variable symbol position group extending across each of the adjacent coupled reels, the variable symbol position group including adjacent columns of variable symbol positions and at least two adjacent rows of variable symbol positions (¶43, Fig. 4F, 4G, for example matrix 480 (similarly matrices 440 and 460) includes a variable symbol position group which includes each reel which is overlaid with modifier symbol 450 and each row which is overlaid with modifier symbol 450, for example matrix 480 includes a variable symbol group which is overlaid by modifier symbol 450 and which includes 2 adjacent reels and 2 adjacent rows of symbols as seen in Fig. 4F);
randomly selecting a special symbol displayed in the variable symbol position group, the special symbol being displayed in each variable symbol position of the variable symbol position group (¶43, which symbols are overlaid by modifier symbol 430 are randomly determined based on a determined size and location of the modifier symbol);
selecting an oversized symbol associated with the special symbol (¶38, modifier symbol is selected from a set of possible modifier symbols, the examiner interprets the modifier symbol selected during play of a game as associated with the symbols which it overlays); and
animating the plurality of reels to spin and stop such that the group of adjacent coupled reels spins and stops together (¶32, ¶43, the reels of matrices 440, 460 and 480 are displayed as spinning and stopping) and the oversized symbol is displayed overlaying the variable symbol position group (¶43, Fig. 4F, 4G, modifier symbol 450 is overlaid on matrix 480).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Applicant is directed to the attached "Notice of References Cited" for additional relevant prior art. The Examiner respectfully requests the Applicant to fully review each reference as potentially teaching all or part of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON PINHEIRO whose telephone number is (571)270-1350. The examiner can normally be reached M-F 8:00A-4:30P ET.
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, Dmitry Suhol can be reached on (571) 272-4430. 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.
/Jason Pinheiro/Examiner, Art Unit 3715
/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715
