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, 9, 12, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 12-13, of copending Application No. 18/987,476 (‘476). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1 and 12 of ‘476 teach all the limitations of Claims 1 and 12 the present application along with additional language regarding automatically modifying the current configuration of the electronic gaming machine. Further, Claims 2 and 13 of ‘476 teach the limitations of Claims 9 and 20 respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 2-6 and 13-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of copending Application No. 18/987,476 (‘476) in view of Nelson et al., US 2007/0032288. Nelson et al. teaches the missing limitations of Claims 2-6 and 13-17 as described below. 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 and method of ‘476 to include mandatory and optional settings for gaming machines in the gaming establishment as well as manual settings adjustments as taught by Nelson et al. in order to configured the gaming machines according to required elements such as jurisdictional settings required by law, and optional settings unique to particular games or gaming terminals without needing to send every configuration setting to every terminal. And further to allow the administrator to tweak machine settings manually if additional customization or a later small change is desired.
This is a provisional nonstatutory double patenting rejection.
Claims 7-8, 10 and 18-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10 and 12 of copending Application No. 18/987,476 (‘476) in view of Rao D.S. et al., US 9,094,299. Rao D.S. et al., teaches the missing limitations of Claims 7-8, 10, and 18-19 directed towards layered configuration scripts and one configuration script per layer as described below. 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 and method of ‘476 to include layered configuration scripts as taught by Rao D.S. et al. for similar reasons as described below.
This is a provisional nonstatutory double patenting rejection.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 of copending Application No. 18/987,476 (‘476) in view of Rao D.S. et al., US 9,094,299, and Nelson et al., US 2007/0032288. Nelson et al., teaches the missing limitations of Claim 11 as described below. 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 and method of ‘476 and Rao D.S. et al. to include mandatory and optional settings for gaming machines in the gaming establishment as well as manual settings adjustments as taught by Nelson et al. in order to configured the gaming machines according to required elements such as jurisdictional settings required by law, and optional settings unique to particular games or gaming terminals without needing to send every configuration setting to every terminal.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 9, 12, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 12 and 16, of copending Application No. 18/987,439(‘439). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1 and 12 of ‘439 teach all the limitations of Claims 1 and 12 the present application along with additional language regarding receiving data associated with a request of a new software package to be installed on an electronic gaming machine. Further, Claims 5 and 16 of ‘439 teach the limitations of Claims 9 and 20 respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 2-6 and 13-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of copending Application No. 18/987,439(‘439) in view of Nelson et al., US 2007/0032288. Nelson et al. teaches the missing limitations of Claims 2-6 and 13-17 as described below. 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 and method of ‘439 to include mandatory and optional settings for gaming machines in the gaming establishment as well as manual settings adjustments as taught by Nelson et al. in order to configured the gaming machines according to required elements such as jurisdictional settings required by law, and optional settings unique to particular games or gaming terminals without needing to send every configuration setting to every terminal. And further to allow the administrator to tweak machine settings manually if additional customization or a later small change is desired.
This is a provisional nonstatutory double patenting rejection.
Claims 7-8, 10 and 18-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10 and 12 of copending Application No. 18/987,439(‘439) in view of Rao D.S. et al., US 9,094,299. Rao D.S. et al., teaches the missing limitations of Claims 7-8, 10, and 18-19 directed towards layered configuration scripts and one configuration script per layer as described below. 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 and method of ‘439 to include layered configuration scripts as taught by Rao D.S. et al. for similar reasons as described below.
This is a provisional nonstatutory double patenting rejection.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 of copending Application No. 18/987,439(‘439) in view of Rao D.S. et al., US 9,094,299, and Nelson et al., US 2007/0032288. Nelson et al., teaches the missing limitations of Claim 11 as described below. 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 and method of ‘439 and Rao D.S. et al. to include mandatory and optional settings for gaming machines in the gaming establishment as well as manual settings adjustments as taught by Nelson et al. in order to configured the gaming machines according to required elements such as jurisdictional settings required by law, and optional settings unique to particular games or gaming terminals without needing to send every configuration setting to every terminal.
This is a provisional nonstatutory double patenting rejection.
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, 7, 9, 10, 12, 18, and 20 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 a mental process. Claims 1 and 12 recite “determine a current configuration of an electronic gaming machine, generate, at least partially based on the current configuration of the electronic gaming machine, a plurality of configuration scripts associated with a plurality of automatic configurations of the electronic gaming machine” and Claim 12 recites “receive first data associated with a current configuration of software packages of an electronic gaming machine, receive second data associated with at least one of a first operational parameter associated with an electronic gaming machine supplier, and a second operational parameter associated with an electronic gaming machine operator, generate, at least partially based on the received first data and the received second data, a plurality of layered configuration scripts that are each associated with different automatic modification of at least one of the software packages of the electronic gaming machine”. These limitations describe an abstract mental process where a technician could observe the current setting or configuration of a gaming machine and hand write a via code a configuration script in order to reconfigure the game machine. Even highly complex configuration scripts could be written by a skilled human coder with the assistance of a writing medium like pen and paper.
This judicial exception is not integrated into a practical application because the additional elements of a processor and memory are generic high level recitation of computer components which are mere instructions to implement the abstract idea on a computer, whereas recitation of “cause a delivery of the generated plurality of layered configuration scripts” is claimed so generically at such a high level that it encompasses generic input to a computer such as via a keyboard and likewise is considered merely using a computer as a tool to perform an abstract idea, see MPEP 2106.05(f). As such these element fail to integrate the abstract idea into practical application.
Dependent Claims 7, 9, 18 and 20 recite additional abstract features of the mental process, e.g. features of the created code, which 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 the elements of a processor, memory, and inputting the configuration scripts represent well-known, routine and conventional computer activity well-known in the art. Further the courts have held that “receiving or transmitting data over a network” (See buySAFE, Inc. v. Google, Inc.) and “electronically scanning or extracting data from a physical document” (See Content Extraction and Transmission, LLC v. Wells Fargo Bank) represent routine and conventional computer activity well-known in the art. As such these limitations, even when considered with the claims as a whole fail to add significantly more than the abstract idea.
Dependent Claims 7, 9, 18 and 20 recite additional abstract features of the mental process, e.g. features of the created code, which fail to add significantly more than the abstract idea itself.
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 1-6, 9, 12-17, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nelson et al., US 2007/0032288.
In Reference to Claims 1 and 12
Nelson et al. teaches a method and a system comprising:
a processor; and a memory device that stores a plurality of instructions (Par. 19, 23, 31-32) that, when executed by the processor responsive to an occurrence of a configuration event, cause the processor to determine a current configuration of an electronic gaming machine (Fig. 8 and Par. 109, Fig. 11 and Par. 138), generate, at least partially based on the current configuration of the electronic gaming machine, a plurality of configuration scripts associated with a plurality of automatic configurations of the electronic gaming machine (Fig. 8 and 11, Par. 26 “generating instructions for configuring the game software components and sending the instructions with the game software components” and Par. 111 “In addition, instructions describing the configuration of each game software component may be determined and included in the bundling process because each game software component may have a number of configuration options. The game software components may include but are not limited to game system components, game paytables, game bonusing, game progressives, game graphics, game sounds, game jurisdiction information and game networking components.” As well as Par. 110 where teaches the remote server determines the game components to send based on the current game terminal configuration. See also Par. 117 which teaches “providing a database containing a library of dozens or hundreds of "macro" based preset gaming machine configurations” and Abstract “where each such preset configuration includes specific settings for each of a plurality of gaming terminal setting categories” and Par. 124 and 129. Examiner considers the configuration “instructions” and “macros” of “settings” chosen to be bundled by the server to constitute generating a plurality of configuration scripts. As described above the particular game components and thus associated instructions or settings macro that are bundled are based on the current gaming machine configuration), cause a delivery of the generated plurality of configuration scripts (Fig. 8 and 11 and Par. 111 “In 835, the bundled game software components may be sent to one or more gaming terminals.” And Par. 139 “At step 1296, an instruction is sent from the remote configuration device to the gaming terminal of interest, with such an instruction being to configure or reconfigure the gaming terminal according to the needed or desired configuration. Finally, at step 1297, the gaming terminal of interest is configured or reconfigured according to the particular configuration of interest.”)
In Reference to Claims 2 and 13
Nelson et al. teaches where at least one of the plurality of configuration scripts
is mandatorily applied to automatically configure a first setting of the electronic gaming machine (Par. 129 which teaches “extra” or “optional” settings categories. Which means that certain settings to be configured are not optional. See for example Par. 126 which teaches a minimal set of settings and Par. 74 which teaches jurisdictional settings “Thus, when the gaming terminal is installed in Nevada, a Nevada configuration is used.”).
In Reference to Claims 3 and 14
Nelson et al. teaches wherein the first setting of the electronic gaming machine
is associated with each electronic gaming machine of a gaming establishment (Fig. 10, Par. 111 and 119. See for example “game jurisdictional information”).
In Reference to Claims 4 and 15
Nelson et al. teaches where at least one of the plurality of configuration scripts
is optionally applied to automatically configure a second setting of the electronic gaming machine (Par. 129 “optional setting categories”).
In Reference to Claims 5 and 16
Nelson et al. teaches where a second setting of the electronic gaming machine is manually applied (Par. 127 “As noted above, such commands, instructions and/or configurations may come from server 1200 (e.g., GDTR 200) either automatically or as part of a manual process involving input from a user of the server.”).
In Reference to Claims 6 and 17
Nelson et al. teaches where at least one of the plurality of configuration scripts
is optionally applied to automatically configure a second setting of the electronic gaming machine (Par. 129 “optional setting categories.” Further see Fig. 8 and 11 and Par. 109-111, and 117 which teach bundling configuration instructions and settings macros for the desired configuration on the particular gaming terminal based on its current “game software component information”).
In Reference to Claim 9 and 20
Nelson et al. teaches where at least one of the plurality of configuration scripts is at least partially based on at least one of an operational parameter associated with an electronic gaming machine supplier, an operational parameter associated with an electronic gaming machine operator, and an operational parameter associated with an electronic gaming machine regulator (Par. 110 “game software component version information.” See also Par. 74 and 111 “game jurisdiction information”).
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.
Claim 7-8, 10-11, and 18-19 rejected under 35 U.S.C. 103 as being unpatentable over Nelson et al., US 2007/0032288, in view of Rao D.S. et al., US 9,094,299.
In Reference to Claims 7 and 18
Nelson et al. teaches a system and method as described above in reference to Claim 1 and 12. However et al. does not teach where the plurality of configuration scripts are arranged as a plurality of layers.
Rao D.S. et al. teaches a system for generating device configuration scripts where the plurality of configuration scripts are arranged as a plurality of layers (Fig. 4-5, Col. 10 lines 35-55, Col. 19 lines 5-50, Col. 21 Line 32- Col. 22 line 10 which teaches where configuration options that are parsed to generate the configuration script for the device are organized hierarchically in a plurality of layers).
It would be desirable to modify the system and method of Nelson et al. to include a configuration script generator with configuration options organized in hierarchical layers as taught by Rao D.S. et al. in order to assist an administrator in quickly and conveniently generating new gaming machine configurations when desired. This way the administrator can avoid the need to set “child” configuration settings that are not used in a particular gaming machine configuration and does not need to anticipate and pre-generate all possible gaming machine configurations ahead of time granting extra configuration flexibility without needing full manual configuration.
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 and method of Nelson et al. to include a configuration script generator with configuration options organized in hierarchical layers as taught by Rao D.S. et al.
In Reference to Claims 8 and 19
Nelson et al. as modified by Rao D.S. et al. teaches wherein one configuration script per layer is applicable to automatically configure the electronic gaming machine (Nelson et al. which teaches instructions and macros to configure a gaming machine and Rao D.S. et al. Col. 22 lines 4-10 “Each leaf node in configuration data 80 includes a data element that represents a configurable attribute of router 16. For each selected configuration parameter, script builder module 70 generates scripting language, that when executed by scripting engine module 72, receives a parameterized value associated with the data element at the respective leaf node.”).
In Reference to Claim 10
Nelson et al. teaches a configuration script generator comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor (Par. 19, 23, 31-32), cause the processor to: receive first data associated with a current configuration of software packages of an electronic gaming machine (Fig. 8 and Par. 109, Fig. 11 and Par. 138, See also Par. 110 “game software component version information”), receive second data associated with at least one of a first operational parameter associated with an electronic gaming machine supplier, and a second operational parameter associated with an electronic gaming machine operator (Par. 74 and 111 “game jurisdiction information”), generate, at least partially based on the received first data and the received second data, a plurality configuration scripts that are associated with automatic configurations of at least one of the software packages of the electronic gaming machine (Fig. 8 and 11, Par. 26 “generating instructions for configuring the game software components and sending the instructions with the game software components” and Par. 111 “In addition, instructions describing the configuration of each game software component may be determined and included in the bundling process because each game software component may have a number of configuration options. The game software components may include but are not limited to game system components, game paytables, game bonusing, game progressives, game graphics, game sounds, game jurisdiction information and game networking components.” As well as Par. 110 where teaches the remote server determines the game components to send based on the current game terminal configuration. See also Par. 117 which teaches “providing a database containing a library of dozens or hundreds of "macro" based preset gaming machine configurations” and Abstract “where each such preset configuration includes specific settings for each of a plurality of gaming terminal setting categories” and Par. 124 and 129. Examiner considers the configuration “instructions” and “macros” of “settings” chosen to be bundled by the server to constitute generating a plurality of configuration scripts. As described above the particular game components and thus associated instructions or settings macro that are bundled are based on the current gaming machine configuration), and cause a delivery of the generated configuration scripts (Fig. 8 and 11 and Par. 111 “In 835, the bundled game software components may be sent to one or more gaming terminals.” And Par. 139 “At step 1296, an instruction is sent from the remote configuration device to the gaming terminal of interest, with such an instruction being to configure or reconfigure the gaming terminal according to the needed or desired configuration. Finally, at step 1297, the gaming terminal of interest is configured or reconfigured according to the particular configuration of interest.”)
However, Nelson et al. does not teach that the generated configuration scripts for the device are a plurality of layered configuration scripts that are each associated with different automatic modification of at least one of the software packages of the electronic device.
Rao D.S. et al. teaches a system for generating device configuration scripts for a device where the scripts are a plurality of layered configuration scripts that are each associated with different automatic modification of at least one of the software packages of the electronic device (Fig. 4-5, Col. 10 lines 35-55, Col. 19 lines 5-50, and Col. 21 Line 32- Col. 22 line 10 which teaches where configuration options that are parsed to generate the configuration script for the device are organized hierarchically in a plurality of layers. See also Col. 22 lines 4-10 “Each leaf node in configuration data 80 includes a data element that represents a configurable attribute of router 16. For each selected configuration parameter, script builder module 70 generates scripting language, that when executed by scripting engine module 72, receives a parameterized value associated with the data element at the respective leaf node.”).
It would be desirable to modify the system and method of Nelson et al. to include a configuration script generator with configuration options organized in hierarchical layers as taught by Rao D.S. et al. in order to assist an administrator in quickly and conveniently generating new gaming machine configurations when desired. This way the administrator can avoid the need to set “child” configuration settings that are not used in a particular gaming machine configuration and does not need to anticipate and pre-generate all possible gaming machine configurations ahead of time granting extra configuration flexibility without needing full manual configuration.
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 and method of Nelson et al. to include a configuration script generator with configuration options organized in hierarchical layers as taught by Rao D.S. et al.
In Reference to Claim 11
Nelson et al. and Rao D.S. et al. teach wherein at least one of the plurality of layered configuration scripts is mandatorily applied to automatically configure at least one of the software packages of the electronic gaming machine and at least one of the plurality of layered configuration scripts is optionally applied to automatically configure at least another one of the software packages of the electronic gaming machine (Nelson et al. Par. 129 which teaches “extra” or “optional” settings categories. Which means that certain settings to be configured are not optional. See for example Par. 126 which teaches a “minimal” set of settings and Par. 74 which teaches jurisdictional settings “Thus, when the gaming terminal is installed in Nevada, a Nevada configuration is used.” See also Rao D.S. et al. Fig. 4-5 and Col. 19 lines 5-50 which teaches the configuration script builder include a hierarchical tree of configuration settings including both “root” objects and “child” objects and “leaf” nodes and the administrator using the script builder can select which parameters to include).
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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