DETAILED ACTION
Information Disclosure Statement
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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 abstract idea without significantly more.
2019 PEG Analysis
Step 1: Are the claims directed to a statutory category (e.g., a process, machine, etc.)
Claim 1 is directed to a process.
Step 2A (Prong 1): Does the claim recite an abstract idea, law of nature or natural phenomenon?
Yes, the claim recites an abstract idea. The following specific limitations in the claim under examination recite an abstract idea:
Determining a first location and a second location
Generating a first game outcome and second game outcome
Determining a first and a second game configuration
Determining a first payout and a second payout
Crediting a player account with a first amount and a second amount
The above listed identified limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG:
Mental Processes: concepts preformed in the human mind (including on observation, evaluation, judgement, opinion).
Certain Methods of Organizing Human Activity: managing personal behavior or relationships or interactions or relationships of interaction between people (including social activities, teaching, and following rules or instructions.
The claims are primarily directed to rules for playing a wagering game, wherein the game rules align with a method of organizing human activity (following rules or instructions). Further, determining a location, generating a game outcome, determining a payout, and crediting a player can each be performed my mental processes of a human.
Step 2A (Prong 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
Overall, the following additional claim limitations appear to merely implement the abstract idea, add insignificant extra-solution activity to the judicial exception, or generally link the judicial exception to a particular environment or field of use, as outlined below:
Crediting a player account (insignificant extra solution activity or generally linking to a field of use).
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Claim 1 as a whole does not amount to significantly more than the exception itself. The above listed additional claim limitations display and process game data in a well-understood, routine, and conventional way. Further, the mobile gaming device of claim 1 is well-understood, routine, and conventional in the art.
In order to satisfy the Berkheimer factual determination of conventional elements in the art, U.S. Patent Application Publication No. 2003/0220835 to Barnes is cited for that mobile phones are conventional in a gaming environment (e.g., see at least paragraph 33 for discussion of a conventional mobile phone and paragraph 272 for discussion of using a mobile device based on proximity within a casino). Therefore, claim 1 is not patent eligible under 101.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 8,771,058. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of the reference patent anticipate the features recited in the current claims (see detailed analysis in below table). It is noted that claim 6 is the only remaining claim in U.S. Patent No. 8,771,058, wherein claim 6 is a combination of claim 1 and claim 6.
Current Application
19/018,339
Reference Document
U.S. Patent No. 8,771,058
Similarities &
Differences
Claim 1. A method comprising:
determining a first location of a mobile gaming device;
determining a first game configuration associated with the first location;
generating a first game outcome using the first game configuration;
determining a first payout associated with the first game outcome;
crediting a player account with a first amount based on the first payout;
determining a second location of the mobile gaming device, wherein the second location is different from the first location;
determining a second game configuration associated with the second location, wherein the second game configuration is different from the first game configuration;
generating a second game outcome using the second game configuration;
determining a second payout associated with the second game outcome; and
crediting the player account with a second amount based on the second payout.
Claim 1. A method comprising:
determining a first location of a mobile gaming device;
determining a first game configuration associated with the first location;
generating, by a computer system, a first game outcome using the first game configuration;
instructing a display screen of the mobile gaming device to display an indication of the first game outcome;
determining a first payout associated with the first game outcome;
crediting a player account with a first amount based on the first payout;
determining a second location of the mobile gaming device, wherein the second location is different from the first location;
determining a second game configuration associated with the second location, wherein the second game configuration is different from the first game configuration;
generating, by the computer system, a second game outcome using the second game configuration;
instructing the display screen of the mobile gaming device to display an indication of the second game outcome;
determining a second payout associated with the second game outcome; and
crediting the player account with a second amount based on the second payout.
Claim 6. The method of 1, in which determining the first game configuration includes:
accessing a lookup table which contains an ordered list of locations and associated game configurations;
finding within the lookup table the first location; and
determining that the first game configuration is associated with the first location.
All of the recited features of current application ‘339 (bolded) are included in claim 6 (as represented by claim 1 and 6) of reference document ‘058 (also bolded). Reference document ‘058 includes additional features that are not bolded in this analysis.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2002/0147049 to Carter in view of U.S. Patent Application Publication No. 2004/0005919 to Walker.
With regard to claim 1, Carter discloses a method comprising:
determining a first location of a mobile gaming device (e.g., see at least paragraphs 27 and 36 for disclosure of position location hardware and software of mobile units 102, using positioning technology such as GPS to determine a user’s geographic location; see also paragraph 26 for disclosure of mobbing gaming units 102, including a mobile telephonic device);
determining a first game associated with the first location (e.g., see at least paragraphs 15 and 40 that disclose “certain games may or may not be provided to the gambler based on jurisdictional restrictions” and “wherein the games made available to the user are restricted by the jurisdiction”);
generating a first game outcome using the first game (e.g., see at least paragraphs 12 and 45 that discloses that a “server may additionally be able to report the outcome of the even to the mobile gaming unit” and the “gambler profile may be updated in response [to] the games outcome”);
determining a first payout associated with the first game outcome (e.g., see at least paragraph 47 that discloses “upon determining the results of the game, the gambler…account may be adjusted accordingly”);
crediting a player account with a first amount based on the first payout (e.g., see at least paragraph 47 that discloses “Once the game is terminated and the wager is deducted or added to the transactional account”);
determining a second location of the mobile gaming device, wherein the second location is different from the first location (e.g., see at least paragraph 11 that discloses that the “gambler may place wagers on the outcome of the event from any location”; see also paragraph 49 that discloses that “the user begins his gaming experience in a first zone, but the user movers to a second zone”);
determining a second game associated with the second location, wherein the second game configuration is different from the first game (e.g., see at least paragraphs 15 and 40 that disclose “certain games may or may not be provided to the gambler based on jurisdictional restrictions” and “wherein the games made available to the user are restricted by the jurisdiction”);
generating a second game outcome using the second game (e.g., see at least paragraphs 12 and 45 that discloses that a “server may additionally be able to report the outcome of the even to the mobile gaming unit” and the “gambler profile may be updated in response [to] the games outcome”);
determining a second payout associated with the second game outcome (e.g., see at least paragraph 47 that discloses “upon determining the results of the game, the gambler…account may be adjusted accordingly”); and
crediting the player account with a second amount based on the second payout (e.g., see at least paragraph 47 that discloses “Once the game is terminated and the wager is deducted or added to the transactional account”).
Carter discloses that the different games may be available based on the location of a mobile gaming device, but fails to expressly disclose that a game’s configuration is modified based on the location of the mobile gaming device.
In the same field of endeavor, Walker teaches determining a game configuration associated with a location (e.g., see at least paragraph 61-69 that disclose modifying game features, including “various operations of a game and/or a gaming device, such as the way the a game is played”, “modifying a payout mode”, “allocation of wagers”, and “automated play”; see also paragraph 218 that discloses the gaming device may be “a telephone…or a portable handheld gaming device”; see also paragraph 264 that discloses that a “feature may be enabled” based on a “location of the gaming device”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the current invention to modify Carter with the game configuration feature as taught by Walker in order to use a known technique to improve similar devices (methods, or products) in the same way. In this case, allowing for modification of game configurations provides mobile gaming devices to efficiently switch between jurisdictional restrictions while playing a wagering game, which will increase income opportunity of gaming service providers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES S MCCLELLAN whose telephone number is (571)272-7167. The examiner can normally be reached Monday-Friday (8:30AM-5:00PM).
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, Kang Hu can be reached at 571-270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James S. McClellan/Primary Examiner, Art Unit 3715
