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.
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Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,322,253. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matters as it relates to the electronic gaming machine and machine of Claims 1-20 of U.S. Patent No. 12,322,253 are encompassed within the machine and method of claims 1-19 of instant U.S. Application No. 19/027838.
The following is an example of claim correspondence to illustrate the similarities and/or overlapping subject matter.
U.S. Patent No. 12,322,253
U.S. Application No. 19/027838
Claim 1: An electronic gaming machine comprising:
a memory storing programming for a random number generator (RNG);
a presentation assembly configured to perform the operations that cause the gaming machine to present a plurality of mechanical reels and form an array,
the plurality of mechanical reels bearing a plurality of symbols including value-bearing symbols and at least two special symbols comprising a first special symbol and a second special symbol, wherein the plurality of symbols are ranked according to a plurality of hierarchy collector ranks, wherein the value-bearing symbols have a lowest rank in the plurality of hierarchy collector ranks, wherein the at least two special symbols have ranks higher than the lowest rank, wherein each of the at least two special symbols has a different rank from each other within the plurality of hierarchy collector ranks, and wherein each one of the at least two special symbols is configured to collect symbols of a lesser rank than its own rank; and
game-logic circuitry secured within a locked box inside a gaming cabinet of the electronic gaming machine, said game-logic circuitry configured to perform the operations that cause the gaming machine to:
prior to execution of a wagering game, execute an authentication program on the electronic gaming machine to authenticate the programming;
present, via the presentation assembly in response to user input, a series of spins of the plurality of mechanical reels, each spin including spinning and stopping the plurality of mechanical reels to randomly, using the RNG, land at least some of the plurality of symbols in the array, wherein a first one of the series of spins lands a set of the value-bearing symbols;
store, in the memory based on presentation of the first one of the series of spins, first coordinates of a set of cells associated with locations of the set of the value-bearing symbols within the array;
in response to presentation of a second one of the series of spins to land the first special symbol into a trigger cell of the array, collect, via automated presentation based on the plurality of hierarchy collector ranks, the set of the value-bearing symbols into the first special symbol, wherein collection of the set of value-bearing symbols into the first special symbol automatically morphs, via the presentation assembly, an appearance of an indicator on the first symbol in response to movement of the set of the value-bearing symbols from the first coordinates toward the first special symbol;
present, via the presentation assembly in response to automated presentation of the collection and the automated presentation of the movement, a removal of the set of value-bearing symbols from the array, wherein removal of the set of value-bearing symbols from the array frees up the set of cells at the first coordinates for potential appearance of additional value-bearing symbols within the array;
re-position, via the presentation assembly, the first special symbol from the trigger cell of the array to an additional cell in the array associated with second coordinates; and persist, in the additional cell via the presentation assembly, the first special symbol for one or more additional ones of the series of spins
Claim 1: An electronic gaming machine comprising:
a memory storing programming for a random number generator (RNG);
a presentation assembly configured to perform operations that cause the electronic gaming machine to control, via a first display, a plurality of reels that form an array and to control a second display associated with the first display after execution of an authentication program,
the plurality of reels bearing a plurality of symbols including value-bearing symbols and a set of special symbols, wherein the plurality of symbols are ranked according to a plurality of hierarchy collector ranks, wherein the value-bearing symbols have a lowest rank in the plurality of hierarchy collector ranks, wherein the set of special symbols have a set of ranks higher than the lowest rank, wherein each of the plurality of symbols has a different rank from each other within the plurality of hierarchy collector ranks, and wherein each of the set of special symbols is configured to instruct movement and collection of symbols of a lesser rank than its own rank; and
game-logic circuitry secured within a locked box inside a gaming cabinet of the electronic gaming machine, said game-logic circuitry configured to perform the operations that cause the electronic gaming machine to:
prior to execution of a wagering game, execute the authentication program on the electronic gaming machine to authenticate the programming;
animate, via the presentation assembly in response to user input, a series of spins of the plurality of reels, each spin including spinning and stopping the plurality of reels to randomly, using the RNG, land at least some of the plurality of symbols in the array, wherein a first one of the series of spins lands a set of the value-bearing symbols located in a set of multiple cells of the array at a set of first coordinates of the first display;
store, in the memory based on animation of the first one of the series of spins, the set of first coordinates for the set of multiple cells;
in response to determination that a second one of the series of spins lands a special symbol of the set of special symbols into a trigger cell of the array, the game-logic circuitry accesses the memory and controls the presentation assembly to move the set of the value-bearing symbols within the array from the set of first coordinates to the second display to collect the set of the value-bearing symbols into the special symbol, wherein collection of the set of the value-bearing symbols into the special symbol is via automated animation based on determination that the special symbol is greater in rank amongst the plurality of hierarchy collector ranks than the value-bearing symbols, wherein the collection of the set of the value-bearing symbols into the special symbol merges, on the second display, the set of the value-bearing symbols into the special symbol and automatically morphs an appearance of an indicator on the special symbol;
animate, via the presentation assembly in response to the game-logic circuitry performing the operation of movement of the set of the value-bearing symbols within the array from the set of first coordinates to the second display, a removal of the set of the value-bearing symbols from the array, wherein animation of removal of the set of the value-bearing symbols from the array frees up the set of multiple cells from presentation of gaming content at the set of first coordinates for potential appearance of additional ones of the value-bearing symbols within the set of multiple cells; select, in response to the collection of the set of the value-bearing symbols into the special symbol, second coordinates on the first display associated with an additional cell of the array that is unoccupied;
re-position, via the presentation assembly, the special symbol from the second display to the second coordinates on the first display to occupy the additional cell in the array; and persist, in the additional cell via the presentation assembly, the special symbol for one or more additional ones of the series of spins.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception. The claims will be analyzed with respect to the Subject Matter Eligibility Test at MPEP§2106.
Subject Matter Eligibility – Step 1 (see MPEP§2106.03)
The claims recite one of the four statutory categories of subject matter.
Subject Matter Eligibility – Step 2A Prong 1 (see MPEP§2106.04(a-c))
The claims recite abstract ideas in the following categories, methods of organizing human activity such as fundamental economic principles or practices (including hedging, insurance, mitigating risk) see specifically ii. rules for conducting a wagering game, In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); (MPEP§2106.04(a)(2)II). The abstract ideas have been listed and noted for each claims below.
Claim 1 – a plurality of reels that form an array (these are abstract game rules that set forth the virtual game elements that will be used during the game), the plurality of reels bearing a plurality of symbols including value-bearing symbols and a set of special symbols (these are additional abstract game rules regarding the virtual elements to be used as part of the game, e.g. value-bearing symbols and a set of special symbols), wherein the plurality of symbols are ranked according to a plurality of hierarchy collector ranks (these are abstract game rules that set forth additional details regarding the attributes of the symbols according to rank and hierarchy), wherein the value-bearing symbols have a lowest rank in the plurality of hierarchy collector ranks, wherein the set of special symbols have a set of ranks higher than the lowest rank, wherein each of the plurality of symbols has a different rank from each other within the plurality of hierarchy collector ranks, and wherein each of the set of special symbols is configured to instruct movement and collection of symbols of a lesser rank than its own rank (these limitations being abstract game rules that set forth game mechanics regarding symbols and their interactions during play); and animate in response to user input a series of spins of the plurality of reels, each spin including spinning and stopping the plurality of reels to randomly, land at least some of the plurality of symbols in the array, wherein a first one of the series of spins lands a set of the value-bearing symbols located in a set of multiple cells of the array at a set of first coordinates (these limitations being more abstract game rules that set forth game mechanics for gameplay, e.g. spinning reels, randomly stopping reels, landing at least some of the symbols in the array at a first set of coordinates); store, based on animation of the first one of the series of spins, the set of first coordinates for the set of multiple cells (these limitations being rules regarding storing information regarding game elements particularly their coordinates); in response to determination that a second one of the series of spins lands a special symbol of the set of special symbols into a trigger cell of the array move the set of the value-bearing symbols within the array from the set of first coordinates to collect the set of the value-bearing symbols into the special symbol, wherein collection of the set of the value-bearing symbols into the special symbol is via automated animation based on determination that the special symbol is greater in rank amongst the plurality of hierarchy collector ranks than the value-bearing symbols, wherein the collection of the set of the value-bearing symbols into the special symbol merges the set of the value-bearing symbols into the special symbol and automatically morphs an appearance of an indicator on the special symbol (these limitations being abstract game rules regarding how symbols interact with each other during gameplay in response to a trigger condition);
Claim 11 - a plurality of reels that form an array (these are abstract game rules that set forth the virtual game elements that will be used during the game), the plurality of reels bearing a plurality of symbols including value-bearing symbols and a set of special symbols (these are additional abstract game rules regarding the virtual elements to be used as part of the game, e.g. value-bearing symbols and a set of special symbols), wherein the plurality of symbols are ranked according to a plurality of hierarchy collector ranks (these are abstract game rules that set forth additional details regarding the attributes of the symbols according to rank and hierarchy), wherein the value-bearing symbols have a lowest rank in the plurality of hierarchy collector ranks, wherein the set of special symbols have a set of ranks higher than the lowest rank, wherein each of the plurality of symbols has a different rank from each other within the plurality of hierarchy collector ranks, and wherein each of the set of special symbols is configured to instruct movement and collection of symbols of a lesser rank than its own rank (these limitations being abstract game rules that set forth game mechanics regarding symbols and their interactions during play); and animating a series of spins of the plurality of reels, each spin including spinning and stopping the plurality of reels to randomly, land at least some of the plurality of symbols in the array, wherein a first one of the series of spins lands a set of the value-bearing symbols located in a set of multiple cells of the array at a set of first coordinates (these limitations being more abstract game rules that set forth game mechanics for gameplay, e.g. spinning reels, randomly stopping reels, landing at least some of the symbols in the array at a first set of coordinates); store, based on animation of the first one of the series of spins, the set of first coordinates for the set of multiple cells (these limitations being rules regarding storing information regarding game elements particularly their coordinates); in response to determination that a second one of the series of spins lands a special symbol of the set of special symbols into a trigger cell of the array move the set of the value-bearing symbols within the array from the set of first coordinates to collect the set of the value-bearing symbols into the special symbol, wherein collection of the set of the value-bearing symbols into the special symbol is via automated animation based on determination that the special symbol is greater in rank amongst the plurality of hierarchy collector ranks than the value-bearing symbols, wherein the collection of the set of the value-bearing symbols into the special symbol merges the set of the value-bearing symbols into the special symbol and automatically morphs an appearance of an indicator on the special symbol (these limitations being abstract game rules regarding how symbols interact with each other during gameplay in response to a trigger condition);
Claims 2-10 and 12-19 fail to add “significantly more” since they merely add to the claimed concepts (game rules) of corresponding claims 1 and/or 11 from which they depend relating to fundamental economic principles or practices (including hedging, insurance, mitigating risk) see specifically ii. rules for conducting a wagering game, In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); (MPEP§2106.04(a)(2)II).
Subject Matter Eligibility – Step 2A Prong 2 (see MPEP§2106.04(d))
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements are a memory storing programming for a random number generator; a presentation assembly configured to perform the operations that cause the electronic game machine to control, via a first display and to control a second display associated with the first display after execution of an authentication program; game-logic circuitry secured within a locked box inside a gaming cabinet of the electronic gaming machine; and/or the authentication program on the electronic gaming machine to authenticate the programming amount to generic computer hardware; insignificant extra solution activity such as collecting information, analyzing it, and displaying certain results of the collection and analysis to data; and the use of software to tailor information and provide it to the user on a generic computer. These additional elements individually and in combination provide for limitations that do not integrate the judicial exception into a practical application. These additional elements (1) add “insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g)” (MPEP§2106.04(d)I) and (2) generally link “the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).” (MPEP§2106.04(d)I).
These additional elements individually and in combination are not limitations that provide for “improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);” (MPEP§2106.04(d)I) apply or use the “judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);” (MPEP§2106.04(d)I) implement the “judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);” (MPEP§2106.04(d)I) effect “a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c);” (MPEP§2106.04(d)I) or apply or use “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, as discussed in MPEP § 2106.05(e).” (MPEP§2106.04(d)I). As such the claims as a whole do not integrate the judicial exception into a practical application.
Subject Matter Eligibility – Step 2B (see MPEP§2106.05)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are well-understood, routine and conventional generic computer hardware and insignificant extra solution activity (see MPEP§2106.05). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are well-understood, routine and conventional generic computer hardware and insignificant extra solution activity (see MPEP§2106.05). The claimed additional elements with citations indicating their well-understood, routine and conventional nature are provided below.
Walker (US 2004/0204228) teaches a memory storing programming for a random number generator (RNG) (¶ 58); Bailey (US 2011/0130199) teaches a presentation assembly configured to perform the operations that cause the gaming system to present (¶ 32); Acres (US 2011/0111836) teaches game-logic circuitry secured within a locked box inside a gaming cabinet of the electronic gaming machine (¶ 3-4); and Okada (US 2008/0076558) teaches an authentication program on the electronic gaming machine to authenticate the programming (¶ 96);
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see PTO-892.
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/TRAMAR HARPER/Primary Examiner, Art Unit 3715
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