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 .
Response to Amendment
This office action is in response to amendments filed on 04/24/2025.
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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more. As per step 1 examiner recognizes that the claims are directed towards computational devices, systems, or methods tied to a user interface and therefore step 1 is met. As per step 2A the claim(s) recite(s) “instructions that: render a first game output on the user interface in response to a reel spin, wherein the first game output comprises an array of symbol areas with a predetermined symbol having landed within a predetermined symbol area; automatically perform a predetermined operation after the reel spin in response to the predetermined symbol having landed within the predetermined symbol area and in response to a set of symbols within the array of symbol areas qualifying to be automatically re-rendered within the array of symbol areas according to the predetermined operation, wherein the predetermined operation is selected based on the predetermined symbol; and re-render a second game output on the user interface in response to the predetermined operation, wherein the predetermined operation is performed such that the set of symbols within the array of symbol areas are automatically re-rendered relative to the predetermined symbol area having the predetermined symbol, and wherein the symbols within the array of symbol areas qualify for an automated analysis to equate the predetermined operation to an outcome justifying a game play event.” which is directed to a game comprising a slot game wherein after an outcome producing symbols the game determines if a predetermined symbol has landed in a predetermined area and thereafter automatically repositions within the array of symbols a set of symbols relative to the location of the predetermined symbol and then a game event is determined by analyzing the new outcome. Further dependent claims indicate how the movement occurs such as by axis or when and indicate the symbol is a mirror symbol. Examiner recognizes that the steps performed for the game are directed towards rules which can be performed in the mind regarding a game that can be carried out as a series of mental steps performed by an individual. See such steps as identifying or performing an analysis with examiner recognizing that an individual can identify or analyze information in the mind. Specifically an individual carrying out a game rule by observing a state of the game, such as displayed symbols, and applying a rule accordingly such as what game state is determined based on the observed data. For example identifying an outcome using conventional gaming techniques and based on established rules in the game what states of the game to transition to such as determining which symbols should be repositioned and how the symbols should be repositioned. For example a person can mentally determine that a mirror symbol has landed in a game and from that determination apply the rule that symbols should be reflected along a certain axis. Therefore the bolded steps are directed towards mental steps that can be performed in the mind. This judicial exception is not integrated into a practical application because the claims are directed towards mental steps in the form of game rules. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims remain directed towards rules for carrying out a game and do not comprise a practical application such as the improvement to the function of a machine. The act of playing a game is not a practical application.
As per step 2B examiner recognizes that additional elements are directed to conventional activities or extra solution activity. See below.
Limitations directed to “ccomputational device, comprising: a user interface comprising a user input and user output; a processor coupled with the user interface; and a computer-readable storage medium, coupled with the processor, comprising instructions that are executable by the processor, wherein the instructions comprise instructions that: render a first game output on the user interface in response to a reel spin, wherein the first game output comprises an array of symbol areas”, “automatically perform a predetermined operation”, “automated analysis”, and further gaming machine hardware. The hardware elements are commonly found in the gaming art related to electronic slot machines or wagering terminals and therefore are no more than a generic recitation of computer hardware elements and therefore does not provide a practical application that amounts to more than the identified abstract idea. This includes the recitation of memory, processors, and displaying steps which are generically found in electronic gaming machine including the elements accepting wagers for the purpose of presenting an outcome and payout for the results. See US 6186894 B1 at col. 5, lines 25-38 regarding video slot reels including displaying outcomes and that the activity of spinning and producing random outcomes from a wagering game are convention activities well-understood in the art. See Acres (US Pub. No. 2012/0172107 A1) teaches within the electronic gaming art the use of a random number generator to determine numbers for specific reel stop positions in order to determine an outcome which is evaluated if it is a winning combination of symbols appearing on a played payline (paragraph [0073]). Specifically it is conventional to communicate data to output to a user comprising animated reels or static images to communicate an outcome and award due as well as the state of the game with examiner recognizing that spinning of a reel would involve displaying a repositioning of a symbol. Further the means of displaying graphics and animations regarding a result or state of the game are conventional to the art and is directed towards extra solution activity as being a means to output information without changing the identified mental steps above. This includes the act of displaying certain symbols or images, including animation, to communicate an outcome and this feature is extra solution activity and is directed to the outputting of data to inform a player which is conventional to the art. This includes steps on how the array of symbols is presented and how symbols or positions may move. These are still display steps directed towards outputting information resulting from the above mental steps and are directed towards conventional gaming output activity. Therefore the hardware and animation features do not provide a practical application.
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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11074786. Although the claims at issue are not identical, they are not -patentably distinct from each other because see below. Specifically both sets of claims are directed towards a slot game wherein a predetermined symbol landing in a predetermined area causes other symbols to be repositioned based on the predetermined symbol.
Current application claim
11074786 claim
Reasoning
1. computational device, comprising: a user interface comprising a user input and user output; a processor coupled with the user interface; and a computer-readable storage medium, coupled with the processor, comprising instructions that are executable by the processor, wherein the instructions comprise instructions that:
1. method of operating a computational device, the method comprising: initiating, with a processor, a first reel spin in which a random number generator is used to determine a position of symbols within an array of symbol areas;
Both are directed towards a computational device with examiner recognizing that one of ordinary skill in the art would understand that not only would the computational device have a processor, as both claim sets indicate, but memory in order to store software instructions that are being performed in 11074786 claim. Therefore both are similar.
render a first game output on the user interface in response to a reel spin, wherein the first game output comprises an array of symbol areas with a predetermined symbol having landed within a predetermined symbol area;
1. a first reel spin in which a random number generator is used to determine a position of symbols within an array of symbol areas;
after the first reel spin, further evaluating, with the processor, the position of symbols within the array of symbol areas to determine whether a predetermined mirror symbol has landed within a predetermined symbol area;
Similar. Both determine an outcome of symbols and both determine if a predetermined symbol lands in a predetermined area with the mirror symbol being the predetermined symbol of the parent application.
automatically perform a predetermined operation after the reel spin in response to the predetermined symbol having landed within the predetermined symbol area and in response to a set of symbols within the array of symbol areas qualifying to be automatically re-rendered within the array of symbol areas according to the predetermined operation, wherein the predetermined operation is selected based on the predetermined symbol;
1. identifying, with the processor, a set of symbols within the array of symbol areas to reposition within the array of symbol areas according to a mirror operation, wherein the set of symbols comprises a plurality of symbols; performing, with the processor, the mirror operation such that the set of symbols within the array of symbol areas are repositioned relative to the predetermined symbol area having the predetermined mirror symbol;
Similar. Both reposition based on the determined predetermined symbol.
and re-render a second game output on the user interface in response to the predetermined operation, wherein the predetermined operation is performed such that the set of symbols within the array of symbol areas are automatically re-rendered relative to the predetermined symbol area having the predetermined symbol,
1. identifying, with the processor, a set of symbols within the array of symbol areas to reposition within the array of symbol areas according to a mirror operation, wherein the set of symbols comprises a plurality of symbols; performing, with the processor, the mirror operation such that the set of symbols within the array of symbol areas are repositioned relative to the predetermined symbol area having the predetermined mirror symbol;
Similar
and wherein the symbols within the array of symbol areas qualify for an automated analysis to equate the predetermined operation to an outcome justifying a game play event.
1. and after the mirror operation, evaluating, with the processor, a reposition of the symbols within the array of symbol areas to determine whether the mirror operation results in a second predetermined outcome warranting a second update to the credit meter.
Similar. Both perform a further analysis of the outcome with the current application being broader by not indicating what the game play event would be but a credit determination would be a gameplay event.
Further the dependent claims are directed towards similar subject matter as found in the parent application including the use of mirror symbols. Therefore the claims are not patentably distinct.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN L MYHR whose telephone number is (571)270-7847. The examiner can normally be reached 10AM-6PM.
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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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/JUSTIN L MYHR/Primary Examiner, Art Unit 3715 9/10/2026
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