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.
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 1-6, 8-10, 12-15, and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/774631 (reference application) and claims 1, 3-6, 9-19 of copending Application No. 18/605166 either in view of US Patent No, 5,949,042 to Dietz, II. Either of the reference applications contain similar concepts as the present application but for pair with a prize redemption device or activated for redemption on the prize redemption device which is disclosed by Dietz, II (col. 8, lines 51-63). It would have been obvious to one of ordinary skill in the art at the time the application was filed to combine the teachings of Dietz, II with either of the parent applications to allow for gaming on the device that you are redeeming the ticket.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) a non-transitory, computer-readable medium comprising program instructions that, when executed by processing circuitry of a prize-redemption device, cause the processing circuitry to: receive scan data indicative of a scannable verification code printed on a pulltab card of a pulltab game; determine, based on the scan data, a prize-verification code for the pulltab card; verify the pulltab card by: determining, based on a game serial number associated with the prize-verification code, that the pulltab game is paired with the prize-redemption device or activated for redemption on the prize-redemption device; determining, based on the prize-verification code, that the pulltab card is a winning card; and determining, based on the prize-verification code, that the winning card has not already been redeemed; and in response to verifying the pulltab card, cause the prize-redemption device to dispense a cash prize associated with the winning card or an indication of the cash prize. The underlined portions above relate to the abstract ideas of certain methods of organizing human activity (that is they are rules for managing a wagering game) and a mental process (each of these concepts can be done simply by looking at a card and cross-referencing with previously collected data). This judicial exception is not integrated into a practical application because the abstract idea is only applied to a computing technology area which is insufficient to bring the claims into patent eligible subject matter. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements of the claims relate to generic computing parts which the Supreme Court determined in Alice to not be enough to bring claims into patent eligibility.
All dependent claims have been considered but do not bring the claims into patent eligibility.
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.
Claims 1, 2, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No, 5,949,042 to Dietz, II.
With regard to claim 1, Dietz, II discloses a non-transitory, computer-readable medium comprising program instructions that, when executed by processing circuitry of a prize-redemption device, cause the processing circuitry to: receive scan data indicative of a scannable verification code printed on a pulltab card of a pulltab game (col. 6, line 54 – col. 7, line 4);determine, based on the scan data, a prize-verification code for the pulltab card (col. 6, line 54 – col. 7, line 4); verify the pulltab card by: determining, based on a game serial number associated with the prize-verification code, that the pulltab game is paired with the prize-redemption device or activated for redemption on the prize-redemption device (col. 8, lines 51-63); determining, based on the prize-verification code, that the pulltab card is a winning card (col. 8, lines 6-28; col. 8, line 64-col. 9, line 9); and determining, based on the prize-verification code, that the winning card has not already been redeemed (col. 8, lines 6-28; col. 8, line 64-col. 9, line 9); and in response to verifying the pulltab card, cause the prize-redemption device to dispense a cash prize associated with the winning card or an indication of the cash prize (col. 8, lines 6-28; col. 8, line 64-col. 9, line 9).
With regard to claim 2¸Dietz, II discloses wherein the processing circuitry is configured to determine that the pulltab card is a winning card by comparing the prize-verification code to a set of game data stored in a local memory of the prize-redemption device (col. 8, lines 29-44).
With regard to claim 8, Dietz, II discloses wherein, in response to verifying the pulltab card, the processing circuitry is further configured to cause a ticket collector of the prize-redemption device to eject the pulltab card into a secure receptacle of the prize- redemption device (col. 7, lines 16-32).
With regard to claim 9, Dietz, II discloses wherein, in response to verifying the pulltab card, the processing circuitry is further configured to update a log of prize- redemption transactions stored in digital memory (col. 8, lines 45-51).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Dietz, II in view of US Patent Application Publication No. 2025/0157284 to Wolfe.
With regard to claim 3¸Dietz, II does not appear to explicitly disclose a .csv file. However, the combination of Dietz, II and Wolfe teaches wherein the game data comprises a comma-separated values (.csv) file comprising, for each of a plurality of winning cards of the pulltab game comprising the winning card: the game serial number for the pulltab game; and a denomination code indicating an amount of prize money associated with the winning card (Dietz, II at fig. 1A, 1B; col. 4, lines 14-31; col. 8, lines 45-51; wherein Dietz, II shows all the various information and additionally talks about storing data; Wolfe at 0120).
With regard to claim 4, Dietz, II does not appear to explicitly disclose the exact various digits claimed. However, these number of digits and their designations appear to be merely a matter of Design Choice as there is no criticality shown why using this exact number of digits would materially work any differently than what is done by Dietz, II.
With regard to claim 5, the combination of Dietz, II and Wolfe teaches that the prize-verification code comprises an eleven-digit numeric code, and wherein the .csv file further comprises the elven-digit numeric code (Dietz, II at fig. 1B; Wolfe at 0120).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to combine the teachings of Wolfe with the disclosure of Dietz, II in order to quickly store the information in a searchable format such as a well-known .csv file.
Claims 10, 12-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dietz, II in view of US Patent Application Publication No. 2013/0116032 to Lutnick.
With regard to claim 6, Dietz, II does not appear to explicitly disclose wireless communication. However, the combination of Dietz, II and Lutnick teaches wirelessly receive the game data from a remote computing system to exclusively pai the game serial number with the prize-redemption device (Dietz, II at col. 8, lines 29-63; Lutnick at 0912).
Claim 10 contains limitations similar to those presented in claims 1 and 6 and is rejected in like manner.
Claim 12 contains limitations similar to those found in claim 8 and is rejected in like manner.
Claim 13 contains limitations similar to those found in claim 9 and is rejected in like manner.
Claim 14 contains limitations that are similar to those found in claim 1 and is rejected in like manner.
With regard to claim 15¸Dietz, II discloses a system comprising: a computing device configured to generate a pulltab game (col. 8, line 29 – col. 9, line 9) comprising: a set of game data (fig. 1A, 1B); and a set of graphical card images comprising at least one scannable verification code associated with the game data (fig. 1A, 1B). All other limitations presented are similar to those found in claims 1 and 6 and are rejected in like manner.
Claim 17 is similar to limitations found in claim 1 and claim 8 and is rejected in like manner.
Claim 18 has similar limitations found in claims 2 and 9 and is rejected in like manner.
With regard to claim 19, Dietz, II discloses a game serial number for the pulltab game (fig. 1A, 1B); and a denomination code indicating an amount of prize money (col. 8, lines 45 – col. 9, line 9).
Claim 20 includes limitations similar to those found in claim 1 and is rejected in like manner.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to combine the teachings of Lutnick with the disclosure of Dietz, II in order to provide easy communication such as wireless communication between computers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jay Liddle whose telephone number is (571)270-1226. The examiner can normally be reached M-F 9-5.
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/Jay Trent Liddle/Primary Examiner, Art Unit 3715
