Detailed Action
Double Patenting
The nonstatutory double patenting rejection is summarized as follows:
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 obviousness-type 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), and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US 12254747 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent and the application are claiming common subject matter, as follows:
19056316 (This application)
US 12254747 B2
1. A method of operating a gaming system the method comprising: displaying, by a display, displaying, by the display device, associated with the first reel of the plurality of reels, and responsive to, for the second, subsequent play of the game, no occurrence of the same first reel expansion event associated with the first reel of the plurality of reels, for a third play of the game that occurs after the second play of the game and without displaying at least one of the first quantity of additional symbol display positions associated with the first reel of the plurality of reels, cause a display, by the display device, of symbols at the plurality of symbol display positions associated with the plurality of reels.
1. A gaming system comprising: a processor; and a memory device that stores a plurality of instructions that, when executed by the processor, cause the processor to: for a first play of a game, cause a display, by a display device, of symbols at a plurality of symbol display positions associated with a plurality of reels, and responsive to, in association with the first play of the game, an occurrence of a first reel expansion event associated with a first reel of the plurality of reels: for a second, subsequent play of the game, cause a display, by the display device, of symbols at the plurality of symbol display positions associated with the plurality of reels and a first quantity of additional symbol display positions associated with the first reel of the plurality of reels, and responsive to, for the second, subsequent play of the game, no occurrence of the same first reel expansion event associated with the first reel of the plurality of reels, for a third play of the game that occurs after the second play of the game and without displaying at least one of the first quantity of additional symbol display positions associated with the first reel of the plurality of reels, cause a display, by the display device, of symbols at the plurality of symbol display positions associated with the plurality of reels.
Claims 2-20 similarly recite common subject matter with claims 2-20 of the ‘747 patent and are accordingly rejected for the same reasons as given for representative claim 1 above.
Conclusion
The prior art considered pertinent to applicant's disclosure and not relied upon is made of record on the attached PTO-892 form.
Andersson et al (US 20220130210 A1) discloses a gaming machine with symbol array alteration.
Meyer (US 20210150849 A1) discloses a gaming device with dynamic reel strips.
Aoki et al (US 20190019377 A1) discloses a wagering game with dynamically growing symbols.
Boese et al (US 20180061174 A1) discloses a gaming machine with expanding symbol prizes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steve Rowland whose telephone number is (469) 295-9129. The examiner can normally be reached on Monday through Thursday, alternate Fridays, 8:30 am to 6:00 pm, Eastern Time. 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 number for the organization where this application or proceeding is assigned is (571) 273-8300.
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.
Applicant may choose, at his or her discretion, to correspond with Examiner via Internet e-mail. A paper copy of any and all email correspondence will be placed in the appropriate patent application file. Email communication must be authorized in advance. Without a written authorization by applicant in place, the USPTO will not respond via e-mail to any correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122.
Authorization may be perfected by submitting, on a separate paper, the following (or similar) disclaimer:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
See MPEP 502.03 for more information.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVE ROWLAND/Primary Examiner, Art Unit 3715
Prosecution Insights