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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites “causing, by the processor circuit based on the first message, the dispenser to dispense a secondary progressive award…”
Firstly, “the dispenser” lacks antecedent basis. Secondly, it appears as though “first message” should be “second message” to provide a logical flow of the claim consistent with the specification. That is, the first message asks the gaming device to determine eligibility, the device sends a responsive message, the second message logically authorizes provision of the second award, however, the claim indicates provision of the award is “based on the first message” and appears inconsistent with the intended invention as detailed in the specification.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception, namely an abstract idea, without reciting additional elements that integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Step 1 – Statutory class?
Claims 1-20 recite methods, which are statutory processes under 35 U.S.C. 101.
Step 2A, Prong One – Abstract Idea?
Claims 1-20 recite the abstract idea of administering award distribution by evaluating device eligibility, selecting devices subject to available award inventory, and allocating or authorizing primary and secondary awards.
Representative claim 1 recites:
determining that a winning condition for a progressive wagering game has been satisfied;
determining whether gaming devices meet a predetermined activity condition;
determining a subset of active gaming devices that meet the activity condition;
limiting the number of selected active gaming devices based on the number of available secondary awards;
providing a primary progressive award to a winning device; and
dispensing or providing a secondary progressive award to the selected active gaming devices.
Representative claim 16 recites:
receiving a message from a progressive wagering game server;
determining whether a gaming device meets a predetermined activity condition;
reporting the eligibility result to the server;
receiving another message from the server;
and causing an award to be dispensed at determined active devices.
Accordingly, the claims recite at least (i) a certain method of organizing human activity, namely a commercial interaction and economic practice involving wagering, participation eligibility, prize allocation, and distribution of monetary or non-monetary value, and (ii) a mental process, namely evaluating activity information under predetermined rules, comparing eligible participants with available award inventory, and applying rules to allocate awards.
The abstract idea can be characterized as determining eligibility for participant awards associated with a wagering event, selecting of recipients according to eligibility and inventory rules, and providing or authorizing awards to selected recipients.
Dependent claims 2-15 & 17-20 do not alter this conclusion. The dependent claim limitations merely define the type of award, the funding source, the eligibility rules, the form of communication, or types of generic devices for implementing the award allocation scheme. They do not remove the claims from the identified abstract idea groupings.
Step 2A, Prong Two – Practical application?
The claims do not integrate the abstract idea into a practical application.
The additional elements include a processor circuit, progressive wagering game server, gaming devices, electronic gaming machines, lottery terminals, mobile devices, a dispenser, messages, network communication, etc.
The elements are recited at a high level of generality and perform generic functions:
Processor circuits evaluate predetermined criteria and execute rules;
Servers receive, processor, and transmit award related information;
Gaming devices receive wagers, display gaming outcomes, receive messages, and provide information to servers;
Networks facilitate communication of eligibility and award messages;
Dispensers output tickets, vouchers, receipts, or other bearer instruments to indicate awards.
The claims do not recite a technical improvement to a gaming device operation, progressive network operation, communications, inventory management, ticket generation, award verification, data security, anti-fraud processing, or any other special purpose computer functionality.
In particular, as exemplary, the claims do not recite:
A specific network protocol or synchronization technique for coordinating progressive awards across gaming devices;
A technique for preventing duplicate secondary awards when multiple devices satisfy an activity condition;
A system that reserves, holds, locks, or otherwise manages limited inventory at the transaction level;
A particular mechanism for authenticating or validating a player, a gaming device, an award request, or an award ticket;
A particular ticket encoding, ticket printing, or ticket redemption technique;
A mechanism for resolving communication interruptions, duplicate message, stale activity data, or conflicting award instructions; or
An improvement to a computer, a server, a network, a gaming device, or a ticket printer/dispenser that is non-conventional.
Claim 16 recites causing [a] dispenser to dispense a secondary progressive award, however under the broadest reasonable interpretation in light of the specification, the dispenser encompasses a conventional bill/ticket dispenser/printer of a gaming device that outputs a ticket, voucher or other bearer instrument redeemable for the stated non-monetary merchandise item. Thus, the dispenser is used merely to output or communicate the result of the abstract eligibility and award allocation determination. The claims do not require the dispenser to physically store, select, verify, reserve, or mechanically deliver the merchandise item. Nor do the claims recite any improvement in ticket printing, dispensing, inventory management, or redemption technology via the “dispenser” language.
Step 2B – Significantly more?
The claims do note recite additional elements that amount to significantly more than the abstract idea.
The claimed processor circuits, memories, progressive game servers, gaming devices, networks, message communication, wagering, and ticket printers/dispensers are recited only by their conventional functions. They receive wagers and information, determine qualification under rules, communicate messages, update or allocate award information, and print or dispense an award indication.
Considered as an ordered combination, the claims merely automate the above discussed processes including receiving or accounting for wagers associated with a progressive game, determining a winning condition, determining which game devices satisfy an activity condition, limit the number of secondary award according to available award inventory, provide primary awards to winning devices, communication secondary award instructions to selected devices, and print, dispense, or otherwise provide an award, ticket, voucher, or indication.
This ordered combination is no more than implementation of the abstract idea using generic computing, gaming, networking, and ticket output components. The claims do not recite a nonconventional arrangement of components or a technological solution to a technological problem.
Therefore, the additional elements individually and as an ordered combination do not amount to significantly more than the judicial exception.
Consequently, claims 1-20 are not patent eligible under 35 U.S.C. 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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,283,160. Although the claims at issue are not identical, they are not patentably distinct from each other because the invention(s) of the present claims are substantially overlapping to the invention(s) of the patent claims. For example, claims 1-20 of the present application are substantially overlapping to the patent claims with regards to the subject matter pertaining to determining that a winning condition for a progressive wagering game has been satisfied, determining whether gaming devices meet a predetermined activity condition, determining a subset of active gaming devices that meet the activity condition, limiting the number of selected active gaming devices based on the number of available secondary awards, providing a primary progressive award to a winning device, dispensing or providing a secondary progressive award to the selected active gaming devices, receiving a message from a progressive wagering game server, determining whether a gaming device meets a predetermined activity condition, reporting the eligibility result to the server, receiving another message from the server, and/or causing an award to be dispensed at determined active devices. A person of ordinary skill in the art would readily ascertain the substantial overlap of the pending claims to the patent claims to reasonably warrant the standing of non-statutory double patenting for which a terminal disclaimer can obviate.
Conclusion
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/MILAP SHAH/Primary Examiner, Art Unit 3715
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