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 Objections
Claims 2 and 15 are objected to because of the following informalities:
Claim 2, line 1, after “closing” insert --assembly--; and
Claim 15, line 2, after “closing” insert --assembly--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “gap closing assembly” in claim 1, line 11, claim 14, line 15, and claim 18, line 10. See paragraphs [0112]-[0116] of the specification of the instant application.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, 2, 3, 4-6, 7, 13, 14, 15, 16, 18, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 10, 10, 11-13, 10, 10, 18, 18, 18, 18, 18, and 19, respectively, of U.S. Patent No. 11,941,934. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the instant application and claim 10 of the related patent each disclose an enclosure assembly for use with an electronic gaming machine (EGM) (claim 1), the enclosure assembly comprising: a housing sized to receive at least one accessory component (BNA) of the EGM (claim 1); a door panel coupled to the housing and moveable between an open position and a closed position (claim 1), the door panel and the housing defining a gap therebetween when the door panel is in the closed position (claim 10); a latch coupled to the door panel and positioned to engage a flexible engagement bracket on the housing for locking the door panel in the closed position (claim 1); and a gap closing assembly coupled to the door panel and positioned to at least partially cover the gap when the door panel is in the closed position (claim 10).
Claim 2 of the instant application reads on claim 10, lines 6-8, of the related patent, rotatable cover.
Claim 3 of the instant application reads on claim 10, lines 5-10, of the related patent.
Claims 4-6 of the instant application is identical and/or substantially identical to claims 11-13, respectively, of the related patent.
Claim 7 of the instant application reads on claim 10, lines 20-29, of the related patent, engagement bracket is “resiliently flexible”.
Claim 13 of the instant application corresponds to claim 1, lines 4-5, of the related patent, BNA.
Claim 14 of the instant application and claim 18 of the related patent each disclose an electronic gaming device (claim 18, EGM) comprising: a cabinet (claim 14); a display coupled to the cabinet for displaying an electronic game thereon (claim 14); and an enclosure assembly coupled to the cabinet (claim 14), the enclosure assembly comprising: a housing sized to receive an accessory component of the gaming device (claim 14, BNA); a door panel coupled to the housing and moveable between an open position and a closed position (claim 14), the door panel and the housing defining a gap therebetween when the door panel is in the closed position (claim 18); a latch coupled to the door panel and positioned to engage a flexible engagement bracket on the housing for locking the door panel in the closed position (claim 14); and a gap closing assembly coupled to the door panel for at least partially covering the gap when the door panel is in the closed position (claim 18).
Claim 15 of the instant application reads on claim 18, lines 7-9, of the related patent, rotatable cover.
Claim 16 of the instant application reads on claim 18, lines 6-11, of the related patent.
Regarding method claim 18 of the instant application, claim 18 of the related patent, as discussed above with respect to claim 14 of the instant application, discloses all the claimed structure required by the method steps. Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification, it can be assumed the device will inherently perform the same process. In re King, 802 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
Claim 19 of the instant application reads on claim 18 of the related patent, rotatable cover.
Claim 20 of the instant application reads on claim 18 (last two lines, biasing element) and claim 19 of the related patent.
Claims 1, 2, 3, 4-6, 7, 13, 14, 15, 16, 17, 18, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 10, 10, 11-13, 10, 10, 17, 17, 17, 19, 17, 17, and 18, respectively, of U.S. Patent No. 12,333,884. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the instant application and claim 10 of the related patent each disclose an enclosure assembly for use with an electronic gaming machine (EGM) (claim 1), the enclosure assembly comprising: a housing sized to receive at least one accessory component (BNA) of the EGM (claim 1); a door panel coupled to the housing and moveable between an open position and a closed position (claim 1), the door panel and the housing defining a gap therebetween when the door panel is in the closed position (claim 10); a latch coupled to the door panel and positioned to engage a flexible engagement bracket on the housing for locking the door panel in the closed position (claim 1); and a gap closing assembly coupled to the door panel and positioned to at least partially cover the gap when the door panel is in the closed position (claim 10).
Claim 2 of the instant application reads on claim 10, lines 6-8, of the related patent, rotatable cover.
Claim 3 of the instant application reads on claim 10, lines 5-10, of the related patent.
Claims 4-6 of the instant application is identical and/or substantially identical to claims 11-13, respectively, of the related patent.
Claim 7 of the instant application corresponds to claim 1, lines 13-16, of the related patent.
Claim 13 of the instant application corresponds to claim 1, lines 4-5, of the related patent, BNA.
Claim 14 of the instant application and claim 17 of the related patent each disclose an electronic gaming device comprising (claim 14): a cabinet (claim 14); a display coupled to the cabinet for displaying an electronic game thereon (claim 14); and an enclosure assembly coupled to the cabinet (claim 14), the enclosure assembly comprising: a housing sized to receive an accessory component of the gaming device (claim 14, BNA); a door panel coupled to the housing and moveable between an open position and a closed position (claim 14), the door panel and the housing defining a gap therebetween when the door panel is in the closed position (claim 17) ;a latch coupled to the door panel and positioned to engage a flexible engagement bracket on the housing for locking the door panel in the closed position (claim 14); and a gap closing assembly coupled to the door panel for at least partially covering the gap when the door panel is in the closed position (claim 17).
Claim 15 of the instant application reads on claim 17, lines 6-8, of the related patent, rotatable cover.
Claim 16 of the instant application reads on claim 17, lines 5-11, of the related patent.
Claim 17 of the instant application is identical and/or substantially identical to claim 19 of the related patent.
Regarding method claim 18 of the instant application, claim 17 of the related patent, as discussed above with respect to claim 14 of the instant application, discloses all the claimed structure required by the method steps. Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification, it can be assumed the device will inherently perform the same process. In re King, 802 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
Claim 19 of the instant application reads on claim 17 of the related patent, rotatable cover.
Claim 20 of the instant application reads on claim 17 (last two lines, biasing element) and claim 18 of the related patent.
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 18-20 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 18 is incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: between the latch and the enclosure assembly. The following change would receive favorable consideration: claim 18, line 8, after “latch” insert --coupled to the door panel--. See claim 1, line 8, and claim 14, line 12, for equivalent language.
Claims 19 and 20 are rejected under 35 U.S.C. 112(b) as they depend from a rejected claim.
Allowable Subject Matter
Upon filing of an approved terminal disclaimer to overcome the above double patenting rejections, claims 1-7 and 13-17 would be allowable.
Claims 8-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Upon filing of an approved terminal disclaimer to overcome the above double patenting rejections, claims 18-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 1, 14, and 18, and as discussed above, the limitation “gap closing assembly” invokes 35 U.S.C. 112(f). See paragraphs [0112]-[0116] of the specification of the instant application.
Stephenson III et al. (US#5515959) is representative of the prior art of record and discloses an enclosure assembly for securely housing a bank notes acceptor (BNA) 31 for use with an electronic gaming machine (EGM) 20, the enclosure assembly comprising: a housing 22,24 comprising a side wall at least partially defining an interior sized and shaped to receive the BNA, the housing further comprising an engagement bracket 28 extending between a first end coupled to the side wall and a second, free end (Figs. 7-8); a door panel 30 hingeably coupled to the housing and moveable between an open position “O” and a closed position “C”, the door panel and the housing inherently defining gap therebetween (at the joint thereof) when the door panel is in the closed position; a lock assembly 60,61 (keyed locking element 61 including a “latch”) coupled to the door panel for locking the door panel closed on the housing. However, regarding claim 1, Stephenson III et al. and the remaining prior art of record fails to disclose a gap closing assembly coupled to the door panel and positioned to at least partially cover the gap when the door panel is in the closed position. It would not have been obvious to one of ordinary skill in the art to modify Stephenson to cure this deficiency. Claims 14 and 18 also include the allowable subject matter of claim 1 and are therefore allowable for at least the same reason(s).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
It is noted Tastad et al. (US#2004/0053698) discloses an electronic gaming machine comprising: a “gap closing assembly” 12, namely a floating bezel, coupled to the door 14 of the housing 18, and configured to mate with the front end 20 of the BNA (accessory) 16, see Fig. 2.
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WILLIAM L. MILLER
Primary Examiner
Art Unit 3677
/WILLIAM L MILLER/Primary Examiner, Art Unit 3677
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