DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 3 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 8020775. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants.
Claim 3 of the instant application recites “A card… magnetic emulator… to a magnetic stripe reader via an electromagnetic field… coil… a material within said interior… increasing the amount … located about said exterior… substantially non-magnetostrictive… magnet within said interior… bias…” whereas claim 19 (1,19) of the ‘775 Patent recites “A card… magnetic emulators… coil… a material placed within said interior… increasing the amount… located about said exterior… magnet placed within said interior… bias… wherein said material is substantially non-magnetostrictive”.
Re claim 11 of the instant application, a coil has already been recited in claim 3 as part of the emulator.
Claims 4-5, 13-17, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19 of U.S. Patent No. 8020775 in view of Mullen et al. (US 8382000).
Claims 4-5 recite “time-based” and “use-based”, which the ‘775 Patent is silent to by the ‘000 Patent teaches at claims 38-39. It would have been obvious to combine the teachings for security.
Claim 13 recites “coil… soft-magnetic material…” whereas the ‘775 Patent is silent. However, the ‘000 Patent recites “soft-magnetic material” in claim 2 and FIG. 11. It would have been obvious to combine the teachings of for non-magnetostriction, easy magnetization/ demagnetization/ low coercivity/ low energy losses, high permeability, etc.
Claim 14 of the instant application recites “coil… soft-magnetic material… multiple layer flexible printed circuit board” whereas ‘775 Patent is silent. However, the 000 Patent teaches such limitations in FIG. 11, wherein it would have been obvious to combine the teachings for traditional manufacturing and for the benefits of soft magnetics.
Claim 15 of the instant Application recites “… processor… buttons” whereas the ‘775 Patent is silent. However, FIG. 1 of the ’000 Patent teaching such limitations which are an obvious expedient for inputs and processing.
Claim 16 of the instant Application recites “processor… buttons… battery… display…” whereas the ‘775 Patent is silent. However, FIG. 1+ of the ‘000 Patent and claim 1+ teach the limitations as obvious expedients for expected results for inputs and processing.
Claim 17 of the instant Application recites “… second magnetic emulator… coil… multiple layer flexible printed circuit board” whereas claim 10 of the ‘775 Patent recites “…. Flexible printed circuit board” and the Examiner notes that multilayer is an obvious expedient in accordance with production/ manufacturing of currently accepted processes, as obviated by the ‘000 Patent at Step 1241.
Claim 35 of the instant Application recites “soft magnetic material whereas the ‘775 Patent is silent. However, the ‘000 Patent recites “soft-magnetic material” in claim 2 and FIG. 11. It would have been obvious to combine the teachings of for non-magnetostriction, easy magnetization/ demagnetization/ low coercivity/ low energy losses, high permeability, etc.
Claims 6-10 and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19 of U.S. Patent No. 8020775 in view of Hathaway et al. (US 20090048971).
Claims 6-8 recite the additional limitations of types of displays. Hathaway et al. teaches the use of a display (paragraph [0034]+) on a magnetic emulator, where selection of a type of known display type is an obvious expedient based on usage, cost, design constraints, etc. well within the ordinary skill in the art.
Claims 9 and 36 recite the additional limitation of a PCB/ multilayer. Hathaway et al. at paragraph [0032]+ teaches various circuit elements and circuitry which obviate a PCB/ multilayer for ease of construction and connectivity of an emulator card.
Claim 10 recites the additional limitation of no stripe, which Hathaway et al. teaches at FIG. 3A+, which is an obvious expedient due to a emulator.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive in light of the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL I WALSH whose telephone number is (571)272-2409. The examiner can normally be reached 7-9pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Paik can be reached on 571-272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL I WALSH/ Primary Examiner, Art Unit 2876
Prosecution Insights