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 .
Status of Claims
This action is in response to the reply filed September 18, 2025.
Claims 1-18 have been cancelled.
Claims 19-25 are currently pending and have been examined.
Response to Arguments
Applicant’s remarks filed January 05, 2025 have been fully considered but they are not persuasive.
Regarding the previous double patenting rejection Applicant submitted the following remarks:
Claims 19-25 were rejected on the ground of non-statutory double patenting over US Patent No. 11,055,686. A terminal disclaimer is filed herewith addressing this issue. Respectfully this issue is also now moot.
Examiner respectfully disagrees. The terminal disclaimer filed on September 18, 2025 has been disapproved.
In order to overcome the double patenting rejection a new terminal disclaimer must be filed. A request under 37 CFR 1.46(c) to change the applicant needs to be filed, which is (1) a request, signed by a 1.33(b) party, (2) a corrected ADS (37 CFR 1.76(c)) that identifies the “new” applicant in the applicant information, and is underlined since it is new, and (3) a 3.73(c) statement showing chain of title to the new applicant. Along with the § 1.46(c) request we need a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, unless they file a TD that is signed by the applicant.
Terminal Disclaimer
The terminal disclaimer does not comply with 37 CFR 1.321 because:
The terminal disclaimer identifies a party who is not the applicant (only for applications filed on or after September 16, 2012; See FP 14.26.10):
For cases filed on/after 9/16/12, 37 CFR 1.321 specifies that only the applicant can disclaim, and the terminal disclaimer must specify the extent of the applicant’s ownership.
What needs to be done to correct the defects: A request under 37 CFR 1.46(c) to change the applicant needs to be filed, which is (1) a request, signed by a 1.33(b) party, (2) a corrected ADS (37 CFR 1.76(c)) that identifies the “new” applicant in the applicant information, and is underlined since it is new, and (3) a 3.73(c) statement showing chain of title to the new applicant. Along with the § 1.46(c) request we need a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, unless they file a TD that is signed by the applicant.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 19-25 of this application (“Application”) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 9, and 11-12 of U.S. Patent No. 11,055,686 (“Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because all the elements of the Application claims are to be found in the Patent (as the Application claims fully encompass the Patent claims). The difference between the Application claims and the Patent claims lies in the fact that the Patent claims include more elements and are thus more specific. Thus the invention of claims 1-3, 5, 9, and 11-12 of the Patent is in effect a “species” of the “generic” invention of the Application claims 19-25. It has been held that the generic invention is “anticipated” by the “species”. In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Specifically, the first three limitations of Application claim 19 (activating the transit use card…, adding value to the transit use card …, and receiving … an indicia …) are present in Patent claim 1. Application claim 19 contains two additional limitations (determining that the indicia is valid …, and authorizing use …) which are anticipated by the single preauthorizing limitation of Patent claim 1 (preauthorizing use of the card by determining by the transit system payment device whether the indicia is valid…) because the preauthorizing limitation has been split up into the two additional limitations of Application claim 19. In other words, Patent claim 1 is preauthorizing by determining, whereas Application claim 19 is determining and authorizing. Additionally, preauthorizing is narrower than authorizing because the prefix pre- adds a timing element to when the authorization occurs.
Application claim 20 is anticipated by Patent claim 2. Application claim 21 is anticipated by Patent claim 3. Application claim 22 is anticipated by Patent claim 5. Application claim 23 is anticipated by Patent claim 9. Application claim 24 is anticipated by Patent claim 11. Application claim 25 is anticipated by Patent claim 12.
Since Application claims 19-25 are anticipated by claims 1-3, 5, 9, and 11-12 of the Patent, it is not patentably distinct.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
No amendments have been submitted and therefore the same reasons for indicating allowable subject matter in the Non-Final rejection mailed April 25, 2023 still apply.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT M TUNGATE whose telephone number is (571)431-0763. The examiner can normally be reached Monday - Friday, 9:00 - 4:30 EST.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shannon Campbell can be reached at (571) 272-5587. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/SCOTT M TUNGATE/Primary Examiner, Art Unit 3628
Prosecution Insights