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 .
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,403,911 in view of Cammegh (GB 2503870A)
Claims 1-20 of U.S. Patent No. 11,403,911 discloses the claimed invention of pending claims 1-20 and but fails to teach that the color values are analyzed using a mathematical color definition to determine a chip color the chip therein is from a color set comprising the third color and the fourth color. According to Applicant’s specification, examples of a mathematical definition can be a range, greater than a value, less than a value, etc. which define a particular color (e.g., red, green, etc.) or shade (e.g., white). In an analogous art to gaming apparatus Cammegh discloses a gaming table that detects colors of a gaming chip. Cammegh discloses that the color of the chip is determine using a mathematical color definition (A lookup table with RGB values that is within range or closest match is used to identify and measure different. In addition, algorithm based on hue values can be used distinguish the chips. See page 5). This allows the computer process to digitally identify the color of the chips using the data of the color sensor. It would have been obvious to one of ordinary skilled in the art to modify Claims 1-20 of U.S. Patent No. 11,403,911 before the effective filing date and analyze the color values using a mathematical color definition to determine a chip color from a color set comprising the third and fourth color in order to provide the predictable result of identifying the color of the chips using the data of the color sensor.
Response to Arguments
Applicant's arguments filed 11/20/25 have been fully considered but they are not persuasive.
Applicant argues that the there is insufficient motivation combine US 11,403,911 with Cammegh. Applicant argues that the Office Action appears to draw from the claimed feature itself.
In response to applicant' s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Claims 1-20 of U.S. Patent No. 11,403,911 discloses the claimed invention of pending claims 1-20 and but fails to teach that the color values are analyzed using a mathematical color definition to determine a chip color the chip therein is from a color set comprising the third color and the fourth color. Therefore claims 1-20 of U.S. Patent No. 11,403,911 discloses each of the claim limitation except for using a mathematical color definition to determine a chip color the chip.
The rejection draws from Applicant’s specification to interpret the claims in light of the specification. As indicated in the in rejection, “According to Applicant’s specification, examples of a mathematical definition can be a range, greater than a value, less than a value, etc. which define a particular color (e.g., red, green, etc.) or shade (e.g., white)”.
In an analogous art to gaming apparatus Cammegh discloses a gaming table that detects colors of a gaming chip. Cammegh discloses that the color of the chip is determine using a mathematical color definition (A lookup table with RGB values that is within range or closest match is used to identify and measure different. In addition, algorithm based on hue values can be used distinguish the chips. See page 5). This allows the computer process to digitally identify the color of the chips using the data of the color sensor.
Cammegh clearly teaches the motivation to use a mathematical color definition. The color definition is used identify distinguish the chips. Therefore, it would have been obvious to one of ordinary skilled in the art to modify Claims 1-20 of U.S. Patent No. 11,403,911 before the effective filing date and analyze the color values using a mathematical color definition to determine a chip color from a color set comprising the third and fourth color in order to provide the predictable result of identifying the color of the chips using the data of the color sensor.
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 Jasson H Yoo whose telephone number is (571)272-5563. The examiner can normally be reached M-F 9am-5pm.
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/JASSON H YOO/ Primary Examiner, Art Unit 3715