DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This is the Final Office Action in response to the Amendment filed on August 17, 2026, for Application No. 18/628,414, filed on April 05, 2024, title: “Payments In Communication Systems”.
Status of the Claims
Claims 21-40 were pending. By the 08/17/2026 Amendment, claims 21, 24, 27, 31, 36, and 39 have been amended, claims 23, 26, 33, and 38 have been cancelled without prejudice, and no new claim has been added. Claims 1-20 were previously cancelled without prejudice. Accordingly, claims 21-22, 24-25, 27-32, 34-17, and 39-40 are pending in this application and have been examined.
Priority
This Application was filed on 04/05/2024 and is a CON of US Application No. 17/472,980 filed on 09/13/2021 (Patented No. 11,978,046) which is a CON of US Application No. 16/437,024 filed on 06/11/2019 (Patented No. 11,120,440) which is a CON of US Application No. 15/406,331 filed on 01/13/2017, which is a DIV of US Application No. 13/896,253 filed on 05/16/2013 (Patented No. 9,582,789) and has Provisional Application 61/801,277 filed on 03/15/2013.
For the purpose of examination, the 03/15/2013 is considered to be the effective filing date.
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 21-22, 24-25, 27-32, 34-17, and 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent No. 11978046, claims 1-12 of US Patent No. 11120440, and claims 1-21 of US Patent No. 9582789. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present Application recite substantially the same limitations as the claims of the Patents with minor variations that would have been obvious to one of ordinary skills in the art. Also, both the Application and Patents are directed to the same invention, have the same inventors, and are commonly owned. Therefore, this rejection is deemed necessary.
Response to Arguments
Claim Rejections - 35 USC § 101
Applicant’s amendments and arguments are persuasive, hence, the rejection is withdrawn.
Claim Rejections - 35 USC § 102/103
An updated prior art search did not identify any art, individually or in combination with others, that teaches each and every element of the claims at this time.
Conclusion
claims 21-22, 24-25, 27-32, 34-17, and 39-40 are rejected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 HAI TRAN whose telephone number is (571)272-7364. The examiner can normally be reached Monday-Friday, 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M. Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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HAI TRAN
Primary Examiner
Art Unit 3695
/HAI TRAN/Primary Examiner, Art Unit 3695
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