CTNF 18/648,775 CTNF 78751 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 41-58 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-16 of U.S. Patent No. 12,004,065 . Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of U.S. Patent No. 12,004,065 recite, with various wordings, similar claimed subject matters as specified in claims 41-58 of the instant application except limitation “the range extending device comprises a wallet”. Since a wallet is commonly known in the art as a type of case for receiving transaction cards; therefore, it would have been obvious to one skilled in the art to configure the wallet as the range extending device, for receiving the transaction card(s), for the advantage of expanding the application of the system to various card casings . 08-34 AIA Claim s 41-49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-6 of U.S. Patent No. 11,606,680 . Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6 of U.S. Patent No. 11,606,680 recite, with various wordings, similar claimed subject matters as specified in claims 41-49 of the instant application except limitation “the range extending device comprises a wallet”. Since a wallet is commonly known in the art as a type of case for receiving transaction cards; therefore, it would have been obvious to one skilled in the art to configure the wallet as the range extending device, for receiving the transaction card(s), for the advantage of expanding the application of the system to various card casings . Claim Rejections - 35 USC § 103 07-20-aia AIA The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 07-21-aia AIA Claim s 41-60 are rejected under 35 U.S.C. 103 as being unpatentable over Jain (9,304,555) in view of Suzuki (8,643,473) . Regarding claims 41 and 45, Jain discloses a system and method of extending a near field communication (NFC) range of an unpowered NFC transmitting device (See fig. 17 and col. 4 line 66 to col. 5 line 5, col. 30 lines 14-43), the method comprising: connecting to one of the plurality of NFC transmitting devices (i.e. transaction card 112) a range extending device (i.e. booster coupler 1804) (See fig. 18); and establishing NFC communication between the NFC transmitting device with extended communication range and a receiving device (i.e. reader) by positioning the receiving device within the extended communication range (See col. 30 line 52 to col. 31 line 7), wherein the range extending device is configured to be removably attachable to the body member of the connected NFC transmitting device so that the at least a portion of the NFC transmitter communication interface (i.e. antenna 1806) engages (i.e. magnetically coupling) a transmitter communication interface of the NFC transmitting device (i.e. antenna 1802) (See figs. 18A, 18B, 18D). However, Jain does not explicitly mention that the range extending device comprising a power source and an NFC signal amplifier. Since a range extending device (i.e. booster coupler for transaction card) comprising a power source and an NFC signal amplifier is known in the art as suggested by Suzuki (See figs. 5, 6A, 6B); therefore, it would have been obvious to one skilled in the art to modify, as suggested by Suzuki, the booster coupler of Jain for the advantage of expanding the capability of the system to various types of booster couplers. Claims 50 and 54 are rejected for the same reasons as set forth in claims 41 and 45, as apparatus. Regarding claims 42-44 and 46, Jain & Suzuki disclose as cited in claim 41. The system of Jain & Suzuki obviously allows a user to connect/disconnect multiple different transaction cards (i.e. first transaction card, second transaction card, or third transaction card) with the range extending device (i.e. the booster coupler), thereby to establish respectively extended communication ranges for communicating with the reader (See fig. 18D). Claims 51-53 and 55 are rejected for the same reasons as set forth in claims 42-44 and 46, as apparatus. Regrading claim 47, Jain & Suzuki disclose as cited in claim 46. Jain further discloses the range extending device comprises a case configured for receiving the transaction card into an interior space thereof, the transmitter communication interface being positioned within said interior space so that it is engaged by the transmitter NFC interface of the transaction card when the transaction card is received into the interior space (See figs. 18C, 18D). Claim 56 is rejected for the same reasons as set forth in claim 47, as apparatus. Regarding claim 48, Jain & Suzuki disclose as cited in claim 41. Jain further discloses the range extending device comprises an adhesive pad having at least a portion of the transmitter communication interface attached thereto, the adhesive pad being configured to be removably attachable to the body member of the NFC transmitting device (i.e. housing for receiving the transaction card) so that the at least a portion of the transmitter NFC interface engages the transmitter communication interface (See figs. 22A, 22C and col. 31 line 63 to col. 32 line 1, col. 34 lines 33-53). Regarding claim 49, Jain & Suzuki disclose as cited in claim 41. Jain further discloses the range extending device comprises a case configured for receiving the transaction card into an interior space thereof, the transmitter communication interface being positioned within said interior space so that it is engaged by the transmitter NFC interface of the transaction card when the transaction card is received into the interior space (See fig. 18C, 18D). However, they do not explicitly mention that the case is a wallet. Since a wallet is commonly known in the art as a type of case for receiving transaction cards; therefore, it would have been obvious to one skilled in the art to configure the wallet as the case of the system, as disclosed by Jain & Suzuki, for receiving the transaction card(s), for the advantage of expanding the application of the system to various card casings. Claim 57 is rejected for the same reasons as set forth in claim 49, as apparatus. Regarding claims 58-59, Jain discloses a smart card comprising: an NFC transmitting device (i.e. transaction card 112) with a transmitter NFC interface (See fig. 17 and col. 4 line 66 to col. 5 line 5, col. 30 lines 14-43); and a range extending device (i.e. booster coupler 1804) connected to the NFC transmitting device (See fig. 18D) such that an extended communication range is established for the NFC transmitting device (col. 30 line 52 to col. 31 line 7), wherein the range extending device comprises a planar body formed from a non-conductive material (See fig. 18C and col. 31 lines 10-29). However, Jain does not explicitly mention that the range extending device comprising a power source and an NFC signal amplifier. Since a range extending device (i.e. booster coupler for transaction card) comprising a power source and an NFC signal amplifier is known in the art as suggested by Suzuki (See figs. 5, 6A, 6B); therefore, it would have been obvious to one skilled in the art to modify, as suggested by Suzuki, the booster coupler of Jain for the advantage of expanding the capability of the system to various types of booster couplers. Regarding claim 60, Jain & Suzuki disclose as cited in claim 59. Jain further discloses the power source and the NFC signal amplifier are positioned within a depression in a surface of the planar body such that they do not extend outward past the surface (See fig. 18C) . 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for a listing of cited prior arts of record . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to TUAN A TRAN whose telephone number is (571)272-7858. The examiner can normally be reached Mon-Fri: 7:30 AM - 5:00 PM. 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, Wesley Kim can be reached at (571) 272-7867. 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /TUAN A TRAN/Primary Examiner, Art Unit 2648 Application/Control Number: 18/648,775 Page 2 Art Unit: 2648 Application/Control Number: 18/648,775 Page 3 Art Unit: 2648 Application/Control Number: 18/648,775 Page 4 Art Unit: 2648 Application/Control Number: 18/648,775 Page 5 Art Unit: 2648 Application/Control Number: 18/648,775 Page 6 Art Unit: 2648 Application/Control Number: 18/648,775 Page 7 Art Unit: 2648 Application/Control Number: 18/648,775 Page 8 Art Unit: 2648 Application/Control Number: 18/648,775 Page 9 Art Unit: 2648
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