DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-20 are presented for examination on the merits.
Double Patenting
2. The non-statutory 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 non-statutory obviousness-type 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); and 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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(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-l.jsp.
3. Claims 1-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-21 of US Patent No. (US 12002383 hereinafter ‘383). Although the conflicting claims are not identical, they are not patentably distinct from each other because an electronic license plate comprising: a display configured to mount on a front and/or back exterior of the vehicle; a communication interface configured to receive vehicle registration and/or identification information unique to said vehicle, said communication interface also being configured to receive a communication message from a transmitter located remotely from said vehicle; and computer processing hardware configured to perform the steps of: displaying, during a first time period, a first content on the display based on the vehicle registration and/or identification information, and displaying, during a second time period, a second content on the display different than said first content, wherein said second content is based on said message received from the remotely located transmitter are conventional prior art features and the use of such features in the claims of application 18658847 would have been obvious and would not have involved a patentable invention.
The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Allowable Subject Matter
4. As to claims 1-20, there is no prior art to reject claims 1-20. However, applicant should resolve the Double patent rejection to place the application in condition for allowance. An update search needs to be performed after the next response from applicant.
Response to Argument
a. Applicant argues:
5. Claims 1-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-21 of US Patent No. (US 12002383). For the following reasons, the rejection is respectfully traversed.
The Examiner asserts that the claims of this application are not patentably distinct from the claims of the prior granted '383 patent, arguing that the "patent claims include all of the limitations of the instant application claims. This is clearly an erroneous statement. The claims of the instant application all recite the feature of "a communication interface" having particular features, which is not found in the claims of the '383 patent. The Examiner has not shown how the addition of the "communication interface" is an obvious modification, and hence the rejection for non-statutory obviousness-type double patenting is improper, and should be withdrawn. Accordingly, the claims are allowable.
In consideration of the foregoing analysis, it is respectfully submitted that the present application is in a condition for allowance and notice to that effect is hereby requested. If it is determined that the application is not in a condition for allowance, the examiner is invited to initiate a telephone interview with the undersigned attorney to expedite prosecution of the present application.
Examiner reply:
6. Applicant argument filed on 02/17/2026 have been fully considered but are found unpersuasive. The applicant argues that the rejection for non-statutory double patenting is improper because the instant claims recite a “transmitter interface” and a “transmitter located remotely,” features which the applicant contends are not found in the claims of US patent No. 12/002383.
The examiner maintains the instant claims are patentably indistinct variation of the ‘383 patent claims. While it is acknowledged that the ‘383 claims focus on the method of rendering the content and obtaining registration information, the addition of a “communication interface” and receiving data from a “remotely located transmitter” represents a well-known and obvious modification in the field of electronic displays and vehicle telematics.
The ‘383 patent claims the step of “obtaining vehicle registration and or vehicle identification information.” In the context of electronic license plates, providing a standard communication interface (such as wireless transmitter/receiver) to receive the data from a remote source is common and predictable method of “obtaining” such information.
Naddeo (US 6404327) an evidentiary reference discloses in Col. 4, Lines 22-50, (a receiving unit 30 is provided, to receive informational transmissions from a central computer governmental agency computer system 46, presumably at the Department of Motor Vehicles (DMV), or law enforcement agencies. The central computer includes a database which maintains information concerning vehicle registrations, including registration date, registration (plate) numbers, state of issue, expiration date, as well as special status data, such as "stolen", "felony", "suspended", and the like. In addition, common status data, such as inspection status, can be easily stored. The receiving unit is located within the housing, and may use any suitable wireless information communicating technology, including those used in pagers, wireless PDAs and wireless LANS. It would be appreciated by one of ordinary skill in the art that the manner in which a packet of data can be transmitted and received is well known). Since the statutory bases (NDP) and the primary reference (‘383 patent) have not changed, providing additional evidence or a further explanation of why a variation is “obvious” does not constitute a new ground. The applicant has been given a fair opportunity to react to the core of the rejection: that the instant claims are patentably indistinct from ‘383 patent.
Therefore, it would have been obvious for one having ordinary skill in the art one would have been motivated to include a communication interface in the ‘383 system to automate the “obtaining” of registration data. Relaying on remote transmitter instead of local manual input provides the predictable benefit of real-time, handsfree updates, which is a common goal in vehicle telematics. Thus, hardware limitations in the instant claims are merely the “predictable use of prior art elements according to their established function.” See MPEP 2143. In the evidentiary showing made by the examiner to support a rejection is not a new ground of rejection. See In re Boon, 439 F.2d 724, 727-728 (CCPA 1971), citing In re Ahlert, 424 F.2d 1088, 1092 (CCPA 1970).
It obvious to include a communication interface to allow the display to be updated remotely. This is a routine engineering choice to enhance the utility of an electronic display, facilitating real time data updates without requiring physical access to the vehicle.
Because the addition of these hardware components (interface and transmitter) provides only a predictable improvement to the method already claimed in the ‘383 patent, the instant claims do not rise to the level of a patentably distinct invention. The differences are considered obvious variations of the same inventive concepts.
Accordingly, the rejection of claim 1-20 under the judicially created doctrine of non-statutory double patenting is maintained.
Citation of pertinent Prior Arts
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: see PTO-892 Notice of References Cited.
Conclusion
8. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Fekadeselassie Girma whose telephone number is (571) 270-5886. The examiner can normally be reached on Monday thru Friday, 8:30 – 5:00. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph H. Feild can be reached on (571) 272-4090. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Fekadeselassie Girma/
Primary Examiner Art Unit 2689