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 .
Claim Objections
Claims 1 and 16 are objected to because of the following informalities:
Claim 1, lines 20-21, Examiner suggests replacing “at least one of the reference digital fingerprint” with –at least one of the reference digital fingerprints--.
Claim 16, lines 3-4, Examiner suggests replacing “at least one of the reference digital fingerprint” with –at least one of the reference digital fingerprints--.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 11,983,957. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims is substantially similar and recites similar limitations. It is because the claims in the continuation application are broader than the ones in the patent application, In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982).
For example, claim 1 of the present application recites “determine”, “compare”, “filter”, and “determine” steps which are the same as the patented claim 1. Furthermore, the cited patent has more limitations, thereby encompassing the present application's limitations.
Therefore, claim 1 of the present invention is broader than claim 1 of the patented application.
The prior art does not appear to teach or make obvious the subject matter of the claims.
However, the nonstatutory double patenting rejection must be overcome.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
The prior art made of record and considered pertinent to the applicant's disclosure, taken individually or in combination, does not teach the claimed invention having the following limitations, in combination with the remaining claimed limitations.
Regarding independent claim 1, the closest prior art does not teach or suggest the claimed invention having “for at least one of the one or more points of interest represented by the sample digital fingerprint of the physical object to be authenticated, compare one or more feature vectors associated with respective ones of the one or more points of interest represented by the sample digital fingerprint with one or more feature vectors associated with one or more points of interest of a plurality of reference digital fingerprints that represent one or more reference physical objects; for each of a number of the one or more points of interest of the plurality of reference digital fingerprints that has a respective feature vector that matches within a first range with at least one of the feature vectors associated with respective ones of the one or more points of interest represented by the sample digital fingerprint, filter the matches based at least in part on the non-positional characterization values; and determine whether the sample digital fingerprint sufficiently matches at least one of the reference digital fingerprint based on both the matching of the feature vectors within the first range and the filtering of the matches based at least in part on the non-positional characterization values within a second range”, and a combination of other limitations thereof as recited in the claim.
Regarding dependent claims 2-19, the claims have been found allowable due to its dependencies to claim 1 above.
Conclusion
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/VAN D HUYNH/Primary Examiner, Art Unit 2665