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 .
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/30/2026 has been entered.
Claims amended: 1-5, 7, 9, 11-16, 18 and 20
Claims canceled: 6, 8, 10, 17 and 19
Claims newly added: 22-26
Claims pending: 1-5, 7, 9, 11-16, 18 and 21-26
Response to Arguments
2. Applicant's arguments filed 09/29/20258 have been fully considered but they are not persuasive.
Applicant(s) requested the Double Patenting rejection to be held in abeyance until allowable subject matter is indicated.
Applicant argues “Smith does not teach or suggest a collective protective apparatus or a physical collectible object…”
Examiner respectfully disagrees with the above argument. A client computer or computer is a collective apparatus which allow the user to update image into server. A physical collectible object is being disclosed by Burns (new reference).
Applicant also argues “it does not or suggest authenticating two distinct identifier…”
Examiner respectfully disagree with the above argument. The first authentication is handshake between the two computer, the second authentication is account access.
Double Patenting
A rejection based on double patenting of the "same invention" type finds its support in the language of 35 U.S.C. 101 which states that "whoever invents or discovers any new and useful process may obtain a patent therefor (Emphasis added). Thus, the term "same invention," in this context, means an invention drawn to identical subject matter. See Miller V. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention SO they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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/apdlving-orline/eterminal-disclaimern
3. Claims 1-5, 7, 9, 11-16, 18 and 21-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/811,052 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant application in claims in both application include a first panel, the first panel including a front side of and back size, the first panel including at least a transparent portion; and a rear panel coupled to the first panel including at least four supporting members, each of the at least four supporting members including a flat edge to enable positioning of the collectable object, the flat edge of a first two of the supporting members being parallel to each other, the flat edge of a second two of the supporting members being parallel to each other and perpendicular to the first two of the support members, a cavity being at least between the flat edges of the four supporting members, the cavity of holding the collection object. Instant application also includes the security feature being beneath a mask such that the security feature is not visible from the front of the first panel; however, 052 includes a mask coupled to the back side of the first panel, the mask being opaque and extending around a perimeter of the back side of the first panel, the mask covering an inside of the protective apparatus between the first panel and the second panel. Therefore, it would have been obvious to one ordinary skill in the art to modify the mask in the 052 to arrive the same invention as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
4. Claim(s) 1-2, 7, 12-13 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (Pub. No. US 2020/0341689 A1) in view of Burn et al. (Pub. No. US 2019/0188254 A1).
As to claim 1, Smith discloses the method comprising:
receiving, from a first user, account identification information associated with the first user (user account management and authentication) (paragraph 0040);
authenticating, by a collectible object management system, the first user based on the received account identification information associated with the first user (user account management and authentication) (paragraph 0040);
receiving, from the first user, a first collectible protective apparatus identifier (device, paragraph 0040)) and a first collectible object identifier (paragraph 0040, object), the first collectible protective apparatus identifier being associated with a first collectible protective apparatus, the first collectible object identifier being associated with a first collectible object protected by the first collectible protective apparatus (object lists and object metadata to users, users are account and device) (paragraph 0040);
authenticating, by the collectible object management system, the first collectible protective apparatus identifier and the first collectible object identifier (device authentication validate objects...) (paragraph 0040);
providing, by the collectible object management system, a user interface associated with the first collectible object (interface) (paragraph 0092).
Smith does not explicitly disclose the first collectible object identifier associated with a first physical collectible object protected by the first collectible protective apparatus, receiving a request to upload a first digital media to the collectible management system, the digital media being associated with the first collectible object; and storing the first digital media to the collectible management system.
However, Burns discloses receiving via the user interface a request to upload a first digital media to the collectible management system, the first digital media associated with the first physical collectible object; and storing the first digital media to the object collectible management system (populating at least one form with evidentiary categories with audio and photographic data form a field study hosted on a cloud-based project management platform; a person conducting a field study collecting digital audio on a filed recording device and visual data on a photo or video capture device uploading a digital audio input into a field recording device and a digital visual input form a photo or video capture device to a cloud-based file storage used in direct conjunction with the said cloud-based project…) (claim 2). Burn with a user interface allow uploading digital photo or video and stored in to cloud-based storage. In Burn visual data is physical collectible object and photo of data is upload to project management platform same as object collectable management system. Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the instant application to modify teaching of Smith to include receiving via the user interface a request to upload a first digital media to the collectible management system, the first digital media associated with the first physical collectible object; and storing the first digital media to the object collectible management system as disclosed by Burns in order to store the collectible object.
As to claim 2, Martin discloses the method of claim 1, wherein the first collectible object is stored within the first collectible protective apparatus (a substantial number of objects may be instantiated to the system as having a social identity, and may be assigned unique SIO codes. Information, including image, textual and audio information, may be uploaded to the system to be stored and usable regarding the objects registered) (paragraph 0048).
As to claim 7, Martin discloses the method of claim 6, wherein the first collectible protective apparatus identifier is a numerical identifier (machine MAC number) (paragraph 0116).
Claim 12 is rejected under the same reason as to claim 1, Martin disclosed a collectible object management system comprising:
at least one processor (computers) (paragraph 0029); and at least one memory (physical media) (paragraph 0029) including instructions (instruction) (paragraph 0029) to configure the at least one processor to instruct the collectible object management system perform (user manager 221) (paragraph 0029) a method.
Claim 13 is rejected under the same reason as to claim 2.
Claim 21 is rejected under the same reason as to claim 1, Martin discloses a non- transitory computer readable medium (physical media) (paragraph 0029) comprising
instructions (instruction) (paragraph 0029) executable by one or more processors (computers) (paragraph 0029) to perform a method.
5. Claim(s) 4-5 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (Pub. No. US 2020/0341689 A1) in view of in view of Burns et al. (Pub. No. US 2019/0188254 A1) and further in view of Liu et al. (Pub. No. US 2021/0351919 A1).
As to claim 4, both Smith and Burns disclose the method of claim 1 excepting for wherein the collectible object identifier is located on a grading certificate. However, Liu discloses wherein the collectible object identifier is located on a grading certificate (... it is an object present invention to provide a gem certificate, a germ grading report and a guarantee which are capable guaranteeing not only precious stone and precious metals which are used in jewelry...) (col. 2, lines 10-21). This suggests the claim language wherein the collectible object identifier is located on a grading certificate. Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the instant application to modify teach of both Smith and Burns to include wherein the collectible object identifier is located on a grading certificate as disclosed by Liu in order to provide grading certificate.
Claim 15 is rejected under the same reason as to claim 4.
As to claim 5, both Smith and Burns disclose the method of claim 4 excepting for wherein the grading certificate is located in an upper portion of the collectible protective apparatus. However, Liu discloses wherein the grading certificate is located in an upper portion of the collectible protective apparatus (fig. 3, discloses the grading report and grading is in upper of the image). This suggests the claim limitation wherein the grading certificate is located in an upper portion of the collectible protective apparatus. Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the instant application to modify teaching of both Smith and Burns wherein the grading certificate is located in an upper portion of the collectible protective apparatus as disclosed by Liu in order to provide .
Claim 16 is rejected under the same reason as to claim 5.
5. Claim(s) 3 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (Pub. No. US 2020/0341689 A1) in view of in view of Burn et al. (Pub. No. US 2019/0188254 A1) and further in view of Willis et al. (Pub. No. US 2014/0325389 A1).
As to claim 3, Smith and Burns disclose the method of claim 1 excepting for wherein the first collectible protective apparatus comprises: a first panel, the first panel including a front side and a back side, the first panel including at least a transparent portion; and a rear panel coupled to the first panel, the rear panel including a front side and a back side, a cavity being at least between the flat edges of the four supporting members, the cavity holding the physical collectible object.
However, Willis discloses (the advertising display panel to be installed inside the other standard display panels basically comprises a transparent rigid fixed portion apposite another also transparent but mobile portion, one of the two holding a mask made of opaque areas and the other a set of fragmented translucent images...) (paragraph 0013). This suggests the claimed limitation wherein the first collectible protective apparatus comprises: a first panel, the first panel including a front side and a back side, the first panel including at least a transparent portion; and a rear panel coupled to the first panel, the rear panel including a front side and a back side, the front side of the rear panel including at least four supporting members, each of the at least four supporting members including a flat edge to enable positioning of the collectible object, the flat edge of a first two of the supporting members being parallel to each other, the flat edge of a second two of the supporting members being parallel to each other and perpendicular to the first two of the supporting members, a cavity being at least between the flat edges of the four supporting members, the cavity capable of holding the collectible object" in conjunction with preceding claim language. Therefore, it would have been obvious to one ordinary skill in the art before the effective filing date of the instant application to modify teaching of Smith and St. Martin to include wherein the first collectible protective apparatus comprises: a first panel, the first panel including a front side and a back side, the first panel including at least a transparent portion; and a rear panel coupled to the first panel, the rear panel including a front side and a back side, the front side of the rear panel including at least four supporting members, each of the at least four supporting members including a flat edge to enable positioning of the collectible object, the flat edge of a first two of the supporting members being parallel to each other, the flat edge of a second two of the supporting members being parallel to each other and perpendicular to the first two of the supporting members, a cavity being at least between the flat edges of the four supporting members, the cavity capable of holding the collectible object" in conjunction with preceding claim language as disclosed by Willis in order to provide apparatus for used for collection.
Claim 14 is rejected under the same reason as to claim 3.
6. Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (Pub. No. US 2020/0341689 A1) in view of in view of Burn et al. (Pub. No. US 2019/0188254 A1) and further in view of Sitriek et al. (Pub. No. US 2012/0284605 A1).
As to claim 11, Smith and Burns disclose the method of claim 1 excepting receiving, from a third user, a request to view the first digital media associated with the first collectible object and providing to the third user access to view the first digital media, the third user not having access to change the first digital media without the first collectible protective apparatus identifier and the first collectible object identifier. However, Sitriek discloses receiving, from a third user, a request to view the first digital media associated with the first collectible object and providing to the third user access to view the first digital media, the third user not having access to change the first digital media without the first collectible protective apparatus identifier and the first collectible object identifier (memory storing data for each one of the plurality of users in a respective one of a plurality of data layers for a at least one said subgroup of users, for use in generating a first combined display presentation, for viewing by only those said users in the subgroup of users) (paragraph 0176). This suggests the claim language receiving, from a third user, a request to view the first digital media associated with the first collectible object and providing to the third user access to view the first digital media, the third user not having access to change the first digital media without the first collectible protective apparatus identifier and the first collectible object identifier. Therefore, it would have been obvious to one ordinary skill in the art before the effective filing data of to modify teaching of Smith and Burns to include receiving, from a third user, a request to view the first digital media associated with the first collectible object and providing to the third user access to view the first digital media, the third user not having access to change the first digital media without the first collectible protective apparatus identifier and the first collectible object identifier as disclosed by Sitriek in order to view the object.
Claim 20 is rejected under the same reason as to claim 11.
7. Claim(s) 9 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (Pub. No. US 2020/0341689 A1) in view of in view of Burn et al. (Pub. No. US 2019/0188254 A1) and further in view of Frisbee et al. (US. Patent No. US 12,141,817 B2)
As to claim 9, both Smith and Burns disclose the method of claim 3 excepting for wherein the collectible protective apparatus further comprises: a security feature between the first panel and the rear panel, the security feature including at least one of an NFC chip and an RFID chip, the security feature being is not visible from a front of the first panel, wherein the NFC chip or the RFID chip include the first collectible protective apparatus identifier or the first collectible object identifier. However, Frisbee discloses the collectible protective apparatus further comprises: a security feature between the first panel and the rear panel, the security feature including at least one of an NFC chip and an RFID chip, the security feature being is not visible from a front of the first panel, wherein the NFC chip or the RFID chip include the first collectible protective apparatus identifier or the first collectible object identifier (the collectable 500 is place inside an interior of a card holder 570, which is typically made from two-piece clear plastic housing that irreversibly locks together to provide a secured housing that is extremely difficult or impossible to separate… near field chip…) (col. 21, lines 55-66). Therefore, it would have been obvious to one ordinary skill in the art before the affective filing date of the instant application to modify teaching of Smith and Burns to include wherein the collectible protective apparatus further comprises: a security feature between the first panel and the second panel, the security feature including at least one of an NFC chip and an RFID chip, the security feature being beneath a mask such that the security feature is not visible from the front of the first panel, wherein the NFC chip or the RFID chip provide the first collectible protective apparatus identifier as disclosed by Frisbee in order communication with other device.
Claim 18 is rejected under the same reason as to claim 9.
8. Claim(s) 22-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frisbee et al. (US. Patent No. US 12,141,817 B2) in view of
As to claim 22, (New) Frisbee discloses a method comprising:
Receiving a request to access information associated with a physical collectable object protected by a collectable protective apparatus (card holder 570) (col. 21, lines 55-58), the physical collectible apparatus object (collectable card 500) (col. 21, line 55) associated with a collectible object identifier, the collectible apparatus associated with a collectible protective apparatus identifier (the collectable card, identification number…) (col. 21, 60-65), the collectible apparatus identifier including a near field communication (NFC) chip (near field communication (NFC) chip may be included in the card holder 570.
Providing the information associated with the physical collectable object (a smartphone may be used access information stored in the NFC chip, which can include a link to a webpage that provides information about the collectible card 500) (col. 21, lines 65-67 col. 22, lines 1-3).
Frisbee does not explicitly disclose the NFC chip including the collectable object identifier, the collectable protective apparatus identifier, or both the collectable object identifier and the collectable protective apparatus identifier. However, Frisbee disclose a smartphone may be used access information stored in the NFC chip, which can include a link to a webpage that provides information about the collectible card 500 (col. 21, lines 65-67 col. 22, lines 1-3) which the stored information in NFC chip might also include the collectable object identifier, the collectable protective apparatus identifier, or both the collectable object identifier and the collectable protective apparatus identifier. Therefore, it would have been obvious to one ordinary skill in the art before the effective fling date of the instant application to include the stored information in NFC chip might also include the collectable object identifier, the collectable protective apparatus identifier, or both the collectable object identifier and the collectable protective apparatus identifier to again access to the collectible object.
As to claim 23, (New) the method of claim 22 wherein the request is from an NFC-enabled mobile device and the request is made by NFC-enabled mobile device being brought in proximity to the collectible protective apparatus (a smartphone may be used access information stored in the NFC chip, which can include a link to a webpage that provides information about the collectible card 500) (col. 21, lines 65-67 col. 22, lines 1-3).
As to claim 24, (New) Frisbee discloses the method of clam 22, further comprising authorizing the request based on the collectible object identifier, the collectible protective apparatus identifier, or both the collectible object identifier and the collectible protective apparatus identifier
As to claim 25, (New) Frisbee discloses the method of claim 22 wherein the NFC chip include in the collectible protective apparatus identifier is not visible (the collectable 500 is place inside an interior of a card holder 570, which is typically made from two-piece clear plastic housing that irreversibly locks together to provide a secured housing that is extremely difficult or impossible to separate… near field chip… in card holder 570) (col. 21, lines 55-66) (Frisbee is silent about whether the chip NFC is visible, examiner would interpret is NFC chip is not visible).
As to claim 26, (NEW) Frisbee discloses the method of claim 22 wherein the physical collectible object is a physical collectable card, the collectable apparatus includes a first panel including a first transparent portion through which a front of the card is visible and a second panel including a second transparent portion through which a back of the card is visible, the physical collectable card positioned between the first panel and the second panel (the collectable 500 is place inside an interior of a card holder 570, which is typically made from two-piece clear plastic housing that irreversibly locks together to provide a secured housing that is extremely difficult or impossible to separate… near field chip… in card holder 570) (col. 21, lines 55-66) (Frisbee is silent about whether the chip NFC is visible, examiner would interpret is NFC chip is not visible).
Conclusion
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BAOQUOC N. TO
Examiner
Art Unit 2154
/BAOQUOC N TO/Primary Examiner, Art Unit 2154
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