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 .
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 6-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-18 of copending Application No. 18/096286 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially similar subject matter. The instant claims are broader than the claims of the ‘286 reference application, and all limitations of the instant claims are found in the ‘286 claims. Therefore, the claimed invention is not patentably distinct from the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 6-10 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 6,021,949 to Boiron (hereinafter Boiron).
Regarding claim 6, Boiron teaches a gaming currency (3:37-39, Fig. 1, casino chip 10) comprising:
a first capsule member made of resin (6:18-27, Fig. 6a, plastic cover 62);
a second capsule member made of resin (6:18-27, Fig. 6a, hollow disk 60);
an EM wire member (5:53-65, an oriented film of alloy sensitive to electromagnetic radiation is fixed inside the body of chip 10);
an RFID part (3:39-58, 5:24-46, Fig. 4, electronic identification device 49);
a first decal made of resin (4:29-52, 5:12-24, Fig. 3, label 46 which comprises one or more sheets of plastic which are laminated on one of the faces of the body of chip 10);
a second decal made of resin (4:29-52, 5:12-24, Fig. 3, label 48 which comprises one or more sheets of plastic which are laminated on the one of the faces of the body of chip 10); and
a peripheral portion made of resin (5:12-46, annular plastic ring 42),
wherein: the first capsule member and the second capsule member are joined to form a capsule, the capsule defining a sealed space inside (6:18-27, Fig. 6a, plastic cover 62 and hollow disk 60 are fastened together to form chip 10),
the RFID part includes an IC chip configured to readably store information (3:66-4:28, electronic identification device 49 includes an electric circuit consisting of a memory carrying information such as a numeric or alphanumeric identification code) and an antenna connected to the IC chip (3:66-4:28, electronic identification device 49 includes an antenna capable of transmitting and receiving data),
the peripheral portion is disposed around a periphery of the capsule (5:12-24, annular ring 42 is which is over-molded over a central disk 44),
the first decal and the second decal are provided on an outside of the first capsule member and the second capsule member respectively (4:29-52, 5:12-24, Fig. 3, label 46 and label 48 which comprises one or more sheets of plastic which are laminated on each side of chip 10),
the RFID part is disposed within the sealed space defined by the capsule (3:39-58, 5:24-46, Fig. 4, electronic identification device 49 is embedded in disk 44 which is molded within chip 10),
the EM wire member is disposed between the first decal and the second decal (5:53-65, an oriented film of alloy sensitive to electromagnetic radiation is fixed inside the body of chip 10 (i.e., between labels 46 and 48 which are disposed on either side of chip 10)),
the EM wire member and the RFID part are disposed apart from each other in a thickness direction of the gaming currency (3:39-58, 5:24-46, 5:53-65, Fig. 6a, electronic identification device 49 is embedded in disk 44 and the oriented film is adhered to the surface of disk 44 via labels 46/48 (i.e., the thickness of the disk 44 separates electronic identification device 49 and the oriented film), and
a presence of the gaming currency is detectable by the EM wire member and the information is readable from the RFID part (1:53-2:4, 5:53-65, the oriented film is detected by a detection gateway and the electronic identification device 49 allows the chip to permanently identified).
Regarding claim 7, Boiron teaches wherein the EM wire member and the RFID part are arranged to overlap each other when viewing from the thickness direction (3:39-58, 5:24-46, 5:53-65, Fig. 6a, electronic identification device 49 is embedded in disk 44 and the oriented film is adhered in the thickness direction to the surface of disk 44 via labels 46/48).
Regarding claim 8, Boiron teaches wherein the EM wire member is disposed within the sealed space defined by the capsule (5:53-65, an oriented film of alloy sensitive to electromagnetic radiation is fixed inside the body of chip 10).
Regarding claim 9, Boiron teaches wherein the EM wire member is held by a first sheet-like base member to form an EM sheet, and
the EM sheet is fixed to the first capsule member or the second capsule member (5:53-65, the oriented film of alloy sensitive to electromagnetic radiation is incorporated into labels 46 and 48 and are adhesively bonded to disk 44 which is integrated within the body of chip 10).
Regarding claim 10, Boiron teaches wherein the RFID part is held by a second sheet-like base member to form an RFID sheet, and
the RFID sheet is fixed to the first capsule member or the second capsule member (2:21-30, electronic identification device 49 is arranged between two plastic wagers within the body of chip 10).
Regarding claim 15, Boiron teaches wherein the EM wire member includes a group of first wire members arranged in a same direction as each other on a first surface of the first sheet-like base member and a group of second wire members arranged in a direction crossing the group of first wire members on a second surface of the first sheet-like base member (5:53-65, labels 46 and 48 carry the oriented film thereon and are arranged at 90 degrees from each other to improve detection).
Regarding claim 16, Boiron teaches wherein the first decal and the second decal are printed with casino information (5:12-24, labels 46 and 48 bear a pattern, wherein patterns are varied in terms of design to allow for visual identification, the examiner interprets such patterns as capable of including casino information).
Regarding claim 17, Boiron teaches wherein the IC chip is configured to store at least any one of a chip ID and denomination information of the gaming currency (3:66-4:28, electronic identification device 49 includes an electric circuit consisting of a memory carrying information such as a numeric or alphanumeric identification code associated with the chip).
Regarding claim 18, Boiron teaches wherein the EM wire member and the RFID part are built in the capsule in a non-contact state (3:39-58, 5:24-46, 5:53-65, Fig. 6a, electronic identification device 49 is embedded in disk 44 and the oriented film is adhered to the surface of disk 44 via labels 46/48).
Claim Rejections - 35 USC § 103
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.
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Boiron.
Regarding claim 11, Boiron teaches wherein the EM wire member is held by a first sheet-like base member to form an EM sheet (5:53-65, the oriented film of alloy sensitive to electromagnetic radiation is incorporated into labels 46 and 48 and are adhesively bonded to disk 44 which is integrated within the body of chip 10),
the RFID part is held by a second sheet-like base member to form an RFID sheet (2:21-30, electronic identification device 49 is arranged between two plastic wagers within the body of chip 10), and
the RFID sheet includes at least one adhesive surface (3:39-58, a rigid assembly is formed by placing electronic identification device 49 between protective wafers and covering sheets and 24 which are adhesively bonded or laminated) and is adhered to the EM sheet (5:53-65, the oriented film of alloy sensitive to electromagnetic radiation is incorporated into labels 46 and 48 and are adhesively bonded to disk 44 to which electronic identification device 49 is adhered) and the first capsule member or the second capsule member (2:22-30, the body of the chip is laminated with the electronic identification device 49 being arranged within the body of the chip).
Although Boiron does not specifically disclose that the RFID sheet includes an adhesive surface larger than the EM sheet or that the RFID sheet attaches to the capsule over the EM sheet with the adhesive surface, it would have been an obvious design choice to one of ordinary skill in the art aiming to secure both internal components (e.g., the oriented film and the electronic identification device) to the rigid chip body via a single adhesive layer to design said adhesion layer to be larger than the innermost component (i.e., the oriented film) in order to improve cohesion between the adhesive layer and the capsule (5:3-11).
Regarding claim 13, Boiron discloses that which is discussed above.
Although Boiron does not specifically disclose that the EM wire member is a circular wire member of a one lap, or two or more laps with no end, it would have been an obvious design choice to one of ordinary skill in the art aiming to maximize the length of the sensing element within a confined circular area (i.e., the gaming chip) to utilize a similar circular coil thereby enhancing the detection efficiency of the wire.
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Boiron in view of U.S. 7,044,373 to Garber et al. (hereinafter Garber).
Regarding claim 12, Boiron discloses that which is discussed above, but lacks in explicitly teaching that the EM wire member is made of amorphous material.
In a related disclosure, Garber teaches an RFID system (3:55-4:20), including a magnetically responsive element which is made of a low coercive force, high permeability, ferromagnetic material including high performance amorphous metals (4:21-53, magnetically-responsive element is preferably made of a low coercive force, high permeability ferromagnetic material such as a high-performance amorphous metals).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize the amorphous metal magnetically responsive element, as taught by Garber, as the alloy for the oriented film, as taught by Boiron, in order to yield the predictable result of providing improved magnetic response.
Regarding claim 14, Boiron discloses that which is discussed above, and however, does not specifically disclose that:
the EM sheet is formed, and the EM wire member is a plurality of wire members arranged in a same direction as each other on the first sheet-like base member.
In a related disclosure, Garber teaches an RFID system (3:55-4:20), including a magnetically responsive element which is embodied as strips or marker assemblies (4:21-5:2, 8:64-9:16, magnetically-responsive element is made as strips or marker assemblies (e.g., Tattle-Tape) which is used a linear dipole antenna and is assembled as a long linear strip marker (i.e., the magnetic components are arranged in a linear direction (i.e., parallel direction)).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to integrate the marker assemblies (e.g. Tattle-Tape), as taught by Garber, into the chip, as taught by Boiron, in order to yield the predictable result of providing improved detection coverage and achieve dual-status functionality (See Garber, 4:21-5:2).
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,735,742 to French (hereinafter French).
Regarding claim 1, French teaches a management system configured to manage a gaming currency to be used for betting in a game in a casino (abstract, A fully automated accounting system accurately and automatically monitors and records all gaming chip transactions in a casino), wherein the gaming currency includes a built-in EM wire member and a built-in RFID part configured to store information (4:28-30, tag 17 includes an electronic circuit which includes an electronic chip and an antenna), the management system comprising:
an RFID reading system configured to read information from the RFID part (4:10-27, tag 17 carries electronically ascertainable information about the chip, some of which is in read-only format and some of which is in read-write (changeable) format, as will be described in greater detail below. The read-only information may include the chip's identification number and the value of the chip in the casino. The changeable or updatable information may include the transactional history of the chip within the casino, for example, and/or a voidable casino security code), wherein the RFID reading system is configured to: read the information from the RFID part of the gaming currency; or read the information from the RFID part of the gaming currency detected by detecting the EM wire member by the EM detecting system (abstract, The system is capable of reporting the total value of the gaming chips at any location, as well as the value of any particular transaction at any gaming table or at the cashier’s cage as well as the vault).
While French teaches the ability to track chips at any location throughout the casino (abstract, The system is capable of reporting the total value of the gaming chips at any location, as well as the value of any particular transaction at any gaming table or at the cashier’s cage as well as the vault), French does not expressly teach a gate including an EM detecting system configured to detect presence of the gaming currency possessed by a passing person passing therethrough relative to the currency declared by a passing person. Regardless, it would have been obvious to one of ordinary skill in the art before the effective date to modify the system of French to include the taught antennas in gate areas through which people pass in order to ensure that the number of chips detected matches the number declared by the carrier of the chips to prevent theft of chips.
Regarding claim 2, French teaches or suggests wherein the management system is a system configured to manage the gaming currency permitted to be brought out to outside of the gate or brought in to inside of the gate on condition of a declaration, the RFID reading system is configured to read the information from the RFID part of the gaming currency declared by the passing person (see above), and the management system further comprises a registering device configured to store in a database (e.g., database of the system 31) the information of the gaming currency read by the RFID reading system as information on the gaming currency related to bringing-out or bringing-in (e.g., the chips passing through parts of the casino such as the cashier’s cage, vault, and/or an entrance to the casino).
Regarding claim 3, French teaches or suggests wherein the RFID reading system is configured to read the information from the RFID part of the gaming currency to be brought in to the inside of the gate, the registering device is configured to store in the database the information of the gaming currency to be brought out to the outside of the gate by the passing person as the information of the gaming currency related to the bringing-out, and the management system further comprises an inspecting device configured to inspect whether the information of the gaming currency to be brought in to the inside of the gate by the passing person and read by the RFID reading system is stored in the database as the information of the gaming currency related to the bringing-out (see above regarding claims 1 and 2).
Regarding claim 4, French teaches or suggests wherein the management system is configured to prohibit the gaming currency from being brought out to outside of the gate or brought in to inside of the gate, the RFID reading system is configured to read the information from the RFID part of the gaming currency detected by detecting the EM wire member by the EM detecting system, and the management system further comprises an inspecting device configured to inspect whether the information of the gaming currency read by the RFID reading system is stored in a database (10:22-29, On a casino-wide basis, counterfeit chips, or chips having a suspect transactional history (i.e. a chip appearing directly on the gaming table from the vault, without passing through the cashier's cage), are recognizable by the system at the games, in the cage, in the chip bank, or in the vault, and may be invalidated either by nullifying the security code carried by the chip tag 17 or by categorizing the chip as invalid in the database of the system 31).
Regarding claim 5, French teaches or suggests wherein the gate is a player gate on a casino gaming floor in the casino (see above regarding claim 1), a staff gate in a casino security area in the casino (e.g., the cashier’s cage or casino vault), or a staff gate in a manufacturing facility which manufactures the gaming currency.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive.
As an initial matter, the double patenting rejection of claims 1-5 over corresponding claims 1-5 of related application no. 19/269803 is withdrawn as moot because corresponding claims 1-5 of the ‘803 application have been cancelled.
Furthermore, Applicant’s request to hold in abeyance the double patenting rejection of claims 6-18 is acknowledged. Remarks, 6. At the time of this writing, the ‘803 claims had been indicated allowable, but had not yet issued as a patent.
Applicant addresses the rejection of claims 6-10 and 15-18 as anticipated by Boiron on pages 6-9 of the Remarks section. At the outset, the Examiner notes that substantially similar claims in related application no. 19/269803 were rejected under substantially identical grounds of rejection over Boiron. Applicant substantively amended those claims in the ‘803 application on 12/19/2025 in order to overcome the rejection over Boiron. As such, the Examiner respectfully suggests modification of the instant claims to overcome the instant prior art rejection.
On page 8, Applicant contends that Boiron fails to show an “RFID part [that] is disposed within the sealed space defined by the capsule” because Boiron allegedly teaches “an integrated and fully-filled chip—thereby excluding leaving any physical space (gap) inside the chip.” The Examiner respectfully disagrees. Nothing in the instant claim language requires “any physical space (gap) inside the chip” to be empty (e.g., filled with air). Instead, the claims merely require that a capsule be present to accommodate the chip. Based on Applicant’s own analysis, Boiron teaches placing the RFID chip within the sealed space of the chip, and therefore teaches the claimed invention.
Further on page 8, Applicant asserts that Boiron does not show an EM wire member disposed between the first decal and the second decal. However, Applicant fails to explain why the reference allegedly does not teach this feature. Applicant acknowledges that Boiron teaches a thickness of oriented film suitably attached using two layers of transfer adhesive. Indeed, Boiron teaches that the “oriented film or filament [is] made of an active material or of alloy sensitive to the electromagnetic radiation.” Id. at 2:60-65. The term “filament” corresponds to the claimed “wire,” and the term “electromagnetic” corresponds to the claimed “EM.” As such, Boiron teaches that the material is an EM wire member. Applicant admits that Boiron teaches that the labels 46 and 48 each carry on the inside, a thickness of oriented film. There would be no way that the labels would be visible if the thickness of oriented film were disposed outside or on top of the labels. As such, the thickness of oriented film (or filament) is necessarily located between the labels, which meets the claimed limitation of an EM wire member disposed between the first decal and the second decal.
Applicant’s criticism of the Office action as allegedly combining multiple embodiments from Boiron is unfounded. See Remarks, 8-9. The Boiron reference presents multiple teachings that are useable together. The grounds of rejection simply cited the portions that are most illustrative of the claim features. These embodiments are not incompatible with one other, and the features relied upon are not exclusive to one embodiment. Furthermore, the instant claims are drafted in a way that allows for multiple different embodiments to be read on them. For instance, each of claims 7-12 depend on independent claim 6. As such, the features of claims 7-12 need not agree with one another because they are separately claimed. Applicant fails to identify any incompatible feature of the cited portions of Boiron relative to the respective claims. It is insufficient to simply criticize the reference as describing some features at one part of the text, and other features at some other part of the text. To demonstrate an improper modification, Applicant bears the burden of proof to demonstrate why features of the reference could not be used together. That burden has not been met, and the argument is therefore unfounded.
Claims 11-14 are addressed on page 10 of the Remarks. The arguments presented are the same as those addressed above with respect to claims 6-10 and 15-18. The arguments are unpersuasive for the same reasons given above.
Applicant addresses the rejection of claims 1-5 as obvious over French on pages 11-12 of the Remarks section. More particularly, Applicant asserts that the antennas in French are RF antennas for reading and writing, not antennas for detecting EM wire members. It is not clear what distinction Applicant sees here. If the system of French is capable of reading information via the RF antenna, then it is necessarily detecting the antenna (i.e., the EM wire member) of the chip. There is no other way the system could read information from the electronics package within the chip using a radio frequency signal. For information on the components of RIFD tags, including the tag antenna, see Dig Deep – Construction of RFID Tags (attached).
On page 12, Applicant admits that French teaches a system that is capable of reporting the total value of the gaming chips at any location, as well as the value of any particular transaction at any gaming table or at the cashier’s cage as well as the vault. However, Applicant asserts that French does not teach reading the information from the RFID part of the gaming currency declared by the passing person. The grounds of rejection clearly state that French teaches an RFID storing the value of the chips, as well as tracking the value of chips at any location. As such, French teaches reading the information from the RFID part (i.e., information stored in the transponder) of the gaming currency. The feature of “declared by the passing person” is not defined by the claim, nor does the specification provide a restrictive definition of how this occurs. However, French’s teaching of tracking the value of chips during a particular transaction reads on this feature because one or both parties to the transaction would have necessarily declared it (e.g., a wager amount paid by the user, or required of the user by casino personnel, etc.). Similarly, casino personnel must declare the value of chips leaving or entering the cage. This is made even clearer by the fact that there is a casino cashier who facilitates or otherwise controls the movement of chips. For at least these reasons, French teaches reading the information from the RFID part of the gaming currency declared by the passing person.
Finally, Applicant’s assertion on page 12 that French does not teach “read[ing] the information from the RFID part of the gaming currency detected by detecting the EM wire member” is similarly unpersuasive. As detailed above, French’s system reads the information stored in the RFID via the antenna. As such, French necessarily detects an EM wire member because this is the only way to access the information stored within the electronics package (i.e., transponder) inside the chip using a radio frequency signal. As discussed above, without some form of electromagnetic (EM) wire to serve as an antenna, the system would have no way to transmit or receive signals to/from the integrated circuit within the transponder. Therefore, French necessarily requires this feature.
In light of the forgoing analysis, the claimed invention fails to demonstrate patentability over the cited prior art.
Conclusion
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 WILLIAM H MCCULLOCH whose telephone number is (571)272-2818. The examiner can normally be reached M-F 9:30-5:30.
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, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM H MCCULLOCH JR/Primary Examiner, Art Unit 3715
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