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 .
The following is in response to the response filed 12/2/2025. Claims 1-7 and 19 are pending. Claims 8-18 have been canceled. Claim 19 is new.
Election/Restrictions
Newly submitted claim 19 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Inventions Group I (claims 1-7) and Group II (claim 19) are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the claims do not require a physical product display associated with an NFC chip and an application configured for accessing a URL via the NFC chip. The subcombination has separate utility such as a physical display with an NFC chip for advertising.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
--the inventions have acquired a separate status in the art in view of their different classification;
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries)..
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 19 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-7 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ongsitco (US 2019/0001732 A1).
Specifically as to claim 1, Ongsitco discloses a system for directing a potential customer to a URL (see para 0010, embedded NFC refers to the specific content via the URL), the system comprising:
a paper-based print product associated with an unprogrammed or reprogrammable Near Field Communication (NFC) chip (see para 009 and 0010 “printed cards to be identified to the Central Server, making their materials reusable after certain time without the need to physically recycle the composition of the printed card”); and
an application running on a computing unit with an ability to program the NFC chip with the URL (see para 009 “a tangible message or informational material with NFC…for the web-based computer programming logical system…manage it via the Central Server…personal NFC-enabled device to read it such as a smart phone, PDA, a tablet, laptop, desktop or something similar where the device can connect to the Central Server using the app or browser via the internet…readers can re-use the materials received by revising its contents and resending it …retain the most admired tradition of sending tangible communication material over just pure electronic communication in a practical manner” para 0010 “programming system residing on the Central Server that manages the content of the printed card. It, generally, comprises of printed card such as but not limited to a greeting card with embedded NFC chip and/or QR code and the Application system which provides the solution to manage the contents of the reusable prints “ and claim 19).
Specifically as to claim 2, wherein the paper-based print product comprises photo paper (see para 2 “printed card” para 28 and 29).
Specifically as to claim 3, wherein the paper-based print product comprises signage (para 0007 brochures are within the scope of “signage”).
Specifically as to claim 4, wherein the paper-based print product comprises a physical product display (para 0007 brochures).
Specifically as to claim 5, wherein the paper-based print product comprises a greeting card (see para 10).
Specifically as to claim 6., wherein the application comprises a mobile application and the computing unit comprises a mobile computing unit with an NFC chip for communicating with the associated NFC chip (see para 0010).
Specifically as to claim 7, wherein the associated NFC chip is embedded within or on the paper-based print product (see para 10 “greeting card with embedded NFC chip”).
Response to Arguments
Applicant's arguments filed 7/29/26 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a system comprising an unprogrammed or reprogrammable NFC chip) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claim recites "A system…comprising: a paper-based print product" which is associated with an NFC chip. Applicant should amend the claim to positively recite an NFC chip.
Further, Ongsitco discloses a system with a paper based print product with an embedded NFC chip (see para [0010] "printed card…a greeting card with embedded NFC chip…that refers to the specific content…URL…can be … changed, deleted, saved, auto posted on social media…personal device…via the internet through the app…"). The claim is directed to "A system for directing a potential customer…" and does not cover an unprogrammed or reprogrammable Near Field Communication (NFC) chip, or include the specifics of an NFC chip. Specifically, in the paper based print product limitation, the paper based print product is required to be capable of association with an unprogrammed or reprogrammable NFC chip. The NFC chip and its operation, namely the programmability, is outside the scope of the claim.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., programming the NFC device with a URL) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claim recited an application (running on a computing unit) with an ability to program the NFC chip. The application in Ongsitco is able to program a URL to the NFC chip (see para [0009] "informational material with NFC…web-based computer programming logical system" and figure 7).
Further, the claim is directed to "A system for directing a potential customer…" and does not cover a computing unit, or include the specifics of a computing unit, Specifically, in the application limitation, the application is required to be capable of running on a computing unit. The computing unit and its operation, namely the ability to program the NFC chip with the URL , is outside the scope of the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pavan et al. discloses a process for making a multilayer sheet with NFC embedded.
Mackenzie discloses how to add NFC tags to physical printed photos.
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 Kelly Campen whose telephone number is (571)272-6740. The examiner can normally be reached Monday-Thursday 6am-3pm.
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, Abhishek Vyas can be reached at 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Kelly S. Campen
Primary Examiner
Art Unit 3691
/KELLY S. CAMPEN/Primary Examiner, Art Unit 3691
