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 .
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1- 10 and 18-20 in the reply filed on 12/05/2025 is acknowledged.
Claim Status
Claims 1-10 and 18-20 are pending for examination.
Claims 11-17 are withdrawn.
Non-Statutory 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 1-10 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,614,650 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader than the patented claims. Also, the pending claims and the patented claims are very similar in scope.
Claims 1-10 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,922,747 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader than the patented claims. Also, the pending claims and the patented claims are very similar in scope.
Claims 1-10 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,094,152 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader than the patented claims. Also, the pending claims and the patented claims are very similar in scope.
Claims 1-10 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,232,513 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader than the patented claims. Also, the pending claims and the patented claims are very similar in scope.
Claims 1-10 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,416,919 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader than the patented claims. Also, the pending claims and the patented claims are very similar in scope.
Claims 1-10 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,663,650 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader than the patented claims. Also, the pending claims and the patented claims are very similar in scope.
Claims 1-10 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,131,373 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader than the patented claims. Also, the pending claims and the patented claims are very similar in scope.
Claims 1-10 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,014,294 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are broader than the patented claims. Also, the pending claims and the patented claims are very similar in scope.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Regarding claim 20, recites the limitation " The system of claim 1" in line 1 with emphasis underlined. There is insufficient antecedent basis for this limitation in the claim. Claim 1 is a method claim not a system claim.
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.
Claims 1-3, 5-8, 10 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gacs (Pub. No.: US 2014/0207657 A1).
Regarding claim 1, Gacs teaches a method for retrieving an unlock code for a physical lock (Abstract, and Fig. 4), wherein the physical lock is not capable of electronic communication (para [0024], “As noted above, any combination lock or code can be used. The lock can be digital or analog and have letters, numerals or other figures. The lock does not have to have Internet access itself, but can be purely mechanical.”), comprising:
associating a lock identifier with a location and an unlock code (para [0024], “The lock should have some indicia on it representing a serial number or other identifying information that allows the vendor to know which lock (and item) is the subject of any possible query to the vendor system.” and para [0030], “At step 401 the customer encounters the item. This may be by finding it at its locked location, via any online or offline advertising, or through any other means. At step 402 the customer finds the indicia that will allow the customer to access online information about the item for sale. This may be via a posted URL, a 2D bar code, QR code, bar code, text message code, phone number or any other suitable means. In one embodiment, the user may use a smartphone to scan a code and be taken directly to a website.”. The lock has an indicia that is associated with item’s location.);
receiving, by a remote server, the lock identifier (Fig. 1, server, 114, para [0027], “At step 204 the lock, item, and any indicia are all associated with the web page so that the customer may be directed to the right location to complete a sale or rental transaction.” and Fig. 4 steps 402-403, the lock indicia is transmitted to the web server);
determining that a customer account associated with the location has a past due balance (para [0032], “At decision block 405 it is determined if the purchase has been confirmed and the funds approved. If not, the system returns to step 404.”. The web server determines the fund has not been approved and has a pass due.);
prompting a customer to make payment to bring the customer account current (para [0031], “At step 403 the user reads the website to find information about the item, including price, status, features, or any other information that may be useful in helping to make a determination to make a purchase. Included on the website is information about the process, including informing the customer that they can take immediate possession by paying for the item and receiving the unlock code or combination. At step 404 the customer initiates the purchase at the website, via any suitable means such as credit card, PayPal, cash, text message payment, and the like. Alternatively the customer could be directed to a call center or some other manner of making a financial transaction.”. The web server prompts the user to re-enter payment information to pay for the item);
after prompting the customer to make payment, determining whether the customer account has a past due balance; and
upon the customer account no longer having a past due balance, transmitting the unlock code to the customer via an electronic method (Fig. 4, steps 405-406, para [0032], “At decision block 405 it is determined if the purchase has been confirmed and the funds approved. If not, the system returns to step 404. If so, the system proceeds to step 406 and the system sends the unlock code to the customer.”. The web server sends the unlock code to the customer if the re-entered payment information has been approved.).
Regarding claim 2, Gacs teaches the method of claim 1, wherein the location comprises a self-storage unit (Fig. 5 and para [0042]-[0043], storage units are used by the user to retrieve or store items.).
Regarding claim 3, Gacs teaches the method of claim 1, wherein the location comprises a personal housing (para [0039], lockers have housing to protect the items stored inside.).
Regarding claim 5, Gacs teaches the method of claim 1, wherein the physical lock comprises an over-lock (para [0005], a combination lock is an overlock for a storage unit).
Regarding claim 6, recites a system that performs the method of claim 1. Therefore, it is rejected for the same reasons.
Gacs further teaches the system that performs the method of claim 1. See Fig. 1 – Fig. 6.
Regarding claim 7, recites a system that performs the method of claim 2. Therefore, it is rejected for the same reasons.
Regarding claim 8, recites a system that performs the method of claim 3. Therefore, it is rejected for the same reasons.
Regarding claim 10, recites a system that performs the method of claim 5. Therefore, it is rejected for the same reasons.
Regarding claim 19, Gacs teaches a method for retrieving an unlock code for a lock (Abstract, and Fig. 4), wherein the lock is not capable of electronic communication (para [0024], “As noted above, any combination lock or code can be used. The lock can be digital or analog and have letters, numerals or other figures. The lock does not have to have Internet access itself, but can be purely mechanical.”), comprising:
associating a credential with a customer account for a customer, wherein the customer account is paid in full and is in good standing (Fig. 4, step 404 and para [0031], “At step 404 the customer initiates the purchase at the website, via any suitable means such as credit card, PayPal, cash, text message payment, and the like. Alternatively the customer could be directed to a call center or some other manner of making a financial transaction. These and other forms of payment may be used in all embodiments, including special purpose credit or debit cards, such as, or similar to, transit passes, "Oyster" type cards, library cards, and the like.”. The webserver associates the payment credential (e.g., credit card number) with the customer making the purchase.);
determining whether the customer account has a balance due (Fig. 4, para [0031], the webserver determines the account has a balance due that is equal to the price of the item waiting to be purchased.);
upon the customer account having a balance due, determining after an interval whether the customer account no longer has a balance due (Fig. 4, para [0032], “At decision block 405 it is determined if the purchase has been confirmed and the funds approved. If not, the system returns to step 404.”. The customer pays the balance with an approved method of payment.);
receiving, by a lock management system portal, a request for an unlock code and the credential associated with the customer account (Fig. 4, para [0031], the webserver receives the customer’s request to purchase an item and receives the payment credential (e.g., credit card number));
determining whether the credential is valid (Fig. 4 step 405, the webserver determines whether the payment is approved); and
upon the customer account no longer having a balance due and the credential being valid, transmitting the unlock code over a network in response to the request (Fig. 4, step 406, the webserver sends the unlock code to the user upon successful payment.).
Regarding claim 20, Gacs teaches a system of claim 1, wherein, after prompting the customer to make payment, a payment is received by a third party payment processing system (para [0031], “ At step 404 the customer initiates the purchase at the website, via any suitable means such as credit card, PayPal, cash, text message payment, and the like.”).
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.
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Gacs (Pub. No.: US 2014/0207657 A1).
Regarding claim 4, Gacs teaches the method of claim 1, wherein the location is a storage facility but fails to expressly teach the location comprises one of:
an airport, an aircraft cockpit, a hospital, a weapon storage facility and a nuclear power facility.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Gacs’s storages/lockers to be located in an airport, an aircraft cockpit, a hospital, a weapon storage facility or a nuclear power facility because it has been held that rearranging parts of the invention from one location to another involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 9, recites a system that performs the method of claim 4. Therefore, it is rejected for the same reasons.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Michell (Pub. No.: US 2009/0083851 A1) in view of Aronson (Pat. No.: US 7,236,085 B1).
Regarding claim 18, Michelle teaches a method (Abstract, serialized lock combination retrieval system and method), comprising:
establishing a customer account for a customer, wherein the customer account is paid in full and is in good standing;
associating an unlock code with a lock in a database (Fig. 2, steps 210-250, para [0017], “Once an account is created, lock serial numbers may be registered to customers. Lock vendor personnel, such as a regional sales manager, may associate lock serial numbers with a company when new sales are made using the system. The serial number of each lock purchased by the customer may be individually registered to the purchasing company. This registration may comprise, for example, storing the serial number in a data field of a customer account and/or company data record or may comprise linking a serial number data record to a customer account and/or company data record. As used herein, a "serial number data record" may comprise any data storage and/or retrieval technique known in the art.”. The server stores the serial number of the lock and the unlock code of the lock in the customer’s account after the customer purchased the lock), wherein the lock is not capable of electronic communication (para [0013], “The locks usable with the systems described herein may comprise any lock including a combination for opening the lock, such as locks requiring input of a sequence of numbers or symbols to open the lock.”. A typical combination lock (e.g., Master Lock dial combination lock) has no electronic communication.);
associating the customer account with the unlock code (Fig. 3, para [0019], “In order to access a lock combination, a user may logon to the serialized lock system by providing a user identifier and password, for example. After authenticating, the user may enter a lock serial number. The serialized lock system may then determine whether the serial number is registered to a customer account and/or company. If the serial number is registered, the system may determine whether the user is associated with that customer account and/or company. If not, the system may refuse to provide the lock combination to the user. If the user is associated with the customer account and/or company, or if the provided serial number is not yet registered, the system may provide the lock combination to the user.”. The customer account stores the unlock code of the combination lock purchased by the customer.);
at a time after the customer account is paid in full and is in good standing, receiving a request for the unlock code over a network (Fig. 3, step 310, the customer uses the retrieval system to retrieve the unlock code at a later time after the purchase);
upon the customer account no longer having a balance due, transmitting the unlock code over the network in response to the request (Fig. 3, step 370, the server sends the unlock combination to the customer.).
Michelle teaches the retrieval system performs audit on each transition (See para [0043]) but fails to teach determining whether the customer account associated with the unlock code has a balance due; and upon the customer account having a balance due, determining after an interval whether the customer account no longer has a balance due; and
However, in the same field of lock retrieval, Aronson teaches a lock retrieval system configured to determine whether the customer’s account has fully paid for the rent of the storage unit that the lock is located. If the customer’s account has a balance due (step 130) then the system will wait until the customer has fully paid the rent (step 116) before the system allows the user to retrieve the unlock code (step 134). See Fig. 6
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Michelle’s web server to further determine whether the customer’s account has any past balance associated with other purchases (e.g., rent for storage unit) before sending the unlock to the customer to improve protection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHEN Y WU whose telephone number is (571)272-5711. The examiner can normally be reached Monday-Friday, 10AM-6PM, EST.
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/ZHEN Y WU/Primary Examiner, Art Unit 2685