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 Invention I, claims 1-18, in the reply filed on 11-10-2025 is acknowledged.
Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 1, 8, and 16 are objected to because of the following informalities:
Claim 1, line 10, after “device” insert --via the opening--;
Claim 8, line 2, delete “by the print device”;
Claim 16, line 10, change “printing” to --print--;
Claim 16, line 12, after “device” insert --via the opening--; and
Claim 16, line 15, change “sealing” to --seal--.
Appropriate correction is required.
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.
Claims 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is incomplete for failing to recite sufficient structure to enable the claimed step of “directly conveying the document sheets into the chamber from the print device” (line 10). It appears a conveyor must be claimed, see [0073].
Claim 5 is incomplete for failing to recite sufficient structure to enable the claimed step of “capturing a digital image” (line 2). It appears a scanner/camera must be claimed. see [0042]. It is noted a camera is recited in claim 14.
In claim 6, lines 7-8, the limitation “at which any of the items listed above.” appears incomplete and is unclear.
Claim 8 is incomplete for failing to recite sufficient structure to enable the claimed step of “scanning a digital image” (line 3). It appears a scanner/camera must be claimed. see [0042]. It is noted a camera is recited in claim 14.
In claim 9, line 3, “the digital images” lacks antecedent basis. Further, claim 9 is incomplete for failing to
In claim 11, line 2, “the security covering” lacks antecedent basis.
In claim 15, lines 1-2, “the security covering” lacks antecedent basis.
Claim 16 is incomplete for failing to recite sufficient structure to enable the claimed function of “directly convey the document sheets into the chamber from the print device” (line 12). It appears a conveyor must be claimed, see [0073].
Further, claim 16 is inaccurate as the print device is not responsible for sealing the opening with a sealing material (last line). Per [0094], the opening is sealed by hand or via the finishing module 104 and its sealing material applicator 1318.
In claim 18, line 4, “the digital images” lacks antecedent basis.
Although not specifically addressed above, claims 2-4, 7, 10, 12-14, and 17 are also rejected under 35 U.S.C. 112(b) as they depend from a rejected claim.
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, 2, 8, 10, 12, 13, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims (5 and 17), (5 and 17), (5 and 17), (5 and 17), and (5 and 17), respectively, of copending Application No. 18/767,727 in view of Kapsis (US#8038053), and further in view of CA 1226563 (hereinafter “CA563”) .
Claims 1 and 16 of the instant application and claims 5 and 17 of the copending application ‘727 each disclose a method (or system), comprising providing a container (claims 5 and 17, secure container) inherently comprising a plurality of facets (sides) that are connected together to form a chamber, wherein one of the facets has an inherent opening that receives a plurality of document sheets (verification document sheets) that will be received into the chamber via the opening; by a print device, printing the plurality of document sheets, each of which includes a unique identifier (ID) (claims 1 and 15); and directly conveying the document sheets into the chamber from the print device, without any human touching the document sheets, to form a stack of the document sheets within the chamber (claims 5 and 17).
Claims 5 and 17 of the copending application ‘727 fails to disclose wherein one of the facets is a front facet with an opening that is sized with a width that equals or exceeds a width of each of a plurality of document sheets that will be received into the chamber via the opening, and positioned at or below a top edge of the front facet and above a midpoint of the front facet. However, as evidenced by Kapsis, such a configuration is known in the analogous art, see container 200 comprising a plurality of facets (sides) that are connected together to form a chamber 290, wherein one 240 of the facets is a front facet (when oriented as shown in Fig. 4c) with an opening 230 that is: sized with a width that equals or exceeds a width of each of a plurality of document sheets (paper ballots, see abstract) that will be received into the chamber via the opening, and positioned below a top edge of the front facet and above a midpoint of the front facet (when oriented as shown in Fig. 4c). Therefore, as evidenced by Kapsis, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 5 and 17 of the copending application ‘727 by replacing its secure container with secure container of Kapsis. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art (See MPEP 2143 and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The substitution of the secure container of Kapsis would further limit access to the ballots and facilitate stacking within the container.
Claims 5 and 17 of the copending application ‘727 fails to disclose sealing the opening with a sealing material. However, as evidenced by CA563, such a configuration is known in the analogous art, see page 6, lines 1-3, and ballot box 10 including opening 34 sealed via tamper-evident sealing tape. Therefore, as evidenced by CA563, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 5 and 17 of the copending application ‘727 such that the opening was sealed with tamper-evident tape. The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of sealing the opening with tamper-evident sealing tape would enhance the security of the container.
Regarding claim 2 of the instant application, Kapsis teaches unique ballot document sheets.
Regarding claim 8 of the instant application, claims 5 and 17 of the copending application ‘727 disclose a scanner (claims 1 and 15).
Regarding claim 10 of the instant application, claims 5 and 17 of the copending application ‘727 disclose printing a source document(s) (claims 1 and 15).
Regarding claim 12 of the instant application, claims 5 and 17 of copending application ‘727 inherently requires printing the unique ID on each document sheet on an area that does not interfere with content (data) from a source document (claims 1 and 15).
Regarding claim 13 of the instant application, claims 5 and 17 of copending application ‘727 discloses “security elements” being viewed as the data from a source document (claims 1 and 15).
Claims 3 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims (5 and 17), (5 and 17), (5 and 17), (5 and 17), and (5 and 17), respectively, of copending Application No. 18/767,727 in view of Kapsis (US#8038053), in view of CA 1226563 (hereinafter “CA563”), and further in view of Brockhouse et al. (US#2014/0231513).
Regarding claim 3 of the instant application, claims 5 and 17 of the copending application ‘727 fails to disclose each unique ID comprises or is derived from a location at which the voter cast the ballot. However, as evidenced by Brockhouse, such a configuration is known in the analogous art, see [0120], “The paper ballot may contain identification marks that allow the CPU board 196 to verify that the ballot is valid for a specific polling place,…”. Therefore, as evidenced by Brockhouse, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to claims 5 and 17 of the copending application ‘727 by including a unique ID, such as identification marks indicating polling location, on each of the document sheets (ballots). The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of the unique ID, such as identification marks indicating polling location, would enhance election integrity.
Regarding claim 7 of the instant application, the identification mark of a specific polling place taught by Brockhouse above is being viewed as a unique ballot card identifier for each document sheet that is a ballot.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims (5 and 17), (5 and 17), (5 and 17), (5 and 17), and (5 and 17), respectively, of copending Application No. 18/767,727 in view of Kapsis (US#8038053), in view of CA 1226563 (hereinafter “CA563”), and further in view of Keller (US#2018/0165905).
Regarding claim 14 of the instant application, claims 5 and 17 of the copending application ‘727 as modified above fails to disclose a camera to record the printing, directing and sealing steps to a video file. However, as evidenced by Keller, such a configuration is known in the analogous art, see Fig. 4 and election system 60 using a room camera 70 to record operations thereof. Therefore, as evidenced by Keller, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify claims 5 and 17 of the copending application ‘727 as modified to include a room camera to record to record the printing, directing and sealing steps to a video file. The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of the room camera would enhance the security and monitoring of the election method.
This is a provisional nonstatutory double patenting rejection.
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 1-3, 7, 8, 10, 12, 13, and 16 rejected under 35 U.S.C. 103 as being unpatentable over Kapsis (US#8038053) in view of Brockhouse et al. (US#2014/0231513), and further in view of CA 1226563 (hereinafter “CA563”).
Regarding claims 1 and 16, Kapsis discloses a method/system, comprising: providing a container 200 comprising a plurality of facets (sides) that are connected together to form a chamber 290, wherein one 240 of the facets is a front facet (when oriented as shown in Fig. 4c) with an opening 230 that is: sized with a width that equals or exceeds a width of each of a plurality of document sheets (paper ballots, see abstract) that will be received into the chamber via the opening, and positioned below a top edge of the front facet and above a midpoint of the front facet (when oriented as shown in Fig. 4c); by a print device 310, printing the plurality of document sheets; and directly conveying the document sheets along handling path 305 (col. 6, lines 8-9) into the chamber from the print device, without any human touching the document sheets, to form a stack of the document sheets within the chamber (see Fig. 3).
Regarding claims 1 and 16, Kapsis fails to disclose wherein each of the document sheets (ballots) include a unique identifier (ID). However, as evidenced by Brockhouse, such a configuration is known in the analogous art, see [0120], “The paper ballot may contain identification marks that allow the CPU board 196 to verify that the ballot is valid for a specific polling place,…”. Therefore, as evidenced by Brockhouse, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kapsis by including a unique ID, such as identification marks indicating polling location, on each of the document sheets (ballots). The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of the unique ID, such as identification marks indicating polling location, would enhance election integrity.
Regarding claims 1 and 16, Kapsis fails to disclose sealing the opening with a sealing material. However, as evidenced by CA563, such a configuration is known in the analogous art, see page 6, lines 1-3, and ballot box 10 including opening 34 sealed via tamper-evident sealing tape. Therefore, as evidenced by CA563, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kapsis such that the opening was sealed with tamper-evident tape. The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of sealing the opening with tamper-evident sealing tape would enhance the security of the container.
Regarding claim 2, Kapsis discloses each of the document sheets corresponds to one or more unique ballots cast by a unique voter (abstract).
Regarding claim 3, Kapsis discloses wherein each of the document sheets corresponds to one or more unique ballots. Brockhouse teaches each unique ID comprises a location at which the voter cast the ballot.
Regarding claim 7, Brockhouse teaches wherein each unique ID comprises a unique ballot card identifier, namely an identification mark indicating polling location, for each document sheet that is a ballot.
Regarding claim 8, Kapsis fails to disclose after printing the document sheet and before directing the document sheet to the opening, scanning a digital image of the document sheet. However, as evidenced by Brockhouse, such a configuration is known in the analogous art, see Figs. 19A and 19B, [0119], wherein after printing and before directing the document sheet to the opening of container 18 (Fig. 19B, block 522), the ballot scanner assembly 194 scans the paper ballot (Fig. 19A, block 504) so as to capture a digital image of the ballot. Therefore, as evidenced by Brockhouse, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kapsis by including a scanner such that after printing the document sheet and before directing the document sheet to the opening, scanning a digital image of the document sheet. The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of the scanner and after printing the document sheet and before directing the document sheet to the opening, scanning a digital image of the document sheet would enhance election integrity.
Regarding claim 10, Kapsis discloses wherein printing the document sheets comprises printing content of more than one source document, such as the user’s selections (i.e. the voter’s elections, col. 4, lines 31-33), on at least some of the document sheets.
Regarding claim 12, modifying the document sheets of Kapsis in view of Brockhouse, as discussed above with respect to claim 1, would inherently require printing the unique ID taught by Brockhouse on each document sheet on an area that does not interfere with content from a source document (i.e. the voter’s elections, col. 4, lines 31-33) disclosed by Kapsis.
Regarding claim 13, the voter’s elections (col. 4, lines 31-33) printed on the document sheet of Kapsis are being viewed and labeled as a plurality of “security elements” on each of the documents as the elections are reviewed for accuracy by the voter via the ballot display window 130 intended to give the user a chance to view the printed ballot and confirm it accurately represents the selections the user made through the interactive terminal.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kapsis (US#8038053) in view of Brockhouse et al. (US#2014/0231513), in view of CA 1226563 (hereinafter “CA563”), and further in view of Keller (US#2018/0165905).
Regarding claim 14, Kapsis as modified fails to disclose using a camera to record the printing, directing and sealing steps to a video file. However, as evidenced by Keller, such a configuration is known in the analogous art, see Fig. 4 and election system 60 using a room camera 70 to record operations thereof. Therefore, as evidenced by Keller, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Kapsis as modified to include a room camera to record to record the printing, directing and sealing steps to a video file. The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of the room camera would enhance the security and monitoring of the election method/system.
Allowable Subject Matter
Claims 4-6, 9, 11, 15, 17, and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 4, 9, 17, and 18, although Baumert (US#8651380) teaches a print device 76,77 printing a slip sheet comprising a content summary (Fig. 22), the slip sheet is not directed into a chamber via an opening in a container.
Regarding claim 11, it would not have been obvious to one of ordinary skill in the art to further modify the modifying reference of CA563 such that sealing the opening comprises placing a portion of the tamper evident tape over a security marking that is printed on the front facet near the opening.
Regarding claim 15, it would not have been obvious to one of ordinary skill in the art to further modify the modifying reference of CA563 such that before sealing the opening with the security covering (tape), attaching a unique code to the security covering by: printing the unique code on the security covering.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM L MILLER whose telephone number is (571)272-7068. The examiner can normally be reached 9:30 - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM L. MILLER
Primary Examiner
Art Unit 3677
/WILLIAM L MILLER/Primary Examiner, Art Unit 3677