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
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/14/2026. The Examiner notes that the Applicant has subsequently cancelled claims 16-20.
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 1-15 and 21-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-8, and 19, respectively, of U.S. Patent No. 12,079,893. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims 1 and claim 19 of the U.S. Patent are drawn to a system and method for generating authentication credentials.
As per claim 1 of the present invention, both claim 1 of the present invention and claims 1 and 19 of the U.S. Patent claims a system/method for generating authentication credentials comprising: one or more processors, receive a coded indicia encoding identity verification instructions for verifying the identity of a user/customer, sending and receiving a physical distribution item having the coded indicia, receive data indicative of an identify of the user/customer, verify the identity of the user/customer based on the received data, and create an electronic credential or token for the user. Claims 1 and 19 of the U.S. Patent further claims a networked computer device, accessing one or more storages, input identifying a customer identifier, notify the business or organization that a physical disctribution item having the coded indicia is delivered, receive real-time geographic coordinates, and generate a recommendation. It would have been obvious to one of ordinary skill in the art, at the time of filing, to remove the additional limitations to conclude at claim 1 of the present invention, as a matter of engineering choice, and based on user preferences. Such a modification would not render the invention inoperable for its intended purpose and would yield predictable results. See MPEP 2144.04.
Claim 2 of the present invention is further rejected in view of claim 2 of the U.S. Patent, for the same reasons as claim 1 above.
Claim 3 of the present invention is further rejected in view of claims 1 and 19 of the U.S. Patent.
Claim 4 of the present invention is further rejected in view of claim 3 of the U.S. Patent, for the same reasons as claim 1 above.
Claim 5 of the present invention is further rejected in view of claims 1 and 19 of the U.S. Patent.
Claim 6 of the present invention is further rejected in view of claim 5 of the U.S. Patent, for the same reasons as claim 1 above.
Claim 7 of the present invention is further rejected in view of claim 6 of the U.S. Patent, for the same reasons as claim 1 above.
Claim 8 of the present invention is further rejected in view of claim 7 of the U.S. Patent, for the same reasons as claim 1 above.
Claim 9 of the present invention is further rejected in view of claim 8 of the U.S. Patent, for the same reasons as claim 1 above.
Claim 10 of the present invention is further rejected in view of claim 1 of the U.S. Patent, for the same reasons as claim 1 above.
Claim 11 of the present invention is further rejected in view of claim 2 of the U.S. Patent, for the same reasons as claim 10 above.
Claim 12 of the present invention is further rejected in view of claim 1 of the U.S. Patent.
Claim 13 of the present invention is further rejected in view of claim 1 of the U.S. Patent.
Claim 14 of the present invention is further rejected in view of claim 5 of the U.S. Patent, for the same reasons as claim 10 above.
Claim 15 of the present invention is further rejected in view of claim 6 of the U.S. Patent, for the same reasons as claim 10 above.
Claim 21 of the present invention is further rejected in view of claim 1 of the U.S. Patent.
Claim 22 of the present invention is further rejected in view of claim 19 of the U.S. Patent.
Claim 23 of the present invention is further rejected in view of claims 1 and 19 of the U.S. Patent.
Claim 24 of the present invention is further rejected in view of claims 1 and 19 of the U.S. Patent.
Claim 25 of the present invention is further rejected in view of claims 1 and 19 of the U.S. Patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES J YANG whose telephone number is (571)270-5170. The examiner can normally be reached 9:30am-6:00p M-F.
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, BRIAN ZIMMERMAN can be reached at (571) 272-3059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES J YANG/Primary Examiner, Art Unit 2686
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