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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 6, 8-10, 12, 16, 18-20 of U.S. Patent No. 12,124,993. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application is also directed toward a substantially similar ring-type device with buttons and terminal device system for counting scanned inventory items. Any differences between the claimed subject matter and the issued patent would be obvious to one of ordinary skill in the art.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vargas, US 20230267290 A1, in view of MPEP 2144.04 Legal Precedent as Source of Supporting Rationale, C. Rearrangement of Parts.
11. A method of scanning an item by using a scanning system, wherein the scanning system comprising: a scanner device comprising:
a housing configured to attach to an index finger of a user, (Vargas, abstract); a plurality of buttons located on the housing and actuated by a thumb of the user, (Vargas, ¶ 7-8);
a scanner that reads a barcode, (Vargas, abstract); a first controller configured to, in response to the actuation of at least one of the plurality of buttons, activate the scanner, and generate an instruction indicating which of the plurality of buttons was actuated, (Vargas, ¶ 7-8)(When thumb 112 selects button 114, barcode scanner 106 projects light 108 to read barcode 106.); and
a first communication interface configured to transmit the instruction to a terminal device, (see Vargas, fig. 8, #802, 804, 806), and the terminal device, separate from the scanner device but communicatively connected to the scanner device, comprising: a display configured to display a user interface, (see Vargas, abstract)(Embodiments have integrated interactivity, including a touchscreen display and separate buttons that can be used to operate the optical detector and input data into an integrated computing device);
a second communication interface, (see Vargas, fig. 8, #802, 804, 806) configured to receive the instruction from the scanner device; and
a second controller configured to determine a quantity of an item, (see Vargas, ¶ 4, 5 “universal product code (UPC) barcodes are pre-printed on most items and are used for inventory” “taking inventory”) corresponding to the barcode based on which of the plurality of buttons was actuated, and increment a count for the item, , (see Vargas, ¶ 4, 5 “universal product code (UPC) barcodes are pre-printed on most items and are used for inventory” “taking inventory”) by the quantity, (see Vargas, ¶ 103)(Management console 903 enables an administrator to control device management server 806. For example, in response to user input into management console 903, device management server 806 can update policy 912 or application 902, query the scanner device for location information). Taking inventory as used in the reference is considered to include any sort of item counting, displaying, and recording of item count data.
It would have been obvious to one of ordinary skill in the art at the time of the invention to combine Vargas and a design choice via rearrangement of parts, i.e. placement of buttons, manner of button actuation, timing of button actuation, and the displayed results of button actuation. The motivation would have been to combine prior art elements according to known methods to yield predictable results. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. This motivation is applied to all claims below by reference.
See MPEP 2144.04 “In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).”
This rationale is applied to all claims below by reference.
12. The method of claim 11, wherein the second controller is further configured to determine the quantity of the item based on which single button out of the plurality of buttons actuated, and increment the count for the item by the quantity.
The item quantity selected by which single button is considered to be a design choice.
13. The method of claim 12, wherein the user interface is configured to display the increment for the count for the item, (see Vargas, ¶ 103)(Management console 903).
14. The method of claim 13, wherein the user interface is configured to display a history of the increment each time the quantity of the quantity field is increased, (see Vargas, ¶ 4)([Barcodes] can also be used to keep track of objects and people).
15. The method of claim 11, wherein the second controller is further configured to change the quantity of the item corresponding to the single button out of the plurality of buttons in response to the instruction.
The item quantity selected by which single button is considered to be a design choice.
16. The method of claim 11, wherein the second controller is further configured to determine the quantity of the item based on a combination of two buttons out of the plurality of buttons actuated, and increment the count for the item by the quantity.
The item quantity selected by which combination of two buttons is considered to be a design choice.
17. The method of claim 16, wherein the user interface is configured to display the increment for the count for the item, (see Vargas, abstract)( Embodiments have integrated interactivity, including a touchscreen display and separate buttons that can be used to operate the optical detector and input data into an integrated computing device).
18. The method of claim 17, wherein the user interface is configured to display a history of the increment each time the quantity of the quantity field is increased, (see Vargas, abstract)( Embodiments have integrated interactivity, including a touchscreen display and separate buttons that can be used to operate the optical detector and input data into an integrated computing device).
19. The method of claim 16, wherein the user interface is configured to display icons corresponding to the actuated buttons.
Which icons correspond to which buttons is considered to be a design choice.
20. The method of claim 16, wherein the second controller is further configured to change the quantity of the item corresponding to the combination of buttons in response to the instruction, the first communication interface is further configured to transmit a second instruction to the terminal device, the user interface further displays a quantity field for indicating a quantity of the item scanned by the scanner, and the second controller is further configured to increase the quantity of the quantity field by the number of the item count associated to the combination of the two or more of the plurality of buttons, when the second instruction indicates that the two or more of the plurality of buttons were pressed simultaneously for the first period of time, (see Vargas, ¶ 4, 5 “universal product code (UPC) barcodes are pre-printed on most items and are used for inventory” “taking inventory”).
The item quantity selected by which two or more of the plurality of buttons were pressed simultaneously for the first period of time is considered to be a design choice.
As per claims 1-10, these claims contain the same or similar features as claims 11-20 as rejected above, and therefore the above rejections are applied to the remaining claims herein by reference.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US-20140249944-A1 and US-20090266898-A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL S GLASS whose telephone number is (571)272-7285. The examiner can normally be reached M-F, 9-5.
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/RUSSELL S GLASS/Primary Examiner, Art Unit 3627