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 and 11-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 16 of U.S. Patent No. 12124905 in view of Webb et al. (US 20100025475). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants.
Claim 1 of the instant Application recites “A transaction instrument… body… aperture… cover… magnetic stripe… ribbon… graspable member… transmit at least a portion… destructively yield… wherein claim 5 of the ‘905 Patent recites “A transaction instrument… body… aperture… cover… graspable member… destructively yield… magnetic stripe… ribbon… graspable member… transmit at least a portion…”
Re claims 11-12, metal bodies/ heat sensitive components are routine and conventional in the art for expected results of durability and physical limitations of materials, and thus would have been obvious to one of ordinary skill in the art for such results.
Re claim 13, the limitations are drawn to matters of design choice/ variation wherein specifying designs to coordinate/ blend are within the ordinary skill in the art.
Claim 14 of the instant Application recites “A method of manufacturing… forming a body… forming an aperture… forming a cover… graspable member… destructively yield… magnetic stripe… forming a ribbon… destructively yield…” wherein claim 5 of the ‘905 Patent recites “… body… aperture… cover… graspable member… destructively yield… magnetic stripe… ribbon… graspable member… transmit at least a portion…”
Though the ‘905 Patent is silent to the first and second face comprising polymer layers, the Examiner note that polymer layers of a transaction card are routine and conventional. Webb et al. teaches such limitations (FIG. 7A+).
Prior to the effective filing date, it would have been obvious to one of ordinary skill in the art to combine the teachings to use known material for known products for expected results of cost, durability, flexibility, expected performance, compliance with known manufacturing, etc.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 12- 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maiman et al. (US 10891531) in view of Hanus (US 20050220377) and Webb et al. (US 20100025475).
Re claim 1,
Maiman et al. teaches a transaction instrument comprising:
a body that defines a first face and a second face, wherein the first face and the second face are on opposing sides of the body (FIG. 2+ and the 2 sides of the card);
an aperture in the body that provides access to a portion of an interior of the body (FIG. 5 shows an opening); and
a magnetic stripe disposed on the second face (stripe 103); and
a ribbon traversing under a portion of the magnetic stripe (magnetic stripe 103 is part of a separate component or layer disposed atop or beneath the second exterior layer 122),
wherein the ribbon is connected at a first end to the graspable member, such that when the graspable member is acted on by a pulling force, the graspable member applies a corresponding second force to the ribbon (FIG.4 describes that the free end 144 of the tear element can have a sticker or tab, interpreted as a graspable member),
wherein the ribbon is configured to transmit at least a portion of the second force applied to the ribbon to the magnetic stripe (tear element is used to tear/ break the stripe); and
wherein the portion of the magnetic stripe under which the ribbon traverses is configured to destructively yield in response to the portion of the second force applied to the ribbon (stripe is torn through the ribbon being used with force applied thereto).
Maiman et al. is silent to a cover over the aperture, wherein the cover is configured to destructively yield in response to a first force applied to the cover, and wherein the cover is configured to provide access to a graspable member when the cover destructively yields to the first force.
Hanus teaches a cover over an aperture (portion of top of 11) that destructively yields in response to a first force applied to provide access to a graspable member when the cover yields (FIG. 4 at 60).
Prior to the effective filing date, it would have been obvious to combine the teachings to have an alternative way to rip/ tear via a graspable member, such as one that does not stick out from the surfaces or does not require a sticker/ tab but that is unitary to the structure).
Re the newly added limtaitons of the first and second polymer layers, Maiman et al./ Hanus are silent to such limitations.
Webb et al. teaches such limitations via the abstract+ and FIG. 7A+ (which teach polymer layers on both sides of the card as is known and conventional in the art.
Prior to the effective filing date, it would have been obvious to one of ordinary skill in the art to combine the teachings for using known materials for known card manufacturing processes such as for durability, cost, ease of use/ manufacture, expected results, flexibility, aesthetics, etc.
Re claim 12, Maiman et al. teaches plastic (col 1, lines 525+) which weaken when heated, as known in the art with plastics and other card materials.
Re claim 13, though silent to designs of a cover, the Examiner notes that limitations drawn to aesthetics or design variation are well within the ordinary skill in the art. One would have been motivated for a cover to match would be to provide a way to make the card look like a traditional look and feel (preserving card appearance) for expected aesthetic results. Further, Maiman et al. teaches the tear element can be hidden to partially hidden by the exterior layers 118/122, thus obviating blending design to hide locations.
Re claim 14, the limitations have been discussed above re claim 1.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maiman et al./ Hanus/ Webb et al., as discussed above, in view of Maiman et al. (US 11062191).
The teachings of Maiman et al./ Hanus/ Webb et al. have been discussed above but are silent to metal.
Maiman et al. ‘191 teaches such limitations (col 1, lines 25+).
Prior to the effective filing date, it would have been obvious to one of ordinary skill in the art to combine the teachings to use with known material cards for acceptance and compatibility with existing cards.
Allowable Subject Matter
Claims 2-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: The prior art of record fails to teach the limitation of at least the chip assembly, attachment mechanism, structural weaknesses per claim 2, and the edge, chip assembly, structural weakness per claim 6.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive in light of the new art applied above.
Conclusion
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 DANIEL I WALSH whose telephone number is (571)272-2409. The examiner can normally be reached 7-9pm.
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, Steven Paik can be reached at 571-272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL I WALSH/Primary Examiner, Art Unit 2876
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