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 .
This office action is responsive to the amendment filed 09/16/2025.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 11-17 are objected to because of the following informalities:
Re claim 11, substitute “the cassette” with – a cassette -- (see line 6).
Claims 12-17 are objected to since they are dependent upon an objected claim, and inherit the problems of that claim.
Appropriate correction is required.
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 1-20 of U.S. Patent No. 12,100,256 (‘256). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claimed invention is somewhat a broader recitation of the ‘256 Patent. For instance, claim 1 of the present claimed invention and claim 1 of the ‘256 Patent, the Applicants claim:
A housing that facilitates a service operation for a transaction device, the housing comprising;
a transfer cassette interface structured to receive a cassette (see col. 35, lines 62-63); and
a transaction device interface structured to (see col. 36, line 1):
couple to a cassette port of the transaction device when the housing is disposed within a vault of the transaction device such that the housing is removably coupled to the transaction device via the transaction device interface (see col. 36, lines 2-6); and
responsive to the transfer cassette interface receiving the cassette, operably couple the cassette to a transaction device transport apparatus via the transfer cassette interface (see col. 36, lines 8-11).
As to claims 2-20 of the present claimed invention, the ‘256 Patent meets all the limitations as set forth in claims 1-20.
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.
Claim(s) 11 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (US 2018/0286164), cited by the applicants.
Regarding claims 11 and 17: Lee discloses a method of facilitating operations for a transaction device, the method comprising:
coupling an adapter housing (portable cassette holder 100) to the transaction device (automated teller machine 1) at a cassette port within a vault of the transaction device (1) such that a transaction device transport apparatus (112) is coupled to a transfer cassette interface via a transaction device interface (see figs. 1-3A; paras. 0034, 0041, 0044, 0052); and
responsive to the transfer cassette interface receiving the cassette, operably couple the cassette to the transaction device transport apparatus via the transfer cassette interface (see figs. 1-3A);
wherein coupling the adapter housing (100) to the transaction device (1) further comprising coupling the transaction device interface to the cassette port (see figs. 1-3A).
Response to Arguments
Applicant's arguments filed 09/16/2025 have been fully considered but they are not persuasive.
With respect to applicant’s arguments regarding the non-statutory double patenting rejection of claims 1-20, the examiner contends that although the claims at issue are not identical, they are not patentably distinct from each other because the present claimed invention is somewhat a broader recitation of the ‘256 Patent. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to use the teachings of claims 1-20 of the ‘256 Patent as a general teaching for a method of facilitating operations for a transaction device to perform the same functions as claimed by the present application. The instant claims obviously encompass the claimed invention of the ‘256 Patent and differ only in terminology. To the extent that the instant claims are broaden and therefore generic to the claimed invention of the ‘256 Patent.
With respect to applicant’s arguments that Lee fails to teach “coupling an adapter housing to a transaction device at a cassette port within a vault of the transaction device”, the examiner respectfully disagrees.
Lee discloses a portable cassette holder (100), which serves as an adapter as recited in the claim, coupled to a transaction device (1) at a cassette port (11) within a vault of the transaction device (para. [0034] describes “…the housing medium entrance 11 and the deposit/withdrawal unit 12 may be provided in many other locations of the housing 10. Fixing holes 13 may be formed on both sides of the housing medium entrance 11, and fixing protrusions 113 of the portable cassette holder 100 may be inserted into the fixing holes 13. In each of the fixing holes 13, there may be provided hooks 13a that are inserted into a locking groove 113a formed on the outer circumferential surface of each of the fixing protrusions 113 when the fixing protrusions 113 are inserted into the fixing holes 13”). Therefore, the examiner believes the claimed invention is taught by Lee.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Aoji (US 2013/0140133); Kobayashi (US 6,014,649); Sasaki (US 4,775,783)
THIS ACTION IS MADE FINAL. 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 APRIL A TAYLOR whose telephone number is (571)272-2403. The examiner can normally be reached Monday-Friday between 9am-6pm.
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 S 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/APRIL A TAYLOR/Examiner, Art Unit 2876
/THIEN M LE/Primary Examiner, Art Unit 2876