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 .
The claim set of claims 1-16, filed on 10/2/2024, is acknowledged and considered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/2/2024 was filed after the mailing date of the Claims on 10/2/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. US 12137168. Although the claims at issue are not identical, they are not patentably distinct from each other because
both current application 18/904443 and US Patent US 12137168 include similar features such as a request for an exclusive digital payment instrument includes a first set of authentication credentials and a second set of authentication credentials, a first and second verification process using at least the first and second set of authentication credentials, where in response to successful results of both the first verification process and the second verification process, generating the digital payment instrument with the digital artwork associated with the NFT as a face of the digital payment instrument, and the server transmitting the digital payment instrument with the digital artwork as the face to the device where the digital payment instrument is stored in the blockchain wallet. Thus, the elements of claims 1-16 of the current application 18/904443 contains all elements of claims 1-16 of US Patent 12137168. Claims 1-16 of the current application 18/904443 is anticipated by claims 1-16 of US Patent 12137168.
Allowable Subject Matter
Claims 1-20 are allowed over prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Leynna Truvan whose telephone number is (571)272-3851. The examiner can normally be reached Monday-Friday 9:00AM-5:00PM, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Hirl can be reached at 571-272-3685. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Leynna Truvan
Examiner
Art Unit 2435
/L.TT/Examiner, Art Unit 2435
/JOSEPH P HIRL/Supervisory Patent Examiner, Art Unit 2435