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 communication is Final Office Action in response to amendment and remarks filed on 3/3/2026. Claims 1-20 have been examined and are pending.
Response to Amendment
The amendment filed on 3/3/2026 cancelled no claim. No claims were previously cancelled. No new claims are added. Claim 1, 4, 6-8, 11, 13-15, 18, 20 were amended. Therefore, claims 1-20 are pending and addressed below.
Applicant’s amendments made to claim 1, 8, 15, and arguments filed on 3/3/2026 are not sufficient to obviate the double patenting rejection, set forth in the previous office action. Therefore, Examiner maintains the double patenting rejections on claims 1-20.
Response to Arguments
Regarding the double patenting rejections, the argument has been fully considered and is not persuasive.
The amendment made to independent claim 1, 8, 15, changes the statutory type (35 U.S.C. 101) double patenting rejection to the nonstatutory double patenting rejection which can be overcome by filing a terminal disclaimer and get approved.
The newly added procedural limitations in amended independent claim 1, 8, 15, reciting the redemption process by “debiting the amount of the reward credits from the account holder’s account”, does not resolve the double patenting issues.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same subject matter, perform the same method steps, and a person of ordinary skill in the art would not be free to practice one of the claimed inventions without infringing upon the other invention.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the application to include “redemption by debiting the amount of the reward credits from the account holder’s account…”, claimed in this application as taught or suggested by claims 1, 8, 15 of patent application 18/329484 (now Patent 12,118,582), because instant application claims 1-20 would have been obvious over the reference claims 1-21 in allowed application 18/329484 (now Patent 12,118,582). Thus, the double patenting rejection is maintained. An approved Terminal Disclaimer 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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of allowed Application No. 18/329484 (reference application, now Patent 12,118,582). Although the claims at issue are not identical, they are directed to the same invention.
This is a nonstatutory double patenting rejection because the patentably indistinct claims have in fact been patented.
As discussed above, the scope of claim 8 (method) of the present application and allowed claim 8, (method) respectively of U.S. Application No. 18/329484 (now Patent 12,118,582) are practically identical.
Independent claim 1, 15 is similarly rejected.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same subject matter, perform the same method steps, and a person of ordinary skill in the art would not be free to practice one of the claimed inventions without infringing upon the other invention.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the application to include “redemption by debiting the amount of the reward credits from the account holder’s account…”, claimed in this application as taught or suggested by claims 1, 8, 15 of patent application 18/329484 (now Patent 12,118,582), because instant application claims 1-20 would have been obvious over the reference claims 1-21 in allowed application 18/329484 (now Patent 12,118,582). An approved Terminal Disclaimer is required.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Allowable Subject Matter
The instant continuation application has the allowable features presented in 18/329484 (now patent 12,118,582), filed 6/5/2023. As to the prior art rejections, upon further search and consideration, it is found that claims 1-20 is allowable subject to outstanding double patenting rejection.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with, and pending remedy to outstanding issues cited above. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The prior art made of record and relied upon is considered pertinent to applicant’s disclosure.
Chatterjee et al. (US 2021/0056579, teaches utilizing payment token to track reward),
Mitchell, Bruce (US 2015/0019317),
Mitchell, Bruce (US 2020/0387923, tracking transactions across multiple payment processing networks),
Antonucci (US 2003/0236704, teaches a system for customer loyalty, offers, and rewards platform establishment and management of operation with respect to predetermined spend activities).
Paul et al. (US 2004/0140361, teaches a universal club card and real time coupon validation.
Raghunathan (US 2010/0057580) teaches a consolidated system for consumer gift cards, prepaid purchase cards or loyalty cards (see abstract and Figure 2).
Conclusion
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 extension fee 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 SUN M LI whose telephone number is (571)270-5489. Fax is 571-270-6489. The examiner can normally be reached on Mon-Thurs, 8:30am--5pm
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, Kambiz Abdi, can be reached on 571-270-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUN M LI/
Primary Examiner, Art Unit 3685
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