DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This communication is a first office action non-final rejection on the merits. Claim(s) 1-17, as filed on 10/15/2024, are currently pending and have been fully considered below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-10, 17-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim(s) 9-10 recites dependency from claim 27, claims 12-17 recites dependency from claim 30; however, claims 27 and 30 are not present in the application. Because a dependent claim must refer back to a previous claim set forth in the same application, claims 9-10, 12-17 fails to clearly define its scope.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 9-10, 12-17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim(s) 9-10 recites dependency from claim 27, claims 12-17 recites dependency from claim 30, and thus do not reference back to a claim previously set forth.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Double Patenting
Statutory
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-17 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-17 of copending Application No. 18/915,911 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Non-statutory
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. US 12141775 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are broader than those in the issued patent. Therefore, because the claims in the instant application are broader than those in the issued patent, they are not patentably distinct from each other.
Allowable Subject Matter
Claims 1-17 are allowed over the prior art.
Palande et al (US20230131444A1, hereinafter Palande) is the closest prior art of the record.
Palande discloses a self-checkout terminal 110 including a scanner 120, a sensor 130 (camera), and sensor 135 (weight sensor); see Figure 1 and para. 15-22. The self-checkout 110 scanner 120 captures a indicia (barcode) of a candidate product 190,the self-checkout 110 camera 130 captures a physical characteristic of the product candidate 190 such as color pattern, barcode, size, and shape, and the self-checkout 110 the weight sensor 130 captures a weight of the product candidate 190, and send the sensors captured data as an electronic data to database 140 see par. 19, 27, 22. The electronic data obtained by the self-checkout sensors 120, 130, and 135 are access by the computer device 150. The computing device 150 also obtain reference physical characteristic information that is associated with at least one image of a reference product (identical to the candidate product 190) that is captured by the at least one sensor 130 during a scan of the reference product by the scanner 120 earlier in time relative to the scan of the candidate product 190. After the computing device 150 obtain the necessary electronic data and reference data, the computing device 150 correlates the electronic data corresponding to the actual physical characteristic information associated with the candidate product 190 to electronic data corresponding to the reference physical characteristic information associated with the reference product 190 captured on an earlier time, generates a similarity score, and determine if the result is above or below the predetermined similarity threshold (step 370). If score of the candidate product 190 is above a predetermined similarity threshold there is no ticket-switching indication, and if the similarity score of the candidate product 190 is below the predetermined similarity threshold there is ticket-switching indication. If there is ticket-switching indication, the computer device 150 transmit a signal that causes the self-checkout terminal 110 to halt operations relating to the processing of the purchase of the candidate product 190, and an alert pending the manual verification by the chaperone. In addition, the computing device 150 can also correlate the actual weight of the candidate product 190 that is measured by the weight sensor 135 to the reference weight associated with the candidate product 190, and indicate a discrepancy that exceeds a certain tolerated threshold, and also based on the correlation result, can also halt operations and alert to the self-checkout terminal, par. 22, 27, 62-67.
Regarding claims 1 and 8, although Palande disclose the product candidate being scanned, have images being captured, and weight being sensed; Palande does not disclose that the weight is sensed after the identifier being match with a listed of trigger items, and have a audible or visual interface to place the item on weight scale after the match, and to decide if a mitigation action should be triggered - determining that the identification of the item matches any of the one or more trigger items, generate a request to be provided audibly or visibly via a user interface, for the user to place the item on the weighing scale;
Regarding claim 11, although Palande disclose the product candidate 150 being scanned, have images being captured, and weight being sensed, Palande does not disclose that the weight is sensed after the identifier of the product candidate 190 not matching the identifier of the product candidate 190 on images, and request via visual and audible indication to place the item on the scale after the mismatch, to decide if a mitigation action should be triggered - based on determining that the first identification of the item does not match the second identification of the item, generate a request, to be provided audibly or visibly via a user interface, for the user to place the item on the weighing scale;
Therefore, the italic limitations in combination with the whole claims limitations are clearly claimed in the independent claim(s) 1, 8, and 11 are novel and unobvious.
Accordingly, dependent claim(s) 2-7, 9-10, 12-17 are allowed for the same reasons stated above.
According, claim(s) 1-17 are allowable over the prior art, however, the rejection under 35 USC 112 and Double Patenting rejection should be overcome in order to have the current application allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA DELIGI whose telephone number is (571)272-0503. The examiner can normally be reached on Monday-Friday 07:30AM-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, Florian (Ryan) Zeender can be reached on (571) 272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/VANESSA DELIGI/Patent Examiner, Art Unit 3627
/FLORIAN M ZEENDER/ Supervisory Patent Examiner, Art Unit 3627
Prosecution Insights