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
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 1-15 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-15 of prior U.S. Patent No. 12,165,467. This is a statutory double patenting rejection.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. US 11,756,370. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, Claim 1 of U.S. Patent No. US 11,756,370 also discloses the upper chip holder is configured to hold at least the rectangular plate shaped chip (the rectangular plate shaped chip can be held in the double chip tray in a flat position against a lower wall of the upper or lower chip holder.) but fails to teach that the lower chip holder is configured to hold at least the disc-shaped chip. Nevertheless, such modification would have been obvious to one of ordinary skilled in the art since claim 1 of U.S. Patent No. US 11,756,370 discloses the chip tray is configured hold a disc-shaped tray. Therefore, it would have been obvious to one of ordinary skilled in the art to modify claim 1 of U.S. Patent No. US 11,756,370 configured to lower chip holder to hold at least the disc-shaped chip since claim 1 U.S. Patent No. US 11,756,370 discloses that the chip tray is configured to hold disc shaped chips.
Pending dependent claims 2-11 is taught by claims 2-11 of U.S. Patent No. US 11,756,370 or would have been obvious over claims 2-11 of U.S. Patent No. US 11,756,370.
Similarly pending claims 13-15 would have been over claims 13-15 of U.S. Patent No. US 11,756,370.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The closest prior art, Gronau (US 2012/0241344) discloses a double chip tray (Figs. 5-9) comprising:
an RFID chip configured to read two types of chips (paragraphs 13, 21-22) of different shapes and/or sizes that incorporate RFID tags (circular gaming chips and other various shaped gaming chips, paragraph 14);
a lower chip holder configured hold the chips (lower housing assembly/tray, paragraphs 20-21, 24-25, Figs. 5-9).
an upper chip holder configured to hold the chips (top tray; paragraphs 19-22, 24-25, Figs. 5-9).
Gronau discloses that the double chip tray is designed to hold and read various shaped chips including disc shaped chips (circular gaming chips and other various shaped gaming chips; paragraphs 12-14); the upper chip holder holds at least the disc-shaped chip (Figs. 5-9). Gronau also teaches that the chips incorporates at least one or incorporates at least one or two RFID tags associated with a denomination of the chip (RFID microchips installed in the gaming chips, plaques or jetton, each chip has a unique tag that is encoded with the chips monetary value; paragraphs 2, 12, 21). The RFID chip reader is configured to read the RFID tags of the various type of chips (circular gaming chips and other various shaped gaming chips; paragraphs 12-14), in the double chip tray, and to determine a respective amount (paragraphs 2, 12, 21).
Miller (US 2007/0184898) discloses that plaques are rectangular, and chip trays can include rectangular slots to accommodate rectangular shaped jetton/plaques (paragraph 44).
However, Gronau in view of Miller fails to teach that the rectangular plate-shaped chip can be held in the double chip tray in a flat position against a lower wall of the lower or upper chip holder, and the RFID chip reader is configured to read the RFID tag of the rectangular plate-shaped chip placed in the flat position.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jasson H Yoo whose telephone number is (571)272-5563. The examiner can normally be reached M-F 9am-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, Peter Vasat can be reached at 571 270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASSON H YOO/ Primary Examiner, Art Unit 3715
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