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 following is a Non-Final Office Action in response to communications received on November 11, 2024 and December 11, 2024. Claims 21-40 are pending and addressed below.
Specification
For the record, Examiner acknowledges that the Specification submitted on November 11, 2024 has been accepted.
Drawings
For the record, Examiner acknowledges that the Drawings submitted on November 11, 2024 have been accepted.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,141,805. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1-16 of U.S. Patent No. 12,141,805 anticipate all of the limitations of claims 21-40.
Claims 21, 22 and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. 11,615,418. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1 and 11 of U.S. Patent No. 11,615,418 anticipate all of the limitations of claims 21, 22 and 30.
Allowable Subject Matter
Claims 21-40 would be allowable if rewritten or amended to overcome the rejection(s) under nonstatutory double patenting set forth in this Office action.
Claim 22 recites, inter alia, “receiving a warning associated with the first network operation; analyzing the first representation of the first image to detect an identifying characteristic; detecting the identifying characteristic in the second representation of the second image; and preventing access to an account related to the second network operation based on the detecting of the identifying characteristic in the second representation of the second image”.
The closest prior art of record are:
Muthukrishnan et al. (U.S. Pub. No. 2019/0364426) which discloses taking images during a transaction for fraud determination (paragraph [0080])
Tannenbaum et al. (U.S. Pub. No. 2007/0239614) which discloses capturing biometrics and storing with a transaction (paragraph [0063])
While the prior art does generally disclose associating biometrics with transactions for fraud, the prior art was not found to disclose the particular cited claim language of claim 22. Therefore, claim 22 is considered to recite allowable subject matter over the prior art. Claims 21 and 30, although different, are considered to recite allowable subject matter over the prior art for similar reasons to claim 22. Dependent claims 23-29 and 31-40 are considered to recite allowable subject matter over the prior art based on their dependency..
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Payne (U.S. Patent No. 6,072,894) – cited for teaching image capture of user applying for checking account – Fig. 5
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS J PLECHA whose telephone number is (571)270-7506. The examiner can normally be reached M-F 8-4:30.
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/THADDEUS J PLECHA/Examiner, Art Unit 2438