CTNF 18/949,631 CTNF 83145 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 12-151 AIA 26-51 12-51 Status of Claims Claims 1-19 filed November 15, 2024 are pending. Double Patenting 08-33 AIA 3. 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). 4. 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). 5. 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. 6. 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. 7. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 7-8, 11, 13-14, 17, and 26-29 of U.S. Patent 11,710,113 and claims 1-17 of U.S. Patent 12,147,959. In fact, the ‘959 and ‘113 patents are more detailed and more specific and encompasses almost all of the elements of the broader, current ‘631 application as seen below. 8. This is an obviousness nonstatutory double patenting rejection because although the conflicting claims are not identical, they are not patentably distinct from each other because the claimed limitations from the present application and U.S. Patents 12,147,959 and 11,710,113 above are significantly similar and the claimed features seem to be identical with various obvious alternate methods. The omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375. For these reasons, claims 1-19 of the instant application are not identical to claims 1-2, 5, 7-8, 11, 13-14, 17, and 26-29 of U.S. Patent 11,710,113 and claims 1-17 of U.S. Patent 12,147,959, but they are not patentably distinct. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 9. 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 10. Claims 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. 11. Step 1 Statutory Category: Claims 1-12 are directed to a system, claims 13-17 are directed to a method, and claims 18-19 are directed to a non-transitory machine readable medium, all of which are statutory. Claims 1-19 are statutory classes of invention. 12. Step 2A – Prong 1: Judicial Exception Recited: Nevertheless, independent claims 1, 13, and 18 recite an abstract idea of location based register rules. The independent claims 1, 13, and 18 recite the following limitations which fall under commercial or legal interactions: …; …; … being operatively coupled to an… configured to scan machine-readable elements associated with items and the at least one… at different retail stores, the… including a location-based ruleset regulating sales of the items in a first geographic location that includes an individual retail store, of the different retail stores at different geographic locations, in which the… is located and a rule group to item map file for the individual retail store that maps rule group information to corresponding item information, the rule group information including one or more rules associated with the sale of the items in the individual retail store; wherein the… is configured to execute instructions to: receive an identifier by the… from the scanned item to be purchased; communicate the identifier to the…; receive from the… a first rule, of the one or more rules, associated with the identifier of the scanned item based on the location-based ruleset regulating sales of items in the first geographic location that includes the retail store in which the… is located and the rule group to item map file; and trigger a first action based on the first rule to apply the first rule in completing the sale of the item. 13. According to the MPEP, "Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Clearly, location based register rules falls under sales activities, therefore commercial or legal interactions. If the claim limitations, under the broadest reasonable interpretation, covers performance of the limitations as a commercial or legal interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. 14. Step 2A – Prong 2: Practical Application: This judicial exception is not integrated into a practical application because the claim as a whole merely recites location based register rules with generally recited computer elements such as a display, memory, computer processor, optical machine reader, POS Controller Servers, and POS registers, which in these steps are recited at a high-level of generality such that it amounts to more than mere instructions to apply the exception using a generic computer component, and are merely invoked as tools for location based register rules. Accordingly, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computing environment is not a practical application of the abstract idea, and does not take the claim out of the Commercial or Legal Interactions subgrouping of Certain Methods of Organizing Human Activity grouping. The claims are directed to an abstract idea. 15. Step 2B – Inventive Concept: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered individually and as an ordered combination, they do not add significantly more (also known as “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a display, memory, computer processor, optical machine reader, POS Controller Servers, and POS registers, to perform these steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered individually and as an ordered combination as there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claims are not patent eligible. 16. Regarding dependent claims 2, 4, 5-6, 12, 14, 16, 17, and 19, although these claims recite a generally recited POS register and POS Controller Server, these claims merely narrow the abstract idea of location based register rules, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea. 17. Regarding dependent claims 3 and 15, although these claims recite a generally recited POS register, these claims merely narrow the abstract idea of location based register rules, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea. 18. Regarding dependent claims 7 and 9 and 11, these claims merely narrow the abstract idea of location based register rules, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea. 19. Regarding dependent claim 8, although this claim recites generally recited POS registers, cashier-controller register, and a self-service register, this claim merely narrows the abstract idea of location based register rules, and this claim neither integrates into a practical application nor contains additional elements which amount to significantly more than the abstract idea. 20. Regarding dependent claim 10, although this claim recites a generally recited POS Controller Server, this claim merely narrows the abstract idea of location based register rules, and this claim neither integrates into a practical application nor contains additional elements which amount to significantly more than the abstract idea. 21. Therefore, the limitations of the claims, when viewed individually and in ordered combination, are directed to ineligible subject matter. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 22. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 07-20-aia AIA 23. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 07-23-aia AIA 24. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA 25. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA 26. Claim s 1-19 are rejected are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al (2016/0247135) in view of Perry et al (2015/0332242) and Haight et al (US 2015/0074765) . 27. Re Claims 1, 13, 18: Miller discloses: a display (see [0039] touchscreen); a memory (see [0017] memory); and at least one computer processor, the at least one computer processor being in communication with a POS Controller Server, of multiple different POS Controller Servers communicatively coupled with POS registers at different retail stores, the POS Controller Server including a location-based ruleset regulating sales of the items in a first geographic location that includes an individual retail store, of the different retail stores at different geographic locations (see [0021] store server connected to POS terminals, [0017] processor); receive from the POS Controller Server a first rule, of the one or more rules, associated with the identifier of the scanned item based on the location-based ruleset regulating sales of items in the first geographic location that includes the retail store in which the POS register is located and the rule group to item map file (see [0027-0029] rules); and trigger a first action based on the first rule to apply the first rule in completing the sale of the item (see [0034] rules may be applied for each plurality of periods). However, Miller fails to disclose the following. Meanwhile, Perry teaches: being operatively coupled to an optical machine reader configured to scan machine-readable elements associated with items (see [0033] discloses scanning of items); wherein the POS register is configured to execute instructions to: receive an identifier by the optical machine reader from the scanned item to be purchased (see [0033] discloses scanning of items, [0029] transaction capability based on data associated with login activity which includes which items have been scanned and therefore item identifier, [0058] item sale restrictions, relevant laws information, [0041] terminal identifier); communicate the identifier to the POS Controller Server (see [0041] terminal identifier). From the teaching of Perry, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Miller’s age verification data monitoring and alerting with Perry’s teaching of an optical machine reader in order for “… determining an availability of a transaction capability of a point-of-sale terminal… (see Perry Abstract).” However, Miller and Perry fail to disclose the following. Meanwhile, Haight teaches: in which the POS register is located and a rule group to item map file for the individual retail store that maps rule group information to corresponding item information, the rule group information including one or more rules associated with the sale of the items in the individual retail store (see [0030] mappings to register and store information or settings for use with a point of sale application where settings include rules). From the teaching of Haight, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify Miller’s age verification data monitoring and alerting with Perry’s reader and further with Haight’s teaching of creating a rule group in order for configuring point of sale devices for specific locations. 28. Re Claims 2, 14: Miller discloses wherein the POS register in communicating the identifier of the item is configured to communicate over a distributed communications network the identifier to the POS Controller Server located remote from the POS register (see [0021] controller connected to register). 29. Re Claims 3, 15: Miller discloses wherein the POS register in triggering the first action based on the first rule to apply the first rule comprises blocking the completion of the sale of the item until the first rule is satisfied (see [0027] it is inherent the transaction process has already started, and a manager (someone with supervisory authority) can disallow certain types of age verification input or increase scrutiny during age verification to disallow the sale or make sure the rule is satisfied). 30. Re Claims 4, 16: Miller discloses wherein the POS register in POS in executing instructions is configured to: receive a different identifier of a different item to be purchased through the POS register; communicate the different identifier to the POS Controller Server; receive from the POS Controller Server a second rule, of the one or more rules, associated with the different identifier based on the location-based ruleset regulating the sales of the items in the first geographic location and the rule group to item map file; and trigger a second action, that is different than the first action, based on the second rule in applying the second rule prior to completing the sale of the different item (see [0034] rules may be applied for each plurality of periods). 31. Re Claim 5: Miller discloses wherein the POS register is associated with the POS Controller Server of the multiple POS Controller Servers that are located at the different geographic locations, wherein each of the multiple POS Controller Servers is configured to receive as input a respective location-based ruleset file and a respective rule group to item map file associated with the respective one of the different retail stores with which the respective one of the multiple POS Controller Servers is associated (see [0021] server connected to register). 32. Re Claims 6, 17, 19: Miller discloses wherein the POS register, in receiving the first rule, receives the first rule from the POS Controller Server based on the location-based ruleset identified by a decision management center communicatively coupled over a communications network with the POS Controller Server and configured to query one or more databases, storing different location-based rulesets regulating sales of items in a plurality of geographic locations, retrieve the location-based ruleset and communicate the location-based ruleset to the POS Controller Server (see [0020] remote data processing center). 33. Re Claim 7: Miller discloses wherein the location-based ruleset comprises at least one of age restrictions on purchasing the item, health warnings on the item in the first geographic location and rules of sale in the retail store based on the first geographic location (see [0011] age verification of input data). 34. Re Claim 8: Miller discloses wherein the POS registers comprises at least one of a cashier-controller register and a self-service register (see [0021] standard cashier operated POS terminals and self-checkout terminals). 35. Re Claim 9: However, Miller and Perry fail to disclose the following. Meanwhile, Haight teaches wherein the location-based ruleset and the rule group to item map file are periodically following scheduled execution of a batch file (see [0077] discloses batch files). From the teaching of Haight, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify Miller’s age verification data monitoring and alerting with Perry’s reader and further with Haight’s teaching of batch files in order for processing more efficiently. 36. Re Claim 10: Miller discloses wherein the location-based ruleset and the rule group to item map file are combined and into a single file and communicated to the POS Controller Server (see [0027] discloses combining files or data). 37. Re Claim 11: However, Miller and Perry fail to disclose the following. Meanwhile, Haight teaches wherein the rule group to item map file corresponds to the first geographic location and defines the mapping of associations between one or more of the rule group information to each item of a set of items of the items sold in the retail store (see [0030] mappings to register and store information or settings for use with a point of sale application where settings include rules). From the teaching of Haight, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify Miller’s age verification data monitoring and alerting with Perry’s reader and further with Haight’s teaching of mapping in order for processing more efficiently. 38. Re Claim 12: Miller discloses wherein the POS register comprises the POS Controller Server (see [0010, 0021] server). Examiner Notes 39. The Examiner suggests filing a terminal disclaimer to obviate the double patenting rejection. The Examiner first suggests mirroring all of the independent claims (make sure each element or limitation is in all of the independent claims). The Examiner suggests clarifying what rule group information, item map file, rules, identifier, and first action exactly are. Then, the Examiner suggests incorporating dependent claims 5 (dependent on 3 and 4), 6, 9, and 10 together into the independent claims. 40. Finally, the Examiner suggests incorporating more hardware from the Specification and any unique arrangements of hardware, unique hardware, or unique ways the hardware is communicating. The aforementioned claim suggestions, in combination together, is suggested to help advance prosecution forward, although further search, examination, and consideration is required . Conclusion 07-96 AIA 41. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Cortada ( The Essential Manager: How to Thrive in the Global Information Jungle, NPL) is found to be the most pertinent NPL prior art . 42. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAWAAD HAIDER whose telephone number is (571)272-7178. The examiner can normally be reached Mon-Fri 8 AM to 5 PM. 43. 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. 44. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian 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. 45. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /FAWAAD HAIDER/Primary Examiner, Art Unit 3627 Application/Control Number: 18/949,631 Page 2 Art Unit: 3627 Application/Control Number: 18/949,631 Page 3 Art Unit: 3627 Application/Control Number: 18/949,631 Page 4 Art Unit: 3627 Application/Control Number: 18/949,631 Page 5 Art Unit: 3627 Application/Control Number: 18/949,631 Page 6 Art Unit: 3627 Application/Control Number: 18/949,631 Page 7 Art Unit: 3627 Application/Control Number: 18/949,631 Page 8 Art Unit: 3627 Application/Control Number: 18/949,631 Page 9 Art Unit: 3627 Application/Control Number: 18/949,631 Page 10 Art Unit: 3627 Application/Control Number: 18/949,631 Page 11 Art Unit: 3627 Application/Control Number: 18/949,631 Page 12 Art Unit: 3627 Application/Control Number: 18/949,631 Page 13 Art Unit: 3627 Application/Control Number: 18/949,631 Page 14 Art Unit: 3627 Application/Control Number: 18/949,631 Page 15 Art Unit: 3627 Application/Control Number: 18/949,631 Page 16 Art Unit: 3627 Application/Control Number: 18/949,631 Page 17 Art Unit: 3627
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