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 .
Claim Status
Claims 1-20 are pending.
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 1-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of prior U.S. Patent No. 12,228,444 B2.
In the claim chart below, Claim 1 of the ‘444 Patent is analyzed with respect to the instant application. As is explained below, the claims are directed to the identical subject matter. 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-11, 13-14, 18, 20-27 of U.S. Patent No. 11,983,991. Although the claims at issue are not identical, they are not patentably distinct from each other as analyzed in the claim chart below:
Claim 1 of the Instant Application
Claim 1 of the ‘991 Patent
Claim 1 of the ‘705 Patent
The similarities and differences
A casino system in a casino configured to use a casino item including a radio-frequency identification (RFID) tag configured to store identification information, the casino system comprising:
A casino system in a casino configured to use a casino item including a radio-frequency identification (RFID) tag configured to store identification information, the casino system comprising:
A casino system in a casino configured to use a casino item including a radio-frequency identification (RFID) tag configured to store identification information, the casino system comprising:
The claims of the instant application are the same
a determination device configured to determine whether or not any piece of identification information in identification information prepared by a manufacturer of a plurality of casino items delivered from the manufacturer to the casino is read from the RFID tag on the casino item;
a determination device configured to determine whether or not the identification information read from the RFID tag matches identification information prepared by a manufacturer of a plurality of casino items delivered from the manufacturer to the casino, the plurality of casino items including the casino item;
a determination device configured to determine whether or not any piece of identification information in identification information prepared by a manufacturer of a plurality of casino items delivered from the manufacturer to the casino is read from the RFID tag on the casino item;
The instant claims recite a substantially the same
a registration device that is installed in the casino and is configured to, for the casino item which is to be used in the casino:
a registration that is installed in the casino and is configured to, for the casino item which is to be used in the casino:
a registration device that is installed in the casino and is configured to, for the casino item which is to be used in the casino:
The instant claim recites substantially the same as the ‘991 Patent and is identical to the ‘705 Patents
based on a determination by the determination device that a piece of identification information in the identification information prepared by the manufacturer is read from the RFID on the casino item, update a usable/unusable status of activation information related to the casino item to usable in a database; and
based on a determination by the determination device that the identification information read from the RFID tag of the casino item matches the identification information prepared by the manufacturer, update a usable/unusable status of activation information related to the casino item to usable in a database; and
based on a determination by the determination device that a piece of identification information in the identification information prepared by the manufacturer is read from the RFID on the casino item, update a usable/unusable status of activation information related to the casino item to usable in a database; and
The claims of the instant application recite a broader embodiment that recites any information read whereas the ‘991 Patent recites a specific embodiment that determines whether the information read form the RFID tag matches what was prepared by the manufacturer.
a verification device that is installed at a casino items handling location in the casino and is configured to:
A verification device that is installed at a casino items handling location in the casino and is configured to:
a verification device that is installed at a casino items handling location in the casino and is configured to:
read the identification information from the RFID tag of the casino item; and
Read the identification information from the RFID tag of the casino item; and
read the identification information from the RFID tag of the casino item; and
The instant claim recites substantially the same as the ‘991 Patent and is identical to the ‘705 Patents
verify, based on the identification information read from the RFID tag by the verification device, whether or not the usable/unusable status of the activation information related to the casino item is usable in the database.
verify, based on the identification information read from the RFID tag by the verification device, whether or not the usable/unusable status of the activation information related to the casino item is usable in the database.
verify, based on the identification information read from the RFID tag by the verification device, whether or not the usable/unusable status of the activation information related to the casino item is usable in the database.
The instant claim recites substantially the same as the ‘991 Patent and is identical to the ‘705 Patents
Although the claims at issue are not identical, they are not patentable distinct from each other because the patented claims recite substantially the same subject matter as the pending invention (instant Claims 1-20). That is, the rationale of In re Goodman applies here in that once Applicant has received a patent for a species or a more specific embodiment, Applicant is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent.
Regarding claim 2, the claim recites substantially the same subject matter as recited in Claim 2 of the ‘991 Patent.
Regarding claim 3, the claim recites substantially the same subject matter as recited in Claim 3 of the ‘991 Patent.
Regarding claim 4, the claim recites substantially the same subject matter as recited in Claim 4 of the ‘991 Patent.
Regarding claim 5, the claim recites substantially the same subject matter as recited in Claim 5 of the ‘991 Patent.
Regarding claim 6, the claim recites substantially the same subject matter as recited in Claim 6 of the ‘991 Patent.
Regarding claim 7, the claim recites substantially the same subject matter as recited in Claim 7 of the ‘991 Patent.
Regarding claim 8, the claim recites substantially the same subject matter as recited in Claim 9 of the ‘991 Patent.
Regarding claim 9, the claim recites substantially the same subject matter as recited in Claim 10 of the ‘991 Patent.
Regarding claim 10, the claim recites substantially the same subject matter as recited in Claim 11 of the ‘991 Patent.
Regarding claim 11, the claim recites substantially the same subject matter as recited in Claim 13 of the ‘991 Patent.
Regarding claim 12, the claim recites substantially the same subject matter as recited in Claim 14 of the ‘991 Patent.
Regarding claim 13, the claim recites substantially the same subject matter as recited in Claim 18 of the ‘991 Patent.
Regarding claim 14, the claim recites substantially the same subject matter as recited in Claim 20 of the ‘991 Patent.
Regarding claim 15, the claim recites substantially the same subject matter as recited in Claim 21 of the ‘991 Patent.
Regarding claim 16, the claim recites substantially the same subject matter as recited in Claim 22 of the ‘991 Patent.
Regarding claim 17, the claim recites substantially the same subject matter as recited in Claim 23 of the ‘991 Patent.
Regarding claim 18, the claim recites substantially the same subject matter as recited in Claim 25 of the ‘991 Patent.
Regarding claim 19, the claim recites substantially the same subject matter as recited in Claim 26 of the ‘991 Patent.
Regarding claim 20, the claim recites substantially the same subject matter as recited in Claim 27 of the ‘991 Patent.
For at least these reasons, claims 1-20 are not found to be patentably distinct from claims 1-7, 9-11, 13-14, 18, 20-27 of U.S. Patent No. 11,983,991.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN HSU whose telephone number is (571)272-7148. The examiner can normally be reached Monday - Friday 10:00-6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN HSU/EXAMINER, Art Unit 3715
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