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 .
Status of Claims
The amendment filed on 02/06/2025 is acknowledged.
New claims 2-18 are added per applicant’s filing of 02/06/2025.
Claims 1-18 are pending. Claims 1-18 have been examined.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure
The information disclosure statement(s) (IDS) submitted on 12/31/2024, 05/23/2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
Claim Objection
Claims 6 and 13 are objected to because of the following informalities:
In claims 6 and 13, “wherein the wake-up signal is a transmitted from a second radio” should be “wherein the wake-up signal is [[a]] transmitted from a second radio” For purposes of examination, the claims are being interpreted “wherein the wake-up signal is [[a]] transmitted from a second radio”.
Appropriate correction is required.
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 1-14 are rejected are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 12,217,238 (“the ‘238 patent”) in view of Patole et al. (US 11,448,747B2 (“Patole”)).
Claims 1-7 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 1 of the ‘238 patent recites:
A method for electronic receipt transfer via ultra-wideband electronic radio technology, comprising:
causing, by a payment terminal computer program executed by a payment terminal comprising a computer processor, a wake-up signal to be transmitted, wherein the wake-up signal causes customer electronic device UWB radios on one or more customer electronic devices to be turned on or activated;
causing, by the payment terminal computer program, an ultra-wideband (UWB) radio to transmit a range request signal from a first antenna;
receiving, by the payment terminal computer program and from each of the one or more customer electronic devices comprising the customer electronic device UWB radios, a pair of replies to the range request signal, the pair of replies comprising a first reply signal received at the first antenna and a second reply signal received at a second antenna;
determining, by the payment terminal computer program, a distance between the UWB radio and each customer electronic device based on a time of flight for the range request signal and the pair of reply signals;
selecting, by the payment terminal computer program, one of the one or more customer electronic devices that has the distance that is closest to the UWB radio;
communicating, by the payment terminal computer program and using the UWB radio, a request for approval for an electronic receipt transfer to the selected customer electronic device;
receiving, by the payment terminal computer program and using the UWB radio, an approval message for the electronic receipt transfer from the selected customer electronic device without customer contact information for customer; and
communicating, by the payment terminal computer program and using the UWB radio or a RF radio, an electronic receipt for a transaction at the payment terminal to the selected customer electronic device.
Claim 1 of the ‘238 patent differs from claim 1 of the present application as claim 1 of the ‘238 patent recites the payment terminal computer program selecting one of the one or more customer electronic devices that has the distance that is closest to the UWB radio, whereas claim 1 of the present application recites selecting one of the one or more customer electronic devices that is within a predetermined distance. Patole teaches selecting one of the one or more customer electronic devices that is within a predetermined distance (Fig. 1, Fig. 3; 6:25-35, 10:8-24). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of the ‘238 patent to incorporate the teachings of selection of a device that is within a predetermined distance, as disclosed in Patole, to enable a wide variety of location or proximity-based applications. (Patole: 14:15-16)
Claims 8-14 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 7 of the ‘238 patent recites:
A payment terminal device, comprising:
a memory comprising a payment terminal computer program; and
an ultra-wideband (UWB) radio comprising a plurality of antennas;
a processor configured to execute the payment terminal computer program;
wherein the payment terminal computer program is configured to:
cause a wake-up signal to be transmitted, wherein the wake-up signal causes customer electronic device UWB radios on one or more customer electronic devices to be activated;
cause the UWB radio to transmit a range request signal from a first antenna;
receive from each of the one or more customer electronic devices, each customer electronic device comprising a customer electronic device UWB radio, a pair of replies to the range request signal, the pair of replies comprising a first reply signal received at the first antenna and a second reply signal received at a second antenna;
determine a distance between the UWB radio and each customer electronic devices based on a time of flight for the range request signal and the pair of reply signals;
select a desired one of the one or more customer electronic devices based on the respective time of flight of the pair of replies;
communicate a request for approval for an electronic receipt transfer to the selected customer electronic device using the UWB radio;
receive an approval message for the electronic receipt transfer from the selected customer electronic device without customer contact information for customer using the UWB radio; and
communicate an electronic receipt for a transaction to the selected customer electronic device.
Claim 7 of the ‘238 patent differs from claim 8 of the present application as claim 7 of the ‘238 patent recites the payment terminal computer program being configured to select one of the one or more customer electronic devices that has the distance that is closest to the UWB radio, whereas claim 8 of the present application recites being configured to select one of the one or more customer electronic devices that is within a predetermined distance. Patole teaches selecting one of the one or more customer electronic devices that is within a predetermined distance (Fig. 1, Fig. 3; 6:25-35, 10:8-24). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of the ‘238 patent to incorporate the teachings of feature of selection of a device that is within a predetermined distance, as disclosed in Patole, to enable a wide variety of location or proximity-based applications. (Patole: 14:15-16)
Claims 2 and 9 of the present application
The limitations of claims 2 and 9 of the present application are included in claim 3 of the ‘238 patent.
Claims 3 and 10 of the present application
The limitations of claims 3 and 10 of the present application are included in claim 4 of the ‘238 patent.
Claims 4 and 11 of the present application
The limitations of claims 4 and 11 of the present application are included in claim 5 of the ‘238 patent.
Claims 5 and 12 of the present application
The limitations of claims 5 and 12 of the present application are included in claim 6 of the ‘238 patent.
Claims 6-7 and 13-14 of the present application
The limitations of claims 6-7 and 13-14 of the present application are included in claim 1 of the ‘238 patent. Furthermore, the expressions in claims 6-7, 13-24 of the present application, “the wakeup signal is transmitted from a second radio” and “the wakeup signal is transmitted from the UWB radio”, do not describe previous acts of transmitting and do not differentiate the claims from the prior art.
Claims 15-18 are rejected are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,217,238 (“the ‘238 patent”) in view of Sierra et al. (US 11,405,185B2 (“Sierra”)).
Claim 15 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 7 of the ‘238 patent recites:
A payment terminal device, comprising:
a memory comprising a payment terminal computer program; and
an ultra-wideband (UWB) radio comprising a plurality of antennas;
a processor configured to execute the payment terminal computer program;
wherein the payment terminal computer program is configured to:
cause a wake-up signal to be transmitted, wherein the wake-up signal causes customer electronic device UWB radios on one or more customer electronic devices to be activated;
cause the UWB radio to transmit a range request signal from a first antenna;
receive from each of the one or more customer electronic devices, each customer electronic device comprising a customer electronic device UWB radio, a pair of replies to the range request signal, the pair of replies comprising a first reply signal received at the first antenna and a second reply signal received at a second antenna;
determine a distance between the UWB radio and each customer electronic devices based on a time of flight for the range request signal and the pair of reply signals;
select a desired one of the one or more customer electronic devices based on the respective time of flight of the pair of replies;
communicate a request for approval for an electronic receipt transfer to the selected customer electronic device using the UWB radio;
receive an approval message for the electronic receipt transfer from the selected customer electronic device without customer contact information for customer using the UWB radio; and
communicate an electronic receipt for a transaction to the selected customer electronic device.
Claim 7 of the 238 patent differs since it fails to recite a second radio as part of the claimed structures of the payment terminal device and the second radio being used in wake-up signal transmission. Sierra discloses a second radio comprised in the device and wake-up signal being transmitted using the second radio (Sierra: Fig. 2B; 5:19-39, 6:59-7:7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of the ‘238 patent to incorporate the teachings of payment terminal enabled with UWB and second radio, as disclosed in Sierra, to protect the privacy and security in ranging operations. (Sierra: 1:29-30)
Claim 16 of the present application
The limitations of claim 16 of the present application are included in claim 10 of the ‘238 patent.
Claim 17 of the present application
The limitations of claim 17 of the present application are included in claim 11 of the ‘238 patent.
Claim 18 of the present application
The limitations of claim 18 of the present application are included in claim 12 of the ‘238 patent.
Allowable Subject Matter
Claims 1-18 would be allowable if amended to overcome the claim objections, and a terminal disclaimer is filed on the present application to overcome the double patenting rejections above.
The closest prior art of record is US 2021/0312424A1 to Lee et al. (hereinafter “Lee”)). Lee teaches a payment terminal computer program executed by a payment terminal comprising a computer processing causing a wake-up signal to be transmitted, causing an ultra-wideband (UWB) radio to transmit a range request signal from a first antenna, receiving replies to the range request signal, determining a distance between the UWB radio and each customer electronic device based on a time of flight for the range request signal and reply signals, selecting one customer electronic device, communicating an electronic receipt for a transaction to the selected customer electronic device, as well as the payment terminal device comprising a memory, an ultra-wideband (UWB) radio comprising a plurality of antennas, a second radio and a processor (¶¶16, 19, 22, 24-25, 27-29, 28-32, 35, 37-38).
US 11,470,444B2 to Burowski et al. (hereinafter “Burowski”)) is also of interest. Burowski discloses receiving from each of one of customer electronic devices comprising customer electronic device UWB radios, a pair of replies to the range request signal, the pair of replies comprising a first reply signal received at the first antenna and a second reply signal received at a second antenna. (4:61-5:4, 5:15-19, 5:40-41, 11:39-52, 21:11-14)
US 11,448,747B2 to Patole et al. (hereinafter “Patole”) is also of interest. Patole teaches selecting one of the one or more customer electronic devices that is within a predetermined distance. (Fig. 1, Fig. 2, Fig. 3; 6:25-35, 8:58-9:38, 10:8-24, 16:50-17:9)
US 2021/0072373A1 to Schoenberg et al. (hereafter “Schoenberg”) is also of interest. Schoenberg discloses transmitting a range request signal from a first antenna, receiving a pair of replies to the range request signal and the pair of replies comprising a first reply signal received at the first antenna and a second reply signal received at a second antenna, determining a distance between the UWB radio and each customer electronic device based on time of flight for the range request signal and the pair of reply signals. (Fig. 3; ¶¶47-53)
US 11,405,185B2 to Sierra et al. (hereinafter “Sierra”) is also of interest. Sierra discloses a second radio comprised in the device and wake-up signal being transmitted using the second radio (Sierra: Fig. 2B; 5:19-39, 6:59-7:7).
Therefore, the prior art, neither singly nor in combination, does not teach or fairly suggest the combined sequence of features performing by the payment terminal involving causing a wake-up signal to be transmitted, wherein the wake-up signal causes customer electronic device UWB radios on one or more customer electronic devices to be turned on or activated, selecting one of the one or more customer electronic devices, communicating, using the UWB radio, a request for approval for an electronic receipt transfer to the selected customer electronic device, receiving, using the UWB radio, an approval message for the electronic receipt transfer from the selected customer electronic device without customer contact information for customer, and communicating, using the UWB radio or a RF radio, an electronic receipt for a transaction at the payment terminal to the selected customer electronic device.
The following prior art is also considered pertinent to the claimed invention:
DI (CN 114581068) teaches a payment method and device based on UWB and relates to the technical field of digital currency.
Foster et al. (US 11,019,567B2) teaches methods for performing power management of a multi-interface transponder device.
Smets et al. (US 11,470,659B2) teaches contactless communications session initiation between devices.
Seifert et al. (US 7,487,912B2) teaches electronic receipting.
Conclusion
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/CHENYUH KUO/Primary Examiner, Art Unit 3697