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
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 5 (which depends on independent claim 2), 3, 4, 7, 8, 12 (which depends on independent claim 9), 10, 11, 14, 15, 19 (which depends on independent claim 16), 17, 18, 21, and 22 and are rejected on the ground of non-statutory double patenting as being unpatentable over claim 5 (which depend on independent claim 1), 2, 3, 7, 6, 12 (which depends on independent claim 8), 9, 10, 14, 13, 19 (which depend on independent claim 15), 16, 17, 21, and 20 respectively of U.S. Patent No. 12,230,047. The claim element identifying a set of non-embossed characters is a species of the reference claim element identifying a set of characters which is a genus, and the corresponding reference specification describes a tangible embodiment that falls within the boundary of the claim element that includes the non-embossed characters (See for example, col. 6, lines 8-18). Therefore, the reference claim anticipates identifying a set of the non-embossed characters. See:
In re Vogel (CCPA 1970): “It may not describe any physical thing and indeed may encompass physical things not yet dreamed of. How can it be obvious or not obvious to modify a legal boundary? The disclosure, however, sets forth at least one tangible embodiment within the claim, and it is less difficult and more meaningful to judge whether that thing has been modified in an obvious manner. It must be noted that this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. §103, since only the disclosure of the invention claimed in the patent may be examined.”
MPEP 804 II.B.2.(a): “For example, assume that the claim in a reference patent is directed to a genus of compounds, and the application being examined is directed to a species within the reference patent genus. If the reference patent includes a disclosure of several species within the scope of the reference genus claim, that portion of the disclosure should be analyzed to determine whether the reference patent claim, as properly construed in light of that disclosure, anticipates or renders obvious the claim in the application being examined. Because that portion of the disclosure of the reference patent is an embodiment of the reference patent claim, it may be helpful in determining obvious variations of the reference patent claim.”
Claims 6, 13, and 20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 5, 12, and 19 respectively of U.S. Patent No. 12,230,047 in view of Artman, et al. (US 10,325,253 B2). Application claims 6, 13, and 20 distinguish from claims 5, 12, and 19 of the patent only in that they recite applying an optical character recognition (OCR ) algorithm to the image. However, applying OCR algorithm to an image is extremely well known as evidenced by Artman, et al. (See for example, col. 10, lines 52-67). Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the method, system, and a non-transitory computer-readable storage medium of the ‘253 patent such that it would apply an extremely well-known OCR algorithm to the image. One having ordinary skill would have been motivated to make such modification so that various information printed on the card may be extracted by applying OCR to the image, as per the teaching of Artman, et al.
Allowable Subject Matter
Claims 2-22 would be allowable if applicant overcomes the rejection under obviousness double patenting by way of an amendment or filing a terminal disclaimer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL G MARIAM whose telephone number is (571)272-7394. The examiner can normally be reached M-F 7:30-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mathew Bella can be reached at (571)272-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL G MARIAM/Primary Examiner, Art Unit 2675
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