DETAILED ACTION
Summary
The present application is being examined under the pre-AIA first to invent provisions.
This is a first Office Action on the merits.
Claims 1-7 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites the limitation “said first detected capacitance change during said first time period” and “said second detected capacitance change during said second time period” in lines 6-8. There is insufficient antecedent basis for this limitation in the claim as it is unclear whether “said first detected capacitance change” and “said second detected capacitance change” are the same as “a detected capacitance change in a first pad during a first time period” recited in claim 2 and “a detected capacitance change in said first pad during a second time period” recited in claim 3. For purposes of examination, “said first detected capacitance change during said first time period” and “said second detected capacitance change during said second time period” has been interpreted as “the detected capacitance change during said first time period” and “the detected capacitance change during said second time period”.
Claim 4 recites the limitation "said first and second detections" in line 4. There is insufficient antecedent basis for this limitation in the claim as it is unclear whether “said first and second detections” are the same as “a detected capacitance change in a first pad during a first time period” and “a detected capacitance change in said first pad during a second time period” as recited in claims 2 and 3. For purposes of examination, “said first and second detections” has been interpreted as “said detected capacitance change during said first time period and said detected capacitance change during said second time period”.
Claim 5 is rejected by dependence.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,204,978 in view of FOO et al, US 8,226,001.
Claim 1 of the instant application and claim 1 of patent ‘978 claim substantially the similar subject matter with minor changes in phrasing and the following difference:
Claim 1 of the patent does not recite “a magnetic stripe communications device operable to communicate magnetic stripe payment information to a magnetic stripe read-head”, a plurality of “conductive” pads, or determine a position of an external object “relative to said payment card”.
The conductive pads recited in the instant application are merely a particular type of the more generic “pad” recited in the patent. Further, the position “relative to said payment card” is merely a narrower recitation of “position” recited in the patent.
FOO teaches a payment card (1), comprising a magnetic stripe communications device operable to communicate magnetic stripe payment information to a magnetic stripe read-head (column 5, lines 9-15); a plurality of conductive pads (30) (column 5, lines 30-37; column 6, lines 7-10, 55-59).
It would have been obvious to one of ordinary skill in the art for the device of the patent to be a payment card having a magnetic stripe communications device operable to communicate magnetic stripe payment information to a magnetic stripe read-head to facilitate the use of the device in financial transactions with magnetic card readers.
The following chart illustrates limitation correspondence between claim sets.
Instant Application
Claim 1:
A payment card comprising:
a magnetic stripe communications device operable to communicate magnetic stripe payment information to a magnetic stripe read-head;
a plurality of conductive pads; and
a controller operable to receive information associated with relative capacitance magnitude variations for each pad of said plurality of pads over time, said controller operable to process said information using a non-time smearing gain algorithm to determine a position of an external object relative to said payment card.
Patent No. 12,204,978
Claim 1:
A device, comprising:
a plurality of pads; and
a controller operable to receive information associated with relative capacitance magnitude variations of the plurality of pads over time, and
process the information using a non-time smearing gain algorithm to determine a position of an external object.
Allowable Subject Matter
Claims 2 and 6-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 3-5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA A GUDORF whose telephone number is (571)270-7607. If the Examiner cannot be reached by telephone, she can be reached through the following e-mail address: laura.gudorf@uspto.gov. The examiner can normally be reached on M-F 6:00-4:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Lee, can be reached at telephone number (571)272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA A GUDORF/Primary Examiner, Art Unit 2876