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 .
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 12,204,972 (hereinafter ‘972 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention is a broader recitation of the ‘972 Patent. For instance, in the claim 1 of the current application and in the ‘972 Patent, the applicant claims:
Application No. 19/032,668
Patent No. 12,204,872
A location designation radio frequency identification (RFID) tag for use in a facility, the RFID tag comprising: an inlay having a first side, a second side opposite the first side, the inlay further comprising: an antenna, an integrated circuit, and a substrate, the antenna and the integrated circuit being disposed on the substrate; a first layer disposed on the first side of the inlay, the first layer having a first thickness; a second layer disposed on the second side of the inlay, the second layer having a second thickness; a printing layer disposed over the first layer such that the printing layer accepts printing; wherein the integrated circuit includes a memory that stores a unique identifier representing a location in the facility and wherein the printing layer includes a visual indication to indicate the intended location of the RFID tag in the facility.
A location designation radio frequency identification (RFID) tag for use in a facility, the RFID tag comprising: an inlay having a first side, a second side opposite the first side, the inlay further comprising: an antenna, an integrated circuit, and a substrate, the antenna and the integrated circuit being disposed on the substrate; a first layer disposed on the first side of the inlay, the first layer having a first thickness; a second layer disposed on the second side of the inlay, the second layer having a second thickness; and a first lamination layer disposed on the first layer such that the first layer is disposed between the first side of the inlay and the first lamination layer, the first lamination layer being coupled to a floor in the facility to encapsulate the inlay, the first layer, and the second layer between the floor and the first lamination layer.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1-28 of the ‘972 Patent as a general teaching for a location designation RFID tag, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘972 Patent and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘972 Patent [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
Allowable Subject Matter
Claims 1-20 would be allowed upon filing of a terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: The applicant teaches a location designation radio frequency identification (RFID) tag and a method thereof which includes an inlay having an antenna, an integrated circuit, and a substrate, a printing layer disposed on the first layer of the inlay for accepting printings, wherein the integrated circuit a memory that store a unique identifier representing a location in the facility and wherein the printing layer includes a visual indication to indicate the intended location of the RFID in the facility. The printed information enable individuals to know where they are within the facility by inspecting the printing of the RFID tag. These limitations were not shown by the prior art of record.
Response to Arguments
Applicant's arguments filed 01/22/26 have been fully considered but they are not persuasive. See examiner remarks.
Remarks:
In view of the applicant’s amendments and arguments, the prior art rejection have been withdrawn. With respect to the argument regarding the double patent rejection, the examiner respectfully disagrees. The applicant argues that the claims of 12,204,972 recites that the RFID includes a memory or an inlay that stores a unique identifier representing a location in the facility, and a printing layer that incudes a visual indication that indicates the intended location of the RFID, the examiner respectfully disagrees. The claims recite an RFID (RFID usually includes memory for storing identification information, and a printing layer on the first layer of the inlay for accepting printing. The type of information storing in the memory of the RFID or the information visually displayed on the display layer is just merely a matter of choice for meeting specific customer requirements. Therefore, it would have been an obvious extension as taught by the claims of 12,204,972. The applicant’s argument is not persuasive. Refer to the rejection above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached on M to F 8:00-8:00.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G Lee can be reached on 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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DANIEL ST CYR
Primary Examiner
Art Unit 2876
/DANIEL ST CYR/Primary Examiner, Art Unit 2876