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 §§ 706.02(l)(1) - 706.02(l)(3) 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.
Claims1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,762,731. Although the claims at issue are not identical, they are not patentably distinct from each other because
Present Application
(19/035660) Claim 1:
A lock comprising:
a locking mechanism configured to secure a receptacle, the receptacle located in a delivery area;
circuitry in electrical communication with the locking mechanism; the circuitry configured to:
perform a first check-in with a server;
receive an item delivery indication from the server; and based on the item delivery indication from the server, enter into a low power consumption state.
Conflicting Patent (10,762,731) Claims 1:
A system for item delivery to secured receptacles comprising:
a mobile computing device comprising a location module, wherein the location module detects the geographic position of the mobile computing device;
a server in communication with the mobile computing device, the server configured to:
receive carrier identity information corresponding to the mobile computing device;
determine route instructions based at least in part on the carrier identity information, wherein the route instructions associate the mobile computing device with one or more routes; transmit the route instructions to the mobile computing device;
transmit authentication information to the mobile computing device based at least in part on the routes associated with the mobile computing device; and transmit geofence data to the mobile computing device based at least in part on the routes associated with the mobile computing device;
receive the location of the mobile device; calculate the distance of the mobile device from at least one of the one or more locks; determine a wait time based on the distance of the mobile device from the at least one of the one or more locks; and
transmit the wait time to the at least one of the one or more locks; a
memory in communication with the server, the memory storing the identities of a plurality of locks locking secured receptacles, each of the plurality of locks assigned to at least one of the one or more routes; and one or more locks securing delivery receptacles, each of the locks configured to: request the wait time;
enter into a low power state for a time designated by the wait time; unlock when the lock has received authentication information from a mobile device; wherein the mobile computing device is configured to communicate the authentication information to one or more of the plurality of locks assigned to the one or more routes associated with the mobile computing device in order to unlock the one or more locks based on the detected geographic position of the mobile computing device and the geofence data.
Comments
The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims.”
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,151,824 in the same manner as explained above.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,230,082 in the same manner as explained above.
Claim Objections
Claims 3, 6, 10 are objected to because of the following informalities:
Claim 3, line 2, “a second check” should be “the second check-in-- in order to be consistent with the terminology used in the claims.
Claim 6, line 1, term “a wait time” should be --the wait time— since the term is already introduced in claim 4.
Claim 10 should depend on claim 2, since term --the second check-in-- was introduced for the first time in claim 2.
Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NABIL H SYED whose telephone number is (571)270-3028. The examiner can normally be reached 8:00-5:00 M-F.
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/NABIL H SYED/Primary Examiner, Art Unit 2689
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