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 .
Claims 1-8 are presented for examination.
This application is a CON of 17/228,233 filed on 04/12/2021 now PAT 12,210,919 which is a CON of 16/386,233 filed on 04/16/2019 ABN which is a CON of 15/591,027 filed on 05/09/2017 now PAT 10,311,349 which is a CON of 14/660,920 filed on 03/17/2015 now PAT 9,646,750 which is a CON of 14/071,565 filed on 11/04/2013 now PAT 9,010,644 which has PRO 61/732,080 filed on 11/30/2012.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 9,010,644 (hereinafter referred as '644). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claims are expressly found in the claimed application. For instance, claim 1 of the present application recites the following limitations:
A payment device comprising: a dynamic magnetic stripe communications device operable to communicate payment information to a magnetic stripe card reader, said communications device comprising multiple layers, said multiple layers comprising: an electromagnetic generator comprising: a coil; and a stepped magnetic material contained within said coil, wherein a length of a first layer of said stepped material is longer than a length of a second layer of said stepped material.
Whereas claim 1 of '644 application, the applicant claims:
A card comprising: a dynamic magnetic stripe communications device having multiple layers, said multiple layers including, an electromagnetic generator including a coil, and a stepped structure within said coil, wherein said stepped structure includes a first layer and a second layer, and a length of said first layer of said stepped structure is longer than a length of said second layer of said stepped structure.
The instant claims obviously encompass the claimed invention of '644 patent and differ only by terminology. For instance, claim 1 of the present invention recites “A payment device comprising …” whereas '644 patent discloses “A card comprising …” . To the extent that the present claims are generic to the claimed invention of '644 patent, In re Goodman 29 USPQ 2d 2010 CAFC 1993.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the application term by prohibiting claims in a second application not patentably distinct from claims of a first application. In re Vogel, 164 USPQ 619 (CCPA 1970).
Claim 2 recites similar limitations as of claim 2 of '644 patent.
Claim 3 recites similar limitations as of claim 4 of '644 patent with different terminology. For instance, claim 3 recites “said stepped magnetic material comprises a soft-magnetic material” whereas claim 4 of '644 patent recites “said first layer includes a soft-magnetic material”.
Claim 4 recites similar limitations as of claim 14 of '644 patent with different terminology. For instance, claim 4 recites “a stack of hard-magnetic material…”, whereas claim 14 of '644 patent only recites “a hard-magnetic material…”.
Claims 5-8 recite limitations not disclosed in any claims of 4 of '644 patent. For instance, Claim 5 recites “a first side that communicates with said magnetic stripe reader during a payment transaction and a second side that generally does not communicate with said magnetic stripe reader during a payment transaction”.
Allowable Subject Matter
Claims 1-8 would be allowable upon filing of a proper Terminal Disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to specifically teach an electromagnetic generator comprising: a coil; and a stepped magnetic material contained within said coil, wherein a length of a first layer of said stepped material is longer than a length of a second layer of said stepped material. These limitations in conjunction with other limitations in the claimed invention were not shown by the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tunnel et al. (US 2016/0294058) teaches accordion antenna structure.
Takahashi (JP 2008271772 A) teaches dynamo-electric machine.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWYN LABAZE whose telephone number is (571)272-2395. The examiner can normally be reached 8:30AM-5:00PM.
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, Mr. STEVE PAIK can be reached at 571-272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EDWYN LABAZE/Primary Examiner, Art Unit 2876