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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of Claim 1 of prior U.S. Patent No. 12,256,026. This is a statutory double patenting rejection.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent 11,087,013 and Claim 1 of U.S. Patent 11,843,709. Although the claims at issue are not identical, they are not patentably distinct from each other because aside from a few minor differences, these claims contain the same limitations and perform the same functions.
Allowable Subject Matter
Claim 1 would be in condition for allowance if the statutory double patenting rejection was obviated and if the non-statutory double patenting rejection was also obviated.
The following is an examiner’s statement of reasons for allowance:
Regarding Claim 1, the closest prior art of record, Ross et al., (US 20150117701 A1), Ross et al., (US 9443298 B2), Ross et al., (US 7676433 B1), Ross et al., (US 9152862 B2) teaches A non-transitory computer-readable storage medium storing instructions that, when executed by a computing system, cause the computing system to: initialize a first key object record in a data store, the first key object record arranged to store data associated with a first physical key object; store a digital fingerprint of the first physical key object in the first key object record.
However, the references do not explicitly teach nor suggest in detail, store a first digital record in the data store, wherein the first digital record is different from the first key object record; associate the first digital record with the digital fingerprint of the first physical key object; query the data store based on a first access key tendered to the computing system to identify the digital fingerprint of the first physical key object; and when the query of the data store identifies the digital fingerprint of the first physical key object within a prescribed level of confidence, grant access to the first digital record stored in the data store in view of other limitations of the intervening claims.
Thus the prior arts of record taking singly or in combination do not teach or suggest the above-stated limitations taking wholly in combination with all the elements of each independent claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J STEINLE whose telephone number is (571)272-9923. The examiner can normally be reached M-F 10am-6pm CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eleni Shiferaw can be reached at (571) 272-3867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J STEINLE/Primary Examiner, Art Unit 2497
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