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 .
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract does not describe the claimed invention (e.g. detecting a presence of a read-head housing of a magnetic stripe reader using a first detected capacitance change in a first pad during a first time period; detecting a type of said read-head housing of said magnetic stripe reader using a first detected inductance and a second detected inductance; detecting a second detected capacitance change in said first pad during a second time period; calculating a calculated data transmission speed based, at least in part, on said detecting a type of said read-head housing and said second detected capacitance; and activating a communication sequence with said magnetic stripe reader in response, at least in part, to said calculated data transmission speed). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The specification does not recite the terminology “motorized reader transmission speed”, as recited in claims 2 and 3. However, the specification recites a rolling speed. Therefore, it is not clear if these are the same. For examination purposes, “motorized reader transmission speed” will be interpreted as “rolling speed”.
Appropriate correction is required.
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/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 10032049. This is a statutory double patenting rejection.
INSTANT CLAIM
PATENTED CLAIM
1. A method, comprising: detecting a presence of a read-head housing of a magnetic stripe reader using a first detected capacitance change in a first pad during a first time period; detecting a type of said read-head housing of said magnetic stripe reader using a first detected inductance and a second detected inductance; detecting a second detected capacitance change in said first pad during a second time period; calculating a calculated data transmission speed based, at least in part, on said detecting a type of said read-head housing and said second detected capacitance change; and activating a communication sequence with said magnetic stripe reader in response, at least in part, to said calculated data transmission speed.
1. A method, comprising: detecting a presence of a read-head housing of a magnetic stripe reader using a first detected capacitance change in a first pad during a first time period; detecting a type of said read-head housing of said magnetic stripe reader using a first detected inductance and a second detected inductance; detecting a second detected capacitance change in said first pad during a second time period; calculating a calculated data transmission speed based, at least in part, on said detecting a type of said read-head housing and said second detected capacitance change; and activating a communication sequence with said magnetic stripe reader in response, at least in part, to said calculated data transmission speed.
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 2 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 and 15of U.S. Patent No. 10032049. Although the claims at issue are not identical, they are not patentably distinct from each other because the respective claims are not patently distinguishable, and encompass, with varying scope, the same subject matter.
Regarding instant claim 2, rolling speed is considered the same as a motorized reader transmission speed.
Regarding instant claim 4, although patented claim 4 is worded slightly different, they encompass a same subject matter.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 2, 9 and 10 of U.S. Patent No. 12236308. Although the claims at issue are not identical, they are not patentably distinct from each other because the respective claims are not patently distinguishable, and encompass, with varying scope, the same subject matter.
The patented claims are drawn to a system. The system performs the claimed method steps of the instant application.
Examiner’s Remarks
With respect to claim(s) 1-4, the examiner makes no prior art rejection. However, these claims are not allowable pursuant to the pending Double Patenting rejections.
Telephone/Fax Information
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/SUEZU ELLIS/Primary Examiner, Art Unit 2876