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 .
Prelim. Amdt./Amendment
Receipt is acknowledged of the Preliminary Amendment filed on September 08, 2025.
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 21-25, 27, 32-36, and 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 9, 13-14, 15, and 20 of U.S. Patent No. 12248832. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21-25, 27, 32-36, and 39-40 claim a card comprising a substrate; and a first face, the first face comprising a steganographic pattern encoded thereon, wherein the steganographic pattern contains biometric data associated with multiple users.
Claims 1-5, 7, 9, 13-14, 15, and 20 of U.S. Patent No. 12248832 disclose a card configured to contain biometric information a substrate; and a first face, the first face comprising a steganographic pattern encoded thereon, and wherein the steganographic pattern contains biometric data associated with multiple users.
Claim 21 of the instant application is corresponded to claims 1 and 2 of U.S. Patent No. 12248832.
Claim 22 of the instant application is corresponded to claim 3 of U.S. Patent No. 12248832.
Claim 23 of the instant application is corresponded to claim 4 of U.S. Patent No. 12248832.
Claim 24 of the instant application is corresponded to claim 5 of U.S. Patent No. 12248832.
Claim 25 of the instant application is corresponded to claim 1 of U.S. Patent No. 12248832.
Claim 27 of the instant application is corresponded to claim 3 of U.S. Patent No. 12248832.
Claim 32 of the instant application is corresponded to claims 14 and 15 of U.S. Patent No. 12248832.
Claim 33 of the instant application is corresponded to claim 14 of U.S. Patent No. 12248832.
Claim 34 of the instant application is corresponded to claim 14 of U.S. Patent No. 12248832.
Claim 35 of the instant application is corresponded to claim 15 of U.S. Patent No. 12248832.
Claim 36 of the instant application is corresponded to claim 20 of U.S. Patent No. 12248832.
Claim 39 of the instant application is corresponded to claims 7 and 9 of U.S. Patent No. 12248832.
Claim 40 of the instant application is corresponded to claim 13 of U.S. Patent No. 12248832.
Allowable Subject Matter
Claims 26, 28-31, 37, and 38 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
None of prior art teaches the card of the steganographic pattern is achieved by chaffing the substrate, the card is configured for communication with a user device, and the steganographic pattern is communicated to the user device, the biometric data contained in the comprises a facial scan, and the verification biometric data comprises a photograph of the user's face, and determining, by the processor, that the verification biometric data matches the biometric data contained in the steganographic pattern proceeding, by the processor, with a transaction as set forth in the claims.
Conclusion
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/SEUNG H LEE/Primary Examiner, Art Unit 2876
