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 § 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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,282,816 (hereinafter ‘816 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention is a broader recitation of the ‘816 Patent. For instance, in claim 1 of the current application and in the ‘816 patent, the applicant claims:
Application No. 19/185,172
Patent No. 12,282,816
A card comprising: a flexible substrate; a processor coupled to the flexible substrate; a distortion detection element coupled to the processor and operable to detect an amount of flexure of the flexible substrate; an indicator coupled to the processor, wherein the processor is configured to activate the indicator to provide a visual indication representative of the amount of flexure detected by the distortion detection element; and a personalization layer configured to provide a conductive communication path from at least one connector to the processor.
A card, comprising: a connector array including a plurality of discrete connectors exposed on a surface of the card, wherein the discrete connectors are separated by at least a personalization layer; a dynamic magnetic stripe communications device operable to communicate to a read-head of a magnetic stripe reader; and at least one processor coupled to at least one of the plurality of discrete connectors, the processor being operable to be programmed and tested from an external source via the at least one of the plurality of discrete connectors, the processor being further coupled to the dynamic magnetic stripe communications device to cause the dynamic magnetic stripe communications device to communicate magnetic stripe payment information from the card, the personalization layer comprising a conductive communication path with at least one of the discrete connectors.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1-6 of the ‘816 Patent as a general teaching for card, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘816 Patent and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘816 Patent [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
Allowable Subject Matter
Claims 1-19 would be allowed upon filing of terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: Although the prior art teaches a flexible smart which includes a processor, a distortion sensor, a visual indicator responsive to the detected flexure, the prior art fails to disclose that the personalization layer for providing a communication between an external connector and the processor. These limitations in conjunction with other limitations in the claims were not shown by the prior art of record.
Response to Arguments
Applicant's arguments filed 6/18/26 have been fully considered but they are not persuasive. See examiner remark.
Remarks:
In view of the applicant arguments and amendments, the prior art rejection has been withdrawn. The applicant agreed to file a terminal disclaimer to disclaim Patent No. 12,282,816, the wrong form was used to file the terminal disclaimer. Form PTO/AIA 25(4-13) should be used to resubmit the terminal disclaimer. The claims are rejected on the ground of nonstatutory double patenting. Refer to the rejection above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached M to F 8:00-8:00.
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, Pham Thomas can be reached at 571-272-3689. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DANIEL ST CYR
Primary Examiner
Art Unit 2876
/DANIEL ST CYR/Primary Examiner, Art Unit 2876
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