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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/17/2026 has been entered.
Election/Restrictions
Applicant's election with traverse of Group III (claims 12-20) in the reply filed on 2/17/2026 is acknowledged. The traversal is on the ground(s) that:
(i) the inventions are not independent and distinct under 37 CFR 1.141 since all three groups share common subject matter, shared disclosure and shared functional architecture, and common claim language and limitations
(ii) Group I and Group II are not distinct
(iii) Group III shares core architecture with Group I and II
(iv) overlapping prior art landscape
(v) the restriction violates the “single inventive concept” principle
(vi) the restriction improperly applies the 35 U.S.C. 121 since Group III is an obvious variant of the dockable base systems of Group I and II
(vii) the examiner has not met the burden of establishing distinctness and
(viii) the restriction prejudices applicant rights.
This is not found persuasive because:
In response to arguments (i)-(iii), restriction practice is not limited to “independent and distinct” inventions. According to MPEP 802, Restriction can be made with respect to “Related but Distinct” inventions (“Two or more inventions are related (i.e., not independent) if they are disclosed as connected in at least one of design (e.g., structure or method of manufacture), operation (e.g., function or method of use), or effect. Examples of related inventions include combination and part (subcombination) thereof, process and apparatus for its practice, process and product made, etc. In this definition the term related is used as an alternative for dependent in referring to inventions other than independent inventions.”). “Restriction is the practice of requiring an applicant to elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application”. In the instant application, Groups II and III are drawn to related processes. Groups I and (II, III) are drawn to product and method of use. Furthermore, the restriction requirement previously set forth indicated the mutually exclusive subject matter for each of the Groups listed, as well as the different classifications for searching. While some classifications may overlap, the mutually exclusive subject matter does not, and thus required different search criteria. Thus, Groups I-III are distinct as per MPEP 806.05(h) and 806.05(j) (also see MPEP 803).
Group I has additional claim language that include details the base SST system, such as “is attachable and detachable from a top recessed portion of the integrated peripheral device, and wherein the base SST system is attached to one or more port interfaces situated on a top and optionally recessed surface of the integrated peripheral device, and wherein corresponding port interfaces for the base SST system are located on a bottom and/or bottom back portion of the base SST system”, which is not claimed in Group II and Group III. Additionally, though not required, Group II includes specifics of a transaction manager of the host device (e.g. detects an orientation change via an event when the base SST system is rotated or reoriented while docked in the integrated peripheral device, and wherein the transaction manager switches from a self-service transaction mode of processing to a cashier-assisted mode of processing in response to detecting the orientation change), which is not described in Group I and Group III. As such, the method of Group II can be used with a base SST system that does not required the base SST to be attachable and detachable from a top recessed portion of the integrated peripheral device, and wherein the base SST system is attached to one or more port interfaces situated on a top and optionally recessed surface of the integrated peripheral device, and wherein corresponding port interfaces for the base SST system are located on a bottom and/or bottom back portion of the base SST system, and the product of Group I can be used with a method that does not require a transaction manager that detects an orientation change via an event when the base SST system is rotated or reoriented while docked in the integrated peripheral device, and wherein the transaction manager switches from a self-service transaction mode of processing to a cashier-assisted mode of processing in response to detecting the orientation change. Furthermore, Group III is drawn to specifics of a countertop and thus can be used with any SST system that does not need to have the claimed docking of integrated peripheral devices. Thus each Group claims mutually exclusive subject matter not found in the other Group. Additionally, since Group I and Groups (II, III) are different statutory classes, the restriction requirement only require one-way distinction, as per MPEP 806.05. As noted in the restriction requirement, the mutually exclusive claimed subject matter is listed for each Group. Therefore, the applicant’s arguments are not persuasive.
In response to argument (iv), the examiner respectfully disagrees that the physical form factor is a design detail that does not create distinct fields of search. For example, for a countertop workstation, class A47F9/02 and A47F9/04 would be searched which is not required for the dockable base since A47F9/02 is drawn to “paying counters” and A47F9/04 is drawn to “check-out counters, e.g. for self-service stores”. The counters would not be searched for dockable bases that do not require specific countertop details. Thus different fields of search would be required. The search strategy is dependent on what is claimed, not what the prior art teaches. As such, there is different search criteria for the claimed subject matter, e.g. the claimed subject matter mutually exclusive to each group, and not what is disclosed in prior art references. Therefore the applicant’s argument is not persuasive.
In response to argument (v), single inventive concept is with respect to Design Patent applications, not utility patents. See MPEP 1504.05. Further, it is plainly evident from restriction requirement that each of Groups I-III includes mutually exclusive subject matter (See MPEP 806.05), wherein mutually exclusive inventions also mean inventions that do not overlap in scope. The test for mutual exclusivity rests in the claimed subject matter, not what is purportedly disclosed in the specification and what the invention could encompass based on the specification. As such, applicant’s argument is not persuasive.
In response to argument (vi), USC 121 does not require that the inventions be “independent and distinct” but rather “Restriction is the practice of requiring an applicant to elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application” (see MPEP 802.01, 802.02 and 806.05). More specifically, the inventions must be independent OR distinct (thus the inventions can be related but distinct). See MPEP 803. As such, applicant’s argument is not persuasive.
In response to argument (vii), the examiner respectfully disagrees. As set forth in the restriction requirement dated 12/17/2025, by virtue of the mutually exclusive subject matter claimed in each of Groups I-III, a different field of search must be performed for each of Inventions I-III so that a complete and thorough search of the claimed mutually exclusive subject matter may be performed. It is clear that having to do this for each and every separate group would be a serious burden to the examiner. Applicant has failed to provide any evidentiary support to show that having to search so many different mutually exclusive subject matter (i.e. multiple different distinct inventions) would not have been a serious burden to the Examiner. For example, for a countertop workstation, class A47F9/02 and A47F9/04 would be searched which is not required for the dockable base since A47F9/02 is drawn to “paying counters” and A47F9/04 is drawn to “check-out counters, e.g. for self-service stores”. The counters would not be searched for dockable bases that do not require specific countertop details. Thus different fields of search would be required. Therefore, the applicant’s argument is not persuasive.
In response to argument (vii), Applicants' additional expense and/or delay in having to file divisional applications for non-elected claims is not a criterion or basis for restriction. Regarding the applicant’s statement about burdens are unjustified where, as here, inventions share common subject matter, overlapping prior art, and unified technical contributions, the examiner has addressed these in the above remarks. In summary, the restriction requirement indicates the mutually exclusive subject matter present in each invention. The test for mutual exclusivity rests in the claimed subject matter, not what is purportedly disclosed in the specification and what the invention could encompass based on the specification. Applicants' remarks are purely argumentative and fail to provide any evidentiary support to show that having to search so many different mutually exclusive subject matter (i.e. multiple different distinct inventions) would not have been a serious burden to the Examiner. As per MPEP 803, such as restriction is proper if it can be shown that the inventions are independent or distinct, and that there would be a serious burden on the Examiner if restriction is not required. Note that Applicants' additional expense and/or unnecessary delay is not a criterion or basis for restriction. In the restriction requirement, the examiner specifically set forth the reasons for independence or distinctness (see Sections 4-7 of the restriction requirement, and particularly Section 4 which sets forth the mutually exclusive subject matter for each of the inventions). Further, the examiner specifically set forth the reasons that establish burden on the examiner (see above and section 8 of the restriction requirement). See MPEP 808. The examiner notes that though Inventions I and II share some common features, Section 4 of the restriction requirement indicates the mutually exclusive subject matter present in each invention. Applicants fail to provide any evidentiary support to show that having to search so many different mutually exclusive subject matter (i.e. multiple different distinct inventions) would not have been a serious burden to the Examiner. As described above different search criteria and strategy is dependent on the claimed subject matter, not what is disclosed in prior art references. Therefore the applicant’s arguments are not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/17/2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/10/2025 was filed after the mailing date of the Final office action on 10/1/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the touch display and media dispenser and acceptor are positioned to a side of a customer position at the scanner” must be shown or the feature(s) canceled from the claim(s) (claims 12 and 14). Additionally, the touch display as a standalone unit adapted to be placed on the countertop adjacent to the bioptic scanner must be shown or the feature(s) canceled from the claim(s) (claim 19). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 16 is objected to because of the following informalities:
Claim 16 recites “near filed”. It appears this should be “near field”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites “the touch display and media dispenser and acceptor are positioned to a side of a customer position at the scanner” and claim 14 recites “positioning the touch display and media dispenser and acceptor to a side of a customer position at the bioptic scanner”. It is not clear what the applicant means by “positioned to a side of a customer position at the scanner”. This wording is awkward and confusing. Does the applicant mean that the touch display and media dispenser and acceptor are positioned offset, i.e. left or right, of the scanner? If so, it is not clear what a “customer position at the scanner” means. Please clarify.
Claim 13 recites “a side table perpendicular and adjacent to the countertop”. It is unclear if this side table is the same as, or different, than that in claim 12. Please clarify. If the same, proper antecedent basis is needed. If different, then the claim language needs to better clarify the two side tables, e.g. a second side table.
Claims not specifically addressed are indefinite due to their dependency.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13 and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 recites “arranging a side table perpendicular and adjacent to the countertop; and providing the side table for holding customer items during the self-service transaction”. Claim 12 recites “a side table is situated perpendicular and adjacent to the countertop for purposes of holding a customer's basket or bag”. Therefore, claim 13 does not further limit claim 12.
Claim 14 recites “positioning the touch display and media dispenser and acceptor to a side of a customer position at the bioptic scanner”. Claim 12 recites “the touch display and media dispenser and acceptor are positioned to a side of a customer position at the scanner”. Therefore claim 14 does not further limit claim 12.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 12-15, 17 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (JP 2007287038) in view of Dubois et al. (US 2016/0026985) and Nugent, Jr. (US 20040041021).
With respect to claims 12-14 and 19, Suzuki discloses comprising:
operating a modular self-service terminal (SST) system in a workstation configuration, wherein:
the modular SST system comprises a touch display (211), a scanner (204) integrated into a countertop, and a media dispenser and acceptor (209) ([0013]-[0016]);
the countertop (203) comprises a recessed underside clearance adapted for a customer's wheelchair to fit such that the customer is directly facing the scanner (Figs. 1 and 6); and
processing self-service transactions using the touch display, bioptic scanner, and media dispenser and acceptor ([0014]);
wherein a side table (102) is situated perpendicular and adjacent to the countertop for purposes of holding a customer's basket or bag ([0012], [0031], Fig. 1), and wherein, as best understood, the touch display and media dispenser and acceptor are positioned to a side of a customer position at the scanner (Fig. 1).
The examiner notes that “modular” is considered merely a title for “modular SST system” as defined by the claim language.
Suzuki fails to expressly disclose the scanner is a bioptic scanner.
Dubois et al. discloses it is well known in the art for a self-service terminal to include any type of scanner known in the art, and illustrates a bioptic scanner in Fig. 1 ([0022]). Nevertheless, it is well known in the art for a bioptic scanner to be used in a self-service terminal as taught by Nugent, Jr. ([0055]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the scanner to be a bioptic scanner in order to scan barcodes on different sides of products.
With respect to claim 15, the modified Suzuki addresses all the limitations of claim 12.
The modified Suzuki fails to expressly disclose integrating a weigh scale into a horizontal scan window of the bioptic scanner.
Nugent, Jr. teaches it is well known in the art for a weigh scale to be integrated into a horizontal scan window of a bioptic scanner ([0055]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a weigh scale into a horizontal scan window of the bioptic scanner in order to determine a weight of an item during checkout.
With respect to claim 17, the modified Suzuki discloses the self-service terminal accommodates disabled customers (Fig. 6), thus the touch display, bioptic scanner, and media dispenser and acceptor are considered to be rearranged relative to one another to optimize accessibility for disabled customers.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki modified Dubois et al. and Nugent, Jr. by as applied to claim 12 above, and further in view of Xu et al. (CN 11271656).
With respect to claim 20, the modified Suzuki addresses all the limitations of claim 12.
The modified Suzuki fails to expressly disclose integrating a card reader into a bottom portion of the touch display.
Xu et al. teaches it is well known in the art for a card reader to be integrated into a bottom portion of a display (see pg. 4 of translation; Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to integrate a card reader into a bottom portion of the touch display in order to contactlessly read a card.
Examiner’s Remarks
Claims 16 and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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:
With respect to claim 16, prior art fails to teach or reasonably suggest, either singly or in combination, a near field communication (NFC) transceiver within the media dispenser and acceptor, in addition to the other limitations of the claim.
With respect to claim 18, prior art fails to teach or reasonably suggest, either singly or in combination, integrating a host device into one of: the touch display, the bioptic scanner, or the media dispenser and acceptor, in addition to the other limitations of the claim.
Telephone/Fax Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUEZU ELLIS whose telephone number is (571)272-2868. The examiner can normally be reached Monday - Friday, 10:30 am - 6:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Pham 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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/SUEZU ELLIS/Primary Examiner, Art Unit 2876
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