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
Claims 1–10 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1–9 of U.S. Patent No. 12,314,922 B2.
The present application and U.S. Patent No. 12,314,922 B2 are commonly owned and name the same inventive entity. The claimed invention is not patentably distinct from the invention claimed in the patent because the presently claimed subject matter merely recites obvious variations of the patented payment terminal configuration and does not define a patentably distinct invention.
Present claim 1 recites:
A payment terminal comprising:
an IC card reader slot on a front of the payment terminal;
a touch area for a contactless payment;
wherein the IC card reader slot and the touch area are arranged in order from a plane in a height direction;
the touch area is on a top surface of the payment terminal;
a center of the top surface is defined as a first point;
a first line extends vertically from the first point;
the IC card reader slot is closer to the user than the first line;
a second point is defined at the front edge of the top surface;
a second line extends vertically from the second point; and
the IC card reader slot is arranged between the first line and the second line.
Patented claim 1 of U.S. Patent No. 12,314,922 B2 recites a payment terminal including:
an IC card reader slot positioned in front of a user;
a first board including a touch area for contactless payment;
a display arranged on the first board;
the IC card reader slot and first board arranged in order in the height direction;
a center point of the first board defining a first point;
a first vertical reference line extending from the first point;
the IC card reader slot positioned closer to the user than the first line;
the IC card reader slot positioned within the width of the first board; and
an antenna arranged around the display.
The patented claim therefore already teaches the fundamental ergonomic arrangement of the IC card reader slot relative to the user-facing contactless payment surface using substantially the same geometric reference system employed by the present claims.
The differences between present claim 1 and patented claim 1 are limited primarily to:
expressly characterizing the first board as a top surface;
defining a second reference point at the front edge of the top surface;
defining a corresponding second vertical reference line; and
specifying that the IC card reader slot lies between the first and second reference lines.
These additional geometric definitions merely further specify the location of the IC card reader slot relative to the already disclosed user-facing first board. Such dimensional and positional refinements constitute obvious design choices that optimize ergonomic placement of the card insertion slot while maintaining the same overall payment-terminal architecture claimed in the patented claims.
Moreover, the patented claim already positions the IC card reader slot forward of the centerline and within the width of the user-facing first board. Defining an additional forward boundary using the front edge of that same board merely narrows the already claimed positional relationship and would have been an obvious refinement to one of ordinary skill in the payment terminal art.
Accordingly, present claim 1 is not patentably distinct from patented claim 1.
Present claim 2 further recites:
the top surface of the payment terminal is inclined toward the user.
Patented claim 4 recites:
the first board is arranged diagonally upward toward the user.
The inclined top surface of the present claim corresponds directly to the diagonally upward first board recited in patented claim 4. The substitution of the term "top surface" for "first board" merely reflects equivalent structural terminology describing the same user-facing surface.
Accordingly, present claim 2 merely recites an obvious variation of patented claim 4 and is not patentably distinct therefrom.
Present claim 3 further recites:
the touch area and a display for the user are provided on the top surface.
Patented claim 1 already recites:
a display arranged on the first board; and
the touch area being provided on the same first board.
Providing both the display and contactless payment area on the user-facing surface constitutes the same structural arrangement already claimed in the patent.
Accordingly, claim 3 is not patentably distinct from patented claim 1.
Present claim 4 further recites:
the payment terminal is capable of simultaneously awaiting the IC card payment and the contactless payment.
Patented claim 2 expressly recites:
the payment terminal is capable of simultaneously awaiting an IC card payment and the contactless payment.
The limitation is identical in scope.
Accordingly, claim 4 merely repeats the patented subject matter and is not patentably distinct from patented claim 2.
Present claim 5 further recites:
the top surface is shaped in an eave projecting forward of the payment terminal.
Patented claim 5 recites:
the first board covers the IC card reader slot from above.
Providing a forward-projecting eave constitutes an obvious structural implementation of a board extending over the IC card reader slot. Both arrangements provide the same ergonomic shielding and user-guidance functions while differing only in the precise exterior housing geometry.
Accordingly, present claim 5 merely recites an obvious variation of patented claim 5.
Present claim 6 further recites:
the touch area and the display are provided on the eave-shaped top surface.
Patented claim 1 already places both the display and touch area on the first board.
Relocating those same components onto the projecting portion of that board merely reflects an obvious design modification that does not produce a patentably distinct structure.
Accordingly, claim 6 is not patentably distinct from patented claims 1 and 5.
Present claim 7 further recites: the payment terminal is capable of simultaneously awaiting the IC card payment and the contactless payment.
This limitation is identical to patented claim 2.
Accordingly, claim 7 is not patentably distinct from patented claim 2.
Present claim 8 combines:
an inclined top surface; and
an eave-shaped forward projection.
Patented claims 4 and 5 respectively disclose:
a diagonally upward first board; and
a first board covering the IC card reader slot from above.
Combining these already patented structural features would have been an obvious design choice yielding the predictable ergonomic arrangement recited in present claim 8.
Accordingly, claim 8 is not patentably distinct from patented claims 4 and 5.
Present claim 9 further recites: the touch area and display are provided on the inclined projecting top surface.
Patented claim 1 already provides the display and touch area on the first board, while patented claims 4 and 5 disclose the inclined and covering board configuration.
Providing the display and touch area on the inclined projecting board merely combines already patented features without producing a patentably distinct invention.
Accordingly, claim 9 is not patentably distinct from patented claims 1, 4, and 5.
Present claim 10 further recites:
the payment terminal is capable of simultaneously awaiting the IC card payment and the contactless payment.
This limitation is identical to patented claim 2.
Accordingly, claim 10 is not patentably distinct from patented claim 2.
Claims 1–10 define only obvious modifications of the payment terminal already claimed in claims 1–9 of U.S. Patent No. 12,314,922 B2. The claimed differences merely recite additional geometric reference lines, alternative terminology for the same user-facing structural components, predictable housing configurations, and combinations of features already claimed in the patent. Such modifications would have been obvious to a person of ordinary skill in the art and do not render the presently claimed invention patentably distinct from the patented claims.
Accordingly, claims 1–10 are rejected under the judicially created doctrine of nonstatutory obviousness-type double patenting as being unpatentable over claims 1–9 of U.S. Patent No. 12,314,922 B2.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Applicant may overcome this rejection by (1) demonstrating that the pending claims are patentably distinct from the patented claims, (2) amending the claims to establish patentable distinction, or (3) filing a terminal disclaimer in compliance with 37 CFR 1.321(c), if otherwise appropriate.
Allowable Subject Matter
Claims 1-10 are allowable over prior art. As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
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/ROKIB MASUD/Primary Examiner, Art Unit 3627
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