DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
1. Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,333,586.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent anticipate present claims 1-20.
Allowable Subject Matter
Claims 2-21 are found to be novel and non-obvious over the prior art for similar reasons to the claims in parent application 18/151,173.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Williams et al. (US 20110313881 A1) discloses a method, in a computer-based online system having a memory, for managing an account for purchasing baby care products by a particular user, including a central gift registry and retailer specific gift registries, and synchronizing the central and retailer specific gift registries via API communication.
Mitchem (US 20070143189 A1) discloses a method for facilitating online gift shopping, including creating a registry or adding a gift to a registry in response to a request for a registry update.
Tien et al. (US 20050256806 A1) discloses a computer-implemented method, to facilitate processing a payment for an online transaction, including an API function call including a public key and a private key, that can be used to identify a retailer.
Jiang (US 9817539 B1) discloses discovery of items added to a wish list, including aggregating items added to multiple wish lists.
Benson et al. (US 20080021767 A1) discloses a system and method for collecting and managing product information in a database, including maintaining a centralized gift registry linking registries from multiple retailers.
Veeneman (US 20050038712 A1) discloses a multi-merchant gift registry, including a central registry that is updated when items are added form multiple merchants.
Paintin (US 20080243705 A1) disclose a third-party gift registry and payment system, including a master gift registry database that aggregates multiple retailer-specific registries.
Ard et al. (US 20110184972 A1) discloses a system for navigating a product catalog, including the synchronization of wish lists across multiple sites.
Pang et al. (WO 0207042 A2) discloses an integrated gift registry and shopping list system, including synchronizing a multi-store gift registry.
Collaborative gift registry in multi-channel retail commerce (PTO-892 Reference U) discloses mechanisms for managing a centralized gift registry for retailers that allow customers to use multiple types of sales channels.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A MISIASZEK whose telephone number is (571)272-6961. The examiner can normally be reached Monday-Thursday. 8:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Smith can be reached at 571272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL MISIASZEK/Primary Examiner, Art Unit 3688
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