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 .
Claim Rejections - 35 USC § 103
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.
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.
Claims 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2021/0398196 A1 (hereinafter “De Troyer”) in view of U.S. Patent Application Publication 2014/0279271 A1 (hereinafter “Goldman”).
With respect to claim 11, De Troyer discloses
“A method for facilitating communications between parties comprising”: De Troyer, abstract;
“receiving electronic information at a personal electronic device”; De Troyer ¶¶ 0009, 0010 (user logs into mobile application, providing identifying information);
“initiating electronic communications with a central computing device located at an address identified by the electronic information”; De Troyer ¶ 0009 (first individual logs into mobile application on mobile device; mobile device is then in communication with central server; mobile device uses central server’s address to communicate with it);
“receiving, at the central computing device, a first selection by a person, the first selection identifying one or more items to be purchased”; De Troyer ¶¶ 0012, 0013 (first individual selects item to be purchased as a gift and establishment from which to purchase it; e.g., first individual can select a beverage gift at a particular establishment);
“receiving a signal at the central computing device indicating that the one or more items have been purchased”; De Troyer ¶¶ 0012, 0013 (first individual’s selection signals central server);
“sending a signal, from the central computing device to a second computing device, indicating that the purchased one or more items are available to be claimed …”; De Troyer ¶ 0017 (second individual receives signal from central server); and
“receiving a signal, from the second computing device to the central computing device, indicating that all of the purchased one or more items have been claimed by a first individual …”. De Troyer ¶¶ 0020-0022 (central server is signaled when second individual claims gift).
De Troyer does not explicitly disclose a purchased item being available to be claimed by a plurality of individuals. Goldman discloses
“… indicating that the purchased one or more items are available to be claimed by a plurality of
Individuals”; Goldman ¶ 0006 (item can be claimed by any member of group); and
“… indicating that all of the purchased one or more items have been claimed by a first individual of
the plurality of individuals”. Goldman ¶ 0006 (item is claimed by any member of group).
Both De Troyer and Goldman relate to notifications regarding ordered products. De Troyer, abstract; Goldman, abstract. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the group feature as taught by Goldman in the method of De Troyer with the motivation of managing order notifications in an easy and efficient manner. Goldman ¶¶ 0001-0004.
With respect to claim 12, De Troyer discloses
“generating a visual display, by an output device, indicating that the purchased one or more items are available to be claimed”. De Troyer ¶¶ 0017, 0018, fig. 2B (display displays item available to be claimed).
With respect to claim 13, De Troyer discloses
“wherein the electronic information comprises a QR code”. De Troyer ¶¶ 0017, 0018, fig. 2C.
With respect to claim 14, De Troyer discloses
“wherein the purchased one or more items comprise a beverage”. De Troyer ¶¶ 0012, 0013.
With respect to claim 15, De Troyer discloses
“providing, to a recipient that received the purchased one or more items, contact information that identifies a purchaser of the purchased one or more items”. De Troyer ¶¶ 0017, 0018, fig. 2B (name of purchaser is provided to recipient).
With respect to claim 16, De Troyer discloses
“receiving a second selection at the central computing device, the second selection identifying first individual;”; De Troyer ¶¶ 0017, 0018, fig. 2B (first individual can make any number of selections to any number of recipients; e.g., in fig. 2B, first individual has selected an item to be gifted to a second individual and an item to be claimed by the first individual); and
“in response to receiving an attempt by first individual to claim the purchased item, confirming the first individual corresponds to the plurality of individuals”. De Troyer ¶¶ 0018-0022 (QR code uniquely identifying claimer is read).
With respect to claim 17, De Troyer discloses
“wherein the electronic information is a first electronic information, and wherein the step of confirming the first individual corresponds to the plurality of individuals comprises”: De Troyer ¶¶ 0012, 0013 (signal to central server is electronic information);
“receiving second electronic information corresponding to the first individual”; De Troyer ¶ 0018 (QR code on claimer’s mobile device is scanned); and
“comparing the first electronic information to the second electronic information”. De Troyer ¶¶ 0018-0022 (scanned QR code is validated, which comprises a comparison to the first electronic information).
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 1-10 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 18-20 of U.S. Patent Number 12,340,407 B2 (hereinafter “Kacmarcik”). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 and 18-20 of the present application are anticipated by claims 10 and 18-20 of Kacmarcik. Independent claim 1 of the present application differs from claim 1 of Kacmarcik in that claim 1 of the present application recites “clothing associated with a sports team” whereas claim 1 of Kacmarcik recites “a sports jersey associated with a sports team”. Independent claim 18 of the present application differs from claim 18 of Kacmarcik in that claim 18 of Kacmarcik recites that clothing is scanned “via the electronic device” whereas claim 18 of the present application does not specify how the clothing is scanned.
Allowable Subject Matter
Claims 1-10 and 11-18 are allowable over the prior art of record, subject to the above rejections.
The following is an examiner's statement of reasons for allowance:
Upon review of the evidence at hand, it is hereby concluded that the evidence obtained and made of record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of applicant's invention as the noted features amount to more than a predictable use of elements in the prior art. The allowable features include "receiving a signal at the central computing device indicating that the single item has been purchased"; "sending a signal, from the central computing device to a second computing device, indicating that the purchased single item is available to be claimed by a plurality of individuals"; and "receiving a signal at the central computing device from the second computing device, the signal indicating that the purchased single item has been claimed by at least one of the plurality of individuals".
In addition to the above, the Examiner emphasizes the interrelation of the above distinguishing elements with the remainder of each respective claim element, and further notes that it is the interrelation that truly distinguishes Applicant's invention from the evidence at hand. Moreover, none of the evidence at hand teaches or suggests the combination of features claimed, nor does there exist an appropriate rationale for further modification of the evidence at hand.
It is hereby asserted by the Examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled "Comments on Statement of Reasons for Allowance."
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN D CIVAN whose telephone number is (571)270-3402. The examiner can normally be reached Monday-Thursday 8-6:30.
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, Jeffrey A Smith can be reached at (571) 272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ETHAN D. CIVAN
Primary Examiner
Art Unit 3688
/ETHAN D CIVAN/Primary Examiner, Art Unit 3688
