DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-20 are presented for examination on the merits.
Claim Rejections - 35 USC § 112
2. 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.
3. Claim 1-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor.
Lack of Antecedent Basis (Claim 1, 5, & 8):
Claim 1: Inconsistent term usage ("the check-out terminals" before proper introduction; "this closest checkout-terminal" vs. "the"; double introduction of "a terminal-check-in request" as a new element; "identified" vs. "determined" nearest terminal).
Claim 3 (Fatal Typo): Recites "using multiliterate", which is a typo for multilateration. As written, it lacks statutory sense and written description support under § 112(a)/§ 112(b).
Claim 5: Missing antecedent basis for "the time interval" and "the threshold".
Claim 8: Ambiguous phrasing regarding whether the beacons are inside "the terminal-check-in request".
Claim 5 (Mixed Class of Invention): Claim 5 starts as an apparatus claim ("The portable telecommunication device of claim 1...") but transitions directly into active method steps ("receiving... starting... maintaining..."). Under the IPXL Holdings doctrine, mixing apparatus structure with method steps creates an indefiniteness rejection under 35 U.S.C. § 112(b). It should be rephrased to specify application capability (e.g., "wherein the client application is further configured to...").
Claims 11 & 13 (Informal Parentheticals): The use of parentheticals (e.g., accelerometer or gyroscope readings) and (e.g., via QR or RFID) introduces ambiguity under § 112(b) regarding whether the features are mandatory or optional.
Double Patenting Rejection
4. 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
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5. Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. US 12/361,799.
Although the conflicting claims are not identical, they are not patentably distinct from each other because: the patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. The limitations a portable telecommunication device comprising an interface and a client application configured to receive beacon signals from checkout-terminal beacons, determine the closest checkout-terminal, determine the distance to a specified area next to the closest terminal as a function of the beacon signals, automatically generate a terminal-check-in request comprising the nearest checkout-terminal identifier and customer-ID when the distance is below a threshold, and transmit the request to a server.
Claims 1-13 of Application No. 19/232,196 are rejected under the judicially created doctrine of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,361,799.
Although the conflicting claims are not identical in scope, they are not patentably distinct from each other because the application merely claims the portable device apparatus configured to perform the exact same client-side steps that are already claimed as method steps in the issued patent.
Application Claim 1 vs. Patent Claims 1 and 9: Application Claim 1 recites a portable telecommunication device comprising a client application configured to receive beacon signals, determine the closest checkout-terminal, determine the distance to the terminal, and automatically generate and send a terminal-check-in request comprising a terminal-ID and customer-ID when the distance is below a threshold. Patent Claim 9 explicitly recites the method of generating this exact terminal-check-in request by receiving beacon signals, determining the closest checkout-terminal, determining the distance, and automatically generating the request when the distance is below a threshold. Claiming the apparatus (client application) configured to perform these exact method steps is an unpatentable obvious variation of Patent Claim 9.
Application Claims 3 and 4 vs. Patent Claims 9 and 14: Application Claim 3 recites determining distance using "multiliterate" (multilateration), and Application Claim 4 recites trilateration. Patent Claim 9 explicitly claims determining the distance using multilateration, and Patent Claim 14 explicitly claims using trilateration.
Application Claims 5, 6, and 7 vs. Patent Claim 8: Application Claim 5 recites receiving authentication data before goods are selected, starting a session with pre-authorized payment, and maintaining the session until receiving specific termination signals (user command, time expiration, payment success, leaving the shop, or loss of beacon signal). Patent Claim 8 identically recites these exact pre-authentication, session initialization, and session termination steps.
Application Claim 8 vs. Patent Claim 17: Application Claim 8 recites including a check-value rotated periodically by the server for security. Patent Claim 17 explicitly recites repeatedly assigning new, unique check-values to invalidate previous ones and synchronizing these in the beacon signals.
Application Claim 13 vs. Patent Claim 10 and 12: Application Claim 13 recites a container-registration sequence using a container-ID via QR or RFID. Patent Claims 10 and 12 explicitly recite utilizing container-tags and container-registration requests tied to a customer-ID.
Application Claims 2, 9, 10, 11, and 12 (Sensor & ML Additions): Application Claims 2, 10, and 12 recite using generic machine-learning or neural network models to refine the distance/location probability, Application Claim 11 adds the use of inertial sensors (accelerometers/gyroscopes) to disambiguate motion, and Application Claim 9 adds sending a cancellation request when outside the threshold. Given the proximity-based check-in system established in Patent Claims 1 and 9, applying standard, well-known mobile device sensors (inertial sensors) and routine data modeling (ML algorithms) to improve the accuracy of the proximity detection constitutes an obvious design choice to a person of ordinary skill in the art.
6. Application No. 19/232,196 to the reference claims of U.S. Patent No. 12,361,799 for the Non-statutory Obviousness-Type Double Patenting rejection.
Application No. 19/232,196 (Pending Claim)
U.S. Patent No. 12,361,799 (Reference Claim)
Basis for Obviousness / Non-statutory Double Patenting
Claim 1 (Portable device configured to receive beacon signals, determine closest terminal & distance, automatically generate & send terminal-check-in request with terminal-ID and customer-ID upon distance falling below threshold)
Claim 9 & Claim 1
Claim 9 recites the exact same portable device method steps for receiving beacon signals, determining closest terminal, calculating distance, and automatically generating the check-in request. Claim 1 recites the system receiving and verifying the request. Claiming the apparatus configured to execute steps already claimed as a method is an obvious variation.
Claim 2 (ML model trained on known positions, signal strengths, device orientations, body distances, and materials to estimate distance)
Claim 1
Routine optimization. Applying machine-learning techniques to refine distance estimation using known physical signal parameters is an obvious addition to the core proximity detection system of Patent Claim 1.
Claim 3 (Distance determined using multilateration)
Claim 9
Claim 9 explicitly recites determining the distance using multilateration. (Direct identity / obvious variation).
Claim 4 (Distance determined using trilateration)
Claim 14
Claim 14 explicitly recites determining the distance using trilateration. (Direct identity / obvious variation).
Claim 5 (Pre-authentication before item selection, session starting, session pre-authorization, maintaining session, and session termination conditions)
Claim 8
Claim 8 contains identical language reciting pre-authentication before item selection, starting a session, maintaining it, and terminating it on the same specified signals.
Claim 6 (Authentication data comprises PIN, password, or biometric data)
Claim 8
Well-known and obvious variations of standard authentication credentials used in conjunction with the pre-authentication session of Patent Claim 8.
Claim 7 (Client application configured to terminate session upon moving predefined distance away from identified terminal)
Claim 8
Obvious implementation detail of session termination logic based on proximity signal loss as recited in Patent Claim 8.
Claim 8 (Client application configured to include periodically rotated check-value in check-in request)
Claim 17
Claim 17 explicitly recites server/beacon side execution of repeatedly assigning, invalidating, and synchronizing unique rotated check-values. Claiming the client-side inclusion of this rotated check-value is an obvious variation.
Claim 9 (Client application configured to send cancellation request when device is no longer within predefined threshold)
Claim 1 & Claim 8
Routine functional addition. Sending a cancellation request upon leaving proximity is an obvious counterpart to generating the check-in request upon entering proximity.
Claim 10 (Neural network model optimized for specific device types to improve distance estimation accuracy)
Claim 1
Standard technical enhancement. Optimizing data processing models for specific device hardware types is an obvious design choice to improve accuracy.
Claim 11 (Logging inertial sensor data accelerometer/gyroscope to disambiguate signal fluctuations due to orientation or motion)
Claim 1 & Claim 9
Combining well-known mobile device sensors (inertial/motion sensors) to supplement wireless beacon signal readings for position tracking is a predictable application of prior art sensors.
Claim 12 (ML model predicting probability of device location in scanning area, payment area, or outside both based on signal and environmental parameters)
Claim 2
Claim 2 recites determining presence in a scanning area vs. a payment area. Using an ML model to calculate position probabilities across these exact defined areas is an obvious variation of Patent Claim 2.
Claim 13 (Container-registration sequence scanning container-ID-QR or RFID-and including it in check-in request)
Claim 10 & Claim 12
Claim 10 and Claim 12 explicitly recite using container-tags (RFID/optical) and container-IDs tied to the customer shopping session and check-in process.
In view of the above, it is noted that the instant application is broader in every aspect than the US patent document and is therefore an obvious variant thereof, thus, allowing this would result in an unjustified or improper timewise extension of the "right to exclude" granted by a patent.
To overcome a nonstatutory obviousness-type double patenting rejection, the applicant must file a valid Terminal Disclaimer under 37 C.F.R. § 1.321(c), disclaiming any patent term extending beyond the expiration date of U.S. Patent No. 12,361,799 and agreeing to common ownership enforcement.
Allowable Subject Matter
7. As to claims 1-15, there is no prior art to reject claims 1-15. However, applicants should resolve the USC 112 rejection to place the application in condition for allowance. An update search needs to be performed after the next response from applicant.
Citation of pertinent Prior Arts
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
i. Wolfe (US 12169865 B2) discloses in a systems, methods, and computer-readable storage media for creating an open loop prepaid gift account. The system identifies a request to purchase an open loop prepaid gift account which can be used to make a purchase at a merchant, presents a menu from which a customer can select the merchant, and receives a selection. Based on the selection, the system presents an option to load funds onto the open loop prepaid gift account and, upon receipt of payment, creates the open loop prepaid gift account and loads the open loop prepaid gift account with money, wherein information associated with the open loop prepaid gift account is encoded onto a physical card, and wherein merchant information is printed on the physical card according to an authorization from the merchant, the merchant information including at least one of a legal name, a trade name, a logotype, and a marketing tagline of the merchant, and
ii. Stocks (US 12107925 B2) discloses in a host processor, a plurality of service processors, a universal processor associated with the host processor and capable of exchanging data with each service processor, a first user device of the first user and a second user device of a second user. The universal processor receives a request from the first user device for a data transaction between the host processor and a service processor, and in response generates a code that can be interpreted by the service processor. Universal processor transmits the code to the first user device, which transmits the code to the second user device. The second user device transmits the code to the service processor. The service processor decodes the code and requests the universal processor to perform the data transaction with the host processor. In response, the universal processor sets up the data transaction.
Conclusion
9. If the claimed invention is amended, Applicant is respectfully requested to indicate the portion(s) of the specification, which dictate(s) the structure/description relied upon to assist the Examiner in proper interpretation of the amended language and also to verify and ascertain the metes and bounds of the claimed invention. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Fekadeselassie Girma whose telephone number is (571) 270-5886. The examiner can normally be reached on Monday thru Friday, 8:30 – 5:00. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Davetta Goins, can be reached on (571) 272-2957. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Fekadeselassie Girma/
Primary Examiner Art Unit 2689
Prosecution Insights