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
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,367,477. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1-20 are anticipated by the conflicting patented claims 1-20 as shown in the table below. The difference between the instant examined claim and the conflicting patented claim is that the conflicting patented claims are narrower in scope and falls within the scope of the examined claim. Thus, the species or sub-genus claimed in the conflicting patent anticipates the examined claimed genus. Therefore, a patent to the examined claim genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. See MPEP § 804 (II)(B)(1).
Instant Application 19/248,598
U.S. Patent No. 12,367,477
Claim 1
Claim 1
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claim 9
Claim 10
Claim 10
Claim 11
Claim 11
Claim 12
Claim 12
Claim 13
Claim 13
Claim 14
Claim 14
Claim 15
Claim 15
Claim 16
Claim 16
Claim 17
Claim 17
Claim 18
Claim 18
Claim 19
Claim 20
Claim 9
Claim 19
Claim 20
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 1-6, 8-20 are rejected under 35 U.S.C. 103 as being unpatentable over Osterkamp et al. (U.S. Patent No. 11,416,844) in view of Berkowitz et al. (U.S. Pub. No. 2023/0169481).
Regarding claim 1, Osterkamp et al. discloses a computer-implemented method, comprising:
displaying, by at least one computer processor of a media device (considered as electronic device 130 or 400) on a display device associated with the media device, an instruction screen in response to receiving a payment method selection from a remote control (considered as POS 140) (see col. 14, lines 1-8,58-col. 15, line 2, col. 5, lines 55-64, col. 9, lines 25-38, col. 11, lines 7-22, fig. 1, fig. 4; user devices 130, 400 associated with display can display instruction 410 in response to receiving a payment);
receiving payment information from the remote control, wherein the payment information is received at the remote control using a radio frequency identification (RFID) reader module of the remote control (see col. 5, lines 65-col. 6, line 9, col. 11, lines 48-57; receiving payment at POS using RFID); and
in response to an authentication response received from the remote control satisfying a condition, transmitting the payment information to a server for further processing (see col. 5, lines 65-col. 6, line 9, col. 9, lines 48-col. 10, line 34, col. 11, lines 48-57; The POS terminal 140 may acquire payment information (e.g., unique payment number or credit card number) of a user and transmit the payment information along with an authorization request to a server, such as the analytics server 110 or the payment facilitation server 120).
However, Osterkamp et al. is silent as to the remote control generates a sound or a light in response to receiving a payment.
Berkowitz et al. discloses the remote control generates a sound or a light in response to receiving a payment (see paragraph 0022; a speaker 105 associated with the POS device may provide auditory cues, voice commands, or indicative sounds to users (e.g., to tell a user how to enter a PIN, facilitate entering of the PIN, guide the user through the payment process, etc.).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify the system of Osterkamp et al. with the teachings of Berkowitz et al., the motivation being to tell a user how to enter a PIN, facilitate entering of the PIN, guide the user through the payment process, etc. (see Berkowitz et al. [0022]).
Regarding claim 10, claim 10 is rejected for the same reason set forth in the rejection of claim 1.
Regarding claim 17, claim 17 is rejected for the same reason set forth in the rejection of claim 1.
Regarding claims 2, 11 and 18, Osterkamp et al. and Berkowitz et al. discloses everything claimed as applied above (see claims 1, 10 and 17). Osterkamp et al. discloses providing one or more payment method options (see col. 5, lines 55-64);
receiving the payment method selection (see col. 5, lines 65-col. 6, line 9); and
in response to the payment method selection, transmitting an activation signal to the remote control to activate the RFID reader module (see col. 5, lines 65-col. 6, line 9),
wherein the instruction screen includes an instruction on how to use the remote control for providing the payment information (see col. 14, lines 1-9 and fig. 4).
Regarding claims 3, 12 and 19, Osterkamp et al. and Berkowitz et al. discloses everything claimed as applied above (see claims 1, 10 and 17). Osterkamp et al. discloses promoting an authentication request (see col. 4, lines 25-37); and
receiving the authentication response from the remote control in response to the authentication request, wherein the authentication request indicates a request for address information, a request for a security code, or a request for biometric information (see col. 14, lines 10-19).
Regarding claims 4, 13 and 20, Osterkamp et al. and Berkowitz et al. discloses everything claimed as applied above (see claims 1, 10 and 17). Osterkamp et al. discloses in response to the authentication response not satisfying the condition, displaying a failure message on the display device associated with the media device, wherein the authentication response comprises biometric information (see col. 5, lines 65-col. 6, line 9, col. 13, lines 49-67).
Regarding claims 5 and 14, Osterkamp et al. and Berkowitz et al. discloses everything claimed as applied above (see claims 1 and 10). Osterkamp et al. discloses displaying, on the display device associated with the media device, one or more payment method options (see col. 5, lines 5-18, 55-65, col. 11, lines 29-40).
Regarding claims 6 and 15, Osterkamp et al. and Berkowitz et al. discloses everything claimed as applied above (see claims 1 and 10). Osterkamp et al. discloses
wherein the payment information is associated with an RFID enabled credit card (see col. 11, lines 48-57).
Regarding claims 8 and 16, Osterkamp et al. and Berkowitz et al. discloses everything claimed as applied above (see claims 1 and 10). Berkowitz et al. discloses
encrypting the payment information before transmitting the payment information to the server for the further processing (see paragraph 0028).
Regarding claim 9, Osterkamp et al. and Berkowitz et al. discloses everything claimed as applied above (see claim 1). Osterkamp et al. discloses promoting an authentication request (see col. 4, lines 25-37);
receiving the authentication response from the remote control in response to the authentication request (see col. 14, lines 10-19), wherein:
promoting the authentication request comprises prompting for biometric information comprising face identification, iris recognition, retina scanning, fingerprint scanning, voice recognition, or vein recognition; and transmitting an activation signal to the remote control to transition the RFID reader module from a passive mode to an active mode (see col. 14, lines 9-19).
Berkowitz et al. discloses displaying the instruction screen comprises displaying the instruction screen while the remote control generates the light (see paragraph 0022).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Osterkamp et al. and Berkowitz et al. as applied to claim 1 above, and further in view of Singh et al. (U.S. Pub. No. 2024/0161146).
Regarding claim 7, Osterkamp et al. and Berkowitz et al. discloses everything claimed as applied above (see claim 1). However, Osterkamp et al. and Berkowitz et al. are silent as to wherein the payment information is associated with a digital wallet of an RFID enabled device and wherein the instruction screen includes an instruction on how to use the digital wallet for providing the payment information.
Singh et al. discloses wherein the payment information is associated with a digital wallet of an RFID enabled device and wherein the instruction screen includes an instruction on how to use the digital wallet for providing the payment information (see paragraph 0029 and fig. 4).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify the system of Osterkamp et al. and Berkowitz et al. with the teachings of Singh et al., the motivation being to redeem an incentive.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bankers et al. (U.S. Pub. No. 2005/0193417).
Manuel-Devadoss (U.S. Pub. No. 2014/0304721)
Innes et al. (U.S. Pub. No. 2013/0293359).
Conclusion
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NNENNA EKPO
Primary Examiner
Art Unit 2425
/NNENNA N EKPO/Primary Examiner, Art Unit 2425 June 26, 2026.
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