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
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 5-10, 12-17, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barrett et al, US Patent No. 6,593,853.
Regarding claims 1, 8, 15, Barrett et al disclose an RFID label printing system 10 comprising: a printer 12 having a housing 14 with an exit slot 16 through which is expelled a printed label (not shown); the label includes RFID circuitry, and passes an external programming module (EPM) 18 adjacent the printer exit slot 16; the EPM 18 encodes the label, and can mark a label which is not successfully encoded; a host computer 20, communicatively connected to the EPM 18 and printer 12, coordinates the operation of the EPM 18 and printer 12, and transmits data to the EPM 18 for encoding on the label RFID circuitry; the RFID circuitry in the label stores information which can be specific to the label, such as a unique identifier, product information, price or the like; the information can then be downloaded from the label when needed using a compatible, conventional RFID reader (not shown); the EPM 18 encodes data in the label RFID circuitry, reads encoded data from the circuitry, and selectively marks a defective label; when in use, the EPM 18 is disposed adjacent the printer exit slot 16, and includes a RFID encoder 22 and a label marking mechanism (LMM) 24; EPM circuitry 28 disposed in the encoder 22 interacts with the label RFID circuitry through the antenna 26, and with a host computer 20; the encoder 22 encodes the RFID circuitry in the label, and can read the encoded data from the label if the label is encoded successfully; the encoder 22 includes a housing 30 which encloses an antenna 26 electrically connected to the EPM circuitry 28 on a circuit board 29; the housing 30 is slidably mounted on a vertical stand 34 adjacent the printer exit slot; in operation, a user interacts with the software in step 190 to input label parameters, such as data for printing and/or encoding one or more labels; the label parameters are placed in a queue for sequentially producing a series of encoded printed labels; in step 192, the software initiates printing each label by the printer which expels the printed label out of the printer exit, and over the EPM encoding surface in step 194; once the label is indexed over the encoding surface, in step 196 the software initiates encoding the label with the data determined by the user; the encoding process includes directing RF energy in a power signal transmitted through the antenna 26 (shown in FIG. 3) toward the label; the RFID circuitry in the label is activated by the RF energy, and transmits a signal indicating the RFID circuitry is ready for encoding; once the antenna 26 receives the transmitted signal from the RFID circuitry, the EPM circuitry 28 (shown in FIG. 3) proceeds to include data in the power signal to encode in the RFID circuitry. (See Figs 1-4, 15-16; col. 3, line 8 to col. 4, line 12 and col. 8, line 19+).
Barrett et al disclose that the encoder 22 encodes the RFID circuitry in the label and can read the encoded data from the label, but fail to disclose determining whether the information to be encoded is new or information already existed in the label circuitry. However, when encoding or updating information on a label, it is common practice to verify the information before encoding, updating, or write the information in the storage device. Such step is require in order to prevent duplication of data within the device. With respect to changing the tag status based on the received data is a matter of engineering choice for meeting specific customer requirements. For instance, detecting data that is already existed could indicates that the tag has been activated and no other steps are required. Furthermore, Barrett et al disclose that the information stored in the label is read to verify the label and also disclose different type of usage information, including product information, price, or the like. When the label is being used for a new product or a price is being updated, reading the existing information could provide an indication of whether the new information is in fact new. Therefore, comparing the new information with the existing information would have been an obvious extension as taught by the prior art.
Regarding claims 2, 9, 16, maintaining or changing the tag status is a matter of engineering choice in order to meet specific customer requirements, which therefore, obvious.
Regarding claims 3, 10, 17, if the information is already exists the is no needs to rewrite the information into memory. Such step is common and it would have an obvious extension as taught by the prior art.
Regarding claims 4, 11, and 18, to determine the appropriate time to activate the tag is a matter of choice in order to meet specific customer requirements, wherein the tag could be activated when it is within range or within a certain distance from the printer. Therefore, it would have been an obvious extension as taught by the prior art.
Regarding claims 5, 12, 19, in order to detect the tag, the must be within the operating range of the reader/writer.
Regarding claims 6, 13, 20, information is printing after the tag has been programmed by reader/write (see col. 5, line 20+).
Regarding claim 7 and 14, in order to identify and/or activating the tag its identifier must be communicated for verification in the system database. Therefore, it would have been an obvious extension as taught by the prior art.
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 1-15 of U.S. Patent No. 12,353,943 (hereinafter ‘943 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention is a broader recitation of the ‘943 Patent. For instant, in claim 1 of the current application and in the ‘943 Patent, the applicant claims:
Application No. 19/249,477
Patent No. 12,353,943
A method comprising: determining, by a microcontroller embedded in a radio-enabled label, whether an identifier corresponds to new information compared to existing information stored in a memory embedded in the radio-enabled label or to information already stored in the memory, wherein the identifier is received from a list of identifiers stored in a database in communication with a printer; in response to the determining that the identifier corresponds to new information, storing the identifier in the memory; and in response to the determining that the identifier corresponds to information already stored in the memory, disabling an active status of the radio-enabled label.
A method comprising: activating a radio-enabled label in response to detecting that the radio-enabled label is moving through an area of a printer; receiving from the printer a radio signal comprising an identifier by the radio-enabled label, wherein the identifier is received from a list of identifiers stored in a database in communication with the printer; by a microcontroller embedded in the radio-enabled label, identifying whether the identifier corresponds to new information compared to existing information stored in a memory embedded in the radio-enabled label or to information already stored in the memory; in response to determining that the identifier corresponds to new information, storing the identifier in the memory; and in response to determining that the identifier corresponds to information already stored in the memory, disabling an active status of the radio-enabled label.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1-15 of the ‘943 Patent as a general teaching for a method to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘943 Patent and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘943 Patent [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached M to F 8:00-8:00.
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DANIEL ST CYR
Primary Examiner
Art Unit 2876
/DANIEL ST CYR/Primary Examiner, Art Unit 2876