CTNF 19/263,763 CTNF 81390 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 3 of U.S. Patent No. 11900721 . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims correspond as follows: 19/263,763 U.S. Patent 11900721 Claims 1 and 2 Claim 1 Claim 3 and 4 Claim 3 08-34 AIA Claim s 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 3 of U.S. Patent No. 11900721 . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims correspond as follows: 19/263,763 U.S. Patent 12386935 Claims 1 and 2 Claim 1 Claim 3 and 4 Claim 4 Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15-aia AIA Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Deotale et al. (2019/0095079) . In regard to claim 1, Deotale et al. teach an electronic device (element 100) comprising: a control portion (element 140), a display portion (element 160), and a memory portion (element 110a), wherein the display portion is configured to display an image, configured to detect a touch operation, and configured to obtain fingerprint data on a touching finger (paragraph 69, display screen detects fingerprint in response to touch), wherein the display portion is configured to authenticate fingerprint data over an entire display area of the display portion (Fig. 1D), wherein the memory portion is configured to retain fingerprint data on a plurality of fingers registered in advance (fig. 1A fingerprint database), and wherein the control portion is configured to compare the fingerprint data on the touching finger with each piece of the fingerprint data on the plurality of fingers (paragraph 70), and configured to execute processing corresponding to fingerprint data that matches the fingerprint data on the touching finger among the fingerprint data on the plurality of fingers in the case where the fingerprint data on the touching finger matches any piece of the fingerprint data on the plurality of fingers (fig. 4A and fig. 13. Deotale et al. teach each finger being used for a different function). In regard to claim 2, Deotale et al. teach In regard to claim 1, Deotale et al. teach an electronic device (element 100) comprising: a control portion (element 140), a display portion (element 160), and a memory portion (element 110a), wherein the display portion is configured to display an image, configured to detect a long tap operation (paragraph 3), and configured to obtain fingerprint data on a touching finger (paragraph 69, display screen detects fingerprint in response to touch), wherein the display portion is configured to authenticate fingerprint data over an entire display area of the display portion (Fig. 1D), wherein the memory portion is configured to retain fingerprint data on a plurality of fingers registered in advance (fig. 1A fingerprint database), and wherein the control portion is configured to compare the fingerprint data on the touching finger with each piece of the fingerprint data on the plurality of fingers (paragraph 70), and configured to execute processing corresponding to fingerprint data that matches the fingerprint data on the touching finger among the fingerprint data on the plurality of fingers in the case where the fingerprint data on the touching finger matches any piece of the fingerprint data on the plurality of fingers (fig. 4A and fig. 13. Deotale et al. teach each finger being used for a different function) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deotale et al. in view of Alten (US 2016/0063230) . In regard to claim 3 and 4, Deotale et al. teach all the elements of claims 3 and 4 except wherein the control portion is configured to transition a system to a locked state if the fingerprint data of the touching finger does not match any of the fingerprint data of the plurality of fingers. Alten teaches wherein the control portion is configured to transition a system to a locked state if the fingerprint data of the touching finger does not match any of the fingerprint data of the plurality of fingers (fig. 10 element 1012 and paragraph 65). The two are analogous art because they both deal with the same field of invention of displays. Before the effective filing date it would have been obvious to one of ordinary skill in the art to provide the apparatus of Deotale et al. with the screen lock of Alten. The rationale is as follows: Before the effective filing date it would have been obvious to provide the apparatus of Deotale et al. with the screen lock of Alten because it would prevent unauthorized user access . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Higuchi (US 2011/0310044) teach matching a fingerprint with an application (fig. 2) . Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH R HALEY whose telephone number is (571)272-0574. The examiner can normally be reached 7:30am-5pm. 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, Amr Awad can be reached at 571-272-7764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOSEPH R HALEY/Primary Examiner, Art Unit 2621 Application/Control Number: 19/263,763 Page 2 Art Unit: 2621 Application/Control Number: 19/263,763 Page 3 Art Unit: 2621 Application/Control Number: 19/263,763 Page 4 Art Unit: 2621 Application/Control Number: 19/263,763 Page 5 Art Unit: 2621 Application/Control Number: 19/263,763 Page 6 Art Unit: 2621
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