The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,361,798. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations claimed within the current claims are already covered by the patented claims. Examiner has produced a comparison below.
US 9,734,669
Current claims
1. A method comprising: receiving, on a payment device, a manual input indicative of requesting that a feature be added to said payment device; receiving first information indicative of payment from said payment device; combining said request for the feature with information associated with a payment transaction into a combined transaction; sending said combined transaction to a processing facility to process said payment transaction; retrieving, at said processing facility, said request for said feature; sending said retrieved request for said feature to a remote server; changing, on said remote server, a change in status of said requested feature; providing said requested feature on said payment device based on said change in status; wherein said requested feature is a game of skill that awards a prize upon winning said game of skill, and said game of skill is provided based on said retrieving said requested feature and data associated with said change in status.
2. A method comprising: receiving manual input indicative of changing a feature associated with a payment device; changing, on a remote server, said feature associated with said payment device; receiving first information indicative of payment from said payment device; combining information associated with changing said feature with said first information; sending said combined information to a payment processing facility; extracting said information associated with changing said feature; sending said extracted information to said remote server; retrieving said feature from said remote server, wherein said feature is a game of chance that awards a prize upon winning said game of chance, and said game of chance is provided based on said retrieving said feature and data associated with said first information.
3. The method of claim 2, wherein said prize is reclaimed upon non-settlement of said authorized payment and said prize is awarded upon authorization of a second payment with an amount larger than the amount of said authorized payment.
4. The method of claim 1, wherein said prize is awarded instantly.
5. The method of claim 1, wherein said prize is awarded after a period of time has elapsed.
6. The method of claim 2, wherein said prize is awarded instantly.
7. The method of claim 2, wherein said prize is awarded after a period of time has elapsed.
1. A method comprising: receiving, on a payment device, a manual input indicative of requesting that a feature be added to said payment device; accepting first information indicative of a payment request on said payment device; combining said payment request with said feature into a single payment transaction; sending said combined transaction to a processing facility to process said single payment transaction; extracting, at said processing facility, said said feature from said single payment transaction; sending said extracted feature to a remote server; changing, on said remote server, status of said feature based at least in part on said single payment transaction; providing said changed status of said feature to said payment device based; wherein said feature is a game of skill that awards a prize upon winning said game of skill, and said game of skill is provided to said payment device based on said change in status.
2. The method of claim 1, wherein said prize is claimed upon non-settlement of said single payment transaction and said prize is awarded upon authorization of a second payment transaction with an amount larger than the amount of said single payment transaction.
3. The method of claim 1, wherein said prize is awarded instantly.
4. The method of claim 1, wherein said prize is awarded after a period of time has elapsed after said single payment transaction occurs.
5. The method of claim 2, wherein said prize is awarded instantly.
6. The method of claim 2, wherein said prize is awarded after a period of time has elapsed after said single payment transaction occurs.
7. A method comprising: receiving a manual input indicative of changing a feature associated with a payment device; changing, on a remote server, said feature associated with said payment device consistent with said manual input; accepting first information indicative of a payment request on said payment device; combining second information associated with said change in said feature with said first information into a single payment transaction; sending said single payment transaction to a payment processing facility; extracting said information associated with change in said feature from said single payment transaction; sending said extracted information to said remote server; retrieving said changed feature from said remote server,2 wherein said feature is a game of chance that awards a prize upon winning said game of chance, and said game of chance is provided based on said changed feature and data associated with said first information.
8. The method of claim 7, wherein said prize is reclaimed upon non-settlement of said authorized payment and said prize is awarded upon authorization of a second payment with an amount larger than the amount of said authorized payment.
9. The method of claim 8, wherein said prize is awarded instantly.
10. The method of claim 8, wherein said prize is awarded after a period of time has elapsed.
11. The method of claim 7, wherein said prize is awarded instantly.
12. The method of claim 7, wherein said prize is awarded after a period of time has elapsed
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MASUD AHMED whose telephone number is (571)270-1315. The examiner can normally be reached M-F 9:00-8:30 PM PST with IFP.
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MASUD . AHMED
Primary Examiner
Art Unit 3657A
/MASUD AHMED/Primary Examiner, Art Unit 3657
Prosecution Insights