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 Objections
Claims 43, 53 and 62 are objected to because of the following informalities:
Regarding claim 43, the recitation of “a shortcode identifier” in line 4 is suggested to change to - - the shortcode identifier - -. The recitation of “a scannable” in line 4 is suggested to change to - - the scannable - -.
Regarding claim 53, the recitation of “a location” in line 8 is suggested to change to - - a general location - -. The recitation of “ an output” in line 15 is suggested to change to - - the output - -.
Regarding claim 62, the recitation of “code;” in line 5 is suggested to change to - - code. - -.
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 49 and 56 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 49, claim recite the limitation “the general location” in line 3 and “the resolved location” in line 4 . There are insufficient antecedent basis for these limitations in the claim.
Regarding claims 49 and 56, the recitation of “the location” in line 5 is vague because it is unclear of what location is referring to i.e. the general location or the resolved location?.
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.
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Claims 43 and 61 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,361,245. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 12,361,245 covers and encompasses the limitations of the claims 43 and 61 of the instant application. Moreover, because omission element(s) in the claims would make the claims in the instant application broader, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the claim(s) in the U.S. Patent No. 12,361,245 to as now recited in the instant application since it is just merely an obvious variation of the claims. Furthermore, it is well settled that omission of an element and it function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 163 USPQ 184 (CCPA 1963). In light of the foregoing discussion, the broader claims 43 and 61 of the instant application is rejected as obvious double patenting over the narrower claim 12 of U.S. Patent No. 12,361,245.
The corresponding claims as follow:
U.S. Patent No. 12,361,245
Instant Application
Claim 12: A system for enabling a person or device to activate a scannable code by speaking or using one of one or more visual and displayed alphanumeric shortcode identifiers for such scannable code, comprising:
a) a registry configured to: one of assigning or registering an alphanumeric shortcode identifier associated with a scannable code in a subject area, the alphanumeric shortcode identifier having fewer characters than the scannable code; verifying that the alphanumeric shortcode identifier is unique within the subject area;
associating the alphanumeric shortcode identifier within that subject area to a specific scannable code; resolving the alphanumeric shortcode identifier within that subject area to the specific scannable code; and
b) one or more processors configured to: enable a user to enter, input, speak, select, or communicate, using a user interface of an electronic device, the assigned or registered alphanumeric shortcode identifier displayed adjacent the specific scannable code; determine the subject area; and resolve and activate the scannable code assigned to the registered alphanumeric shortcode identifier.
Claim 12: A system for enabling a person or device to activate a scannable code by speaking or using one of one or more visual and displayed alphanumeric shortcode identifiers for such scannable code, comprising:
a) a registry configured to: one of assigning or registering an alphanumeric shortcode identifier associated with a scannable code in a subject area, the alphanumeric shortcode identifier having fewer characters than the scannable code; verifying that the alphanumeric shortcode identifier is unique within the subject area;
associating the alphanumeric shortcode identifier within that subject area to a specific scannable code; resolving the alphanumeric shortcode identifier within that subject area to the specific scannable code; and
b) one or more processors configured to: enable a user to enter, input, speak, select, or communicate, using a user interface of an electronic device, the assigned or registered alphanumeric shortcode identifier displayed adjacent the specific scannable code; determine the subject area; and resolve and activate the scannable code assigned to the registered alphanumeric shortcode identifier.
Claim 43: A system for enabling one or more users to identify and activate a scannable code using a shortcode identifier, comprising:
a) a registry configured to:
one of assigning or registering a shortcode identifier associated with a scannable code;
verifying that the shortcode identifier is unique; and
associating the shortcode identifier to a specific scannable code; and
b) one or more processors configured to enable a user viewing the shortcode identifier to communicate the shortcode identifier via a user interface of a user electronic device whereupon the user electronic device resolves the shortcode identifier and identifies the scannable code and presents information to the user based on the scannable code on an output device of the user electronic device.
Claim 61: A computer program for enabling a user to identify and activate a scannable code using a shortcode identifier displayed adjacent the scannable code, the computer program comprising instructions fixed in a tangible medium which, when the program is executed by a computer, causes the computer to:
enable the user to communicate the shortcode identifier via a user interface of a user electronic device whereupon the user electronic device activates the scannable code in order to present information to the user based on the scannable code on an output device of the user electronic device.
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) 43-62 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hancock et al. (US 2014/0223283) in view of Greenfield (US 2014/0032328).
Regarding claim 43, Hancock teaches a system for enabling one or more users to identify and activate a shortcode identifier ([0011] and [0053]), comprising: a registry configured to: one of assigning or registering the shortcode identifier (LID); verifying that the shortcode identifier is unique ([0045] and [0050]-[0069]); one or more processors ([0047]) configured to enable a user view the shortcode identifier to communicate the shortcode identifier via a user interface of a user electronic device ([0011] and [0047]) whereupon the user electronic device resolves the shortcode identifier and presents information to the user ([0050], [0051] and [0053]-[0074]).
Hancock further teaches enabling user to scan QR code for obtaining location information ([0011]) but fails to teach assigning and associating the shortcode identifier with a scannable code.
However, Greenfield teaches assigning and associating the shortcode identifier (shortcode text, [0007] and [0014]) with a scannable code (QR code, [0019]) (fig. 1).
In view of Greenfield’s teaching, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Hancock by incorporating the teaching as taught by Greenfield so that user can make use of the scannable code.
Regarding claim 44, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Greenfield further teaches where the shortcode identifier is displayed in a physical sign along with the scannable code ([0007]).
Regarding claim 45, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Hancock further teaches where the shortcode identifier is displayed on the user electronic display along with the scannable code (figs. 5-7).
Regarding claim 46, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Both Hancock and Greenfield further teach wherein the registry is configured to verify that the shortcode identifier is unique within a geographic subject area and associated the shortcode identifier with the scannable code within the geographic subject area (Hancock: [0073]. Greenfield: [0018]).
Regarding claim 47, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Both Hancock and Greenfield further teach wherein the user electronic device uses information related to a general location of the user electronic device to resolve the shortcode identifier, whereupon the user electronic device presents the information to the user based on the scannable code on the output device (Hancock: [0073]. Greenfield: [0008] and [0018]-[0019]).
Regarding claim 48, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Hancock further teaches wherein all or a portion of the registry is stored on the electronic device such that the resolving is contained within the electronic device ([0119]).
Regarding claim 49, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Both Hancock and Greenfield further teach a remote server comprising the one or more processors, and wherein the remote server is configured to: receive the shortcode identifier and a general location from the user electronic device to resolve the resolved location associated with the shortcode identifier within a geographic subject area including the location; and transmit the information to the user electronic device for display on the output device of the user electronic device (Hancock: fig. 1. Greenfield: fig. 1).
Regarding claim 50, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Hancock further teaches where the shortcode identifier identifies one of a specific room, door, office, aisle, window, stairwell, piece of equipment, or other micro-location place in or near a specific building within a geographic subject area ([0054] and [0073]).
Regarding claim 51, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Hancock further teaches wherein the user electronic device is configured to use information related to the general location by determining the geographic subject area based at least in part on one of a) GPS, b) an indoor or local positioning system, c) radio frequency identification, near field communications, Bluetooth, small radio transmitter beacons, d) micro-location name and number, or e) an access point of a cell phone, ultra-wideband, area, Wi-Fi, distributed antenna systems, or a wireless network at the general location ([0011], [0012] and [0073]).
Regarding claim 52, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Both Hancock and Greenfield further teach where the shortcode identifier comprises a virtual shortcode identifier displayed virtually on one of an augmented reality display, a virtual reality display, a HUD display, and a headset (Hancock: [0042] and [0076]. Greenfield: the abstract).
Regarding claim 53, Hancock teaches a system for enabling a user to identify and activate a shortcode identifier (LID) that is discrete within a subject area, comprising: a user electronic device ([0047]), comprising: a user interface for communicating the shortcode identifier viewed by the user (figs. 6-8); an output device (display); and a GPS device ([0073]) for identifying a general location of the user electronic device when the shortcode identifier is communicated; and one or more processor ([0047]) configured to: use information related to the general location of the electronic device to resolve the shortcode identifier; and present information to the user based on the shortcode identifier ([0050], [0051] and [0053]-[0074]).
Hancock further teaches enabling user to scan QR code for obtaining location information ([0011]) but fails to teach assigning and associating the shortcode identifier with a scannable code.
However, Greenfield teaches assigning and associating the shortcode identifier (shortcode text, [0007] and [0014]) with a scannable code (QR code, [0019]) (fig. 1).
In view of Greenfield’s teaching, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Hancock by incorporating the teaching as taught by Greenfield so that user can make use of the scannable code.
Regarding claim 54, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Greenfield further teaches where the shortcode identifier is displayed in a physical sign along with the scannable code ([0007]).
Regarding claim 55, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Hancock further teaches where the shortcode identifier is displayed on the user electronic display along with the scannable code (figs. 5-7).
Regarding claim 56, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Both Hancock and Greenfield further teach a remote server comprising the one or more processors, and wherein the remote server is configured to: receive the shortcode identifier and a general location from the user electronic device to resolve the resolved location associated with the shortcode identifier within a geographic subject area including the location; and transmit the information to the user electronic device for display on the output device of the user electronic device (Hancock: fig. 1. Greenfield: fig. 1).
Regarding claim 57, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Hancock further teaches where the shortcode identifier identifies one of a specific room, door, office, aisle, window, stairwell, piece of equipment, or other micro-location place in or near a specific building within a geographic subject area ([0054] and [0073]).
Regarding claim 58, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Hancock further teaches wherein the user electronic device is configured to use information related to the general location by determining the geographic subject area based at least in part on an access point of a wireless network at the general location ([0012] and [0054]).
Regarding claim 59, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Both Hancock and Greenfield further teach where the shortcode identifier comprises a virtual shortcode identifier displayed virtually on one of an augmented reality display, a virtual reality display, a HUD display, and a headset (Hancock: [0042] and [0076]. Greenfield: the abstract).
Regarding claim 60, Hancock as modified by Greenfield teaches all subject matter claimed as applied above. Greenfield further teaches wherein the shortcode identifier is displayed adjacent a QR code to enable one of voice or text activation of the QR code (fig. 1 and [0014]-[0019]).
Regarding claims 61 and 62, the claims are corresponding method claims and recite similar subject matter as in claim 53. Therefore, similar rationale is applied as for claim 53 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
References: Hancock (US 2019/0377783); Boerner et al. (US 2021/0279776); Gotlieb et al. (US 2020/0410809); Everton (US 2024/0153334) and Wong et al. (US 2019/0362348) are cited because they are related to system and method for reading and activating machine readable code.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tuyen Kim Vo whose telephone number is (571)270-1657. The examiner can normally be reached Mon-Thurs: 8AM-6:30PM.
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/TUYEN K VO/Primary Examiner, Art Unit 2876