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 .
Acknowledgment
This Office Action is responsive to amendment filed on 06/17/2026.
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 the shortcode identifier configured to be displayed adjacent the scannable code;
verifying that the shortcode identifier is unique within a geographic subject area; and
associating the shortcode identifier with the scannable code within the registry; and
b) one or more processors configured to enable a user viewing the shortcode identifier displayed adjacent to the scannable code to communicate the shortcode identifier via a user interface of a user electronic device whereupon the user electronic device resolves the shortcode identifier, activates the scannable code, identifies a resolved location associated with 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 displayed adjacent the scannable code via a user interface of a user electronic device whereupon the user electronic device activates the scannable code to:
identify the scannable code based on a location of the user electronic device and identify a resolved location associated with the scannable code; and present information to the user based on the scannable code on an output device of the user electronic device.
Allowable Subject Matter
Claims 44-52 and 62 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 53-60 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record, taken alone or in combination fails to further teaches the limitations as recited in claims 44-52 and 62. The prior art of record, taken alone or in combination fails to teach or fairly suggest a system for enabling a user to identify and activate a scannable code using a shortcode identifier that is discrete within a geographic subject area, the shortcode identifier displayed adjacent the scannable code, the system comprising: a) a user electronic device, comprising: a user interface for communicating the shortcode identifier viewed by the user displayed adjacent the scannable code; an output device; and a GPS device for identifying a location of the user electronic device when the scannable code is communicated; and b) one or more processors configured to: use information related to the location of the electronic device to resolve the shortcode identifier, activate the scannable code, and identify a resolved location associated with the scannable code; and present information to the user based on the resolved location and the scannable code on the output device of the electronic device as recited in claim 53 and further limitations of the dependent claims 54-60.
Response to Arguments
Applicant’s arguments, see Remarks, filed 06/17/2026, with respect to claims 43-62 have been fully considered and are persuasive. The rejection of claims 43-62 has been withdrawn.
Note that the nonstatutory double patenting rejection is repeated because the Terminal Disclaimer has not been filed.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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