DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Duplicate Claim
Applicant is advised that should claim 17 be found allowable, claim 18 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 13 and 14 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bychkov et al. (US 2007/0152039) in view of Pitroda (US 5590038).
In Bychkov et al., a user can customize a digital memory card (which is an electrically powered card), including with video and audio content (para 0044, 0055, 0056). These are “intangible” products. The user can even select (para 0064) an issuer, which itself is an important product customization. Further, the visual appearance of the card can be customized (para 0012, 0032, 0033). In addition, a user can display a preview of the customized card (para 0021, 0026, 0058, claims 27 and 45).
That the user can select customizations from a list is apparent at paragraphs 0057, 0064, 0066, 0068 and claim 9. In particular, para 0064 describes selection from a menu, which is a list.
See notably the flow chart of figure 2. The final step is to provide (dispense) the card.
Regarding different hardware configuration, Buchkov et al. teaches at para 0045:
“Typically, the digital memory cards provided by the card vending machine of the present invention include non-secure digital memory cards (such as a digital book) and secure digital memory cards (such as pre-paid cards, membership cards, etc.).”
Thus in Bychov et al. there are at least two different hardware configurations available at the card vending machine.
It is admittedly possible to interpret this as meaning that the two different hardware configurations of non-secure digital memory cards and secure digital memory cards are alternative embodiments of the vending machine rather than one embodiment of the vending machine having both hardware types at the same time. However even if that interpretation is taken, it would have been obvious to include both of these at the same time in Bychov et al. for the sake of greater service at the vending machine. It is widely appreciated that vending machines which vend many types of products are more desirable than vending machines which vend fewer types of products.
Bychkov et al. does not explicitly teach that the card is self-powered. Power could come to the card from an external source, such as via a contact or via an antenna that picks up more through electromagnetism. (Bychkov might have a battery, but we have no way of knowing, because Bychkov is silent on this.)
Pitroda teaches an electronic smart card. Pitroda's card (column 9, lines 30-50; column 11, lines 10-30) is explicitly battery powered, and illustrates that a smart card can be self-powered and does not need to rely on an external power source.
In view of the teachings of Pitroda, it would have been obvious to substitute a battery-having card for the card dispensed by Bychkov for the sake of better power output.
The motivation for this is that a battery confers more power than may be available through other means. Particularly, the much greater power available from a battery is better suited for power intensive activities such as outputting video or sound. This is a simple change, and in all other ways the card and dispensing system of Bychkov can be unchanged. It was widely understood in the art that battery-powered and wireless-powered are two substitutable alternatives in the art of smart cards.
Finally, since the question of whether Bychkov et al. actually has plural cards “having different hardware configurations” has been a point of major contention, the examiner reiterates all the reasons below:
(1) Bychkov et al. explicitly states (paragraphs 0009, 0043 and 0064) that there are different types of cards dispensed. The plain and clear meaning of this is that the cards are, physically different rather than simply programmed differently. ‘Physically different’ is how one of ordinary skill would read this claim language.
Why would Bychkov et al. go out of their way to state repeatedly that there are different card types if there is really just one actual card type?
(2) The applicant has dismissed “a card vending machine that issues digital memory cards of several types in compliance with the specific requirements of each of a plurality of different and unrelated issuers” (para 0009 of Bychkov et al.) as merely different programming on the same underlying physical card type.
Figure 2 shows that contra the applicant’s arguments, Bychkov et al. does not mean for card type to mean merely different programming. Card type selection (steps 50 and 52) is an entirely different step from programming the card (step 64) that takes place in a completely different area of the flow chart.
(3) In fact, Bychkov et al. does name different physical hardware types.
At para 0049, there are two different standards named. In addition, another hardware configuration is named, specifically one where a card has a USB connector built in. That is an unconventional card type in terms of the hardware configuration, and it is certainly quite different from “pre-paid cards” and “membership cards” (para 0045) which would be expected to resemble the plain credit card types found in most wallets.
(4) There are different compartments for different issuers. The need to keep the different cards of different issuers physically separate in different compartments reflects that they are different physically (different hardware configuration).
See paragraphs 0050 and 0051 of Bychkov et al. The different card types of different issuers are in different physical areas of the storage. Separately, this is seen at para 0014.
If the cards were physically in the same hardware configuration, there would be no need or purpose to this strict separation. If they had the same physical hardware configuration, there would only be need for one storage area for blanks since it would be possible to create the cards from that.
(5) The examiner maintains that the dramatically different functions of cards being dispensed in Bychkov et al. (see para 0044 and 0045) ranging from memory devices carrying digital books and films to plain ID cards logically means different card types.
One of ordinary skill in the art understands that something like a simple membership card or pre-paid card (para 0045 of Bychkov et al.) of the most common type in most wallets does not have the hardware capability (especially the physical memory) to store a film or whole digital book.
The above-discussed need for different storage areas for different issuers (“digital memory cards of several types in compliance with the specific requirements of each of a plurality of different and unrelated issuers” (para 0043 of Bychkov et al.) clearly reflects that the physical hardware types are different for these dramatically different purposes.
(6) The provisional application of Bychkov et al. includes this phrase: “The menu of card types that can be issued based on the blank cards provided.” This text means that the blank cards provided limit or dictate what final cards can be dispensed. Not any final card types can be issued but only what is within the bounds of the blank cards that have been issued. This strongly indicates that there are different hardware types that can be used for different cards and those physical hardware types limit the final card that is possible.
(7) The examiner finds the language of para 0022 and 0023 of Bychkov et al. implies different hardware configurations.
Paragraphs 0022 and 0023 are as follows:
“[0022] In accordance with a preferred embodiment, there is further provided a vending method that includes the steps of: (a) storing, in a common storage area, a plurality of memory cards; and (b) issuing each of the plurality of memory cards by a respective one of at least two different issuers.
[0023] Preferably, the plurality of memory cards includes at least one secure memory card.”
Thus, the “secure memory card” is already a distinctive item in the initial storage area, even before any programming has occurred. This suggests to the examiner a physical difference, that is, a difference in hardware.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,361,463. Although the claims at issue are not identical, they are not patentably distinct from each other because the primary difference (“a distributor that distributes said selected hardware configuration after said personalization device completes personalizing said selected hardware configuration on said battery-powered device”) is not patentably distinct because having a company distribute a product is well within the realm of the obvious. Otherwise, the claims are generally very close with mainly a reordering of limitations in some instances.
Claim correspondences are:
Instant claim number
Corresponding claim in the 12,361,463 patent
1. A vending machine comprising: a plurality of battery-powered devices for individual distribution from said vending machine, each of said devices having a plurality of different hardware configurations wherein at least a first of said plurality of different hardware configurations comprises a display and a battery, and at least a second of said plurality of different hardware configurations lacks a display; a vending machine display for providing one or more graphical user interfaces comprising: a rendered virtual device operable to be representative of one of said plurality of battery- powered devices, a rendered list of attributes to be selected for association with said rendered virtual device, wherein said list of attributes comprises at least one functional feature associated with a hardware configuration selected from said plurality of different hardware configurations
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a manual interface for receiving user inputs comprising identification information; and a personalization device operable to apply said selected feature to said selected hardware configuration, to store at least a portion of said user identification information on said one of said plurality of battery-powered devices prior to distribution from said vending machine, and provide said user identification information as human-perceivable indicia on a surface of said selected hardware configuration; and a distributor that distributes said selected hardware configuration after said personalization device completes personalizing said selected hardware configuration on said battery-powered device.
1 A vending machine comprising: a plurality of battery-powered devices having a plurality of different hardware configurations, wherein at least one of said plurality of different hardware configurations comprises a display and a battery, and at least one of the plurality of different hardware configurations lacks a display; a vending machine display for providing one or more graphical user interfaces including, a rendered virtual device that is representative of one of said plurality of battery-powered devices, a rendered list of attributes to be selected for association with said virtual device, wherein said attributes include at least one functional feature associated with a hardware configuration selected from said plurality of different hardware configurations; and a manual interface for receiving user identification information; and a personalization device operable to apply said selected attributed to said one of said plurality of battered-powered devices, including configuring a selected functional feature based on the selected hardware configuration; store at least a portion of said user identification information on said one of said plurality of battery-powered devices prior to delivery from said vending machine as electronic data; and provide said user identification information as human-perceivable indicia on a surface of said one of said plurality of battery-powered devices.
2 The vending machine of claim 1, wherein said selected attributes include a graphical image.
2 The vending machine of claim 1, wherein said selected attributes include a graphical image.
3 The vending machine of claim 1, wherein said selected attributes include a holographic image.
3 The vending machine of claim 1, wherein said selected attributes include a holographic image.
4 The vending machine of claim 1, wherein said vending machine is coupled to a network and said selected attributes include a graphical image downloaded from said network.
4 The vending machine of claim 1, wherein said vending machine is coupled to a network and said selected attributes include a graphical image downloaded from said network.
5 The vending machine of claim 1, wherein said machine is coupled to a network and said selected attributes include a holographic image downloaded from said network.
5 The vending machine of claim 1, wherein said machine is coupled to a network and said selected attributes include a holographic image downloaded from said network.
6 The vending machine of claim 1, wherein said selected attributes include a background color.
6 The vending machine of claim 1, wherein said selected attributes include a background color.
7 The vending machine of claim 1, wherein said selected attributes include a background pattern.
7 The vending machine of claim 1, wherein said selected attributes include a background pattern.
8 The vending machine of claim 1, wherein said selected attributes include indicia associated with said user.
8 The vending machine of claim 1, wherein said selected attributes include indicia associated with said user.
9 The vending machine of claim 1, wherein at least one of said different hardware configurations includes a button and said selected attributes include indicia associated with a function of said button.
9 The vending machine of claim 1, wherein at least one of said different hardware configurations includes a button and said selected attributes include indicia associated with a function of said button.
10 The vending machine of claim 1, wherein said selected attributes include a signature panel and associated dimensions of said signature panel.
10 The vending machine of claim 1, wherein said selected attributes include a signature panel and associated dimensions of said signature panel.
11 The vending machine of claim 1, wherein said selected attributes include textual information.
11 The vending machine of claim 1, wherein said selected attributes include textual information.
12 The system of claim 1, wherein said selected attributes are aesthetic attributes and said personalizing includes printing said selected attributes onto a surface of said physical device.
13 The system of claim 12, wherein said selected attributes are aesthetic attributes and said personalizing includes printing said selected attributes onto a surface of said physical device.
13 A vending machine comprising: a vending machine display for: selecting a device type from a plurality of device types displayed on a one graphical user interface, wherein at least two of said plurality of device types include hardware configurations different from each other; selecting at least one attribute to be added to said selected device type from a plurality of available attributes; receiving customer identification information via a user interface; personalizing a physical battery-powered device contained within said vending machine based on said selected attribute and said received customer identification information; and delivering said personalized battery-powered device from said vending machine.
12 A system comprising: a vending machine having a display, wherein a device type is selected from a plurality of device types displayed onto a graphical user interface of said display of said vending machine said plurality of device types comprises at least two different hardware configurations, one of which includes a display and a battery and another that lacks a display; customer identification information is received by said vending machine through a graphical user interface; and a personalizing component that personalizes at least a physical device contained within said vending machine based on said selected attributes, programs at least at first portion of said customer identification information into a memory of said physical device and applies at least a second portion of said customer identification information as human-perceivable indicia on said physical device, wherein said first portion and second portion may be the same customer identification information, and wherein said vending machine is operable to deliver said physical device from said vending machine, wherein at least one of said plurality of device types includes a display configured to render visual data based on said stored customer identification information.
14 A method comprising: selecting a hardware configuration from a plurality of available hardware configurations displayed on a graphical user interface of a vending machine; selecting at least one attribute to be added to said selected hardware configuration a plurality of available attributes displayed onto said graphical user interface; receiving personal customer identification information via a user interface of said vending machine; personalizing a physical device having said selected hardware configuration contained within said vending machine based on said selected attribute and said received personal customer information, wherein personalizing comprises programming said selected attribute and said personal customer information into a memory of said physical device; and delivering said physical device from said vending machine.
14 A system comprising: a vending machine including a display operable to display at least one graphical user interface, said at least one graphical user interface being operable to receive customer identification information and render a virtual device that is representative of a physical device associated with one or more products, wherein said virtual device corresponds to a selected hardware configuration; render a virtual device that is representative of a physical device associated with one or more products, wherein said virtual device corresponds to a selected hardware configuration; render a list of attribute definitions for association with said virtual device, said attribute definitions including selection of at least one functional feature of said physical device; and render a list of said one or more products associated with said virtual device, a programmer and a human-perceivable information applicator wherein said programmer: configures said selected hardware configuration by activating at least one functional feature of said physical device; stores at least a first portion of said received customer identification information in memory of said physical device; and applies at least a second portion of said received customer identification information as human-perceivable indicia on said physical device, wherein said first portion and second portion may be the same received customer information; and a dispensing mechanism configured to provide said physical device from said vending machine upon completion of personalization.
15 The method of claim 14, wherein personalizing comprising applying an infrared programming device of said vending machine to said physical devices.
20 A method comprising: selecting a device type from a plurality of device types displayed onto a graphical user interface of a vending machine; selecting attributes to be associated with said selected device type from a plurality of attributes displayed onto said graphical user interface; personalizing a physical device contained within said vending machine based on said selected attributes; and delivering said physical device from said vending machine, wherein said selected attributes are functional attributes and said personalizing includes programming said selected attributes into a memory of said physical device by an infrared programming device of said vending machine.
16 The system of claim 1, wherein said vending machine is operable to receive a customer credit application, communicate said customer credit application to a remote system, and receive results of said customer credit application.
15 The system of claim 14, wherein said vending machine is operable to receive a customer credit application, communicate said customer credit application to a remote system, and receive results of said customer credit application.
17 The system of claim 1, wherein said attribute definitions include hardware configuration definitions.
16 The system of claim 14, wherein said attribute definitions include hardware configuration definitions.
18 The system of claim 1, wherein said attribute definitions include hardware configuration definitions.
16 The system of claim 14, wherein said attribute definitions include hardware configuration definitions.
19 The system of claim 1, wherein said device is coupled to a network, wherein said attribute definitions are communicated by said vending machine via said network.
18 The system of claim 14, wherein said device is coupled to a network, wherein said attribute definitions are communicated by said vending machine via said network.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL A HESS whose telephone number is (571)272-2392. The examiner can normally be reached Monday through Friday, from 9 AM to 5 PM.
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/DANIEL A HESS/Primary Examiner, Art Unit 2876