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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31-54, 77, 81-84, 90-92 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The original specification appears to be silent as to disclose the controller communicating a “consumer payment information” or “consumer payment authorization information” as recited in claims 31, 43, 77, 81, 82, 90. Accordingly, what this process entails and the information communicated is not clearly understood.
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 31-99 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-39 of U.S. Patent No. 12,398,946. Although the claims at issue are not identical, they are not patentably distinct from each other because they merely recite like elements using different terminology and/or phraseology.
With respect to the double patenting rejections of the instant claims in view of US 12,398,946, these claims differ in the recitation of a “patron payment information” or “patron payment authorization information” rather than “consumer”, for example in claim 1. These terms are considered patentable indistinct.
It is noted that they further differ in the recitation of a “consumer purchase” or “consumer authorization to make a purchase” in the same claim, whereas these two clauses have now been separated into the claims of the instant application 19/273681 (“consumer authorization”) and 19/273713 (“consumer payment”). These terms are considered patentable indistinct as discussed in the remarks below.
Furthermore, it is respectfully submitted that applicant has prosecuted numerous related applications and patents and is aware of the distinctions, such that only an example is provided herein.
Claims 31-99 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23-33 of U.S. Patent No. 11,852,396. Although the claims at issue are not identical, they are not patentably distinct from each other because they merely recite like elements using different terminology and/or phraseology.
With respect to the double patenting rejections of the instant claims in view of US 11,852,396, these claims differ in the recitation of a “patron payment” and a “patron payment authorization” rather than in the instant claimed “consumer” and further differ in the phraseology of the recitations.
Claims 31-99 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31-99 of copending Application No.19/273713 (reference applications). Although the claims at issue are not identical, they are not patentably distinct from each other because they merely recite like elements using different terminology and/or phraseology, the only difference between the claims is in the second subsection of each claim (31, 43, 55, 72, 81, 85, 90, 93, 97) wherein the controller is recited as comprising a first microcomputer configured to communicate an unlock signal subsequent to “a consumer payment” (19/273713) or “a consumer authorization to make a purchase” (19/273681). The remainder of the independent and dependent claims are identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 8/31/26 have been fully considered but they are not persuasive.
Initially, it is noted that Applicant’s arguments against the prior art rejections are persuasive, accordingly, the rejections under 35 USC 102 and 103 have been withdrawn. However, applicants’ arguments regarding the double patenting rejections are not persuasive and those rejections still stand.
Secondly, upon reviewing the related applications and disclosures, it was determined that a new rejection under 35 USC 112, 1st paragraph was warranted as set forth above, since the specification fails to clearly disclose “consumer payment information” or “consumer payment authorization information” as recited in independent claims 31, 43, 77, 81, 82, 90.
With respect to the double patenting rejections of the instant claims in view of US 11,852,396 and 12,398,946, these claims differ in the recitation of a “patron payment information” or “patron payment authorization information” rather than “consumer”. These terms are considered patentable indistinct.
With respect to the double patenting rejections of the instant claims 31-99, in view of co-pending application 19/273713 (claims 31-99), as was previously noted, these claims are identical except for the recitation of the unlock signal occurring subsequent to “a consumer authorization to make a purchase” (19/273681) or “a consumer payment” (19/273713). It is noted that the specification only discloses in para graph [0039], lines 3-4, “After the products are selected and payment is collected or authorized by credit or debit card, the cooler door can be unlocked…”. Arguably this is insufficient disclosure for distinguishing between the two since a payment inherently would be an authorization, absent any process which distinguishes between the controller steps that a payment versus and authorization would provide. Notwithstanding this fact, it is respectfully submitted that the instant specification does not provide a patentably distinct feature between the payment or authorization. Since a payment includes an authorization step, these terms are not patentably distinct and a double patenting rejection is warranted.
Since applicant has argued that the Examiner failed to provide clear analysis of the terms required for a double patenting rejection, the aforementioned patentably indistinct terms are clearly discussed above. In view of the arguments, this action is non-final.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUZANNE DINO BARRETT whose telephone number is (571)272-7053. The examiner can normally be reached M-TH 8AM-6:30PM.
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SUZANNE DINO BARRETT
Primary Examiner
Art Unit 3675B
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/SUZANNE L BARRETT/Primary Examiner, Art Unit 3675
