DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim 1 is presented for examination.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim 1 is rejected under pre-AIA 35 U.S.C. 102 (b) as being anticipated by Carter, SR (Carter, SR. – 2002/147049; herein after referred “Carter”).
Regarding claim 1, Carter discloses an apparatus comprising:
a medium for storing identifying information (Carter; Fig. 1-3; par. 0011-0012, 0020, 0041—0042 – mobile device is inherently having a memory and emitter, par. 0012 - “a mobile gaming system is provided wherein a gambler may use a mobile gaming unit (e.g., 3G, PCS or cellular, two way pager, personal digital assistant, and the like) to placing a wager on the outcome of an event”; par. 0042 - “Upon establishing a gaming account, the user may initiate a gaming session by transmitting initiating information to the HGR system 206 via the wireless network 202 (step 304). The initiation information may include the user identification and/or access or security code (e.g., biometric information, personal identification information etc.). The HGR system 206 may use the provided information to authenticate the user identification and determine if the user is authorized to place wager on the system (step 306). Such authentication may include providing a personal identification number in similar manner as is done with existing credit and debit accounts. Alternatively, authentication may include providing voice or biometric identifying information, via mobile gaming unit 102. In such instance, the mobile gaming unit may be equipped with certain biometric utility applications (e.g., fingerprinting recognition, palm print recognition, etc.) and/or voice or iris recognition technology” ); and
an emitter for communicating the identifying information to a gaming device such that access to the gaming device is provided when the identifying information is associated with a user that is authorized to operate the gaming device (Carter; Fig. 1-3; par. 0011-0012, 0020, 0041—0042 – mobile device is inherently having a memory and emitter, par. 0012 - “a mobile gaming system is provided wherein a gambler may use a mobile gaming unit (e.g., 3G, PCS or cellular, two way pager, personal digital assistant, and the like) to placing a wager on the outcome of an event”; par. 0042 - “Upon establishing a gaming account, the user may initiate a gaming session by transmitting initiating information to the HGR system 206 via the wireless network 202 (step 304). The initiation information may include the user identification and/or access or security code (e.g., biometric information, personal identification information etc.). The HGR system 206 may use the provided information to authenticate the user identification and determine if the user is authorized to place wager on the system (step 306). Such authentication may include providing a personal identification number in similar manner as is done with existing credit and debit accounts. Alternatively, authentication may include providing voice or biometric identifying information, via mobile gaming unit 102. In such instance, the mobile gaming unit may be equipped with certain biometric utility applications (e.g., fingerprinting recognition, palm print recognition, etc.) and/or voice or iris recognition technology” ).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim of U.S. Patent No. 8,695,876. Although the claims at issue are not identical, they are not patentably distinct from each other because they essentially reciting the same limitations.
Claim 1 is rejected in view of claim 6 of the ‘876 patent in that they recited:
Claim 1 of the application
Claim 6 of the ‘876 patent
26Claim
1. An apparatus comprising
:a medium for storing identifying information; and
an emitter for communicating the identifying information to a gaming device such that access to the gaming device is provided when the identifying information is associated with a user that is authorized to operate the gaming device.
1. An apparatus comprising: a gaming device that includes software that when executed by the gaming device directs the gaming device to: determine a characteristic of a user that is authorized to use the gaming device, in which the characteristic comprises an average amount characteristically wagered by the user, and in which the gaming device is operable to communicate with at least one server computer over a wireless communications network and to provide, in combination with the at least one server computer, a wagered-based gaming activity to the user; determine that wagering occurring via the gaming device, by an operator of the gaming device, on the at least one wagered-based gaming activity deviates from the average amount characteristically wagered by the user; and deny access to the operator of the gaming device based at least in part on determining that the wagering occurring via the gaming device deviates from the average amount characteristically wagered by the user.
2. The apparatus of claim 1, in which the at least one wagered-based gaming activity comprises at least one of: a gambling activity, an activity that comprises wagering on an event, and a lottery-based activity.
3. The apparatus of claim 1, in which the gaming device comprises a wireless mobile gaming device registered to at least the user.
4. The apparatus of claim 1, in which to determine the characteristic comprises at least one of to obtain and receive the characteristic from a second device; in which the second device is physically separate from the gaming device; and in which the second device comprises at least one of: a device adapted to be worn, and a device adapted to be carried.
5. The apparatus of claim 4, in which the second device comprises a bracelet.
6. The apparatus of claim 4, in which the second device comprises at least one of: an RFID transponder programmed with the characteristic, a magnetic strip comprising the characteristic, an optically readable identifier comprising the characteristic, a storage medium comprising the characteristic, a disc comprising the characteristic, a memory comprising the characteristic, and a tape comprising the characteristic.
As can be seen, though the claimed are not identical, it would have been obvious that claim 6 of the ‘876 patent recites all essential limitations of claim 1 of the instant application. Thus, the patent protections have been granted to the earlier filed patent application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THIEN MINH LE whose telephone number is (571)272-2396. The examiner can normally be reached 6:30-5:00 PM M-Th..
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/THIEN M LE/Primary Examiner, Art Unit 2876
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