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 .
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,400,529 in view of Mills (U.S. 2012/0144885 A1). Claim 1 of the present invention and claim 17 of the U.S. Patent are both drawn to a sealing device having a strap having a first free attachment end and a second free attachment end, a circuit embedded in the strap extending between the first free attachment end and the second free attachment end which closes the circuit, a processor, a wireless receiver in communication with a global positioning system (GPS), a wireless transmitter, memory storing instructions, determining a break in the strap/circuit, and transmitting the current geographic location of the sealing device. Claim 1 of the present invention further defines that the first free attachment end is irreversibly engaged with the second free attachment end, and a housing attached to the strap between the first free attachment end and the second free attachment end and containing the processor, the wireless transmitter, the wireless receiver, and the memory. Mills discloses a cable lock system including a cable 16 having a first and second end connected via a lock 14, wherein if either end of the cable 16 is severed, for example, the cable 16 would be prevented from reattachment to the lock, i.e. irreversibly attached (see Mills, Fig. 2, Paragraph [0033]). Additionally the lock 14 includes an enclosure (see Mills, Paragraph [0023]), wherein an enclosure may be shared between the cable lock 12 and the standard lock which includes the GPS receiver, the transceiver, the processor, and associated memory (of the processor) (see Mills, Fig. 3). Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to modify claim 17 of the U.S. Patent by integrating the teachings of Mills to conclude at claim 1 of the present invention. The motivation would be to provide tamper proofing to the device of claim 17 (see Mills, Paragraph [0011]).
Claim 2 of the present invention is further rejected for the same reasons as claim 1 above.
Claim 3 of the present invention is further rejected for the same reasons as claim 1 above.
The Examiner further notes that claims 1-20 are examined in light of claims 1-20 of copending Application No. 19/286138. Claims 1-20 of the present invention and claims 1-20 of the copending application are both drawn to a single-use sealing device comprising a strap, a circuit, a processor, a wireless transmitter, a wireless receiver configured to communicate with a global positioning system (GPS), memory, and the steps of obtaining indication of a current geographic location and transmitting the indication of the current geographic location. Claims 1-20 of the present invention further define that the strap comprises first and second free attachment ends, wherein the first free attachment end is configured to irreversibly engage with the second free attachment end, and further claims a housing attached to the strap between the first free attachment end and the second free attachment end that contains the processor, the wireless transmitter, the wireless receiver, and the memory. Claims 1-20 of the copending application, however, specifically claims a housing comprising a one-way slot that defines a channel between a first side and the second side of the housing, which the current invention does not claim. Additionally, the copending application claims that the strap is attached to and extending away from the housing, wherein the first end is attached to the housing, wherein the strap is configured to extend through the channel and irreversibly engage with the one-way slot of the housing based on the second end of the strap being inserted into the slot, which is functionally different than claims 1-20 of the present invention. Because of the differences between the claims of the present invention and the copending application, the inventions are determined to not be obvious variants of each other.
Allowable Subject Matter
Claims 4-11 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 12-20 are allowed.
The following is an examiner’s statement of reasons for allowance:
The closest related prior art to the Applicant’s claimed invention are Mills (U.S. 2012/0144885 A1), Tester et al. (U.S. 2005/0231365 A1), and Brown (U.S. 2013/0091905 A1). Mills discloses a cable alarm system having first and second ends (see Mills, Paragraph [0033]), wherein the alarm system is able to determine a severing of the cable which triggers the transmitting of a message which includes GPS location information (see Mills, Paragraph [0049]). Tester separately discloses an electronic security seal that transmits date and time data (see Tester, Paragraph [0145]). Brown separately teaches an anti-theft device having a strap that is affixed in an irreversible manner, i.e. to prevent reengagement (see Brown, Figs. 32 and 35, Paragraphs [0070-0071]). Mills discloses the ends of the cable 16 having a free end inserted into an opening of the lock casing (see Mills, Paragraph [0033]), however, Mills does not explicitly disclose that the cable is fully embedded into the strap such that both ends of the strap include free ends and additionally the embedded cable, wherein the first free attachment end and the second attachment end with a first terminal end of the conductive element. The cited reference further fail to teach the step of beginning monitoring for a break in the conductive element based on the first free attachment end of the strap engaging the second free attachment end (by the processor), and additionally the step of obtaining an indication of current geographic location of the single-use sealing device based on a break in the conductive element. Additionally, it would not have been obvious to one of ordinary skill in the art, at the time of filing, to modify the separate teachings of the cited prior art to conclude at the Applicant’s claimed invention without using improper hindsight reasoning.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES J YANG whose telephone number is (571)270-5170. The examiner can normally be reached 9:30am-6:00p M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN ZIMMERMAN can be reached at (571) 272-3059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES J YANG/ Primary Examiner, Art Unit 2686
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