DETAILED ACTION
This Office action is in reply to application no. 19/307,906, filed 22 August 2025. Claims 1-20 are pending and are considered below.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,412,174 (“reference patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claims of the present application are broader than, but otherwise identical to, those of the reference patent. For example, claim 1 of the reference patent communicates with a “fuel pump” wherein the corresponding claim of the present application communicates with a broader “energy dispensing device”. The other independent claim(s) and dependent claims are identical or patentably distinct variations.
Conclusion
As no rejection is made herein under 35 U.S.C. § 102 or 103, a brief review of the state of the art at the relevant time is in order. Nielsen (U.S. Patent No. 3,631,506) discloses an imprinting unit for a dispensing device [title] which includes a "computer found in the typical gasoline pump". [Col. 1, lines 21-22] The computers count the amount of fuel being dispensed and the price of the fuel. [Col. 1, lines 24-25] Nielsen discloses that a "minimum of volume" is allocated to the "operating mechanism" in order to provide a "maximum product dispensing capacity", [Col. 1, lines 50-52] but this is not the same as determining that a dispensed amount of fuel is within a threshold amount of an energy allotment.
Mack et al. (U.S. Publication No. 2020/0327218) disclose a vehicle authentication system [title] in which a user “consents” to “business conditions” such as a “minimum amount dispensed” of fuel at a filling station. [0077] The disclosure includes noting the existence of “fuel pumps with paying systems” which require advance payment. [0078]
Wilson et al. (U.S. Publication No. 2006/0026108) disclose a financial transaction system [title] which may be used at a “’pay at the pump’ gas station”. [0030] Surveillance cameras are used that may conditionally cause an alert to be sent, such as detecting a “stranger pumping gas” using a card belonging to a member cardholder. [0042]
But none of these, alone or if combined, teach or suggest every limitation of the claims of the present invention, in particular the combined use of an authorization and threshold in the activation of a fuel dispensing device, combined with the other presently claimed limitation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT C ANDERSON/Primary Examiner, Art Unit 3694
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