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 .
Priority
This application is a continuation application of U.S. Application No. 19/019,281 filed on January 13, 2025, now U.S. Patent 12,399,958 (“Parent Application”) which is a continuation-in-part (“CIP”) application of U.S. application no. 18/610,033 filed on March 19, 2024 which is a continuation application of U.S. application no. 17/443,802 filed on July 27, 2021, now U.S. Patent 11,935,051 which is a continuation application of U.S. application no. 16/934,933 filed on July 21, 2020, now U.S. Patent 11,074,580. See MPEP §201.08. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Applicant’s claim for the benefit of U.S. provisional patent application 63/620,674 filed January 12, 2024 under 35 U.S.C. 119(e) is acknowledged.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The feature of setting a state of a product to any of a plurality of states including an inactivated state in which one or more functions of the product are inoperable and an activated state in which the one or more functions of the product are operable and the validation of an authorization token where upon successful validation the state of the product is changed to the activated state are not fairly taught or described in applications 18/610,033, 17/443,802 or 16/934,933. The earliest filed application in which these features are described is provisional application 63/620,574. Therefore priority will only be extended to the filing date of the provisional application 63/620,574 making the effective filing date January 12, 2024.
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.
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Claims 1 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 of U.S. Patent No. 12,399,958.
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1 and 12 merely remove limitations from issued claims 1 and 13 and therefore merely broaden the scope of the claims such that any infringement of issued claims 1 and 13 would necessarily also infringe instant claims 1 and 12 as issued claims 1 and 13 anticipate instant claims 1 and 12.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,399,958.
Although the claim at issue is not identical to the issued claim, it is not patentably distinct from the issued claim because instant claim 13 merely removes limitations from issued claim 14 and therefore merely broadens the scope of the claim such that any infringement of issued claim 14 would necessarily also infringe instant claim 13 as issued claim 14 anticipates instant claim 13.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Tyagi et al. (U.S. Patent 10,538,220, hereinafter referred to as Tyagi) is the closest prior art available. Tyagi discloses an auxiliary key fob that can be paired with a vehicle in order to activate the key fob with the vehicle (Abstract). The key fob when activated can allow a particular access mode for use with the vehicle. Once activated the key fob can emit a signal over short-range wireless communication that will allow access to the vehicle and can start the vehicle (5:16-41) and optionally may only permit the vehicle to travel a limited distance from the point of activation. In order to activate the fob the user may use their smartphone to contact a remote facility which can send an activation request to the vehicle (4:48-64) which can include a virtual vehicle key (e.g., a cryptographic token) that can be passed to the body control module (BCM) (or other vehicle system module (VSM)). When the BCM receives a corresponding pre-stored cryptographic token from the key fob the received token can be compared to the downloaded token and used to determine that the key fob is activated and may be used to access the vehicle (4:64-5:2). Alternatively the cryptographic token may be pre-stored in both the vehicle and the key fob and the authorization data may be modified to only allow specific access functions (5:3-41). Where Examiner views Tyagi as being deficient is that the key fob does not perform any checking of the authorization token and instead relies on the vehicle and the key fob is merely acting as a data carrier in this regard. In order to read on the claim Examiner deems that it would be necessary for the key fob to have a controller performing some form of independent checking function that would allow the key fob to self-determine whether it should be active or inactive. Lacking such a capability, Examiner does not see how Tyagi would fairly read on the product of claim 1 or the methods recited in claims 12 and 13. Examiner also reviewed the other portions of Tyagi (such as the vehicle itself) in order to determine whether or not some other component might fairly read on the product of claim 1 or the methods of claims 12 and 13 and determined that no alternate read of Tyagi would fairly teach or suggest that a different component such as the BCM might read on the independent claims. Other references such as Kim et al. (US Patent Publication 2017/0083882) or Kim et al. (WIPO Publication WO2016/137271) would read on the claim and while having activation of payment functionality did not have any form of an authorization token. Similarly Desai et al. (U.S. Patent Publication 2014/0089185) and Gagne et al. (U.S. Patent Publication 2013/0102246) also did not have any form of authorization token that would be validated before an activation or deactivation event. The closest non-patent literature Examiner found was Goetting “Device Description HG G-76343/4/5”, January 24, 2024, 130 pages and while not prior art does teach the activation and deactivation of features but also does not teach any form of authorization token that is used to determine whether or not activation may take place within a product. Therefore as no prior art fairly teaches or suggests all of the claimed features Examiner deems that claims 1-21 are allowable over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES D NIGH whose telephone number is (571)270-5486. The examiner can normally be reached 5 AM to 2 PM Monday through Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached at (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES D NIGH/Senior Examiner, Art Unit 3699
Prosecution Insights