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 .
Receipt is acknowledged of IDS filed on 12/30/2025.
Claims 1-20 are presented for examination.
This application is a CON of 18/668,557 filed on 05/20/2024 now PAT 12,400,098 which is a CON of 17/591,163 filed on 02/02/2022 now PAT 12,014,231 which has PRO 63/284,895 filed on 12/01/2021.
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 1-20 of U.S. Patent No. 12,400,098 (hereinafter referred as '098). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claims are expressly found in the claimed application. For instance, claim 1 of the present application recites the following limitations:
An apparatus comprising: a housing, wherein the apparatus is configured to store and dispense an item by virtue of the housing comprising a plurality of walls, a top, and a base, the plurality of walls, the top, and the base form an internal volume by virtue of each wall of the plurality of walls meeting another wall of the plurality of walls at one or more edges of the each wall of the plurality of walls and one or more edges of the another wall of the plurality of walls, such that the plurality of walls further form a top opening at a top edge of the each wall of the plurality of walls and a bottom opening at a bottom edge of the each wall of the plurality of walls, the top being positioned at the top opening, and the base being positioned at the bottom opening; embedded signage, wherein at least one wall of the plurality of walls is at least partially translucent, such that at least a portion of the item is at least partially visible through the at least one wall of the plurality of walls from a point external to the housing, and the embedded signage is positioned with respect to the at least one wall of the plurality of walls, such that information on the embedded signage is at least partially visible from the point external to the housing, a computer processing system; and a radio-frequency identification tag sensor, wherein the radio-frequency identification tag sensor and the computer processing system are communicatively coupled to one another, the radio-frequency identification tag sensor is configured to receive a signal from a radio-frequency identification tag associated with the item and, in response to receiving the signal, provide information regarding the item to the computer processing system, and in response to receipt of the information, the computer processing system is configured to identify the item.
Whereas claim 1 of '098 patent, the applicant claims:
An apparatus comprising: a housing, wherein the apparatus is configured to store and dispense an item by virtue of the housing comprising a plurality of walls that form an internal volume, the item comprises a substantially circular cross-section, the plurality of walls comprise a front wall, a back wall, a first side wall, and a second side wall, and each wall of the plurality of walls meets another wall of the plurality of walls at one or more edges of the each wall of the plurality of walls and one or more edges of the another wall of the plurality of walls, such that the plurality of walls further form a top opening at a top edge of the each wall of the plurality of walls and a bottom opening at a bottom edge of the each wall of the plurality of walls; a top, positioned at the top opening; a base, positioned at the bottom opening; a dispenser assembly, positioned at the front wall of the plurality of walls and operable to dispense the item from the housing, at least in part, by virtue of the dispenser assembly being configured to dispense the item due to the substantially circular cross-section of the item; and embedded signage, wherein at least one wall of the plurality of walls is at least partially translucent, such that at least a portion of the item is at least partially visible through the at least one wall of the plurality of walls from a point external to the housing, and the embedded signage is positioned with respect to the at least one wall of the plurality of walls, such that information on the embedded signage is at least partially visible from the point external to the housing.
The instant claims obviously encompass the claimed invention of '098 patent and differ only by terminology. For instance, claim 1 of the present invention recites some limitations not disclosed in claim 1 of '098 patent but in claim 12. For instance, claim 1 of '098 patent does recite “and a radio-frequency identification tag sensor, wherein the radio-frequency identification tag sensor and the computer processing system are communicatively coupled to one another, the radio-frequency identification tag sensor is configured to receive a signal from a radio-frequency identification tag associated with the item…” but the same limitations are disclosed in claim 1 of the present invention and claim 12 of '098 patent. To the extent that the present claims are broader generic to the claimed invention of '098 patent. In re Goodman 29 USPQ 2d 2010 CAFC 1993.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the application term by prohibiting claims in a second application not patentably distinct from claims of a first application. In re Vogel, 164 USPQ 619 (CCPA 1970).
Claim 2 recites similar limitations as of claim 13 of '098 patent with different terminology.
Claim 3 recites similar limitations enclosed in claim 13 of '098 patent.
Claim 4 recites exact limitations as of claim 14 of '098 patent.
Claim 5 recites similar limitations as of claim 15 of '098 patent with different terminology.
Claim 6 recites exact limitations as of claim 2 of '098 patent.
Claim 7 recites some limitations not enclosed in any claims of '098 patent. For instance, '098 patent does disclose “the computer processing system is further configured to determined a price by determining the price of the item or adjusting an existing price of the item, based, as least in part, on information regarding the signal…”.
Claims 8-11 recite some limitations not enclosed in any claims of '098 patent. For instance, '098 patent does not disclose “a plurality of radio-frequency identification tag sensors…, and the first radio-frequency identification tag sensor is positioned with respect to the loading mechanism such that the first radio-frequency identification tag sensor comes into sufficient proximity to the radio-frequency identification tag associated with the item, upon the item being loaded into the apparatus, to receive the signal as a first signal”.
Claims 12-14 recite similar limitations enclosed in claims 3-5 of '098 patent.
Claims 15-17 recite similar limitations enclosed in claims 9-11 of '098 patent respectively.
Claim 18 recites similar limitations enclosed in claim 17 of '098 patent.
Claims 19-20 recite similar limitations enclosed in claims 18-19 of '098 patent.
Allowable Subject Matter
Claims 1-20 would be allowable upon filing of a proper Terminal Disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to specifically teach embedded signage, wherein at least one wall of the plurality of walls is at least partially translucent, such that at least a portion of the item is at least partially visible through the at least one wall of the plurality of walls from a point external to the housing, and the embedded signage is positioned with respect to the at least one wall of the plurality of walls, such that information on the embedded signage is at least partially visible from the point external to the housing, a computer processing system; and a radio-frequency identification tag sensor, wherein the radio-frequency identification tag sensor and the computer processing system are communicatively coupled to one another, the radio-frequency identification tag sensor is configured to receive a signal from a radio-frequency identification tag associated with the item and, in response to receiving the signal, provide information regarding the item to the computer processing system, and in response to receipt of the information, the computer processing system is configured to identify the item. These limitations in conjunction with other limitations in the claimed invention were not shown by the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jung (US 12,539,257) teaches pill dispensing apparatus having notification function.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWYN LABAZE whose telephone number is (571)272-2395. The examiner can normally be reached 8:30AM-5:00PM.
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/EDWYN LABAZE/Primary Examiner, Art Unit 2876