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 .
DETAILED ACTION
This office action is in response to application 19/314,271 filed 8/29/25. Claims 1-20 are pending with claims 1, 12 and 19 in independent form.
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. 12,406,248 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application recite similar limitations to the claims of the ‘248 Patent. For instance, in claim 1 of the instant application and in the ‘248 Patent, the applicant claims:
Application No. 19/314,271
Patent No. 12,406,248
1. A first card comprising: one or more processors; memory in communication with the one or more processors and storing instructions that are configured to cause the first card to: receive, from a second card, account information and data corresponding to a gesture; authenticate the account information; change an authorization of the first card based on the account information and the data corresponding to the gesture; receive, from a first terminal, a first request; and responsive to the first request conforming to the authorization of the first card, transmit, to the first terminal, a first approval of the first request.
1. A first card comprising: one or more antennas; one or more processors; memory in communication with the one or more processors and storing instructions that are configured to cause the first card to: receive, from a second card, the second card associated with a same account as the first card, a first signal and a gesture, wherein the first signal comprising authorization information relating to account information; authenticate the first signal using the account information; determine, from the gesture and the account information, authorization conditions; change an authorization limitation of the first card based on the authorization conditions; receive, from a first terminal, a first transfer request; and responsive to the first card having the authorization limitation, transmit, to the first terminal, a transfer authorization.
Therefore, in respect to the above discussions, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the teachings of claims 1-20 of the ‘248 Patent as a general teaching for a card and computing device, to perform the same function and method as claimed in the present invention. The claims of the instant application obviously encompass the claimed invention of the ‘248 Patent and differ only in terminology.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTY A HAUPT whose telephone number is (571)272-8545 and email address is kristy.haupt@uspto.gov. The examiner can normally be reached on Mon-Sun 5:30 AM- 10PM; Flex during day.
If all attempts to reach the examiner by telephone and email are unsuccessful, the examiner’s supervisor, Michael Lee, can be reached at telephone number 571-272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTY A HAUPT/
Primary Examiner, Art Unit 2876
KAH