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 applicant’s reply filed 9/10/26. Claims 1-13 are pending with claim 1 in independent form.
Response to Arguments
Applicant’s arguments, along with the newly added claim limitations, see pages 7-10, filed 9/10/26, with respect to claim 1 have been fully considered and are persuasive. The rejection of claims 1-13 has been withdrawn.
Double Patenting
Applicant’s amendments have overcome the previous statutory double patenting rejection.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,468,911 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the claims of the instant application recite similar limitations of the ‘911 patent. For instance, in claim 1 of the instant application and in the ‘911 patent, the applicant claims a computerized method of information access handover between a first device and a second device of a user, wherein the first device associated with a first device identifier is a device without biometric identification capabilities and the second device associated with a second device identifier is a device with biometric identification capabilities, wherein the method at a first point in time comprises: in response to creating a data record via the first device, displaying, on the first device, a QR code generated by a synchronizer; capturing, by the second device, the QR code, wherein capturing the QR code initiates: displaying, on the second device, the data record, wherein access to the data record is granted through access parameters comprised by the QR code; and providing, at the second device, a registration option to the user for associating the data record with the user at a relying party; in response to a selection of the registration option, performing a web authentication registration flow using the biometric identification capabilities of the second device, wherein a unique user identifier used for identifying the user is automatically created from information comprised by the QR code; and in response to that the web authentication registration flow has been performed successfully leading to a registration of the user with the unique user identifier and the second device identifier at the relying party, performing an information access handover and securing process comprising: sharing, by the second device, the unique user identifier and the second device identifier with the first device; storing the unique user identifier and the second device identifier at the first device; and securing, at the relying party, access to the data record by canceling access with the access parameters and allowing access with the unique user identifier and the second device identifier using a web authentication flow, wherein a request for the QR code sent to the synchronizer for retrieving the QR code at the first device comprises the first device identifier of the first device, and wherein capturing the QR code further initiates: providing, from the second device, the synchronizer with the second device identifier of the second device; and setting up, via the synchronizer, a secure connection between the first device and the second device server by using the first and the second device identifiers; and wherein the unique user identifier and the device identifier are shared through the secure connection.
Conclusion
Applicant's amendment necessitated the new ground(s) of double patenting rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
