Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The following Office Action is responsive to the amendments and remarks received on January 30, 2025, and the petition decision dated October 24, 2025.
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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 9,378,505. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of independent claims are directed to automatically selecting, by an interactive communications system, a prompt groups for the customers, automatically presenting a series of prompts to each customer in accordance with the selected prompt group, receiving an acceptance of an offer corresponding to one of the prompts, automatically evaluating the prompt group, based at least in part on the acceptance of the offer, to determine an effectiveness of the series of prompts in producing a preferred outcome that has been determined to be optimal for the merchant, automatically modifying the prompt group based at least in part on an evaluation of the prompt group, and automatically comparing a performance of one split test prompt group with the performance of each of the other of the plurality of split test prompt groups to optimize performance of the interactive communications system in interacting with customers.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
At step 1, independent claim 1 is directed to a method, independent claim 24 is directed to a device, and independent claim 25 is directed to a system, each of which is a statutory category of invention.
At step 2A prong I, independent claim 1 recites the following abstract idea:
automatically repeating iteratively for different customers of a plurality of customers of a merchant, the operations of:
automatically selecting one of a plurality of prompt groups for each of the plurality of customers;
automatically presenting a series of prompts to each customer, in accordance with the selected prompt group, each of the prompts providing an offer to the customer, each series of prompts being ordered according to a different predefined path;
receiving, from each customer an acceptance of an offer corresponding to one of the prompts;
automatically evaluating the prompt group, based at least in part on the acceptance of the offer, to determine an effectiveness of the series of prompts in producing a preferred outcome that has been determined to be optimal for the merchant, the preferred outcome comprising at least one of an outcome in which a customer keeps the purchased product, an outcome in which an amount of any refund provided to a customer is minimized, an outcome in which satisfaction of existing customers is maximized, an outcome in which one or more new products are sold to a customer, an outcome in which a partial refund is provided when a customer keeps a product intended for return, an outcome in which one or more additional products are sold to a customer regardless of whether the customer returns previously purchased product, an outcome in which a customer accepts a particular offer, an outcome in which one or more of length, frequency, or communication channel of customer interactions is constrained, an outcome in which a series of prompts most quickly results in customer acceptance of an offer, an outcome in which a customer is encouraged to end telephone interaction and resume interaction via a website, or an outcome in which financial loss for the merchant is minimized; and
automatically modifying the prompt group, based at least in part on an evaluation of the prompt group;
automatically comparing a performance of one split test prompt group with the performance of each of the other of the plurality of split test prompt groups to optimize performance of the interactive communications system in interacting with customers.
This recites the abstract idea of Certain Methods of Organizing Human Activity, specifically advertising, marketing or sales activities or behaviors. The claim is directed to measuring user behavior in a variety of circumstances related to purchasing and returning of items from a merchant.
At step 2A prong II, the additional elements disclosed are “by an interactive communications system” in claim 1, “An interactive communications device comprising at least one of an interactive voice response ("IVR") system, an interactive electronic mail ("email") communications system, an interactive web-based communications system, an interactive electronic chat communications system, or an interactive short message service ("SMS") communications system, the interactive communications device comprising: at least one processor; a non-transitory computer readable medium” in claim 24, and “An interactive communications system comprising at least one of an interactive voice response ("IVR") system, an interactive electronic mail ("email") communications system, an interactive web-based communications system, an interactive electronic chat communications system, or an interactive short message service ("SMS") communications system, the interactive communications system comprising: one or more processors; a customer interface, in communication with the one or more processors, for interfacing with existing customers of a merchant; and a computer readable medium in communication with the one or more processors, the computer readable medium having encoded thereon a set of instructions executable by the one or more processors” in claim 25. These are each generic computer components recited at a high level of generality, and only serve to append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)). Therefore, the abstract idea is not integrated into a practical application.
At step 2B, the additional elements are reconsidered. As they are all generic computer components recited at a high level of generality, they only serve to append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)) as discussed above, and do not amount to significantly more than the abstract idea.
Dependent claims 2-24 further define the abstract idea, and do not include additional elements that might serve to integrate the abstract idea into a practical application or amount to significantly more than the abstract idea. They are therefore rejected under the same rationale as above.
Potentially Allowable Subject Matter
Claims 1-25 would be allowable over the prior art of record, if the applicant is able to overcome the 35 USC 101 rejection and the Double Patenting rejection above. Applicant’s arguments as to why the combination of Mussman and Bushey fails to teach the limitations of claims 1, 24, and 25 is persuasive, and no additional prior art has been found to remedy these deficiencies. See Applicant’s arguments and the reasons for allowance in US Patent 9,378,505 for further explanation.
Response to Arguments
Applicant’s arguments with respect to claims 1-25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In light of the new grounds of rejection under 35 USC 101, this application is non-final.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ILANA L SPAR whose telephone number is (571)270-7537. The examiner can normally be reached 8-4 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tariq Hafiz can be reached at (571) 272-5350. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622