DETAILED ACTION
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 June 12, 2026.
Claim Objections
Claims 1 and 3-23 are objected to because of the following informalities: Claim 1 recites “an interactive communications system” and then later refers to it as “the interactive communications system,” but in the amended limitations it is introduced again as “an interactive communications system” and subsequently as “the interactive communications system.” For purposes of examination, it is assumed that there is one interactive communications system, and after the first recitation all other references to the system should be “the interactive communications system.” Claims 3-23 are objected to based on their dependency on claim 1. Appropriate correction is required.
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 and 3-25 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;
providing a customer interface for interacting with customers of the merchant;
receiving a contact from a customer of the merchant, the customer being one of the plurality of customers;
identifying the customer;
determining a status group of the customer, wherein the status group comprises a plurality of customers, each of the plurality of customers in the status group having similar characteristics with each other customer in the status group;
automatically selecting a prompt group for the customer, based at least in part on the status group of the customer;
automatically presenting a series of prompts to the customer in accordance with the selected prompt group, each of the prompts providing an offer to the customer, the series of prompts being ordered according to a predefined path, wherein the series of prompts comprises varying prompts, and wherein the series of prompts associated with a first prompt group differs from the series of prompts associated with a second prompt group by at least one of order, prompt content, or style of prompt;
receiving an acceptance of an offer corresponding to one of the prompts;
performing a fulfillment operation, based on the acceptance of the offer;
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; and
automatically modifying the prompt group, based at least in part on an evaluation of the prompt group, wherein the prompt group is one of a plurality of split test prompt groups and the customer is one of the plurality of 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" and “a customer interface” in claim 1, "An interactive communications device comprising a customer interface system each having a customer input device and a customer output device, the customer interface system including at least one of an interactive voice response ("IVR") system having a telephone keypad key and IVR interpreter that communicates over an IVR interface and includes a customer automatic number identification (“ANI”) of the customer, an interactive electronic mail ("email") communications system that communicates over an email interface and includes a customer email address of the customer, an interactive web-based communications system having a web page button that communicates over a web interface and includes a customer userid of the customer, an interactive electronic chat communications system that communicates over a chat interface and includes a customer telephone number of the customer, and an interactive short message service ("SMS") communications system that communicates over an SMS interface and includes a customer telephone number of the customer, 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 2-23 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.
Response to Arguments
Applicant's arguments filed June 16, 2026 have been fully considered but they are not persuasive. Applicant argues that the claims overcome the 101 rejection. Examiner respectfully disagrees.
Applicant initially points to Example 47 and states that the current claims cannot be carried out in the human mind. However, because the Mental Process grouping of abstract ideas was not identified in these claims, this argument is not persuasive.
Applicant next points to the declaration submitted by Michael Echols. Examiner has reviewed the declaration, and finds that the technical solutions discussed in the declaration, particularly the communication across platforms and managing structured vs. unstructured data, is not reflected in the claims currently. The claim does not require cross-platform communication, as only one type of platform is required by the claims. Further, nothing in the claims refers to structured or unstructured data, or the conversion thereof. Because the declaration only speaks in generalities and does not address the actual claimed features, it is not persuasive in demonstrating that the claims implement a technical solution to a technical problem that would integrate the abstract idea into a practical application. Further, the claimed architecture is not defined in any way beyond generic terminology, such that it is not clear that the claimed architecture would result in the improvement set forth in the declaration.
Next, applicant again identifies the abstract idea as a Mental Process. However, as noted in the previous office action and above, the abstract idea identified is Certain Method of Organizing Human Activity. Therefore, any arguments regarding whether or not the claim can be performed in the human mind are moot.
Applicant states that the claimed architecture would maintain system state and coordinate execution and modification of interactions, thus improving the computer itself. However, as identified above, the claims only recite generic computing components, and nothing in the steps carried out in the claims appears to improve a computer itself. Rather, the claims improve the delivery of marketing communications by testing a variety of types of communications and selecting the most effective types. There is no improvement to a computer in this process.
Applicant argues that the claims do not recite a judicial exception because they automatically control, evaluate, and reconfigure prompt paths through iterative, automated multivariate testing. If the word ‘automate’ or ‘automatically’ is removed from these concepts, the claims recite processes that a human could execute to test a variety of marketing methods. The use of a computer to automate a human task, even when that task involves sending electronic messages, which a human cannot do without a computer, the tasks being carried out by the computer are generic computing functions of manipulating data, analyzing data, and sending or receiving data, which courts have recognized as insignificant extra-solution activity and/or well-understood, routine, and conventional computing functions. Using a computer to automate processes does not serve to integrate the abstract idea into a practical application because it merely uses the computer as a tool to carry out the abstract idea. Applicant’s argument that there is a technical mechanism in the claim is not persuasive.
Applicant further argues that the claims integrate the abstract idea into a practical application because the claims optimize system interaction performance. However, the system interaction performance is merely how the system (representative of a business entity) handles a customer’s request. Optimizing the interaction results in an improvement within the marketing or sales activity, but does not demonstrate any optimization of the computer itself. Updating and storing data does not provide any sort of improvement to the computer itself, only to the data being stored. The requirement in claim 24 of at least one of multiple distinct electronic communications systems is only for one of these systems, so there is no clear claim recitation that the system must simultaneously handle data for a variety of types of systems, nor is there any requirement in the claims for the system to have coordinated system control to ensure consistent execution and evaluation across multiple interfaces, as applicant argues. Therefore, this argument is not persuasive.
Applicant next argues that the system is a closed-loop architecture. However, this architecture only serves to update data stored in the system with the most up-to-date results of the marketing methods. While there is a feedback loop in the process, this is also a part of the abstract idea, and does not specify a particular computing architecture or improvement thereof. Therefore, this argument is not persuasive.
Applicant argues that the claims provide significantly more than the abstract idea because of automation of the testing protocol. However, examiner does not find that the automation in any way goes beyond normal computing functions, as explained in detail above. Therefore, this point is also not persuasive.
Accordingly, the 101 rejections are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of 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.
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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/ILANA L SPAR/ Supervisory Patent Examiner, Art Unit 3622
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