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 .
Response to Amendment
Receipt is acknowledged of applicants’ amendment filed September 9, 2026. Claims 1-20 are pending and an action on the merits is as follows.
Objections to claims 1, 10, 12, 17 and 20 have been withdrawn.
Rejections of claims 4, 6 and 8-16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph have been withdrawn.
Applicants’ arguments with respect to claims have been considered and are addressed below.
Claim Objections
Claim 16 is objected to because the following elements lack proper antecedent basis in the claim(s):
Claim 16 line 2: “each third segment”
Appropriate correction is required.
Allowable Subject Matter
Claims 1-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 1, 17 and 20: Although the prior art (UA 2018/0268792 A1) teaches a method of transforming textual input to a musical score in real-time comprising: receiving an input including a text input (page 14 paragraph [0109]); modifying the input to generate a modified input by emphasizing a portion of the input having a high level of importance (page 8 paragraph [0067]); transliterating the modified input into a standardized phonemic representation of the input (page 5 paragraph [0050]); determining for the phonemic input, a plurality of spoken pause lengths (page 13 paragraph [0106]) and a plurality of lyric lengths (page 14 paragraph [0111]); the prior art does not teach nor suggest determining for the phonemic input a plurality of spoken phoneme lengths; mapping the plurality of spoken pause lengths to a respective plurality of sung pause lengths; mapping the plurality of spoken phoneme lengths to a respective plurality of sung phoneme lengths; generating, from the plurality of sung pause lengths and the plurality of sung phoneme lengths, a timed input; generating a plurality of matching metrics for each of a respective plurality of portions of the timed input against a plurality of melody segments; and generating a patterned musical message from the timed input and the plurality of melody segments based at least in part on the plurality of matching metrics. The combinations of the claimed limitations are novel and found to be allowable over prior art. The cited references taken singly or in combination do not anticipate nor make obvious applicant's claimed invention.
Claims 2-16, 18 and 19 depend from claims 1 or 17 and therefore inherit all allowed claim limitations.
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, 17 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16 and 23 of U.S. Patent No. 11,049,492 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because any limitation not explicitly described in the claims of the patent are disclosed in the specification. The patent describes receiving a voice input in real time (column 2 lines 21-23), emphasizing a portion of the input (column 15 lines 22-26) to modify the input (column 5 lines 15-18), and adhering the input to musical characterizes of a melody (column 14 lines 20-24), where the melody includes poetry (column 3 lines 9-18).
Claims 1, 17 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15 and 24 of copending Application No. 18/598,824. Although the claims at issue are not identical, they are not patentably distinct from each other because any limitation not explicitly described in the claims of the patent are disclosed in the specification. The copending application describes receiving a voice input (page 1 paragraph [0006]), emphasizing a portion of the input (page 8 paragraph [0075]) and adhering the input to musical characteristics of a melody (page 8 paragraph [0069], where the melody includes poetry (page 2 paragraph [0009]).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants’ arguments filed September 9, 2026 have been fully considered but they are not persuasive.
Applicants state on page 7 of the response that the claimed “each third segment” of claim 16 “has antecedent basis in claim 15”. However claim 15 does not properly describe multiple third segments. Claim 15 only describes a first segment and a second segment. Therefore the phrase “each third segment” introduced in claim 16 has a lack of proper antecedent basis.
Applicants further state on page 8 that “the Office has not established that the subject matter of the instant claims as a whole constitutes an obvious various of the subject matter of the ‘492 patent” and similarly the ‘824 application. However as shown above, any limitation that is not explicitly described in the claims of the ‘492 patent or the ‘824 application are shown to be described within the respective specifications. Therefore the present claims are properly rejected on the grounds of nonstatutory double patenting as being unpatentable over the cited claims in view of the respective specification.
Conclusion
Examiner called applicants’ representative, Angelyn Larkin, on September 17, 2026 and September 23, 20206 to discuss the double patenting rejection and a possible examiner’s amendment to place the application into condition for allowance, but applicant’s representative could not be reached.
THIS ACTION IS MADE FINAL. 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 CHRISTOPHER UHLIR whose telephone number is (571)270-3091. The examiner can normally be reached M-F 8:30-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher Uhlir/Primary Examiner, Art Unit 3619 September 30, 2026
