DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This Office Action is responsive to communication filed on 02/12/2026.
Claims 1 – 32 have been cancelled. Claims 33 – 52 are currently pending.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 33 – 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 18 of U.S. Patent No. 10,956,518 B2, and unpatentable over claims 1 - 20 of U.S. Patent No.11,714,862 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because subject matters claimed in the instant application can also found in patent ‘518 and ‘862.
In claim 33 of instant application, Applicant claims a computer-implemented method for marking content, the method being performed by one or more processors, and the method comprising: receiving a search query, a black list, and a white list; grouping, by the one or more processors, the search query with other search queries based on the search query and the other search queries being within one edit of each other; determining one or more tokens of the search query; marking the search query based on determining that a match exists between at least one token of the one or more tokens of the search query and at least one item of one or more items of the black list; and unmarking the search query based on determining that a match exists between at least one token of the one or more tokens of the search query and at least one item of one or more items of the white list; and maintaining a record, in a database, of the search query and pairs with the other search queries based on the match between the at least one token of the search query and the at least one item of the black list, and the match between the at least one token of the search query and the at least one item of the white list.
Similar limitations are found in claim 1 of ‘518 and ‘862. Certain limitation found in claim 1 of ‘518 and ‘862 but not in claim 33 of instant application such as “the character substring is determined to match the at least one listing in the in-string black list; matching the character substring of the potentially blocked received user search query string against each entry of the in-string white list”, and “an in-string black list and an in-string white list, each of the in-string black list and the in-string white list including a plurality of search query listings… automatically updating the in-string black list to include the received user search query string”.
It would have been obvious to one with ordinary skill in the art before the effective filling date of the claim invention to broaden the claims at no additional cost in development.
Response to Arguments
Applicant agreed to file terminal disclaimer, but there wasn’t any paper in file. Therefore, the Double Patenting rejection is still remained in the Office Action.
Conclusion
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 CAM LINH T NGUYEN whose telephone number is (571)272-4024. The examiner can normally be reached M-F: 7:00 - 3:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Apu Mofiz can be reached on 571- 272- 402480. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAM LINH T NGUYEN/Primary Examiner, Art Unit 2161