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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendment
The Amendment filed on 10/08/2025 has been entered.
The double patenting rejections are maintained. The current amendment claims are not distinct from the conflicting application.
The rejection of claims 1-21 under 35 U.S.C 101 is maintained, see below for detail.
The rejection of claim 6 under 35 U.S.C 112b is withdrawn in view of the amendment.
Claims 6 and 17 are amended.
Claim 22 is cancelled.
Claims 23-24 are new.
Claims 1-21 and 23-24 are pending of which claims 1, 10 and 17 are independent claims.
Response to Arguments
Applicant's arguments filed on 10/08/2025 have been fully considered but they are not persuasive.
Regarding to applicant’s argument of rejection under 35 USC § 101, applicant recites that “the Action mischaracterizes what can be a “mental process” by alleging that “‘sending, receiving, and assigning’ in the context of this claim encompasses the two users manually communicate[sic] with certain information.” This is misguided because a user cannot mentally “send” something to another user. Similarly, the claimed “sending . . . the new content’ is simply unable to “be performed mentally” and is not “equivalent to human mental work” (e.g., thinking)”. Examiner respectively disagree because the MPEP states that “[t]he courts consider a mental process (thinking) that ‘can be performed in the human mind, or by a human using a pen and paper’ to be an abstract idea.” The process of assigning an identifier to a new received content and sending and receiving another different identifier for the content are exactly the mental process as defined in MPEP which can be performed by a human using a pen and paper. Similarly, sending a message indicating the new content can be a mental process done by a human using a pen and paper. For example, a human can think of assigning an identifier for a content and then draw a diagram on the paper for sending/receiving identifiers and indicators. Except “a content management server, a delivery server and an authentication server” language which are generic computers as claimed, the context of the claim encompasses the user thinking. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Regarding to applicant’s argument of rejection under 35 USC § 103, applicant’s argument is persuasive and therefor, the rejection under 35 USC § 103 is withdrawal.
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 1-7 and 15-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Regarding to Claim 1:
First, Claim 1 is directed to a method. Therefore, the claimed invention falls into one of the four statutory categories.
Second, claim 1 is analyzed for its underlying inventive concept:
Step 2A Prong One:
The limitation of “receiving, …, an indication that new content is available;
assigning, …, a first identifier;
sending, …, the new content;
receiving, …, a second identifier, of the new content, that is different from the first identifier; and
sending, …, a message indicating that the new content is available for access by one or more user devices”.
Nothing in the claim element precludes the step from practically being performed in the mind. For example, “sending, receiving and assigning” in the context of this claim encompasses a user thinking process using a pen and paper. The claim as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind with a pen and paper. For example, a human can think of assigning an identifier for a content and then draw a diagram on the paper for sending/receiving identifiers and indicators.
Step 2A Prong Two:
This judicial exception is not integrated into a practical application. In particular, the claim recites additional elements “a content management server“, “a delivery server”, “an authentication server” and “one or more user devices”. The additional elements are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Third, Step 2B: claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
The claim 1 is not patent eligible.
Independent claims 10 and 17 are also rejected for the reasons discussed above.
Dependent claims 2-9, 11-16, 18-21 and 23-24, when analyzed individually or as a whole, are held to be patent ineligible under 35 U.S.C. 101 because, the additional recited limitation(s) fail(s) to amount to “significantly more” than the judicial exception, and thereby non-statutory.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 1-21 and 23-24 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims of U.S. Patent No. 10,749,846 (hereinafter “PAT846”). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Claims 1-21 of U.S. Patent No. US 11,784,982 contain(s) every element of claims 1-21 and 23-24 of the instant application and the instant claims 1-21 and 23-24 are a broader version of claims 1-21 of the Patent No. US 11,784,982 and as such anticipate(s) claims 1-22 of the instant application.
Claims 1-20 of U.S. Patent No. US 10,749,846 contain(s) every element of claims 1-21 and 23-24 of the instant application and the instant claims 1-21 and 23-24 are a broader version of claims 1-20 of the Patent No. US 10,749,846 and as such anticipate(s) claims 1-21 and 23-24 of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claims 1-20 of U.S. Patent No. US 10,084,759 contain(s) every element of claims 1-21 and 23-24 of the instant application and the instant claims 1-21 and 23-24 are a broader version of claims 1-20 of the Patent No. US 10,084,759 and as such anticipate(s) claims 1-21 and 23-24 of the instant application.
Claims 1-29 of U.S. Patent No. US 9,306,920 contain(s) every element of claims 1-21 and 23-24 of the instant application and the instant claims 1-21 and 23-24 are a broader version of claims 1-29 of the Patent No. US 9,306,920 and as such anticipate(s) claims 1-21 and 23-24 of the instant application.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Whittaker US 2022/0067125 A11- SEPARATING THE AUTHORIZATION OF CONTENT ACCESS AND CONTENT DELIVERY USING MULTIPLE CRYPTOGRAPHIC DIGITAL SIGNATURES
Shiragaki et al. US 2010/0023974 A1 - METHOD AND DEVICE FOR RECEIVING CONTENT IN A CONTENT DELIVERY SYSTEM
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MENG LI whose telephone number is (571)272-8729. The examiner can normally be reached M-F 8:30-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Lagor can be reached on (571) 270-5143. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MENG LI/
Primary Examiner, Art Unit 2437
Prosecution Insights