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
Applicants’ amendment filed on 08/18/25 has been entered. Claims 1, 10, 16 have been amended. Claims 2, 5-6, 11, 14-15, 17, 19-20 have been canceled. New claims 21-29 have been added. Claims 1, 3-4, 7-10, 12-13, 16, 18, 21-29 are still pending in this application, with claims 1, 10, 16 being independent.
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, 7-10, 16 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 4-8, 11-15, 18-20 of Patent No. 12556758 (“Patent ‘758”). Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1, 10, 16 of the instant application are identical with the exception of the narrower claim limitations of "target content is associated with the media content being broadcast" and “modifying target content based on feedback from users” as claimed in claims 1, 8, 15 of Patent’758. Patent’758 has narrower claim limitations. Dependent claims 4, 11-14, 18-20 of copending applications are identical with the instant application claims 6-9, 15, 20.
The claimed invention in the instant application is fully disclosed in the patent, and it is broader than the claimed invention in Patent 758. No new invention or new improvement is being claimed in the instant application. Applicant is now attempting to claim broadly that which had been previously described in more detail in the claims of the patent (In re Van Ornum, 214 USPQ 761 CCPA 1982).
Furthermore, there is no apparent reason why Applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
Claims 1, 8-10, 16 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4, 6-8 of Patent No. 12225156 (“Patent ‘156”). Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1, 10, 16 of the instant application are identical with the exception of the narrower claim limitations of "using a machine learning model to generate a prediction of a length of an idle instant" and “providing targeted content during the predicted length of an idle time” as claimed in claims 1, 6, 8 of Patent ‘156. Patent ‘156 has narrower claim limitations. Dependent claims 3-4, 7-8 of copending applications are identical with the instant application claims 6, 8-9, 15, 20.
The claimed invention in the instant application is fully disclosed in the patent, and it is broader than the claimed invention in Patent’156. No new invention or new improvement is being claimed in the instant application. Applicant is now attempting to claim broadly that which had been previously described in more detail in the claims of the patent (In re Van Ornum, 214 USPQ 761 CCPA 1982).
Furthermore, there is no apparent reason why Applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
Claims 1, 8-10, 16, 20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4, 6-8, 10-13 of copending Application No. 19046778. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1, 10, 16 of the instant application are identical with the exception of the narrower claim limitations of "target content is associated with the media content being broadcast" and “modifying target content based on feedback from users” as claimed in copending application claims 1, 6, 10. Copending application has narrower claim limitations. Dependent claims 2-4, 7-8, 11-13 of copending applications are identical with the instant application claims 6-9, 15, 20.
The claimed invention in the instant application is fully disclosed in the copending application, and it is broader than the claimed invention in the copending application No. 19046778. No new invention or new improvement is being claimed in the instant application. Applicant is now attempting to claim broadly that which had been previously described in more detail in the claims of the copending application (In re Van Ornum, 214 USPQ 761 CCPA 1982).
This is a provisional obviousness-type double patenting rejection.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 4-10, 13-16, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20150237189 to Schultz et al. (“Schultz”) in view of U.S. Patent Application Publication No. 20100303227 to Gupta et al. (“Gupta”).
As to claims 1, 10 and 16, Schultz discloses a method a method, an apparatus and a non-transitory computer storage medium comprising instructions for providing customized content to a user [Schultz Abstract, Figs. 1-26, pages 1-15], the method comprising: responsive to determining that a phone number for a digital call involving one of a mobile device or a user computing entity is one of a plurality of target phone numbers [Fig. 7, paragraph 0045, also see Figs. 13-18, paragraphs 0080-93], identifying, by one or more processors: one or more content control rules associated with the phone number [Figs. 13-18, paragraphs 0080-93], one or more actions to be carried out in accordance with the one or more content control rules, wherein at least one of the one or more actions involves providing the targeted content via a call companion interface available through the one of the mobile device or the user computing entity [Figs. 13-18, paragraphs 0080-93], one or more user preferences associated with the one of a mobile device or a user computing entity [Abstract, paragraphs 0064, 0083, 0089, Fig. 16], and one or more desired modifications to the targeted content corresponding to the one or more user preferences [Abstract, paragraphs 0064, 0083, 0089, Fig . 16]; modifying, by the one or more processors, the target content according to the one or more desired modifications [Abstract, paragraphs 0064, 0089-90, Fig. 16]; and while the digital call is connected for audio and/or video with the mobile device or the user computing entity, providing, by the one or more processors, the targeted content for display via the call companion interface available through the one of the mobile device or the user computing entity [Abstract : “The customized visual interface may include information that is potentially relevant to a user who has placed the call, and may be based on, for example, a user profile…”, see Fig. 13: 1320, 1325, paragraphs 0083-85, also see Fig. 16, paragraphs 0064, 0089-90 : “VI application 610 may determine the seating location of the user based on a user profile or user history (e.g., a ticket purchase history). VI application 610 may also determine that a seat upgrade is available…”, “user interface 1605 may include an option to purchase upgraded…”].
Schultz does not expressly disclose detecting, by the one or more processors, a start of an idle instance experienced by a user of the one of the mobile device or the user computing entity during the digital call; determining, by the one or more processors, that the idle instance satisfies a configurable idle threshold; and responsive to the idle instance satisfying the configurable idle threshold, providing, by the one or more processors, the targeted content for display.
In the same or similar field of invention, Gupta clearly discloses features of detecting, by the one or more processors, a start of an idle instance experienced by a user of the one of the mobile device or the user computing entity during the digital call [Gupta paragraph 0065: “Hold time”]; determining, by the one or more processors, that the idle instance satisfies a configurable idle threshold [Gupta paragraph 0065: “hold time for the call center is above a predetermined threshold (e.g., 5, 10, or 15 minutes)”]; and responsive to the idle instance satisfying the configurable idle threshold, providing, by the one or more processors, the targeted content for display via call companion interface [Gupta paragraph 0065, 0051, “the electronic device can free up the user interface (e.g., display, audio output, and user input) so that the user can perform non-phone-related tasks, such as play games, movies, or music”]. As per Gupta, the electronic device can determine whether the average hold time for the call center is above a predetermined threshold (e.g., 5, 10, or 15 minutes) [paragraph 0065]. If a long wait-time may be expected, the electronic device can prompt the user to enable on-hold monitoring at step 718. The prompt may be the same as or similar to prompt 500 of FIG. 5. If a user response is received in agreement with the prompt, on-hold monitoring may be enabled (e.g. play games, movies, or music on the user interface) at step 722 [paragraph 0065, also see Figs. 5 and 7].
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify Schultz to have feature of detecting, by the one or more processors, a start of an idle instance experienced by a user of the one of the mobile device or the user computing entity during the digital call; determining, by the one or more processors, that the idle instance satisfies a configurable idle threshold; and responsive to the idle instance satisfying the configurable idle threshold, providing, by the one or more processors, the targeted content for display via call companion interface as taught by Gupta. The suggestion/motivation would have been to provide improved systems and methods for monitoring on-hold calls and alerting users when they have been or will soon be taken off hold [Gupta paragraph 0004].
As to claims 4, 13 and 19, Schultz discloses wherein the one or more desired modifications comprise adding one or more content items from the targeted content specific to a location of a user of the one of a mobile device or a user computing entity [Fig. 16, paragraphs 0064, 0089: “FIG. 16 illustrates a series of user interfaces that may correspond to a visual interface, which is based on a user's location”].
As to claim 7, Schultz discloses wherein the targeted content comprises a webpage, the call companion interface comprises a browser, and providing the targeted content for display via the call companion interface comprises: causing the browser resident on the one of the mobile device or the user computing entity to launch to a web address for the webpage [paragraphs 0095, 0098-100, Figs. 19, 20].
As to claim 8, Schultz discloses wherein the targeted content comprises application-enabled content, the call companion interface comprises an application resident on the one of the mobile device or the user computing entity, and providing the targeted content for display via the call companion interface comprises: providing the application-enabled content to the one of the mobile device or the user computing entity; and causing the application to launch to display the application-enabled content [Fig. 6: 610 “VI application”, Fig. 16-18, paragraphs 0039-42, 0089, 0092-93].
As to claim 9, Schultz discloses wherein providing the targeted content for display via the call companion interface comprises: providing a hyperlink through a communication channel that is selectable through the one of the mobile device or user computing entity to access the targeted content; and responsive to a selection of the hyperlink, causing the call companion interface to launch to display the targeted content [paragraphs 0084, 0094-0095, 0113, 125: “CVI server 2110 may provide the link to user device 505 based on notification preferences associated with user device 505 (e.g., may send the link via SMS, via an application-directed SMS message, via email, etc.) …”].
As to claim 20, Schultz discloses wherein one or more computer processors are executing on the one of the mobile device or the user computing entity [paragraphs 0132-0133, 0136, Fig. 26] or on a call management computing entity remote from the one of the mobile device or the user computing entity [Fig. 21, paragraphs 0101-103].
As to claims 21, 24 and 27, Schultz discloses responsive to determining that the user is no longer idle, removing, by the one or more processors, the targeted content from the call companion interface [paragraphs 0077-78: “content may be presented by user device 505 while the call is "on hold.", Also see Fig. 13: steps 1320-1325, paragraphs 0083-84]].
As to claims 22, 25 and 28, Schultz discloses wherein the one or more user preferences comprise user-specified preferences solicited from the user through the call companion interface [paragraphs 0064, 0094, 0113]. As per, Schultz content provider 515 may use the personalization information to provide a visual interface that is more relevant to the user (e.g., based on the user's location, user preferences, user activity, etc.). It is obvious to solicit user-specified preferences from the user through some user interface device.
Claims 3, 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20150237189 to Schultz et al. (“Schultz”) and U.S. Patent Application Publication No. 20100303227 to Gupta et al. (“Gupta”) in further view of U.S. Patent Application Publication No. 20180240023 to Ivanov et al. (“Ivanov”).
As to claims 3, 12 and 18, Schultz and Gupta disclose the method of claim 1, the apparatus of claim 10 and the non-transitory computer readable medium of claim 16 [See rejection of claims 1, 10, 16].
Schultz and Gupta do not expressly disclose wherein the one or more desired modifications comprise removing one or more content items from the targeted content based on an age of a user of the one of a mobile device or a user computing entity being below a threshold age. Even though, Schultz clearly discloses different/customized visual interface with different information based on user preference/profile. Schultz discloses that when user dials ‘800-555-5555’, the user is presented with user interface [See figs. 13-18]. The user interface changes based on user preferences/profile. Schultz discloses that based on the location information and/or user profile different user interface is shown [See Fig. 16]. Fig. 15 displays “upcoming events near you” content. Fig. 16 shows option to “seat upgrade” content on visual interface based on the user profile and the location. It is extremely obvious that Fig. 16 display interface shows targeted content with one or more items removed from Fig. 15 based on age of a user.
In the same or similar field of invention, Ivanov discloses wherein the one or more desired modifications comprise removing one or more content items from the targeted content based on an age of a user of the one of a mobile device or a user computing entity being below a threshold age [Ivanov paragraph 0106, also see paragraphs 0103-0106, 0113, 0116].
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify Schultz and Gupta to have feature of wherein the one or more desired modifications comprise removing one or more content items from the targeted content based on an age of a user of the one of a mobile device or a user computing entity being below a threshold age as taught by Ivanov. The suggestion/motivation would have been to provide improved relevancy and quality of targeted content presented to a user [Ivanov paragraph 0013].
Claims 23, 26 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20150237189 to Schultz et al. (“Schultz”) and U.S. Patent Application Publication No. 20100303227 to Gupta et al. (“Gupta”) in further view of U.S. Patent Application Publication No. 20150142552 to Schmehl et al. (“Schmehl”).
As to claims 23, 26 and 29, Schultz and Gupta disclose the method of claim 1, the apparatus of claim 10 and the non-transitory computer readable medium of claim 16 [See rejection of claims 1, 10, 16].
Schultz and Gupta do not expressly disclose wherein the one or more desired modifications comprise omitting a content item corresponding to a disinterest indicated by the user and adding a content item corresponding to a preference indicated by the user.
In the same or similar field of invention, Schmehl discloses wherein the one or more desired modifications comprise omitting a content item corresponding to a disinterest indicated by the user and adding a content item corresponding to a preference indicated by the user [Schmehl paragraph 0023: “The user preferences may include preference information directly input by the user via a preferences interface (e.g., likes and dislikes chosen from listings of subject categories)”, also see paragraph 0026].
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify Schultz and Gupta to have feature of wherein the one or more desired modifications comprise omitting a content item corresponding to a disinterest indicated by the user and adding a content item corresponding to a preference indicated by the user as taught by Schmehl. The suggestion/motivation would have been to increase revenue per advertisement impression by providing targeted advertising options to service providers [Schmehl paragraph 0003].
Response to Arguments
Applicants’ arguments filed on 08/18/2025 have been fully considered but they are not persuasive.
On page 8 of applicant’s remark, the applicant argues the following (with respect to non-statutory double patenting rejections):
“Without conceding the Examiner's characterization of the claims or the propriety of the rejections, Applicant is concurrently filing terminal disclaimers pursuant to 37 C.F.R. § 1.321(c) with respect to Application No. 19/046,778 and U.S. Patent Nos. 12,225,156 and 12,556,758. Accordingly, Applicant respectfully submits that the rejections have been obviated and requests withdrawal of the nonstatutory obviousness-type double patenting rejections”
Examiner respectfully disagrees with Applicant's arguments for the following reasons: There were no terminal disclaimers filed with the response filed on 8/18/2026. Thus, the non-statutory double patenting rejections are maintained.
Applicants’ arguments with respect to prior art rejections 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTIM G SHAH whose telephone number is (571)270-5214. The examiner can normally be reached Mon-Fri 7:30am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ahmad Matar can be reached at 571-272-7488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTIM G SHAH/Primary Examiner, Art Unit 2693
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