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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 15 January 2025, 26 May 2025, 29 August 2025, and 17 November 2025 have been considered by the examiner.
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 15-25 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed towards a computer readable storage medium, which according to 0114 of the instant specification, can include, “any other form of storage medium known in the art.” This includes a carrier signal or wave, which is not within the four categories of patent eligible subject matter.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McDougall et al., USPN 2019/0372940.
With regard to claims 8, 1, and 15, McDougall discloses a method including receiving application data via at least one data prompt on an application form on a computing device (0020, 0023, 0133), receiving device data from the computing device (0132), executing a trained artificial intelligence (AI) model to predict an identity risk level based on the application data and the device data (0133, 0030-0032, 0043), determining at least one identity check to be performed based on the predicted identity risk level (0133, 0022, 0094-0106, 0129), executing the at least one identity check while receiving additional application data via at least one additional data prompt on the application form (0022, 0032, 0070-0077, 0093, 0129), and updating the application form on the computing device with an identity check indicator based on the executing (0032, 0070-0077, 0051).
With regard to claims 9, 2, and 16, McDougall discloses the method of claim 8, as outlined above, and further discloses comparing the received application data against an expected range of the application data (0129) and providing an indication on the application form when the received application data is not in the expected range (0129, 0133).
With regard to claims 10, 3, and 17, McDougall discloses the method of claim 8, as outlined above, and further discloses the received application data is not in the expected range, providing the expected range and a rationale for the provided expected range on the application form (0129-0133).
With regard to claims 11, 4, and 18, McDougall discloses the method of claim 8, as outlined above, and further discloses the expected range and the rationale are based on at least one private data source and at least one public data source (0030, 0079-0081, 0087, 0091, 0132).
With regard to claims 12, 5, and 19, McDougall discloses the method of claim 8, as outlined above, and further discloses communicating with another computing device associated with the computing device to verify at least one of the received application data or the received device data (0024, 0030, 0032, 0070, 0079-0081, 0087, 0091).
With regard to claims 13, 6, and 20, McDougall discloses the method of claim 8, as outlined above, and further discloses adding a model feedback record, which includes the predicted identity risk level and a final application identity check result, to model feedback data, and retraining the trained AI model with the model feedback data (0105, 0033, 0073, 0043, 0061-0067).
With regard to claims 14 and 7, McDougall discloses the method of claim 8, as outlined above, and further discloses application form is displayed on a graphical user interface (GUI) on the computing device, wherein the identity check indicator is a visual indicator displayed on the GUI (Figures 3-5E), wherein an AI agent performs an action based on the application form (0032, 0105).
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/778,030 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are seen as broader than the claims in the 030 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
References Cited
Tugerman et al., USPN 2016/0307201, discloses a method of using artificial intelligence (0037) to reduce risk associated with an application form (0025).
Conclusion
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/JACOB LIPMAN/Primary Examiner, Art Unit 2434