DETAILED ACTION
The present application, filed on 8/19/2024 is being examined under the AIA first inventor to file provisions.
The following is a final Office Action in response to Applicant’s amendments filed on 1/22/2026.
a. Claims 1, 8, 15 are amended
Overall, Claims 1-20 are pending and have been considered below.
Double Patenting Rejection
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 time wise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type 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 Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel/,422 F.2d 438,164 USPQ 619 (CCPA 1970); and, 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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 8, 15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 8, 15 of patent US 12,067,591. Although the conflicting claims are not identical, they are not patentably distinct from each other because the Application’s independent claims 1, 8, 15 are disclosed by the patent US 12,067,591's independent claims 1, 8, 15 respectively. The claims recite an apparatus and a method respectively. The equivalent pairs recite the same limitations, with the patent US 12,067,591 claims reciting few more limitations. The additional limitations make the claim narrower (species), which reads on broad (genus). See MPEP 2144.08 – In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992) (Federal Circuit has “decline[d] to extract from Merck [& Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989)]. Therefore, the double patenting rejection still is appropriate in this case.
US 12,067,591 does not disclose, however, Ferren et al (US 2013/0290233) discloses:
determining a first group of one or more online activities based the one or more online activities occurring during the second time period and metadata for the one or more online activities; {see at least [0079]-[0081] online activity over time period … metadata}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify US 12,067,591 to include the elements of Ferren. One would have been motivated to do so, in order to focus the process to a target period of time. In the instant case, US 12,067,591 evidently discloses attributing online conversions to offline events. Ferren is merely relied upon to illustrate the functionality of online activities over a time period in the same or similar context. Since both attributing online conversions to offline events, as well as online activities over a time period are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by US 12,067,591, as well as Ferren would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over US 12,067,591 /REFB.
With regards to the dependent claims:
Patent US 12,067,591 claims 2, 9, 16 read on application claims 2, 9, 16.
Patent US 12,067,591 claims 3, 10, 17 read on application claims 3, 10, 17.
Patent US 12,067,591 claims 4, 11, 18 read on application claims 4, 11, 18.
Patent US 12,067,591 claims 5, 12, 19 read on application claims 5, 12, 19.
Patent US 12,067,591 claims 6, 13, read on application claims 6, 13.
Patent US 12,067,591 claims 7, 14, read on application claims 7, 14.
Patent US 12,067,591 claim 20 reads on application claim 20.
This is a non-provisional obviousness-type double patenting rejection because the conflicting claims have been in fact patented.
Inquiries
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Any response to this action should be mailed to:
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or faxed to 571-273-8300
/Radu Andrei/
Primary Examiner, AU 3698