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 .
Claims Status
Claims 1 and 11 have been amended.
Claims 1-20 are currently pending and rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/15/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Response to Arguments
Double Patenting Rejection
Applicant’s terminal disclaimer filed on 4/1/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of the US Patent numbers or US Application Numbers listed therein has been reviewed but was not accepted. Applicant is requested to resubmit the terminal disclaimer with the correct reference application filing date (as instructed in the response to the terminal disclaimer).
The rejection has been restated below, for completeness of record.
35 USC 101 Rejection
Applicant's arguments, filed 4/1/2026, with respect to the previous rejection of claims 1-20 under 35 USC 101 have been fully considered and are persuasive, in view of the accompanying amendments.
Additionally, in view of MPEP 2106.07(b) which states that “a claim is eligible because the claim as a whole integrates the judicial exception into a practical application or amounts to significantly more than the judicial exception when the additional elements are considered both individually and in combination… [and] the additional element may be enough to integrate the judicial exception into a practical application or to qualify as "significantly more" if it meaningfully limits the judicial exception, e.g., it improves another technology or technical field, improves the functioning of a computer itself.” As is the situation in this case, additional elements have been reevaluated and are considered “significantly more” as they meaningfully limit the judicial exception and are therefore eligible.
Accordingly, the previous rejection under 35 USC 101 has been withdrawn.
Double Patenting
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 claims at issue 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); 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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/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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of US Patent No. 12,118,598 (Application No. 17/217,870).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the patented claims.
Specifically, the instant claims are anticipated by the patented claims of 12,118,598, as follows:
Instant claims
12,118,598 Patent (Claim 1)
1. A computer-implemented method comprising:
1. A computer-implemented method comprising:
receiving, by a service computer, a request, from a user computer, for a service with regard to a product;
receiving, by a service computer, a request, from a user computer, for a service with regard to a product;
wherein the request comprises information obtained by scanning, by the user computer, a token shown on the product;
wherein the request comprises information obtained by scanning, by the user computer, a token shown on the product;
translating the token to a hyperlink in a standard format that a plurality of service computers understands;
translating the token to a hyperlink in a standard format that a plurality of service computers understands;
wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of a product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored;
wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of the product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored;
wherein the token is a reference to a product description of the product, and is used in a process of manufacturing the product;
wherein the token is embedded into product description data associated with the digital design;
in response to receiving a request for the product corresponding to the digital design, transmitting the product description data with the token embedded in the product description data to a manufacturing entity to cause the manufacturing entity to:
extract the digital token from the product description data,
use the digital token to retrieve the plurality of key-value pairs from the location,
use the plurality of key-value pairs to generate manufacturing instructions for manufacturing the product corresponding to the digital design,
generate the token, and
affix the token to the product.
storing the hyperlink in the standard format;
storing the hyperlink in the standard format;
causing, by the service computer, displaying, on the user computer, a graphical user interface allowing selecting any of one or more customization options;
causing the user computer to perform:
determine whether the hyperlink indicates a domain name,
in response to determining that the hyperlink indicates a domain name:
display, on the user computer, a first graphical representation of a first website associated with the domain name,
establish a first communications connection between the user computer and the first website,
display, on the user computer, a first graphical user interface generated based on first data received from the first website and via the first communications connection, and allowing a user to select the service,
receive a service selection via the first graphical user interface;
transmit the service selection and the indication of the product from the user computer to the service computer;
in response to receiving, from the user computer, input for at least one of the one or more customization options for the service:
in response to receiving, by the service computer, the service selection for the service:
determining one or more customization options for the service;
causing, by the service computer, displaying, on the user computer, a graphical user interface allowing selecting any of the one or more customization options;
automatically generating adjusted input by adjusting the input for the at least one of the one or more customization options based on one or more manufacturing constraints;
in response to receiving, from the user computer, input for at least one of the one or more customization options for the service:
automatically generating adjusted input by adjusting the input for the at least one of the one or more customization options based on one or more manufacturing constraints;
transmitting, in real time, the adjusted input and the hyperlink associated with the service to either a first website or a second website to perform the service for the at least one of the one or more customization options; and
transmitting, in real time, the adjusted input and the hyperlink associated with the service to either the first website or the second website to perform the service for the at least one of the one or more customization options; and
providing, by the service computer, the service performed by either the first website or the second website according to the adjusted input provided for the at least one of the one or more customization options.
providing, by the service computer, the service performed by either the first website or the second website according to the adjusted input provided for the at least one of the one or more customization options;
Dependent claims 2-10 are anticipated by ‘598 as follows:
Instant claims
12,118,598 Patent Claims
Claim 2
Claim 2, 1
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 1
Claim 7
Claim 6
Claim 8
Claim 7
Claim 9
Claim 8
Claim 10
Claim 9
With regards to claims 11-20, all the limitations in computer-readable storage media claims 11-20 are closely parallel to the limitations of method claims 1-10 analyzed above and are rejected on the same bases.
These claims fully anticipate the independent claims of the instant application. See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998). Moreover, the scope of the above noted claims in the instant application, if patented, would extend the grant/monopoly and are thereby properly rejected.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANAND LOHARIKAR whose telephone number is 571-272-8756. The examiner can normally be reached Monday-Friday, 9am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANAND LOHARIKAR/Primary Examiner, Art Unit 3689
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