DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 and 3 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,463,403. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claims are anticipated by the reference claims.
Claim 1 is disclosed by claims 1 and 3 of the ‘403 Patent.
As concerns claim 1, a computer-implemented system for identifying an internet connected household (ICH), comprising: (a) a computer having a memory; (b) a processor executing on the computer; (c) the memory storing a set of instructions, wherein the set of instructions, when executed by the processor cause the processor to perform operations comprising: (‘403 Patent-Claim 1: “A system for identifying an internet connected household (ICH), comprising: a computer comprising a memory, a processor and an Internet connection; the processor executing on the computer; the memory storing a set of Internet entity instructions, wherein the set of Internet entity instructions, when executed by the processor, cause the processor to perform operations comprising:”)
(1) receiving an Internet Protocol (IP) address via an Internet connection (‘403 Patent-Claim 1: “receiving an Internet Protocol (IP) address via the Internet connection”);
(2) determining a residential internet service status based on whether the IP address belongs to an Internet Service Provider (ISP) that provides residential internet service (‘403 Patent-Claim 1 “determining a residential internet service status based on whether the IP address belongs to an Internet Service Provider (ISP) that provides residential internet service”), wherein the determining the residential internet service status comprises:
(A) receiving an additional IP address (‘403 Patent-Claim 3: “determine the residential internet service status by: receiving an additional IP address”);
(B) determining whether the additional IP address belongs to a second ISP that does not provide residential internet service (‘403 Patent-Claim 3: “determining whether the additional IP address belongs to a second ISP that does not provide residential internet service”); and
(C) filtering out the additional IP address from further processing (‘403 Patent-Claim 3: “filtering out the additional IP address from further processing”); and
(3) based on the residential internet service, determining whether the IP address is associated with an ICH (‘403 Patent-Claim 1: “based on the residential internet service… determining whether the IP address is associated with an ICH”), wherein the ICH is a household that uses the Internet at home (inherent based on definition” of ICH in claim “internet connected household”).
Claim 3 is disclosed by claim 2 of the ‘403 Patent.
As concerns claim 3, the computer-implemented system of claim 1, wherein the determining the residential internet service status comprises: determining, based on information obtained from a regional internet registry (RIR), the ISP that has been assigned an IP range block that includes the IP address; and classifying the ISP as providing residential internet service based on publicly available information regarding the ISP (‘403 Patent-Claim 2: “determining, based on information obtained from a regional internet registry (RIR), the ISP that has been assigned an IP range block that includes the IP address; and classifying the ISP as providing residential internet service based on publicly available information regarding the ISP.”).
Allowable Subject Matter
Claims 5-17 are allowed.
Claims 2 and 4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed May 26, 2026 have been fully considered but they are not persuasive.
The applicant’s arguments concerning the Double Patenting rejection of U.S. Patent No. 11,463,403 are not persuasive and the rejection has been sustained. The inclusion of additional limitations in the claims of the ‘403 Patent do not overcome the Double Patenting rejection. The current claim limitations of the instant application are disclosed in the prior U.S. Patent which provides the support for the rejection. The applicant may amend the current claims or file a Terminal Disclaimer to overcome the current Double Patenting Rejection.
A double patenting rejection also serves public policy interests by preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). (See MPEP 804 II. B.)
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN B WALSH whose telephone number is (571)272-7063. The examiner can normally be reached 7:30-3:30 pm.
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, Christopher L Parry can be reached at 571-272-8328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN B WALSH/Primary Examiner, Art Unit 2451
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