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 .
EXAMINER’S AMENDMENT
Applicant’s amendment filed on August 31, 2026 has been entered. Claims 4, 13, and 18 have been amended. No claims have been added. No claims have been cancelled. Claims 1-20 are still pending in this application with claims 1, 8, and 15 being independent.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The invention as claimed is not disclosed nor rendered obvious in view of any prior art. As to independent claims 1, 8, and 15, all prior art fail to teach or suggest, alone or in combination, the recited system, computer-implemented method, and non-transitory computer readable storage medium. However, claims 1-20 are currently rejected under a nonstatutory double patenting rejection. A response is respectfully requested of Applicant.
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, 8, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 15 of U.S. Patent No. 12,143,536. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,143,536 recites "A system, comprising: a computing device comprising a processor and a memory; and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least: receive a user request to initiate a second communication session for the user, the user request being associated with the user account; identify an agent account of a second agent for the second communication session based at least in part on the interaction data for the user account; and initiate a second communication session for the user between the client device and a second agent client device associated with the agent account", and claim 1 of the present application recites "A system, comprising: a computing device comprising a processor and a memory; and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least: receive a request from a client device to open a data communication session with an agent; determine whether interaction data is stored for the client device from a previous interaction with the computing device; identify the agent to participate in the data communication session based at least in part on the determination of whether the interaction data is stored for the client device from the previous interaction; and establish the data communication session, via a messaging application, between an agent client device of the agent and the client device based at least in part on the agent being identified for participation in the data communication session."
U.S. Patent No. 12,143,536
A system, comprising: a computing device comprising a processor and a memory; and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least …
Application 18/903,349
A system, comprising: a computing device comprising a processor and a memory; and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least …
U.S. Patent No. 12,143,536
… receive a user request to initiate a second communication session for the user, the user request being associated with the user account; identify an agent account of a second agent for the second communication session based at least in part on the interaction data for the user account …
Application 18/903,349
… receive a request from a client device to open a data communication session with an agent; determine whether interaction data is stored for the client device from a previous interaction with the computing device; identify the agent to participate in the data communication session based at least in part on the determination of whether the interaction data is stored for the client device from the previous interaction …
U.S. Patent No. 12,143,536
… initiate a second communication session and a second agent client device associated with the agent account
Application 18/903,349
… for the user between the client device establish the data communication session, via a messaging application, between an agent client device of the agent and the client device based at least in part on the agent being identified for participation in the data communication session
Claims 8 and 15, of the present application, recite similar limitations, as claim 1, therefore, claims 8 and 15, of the present application, are rejected on the ground of nonstatutory double patenting, based on claims 8 and 15 of U.S. Patent 12,143,536.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 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
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 THJUAN KNOWLIN ADDY whose telephone number is (571)272-7486. The examiner can normally be reached 8:30AM - 5:00PM Mon-Fri.
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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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/THJUAN K ADDY/Primary Examiner, Art Unit 2693
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