DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This office action is responsive to communication filed on 10/14/2024.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 9, and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claims 1, 9, and 15, the limitations of “determining the audience measurement computing system does not have stored demographic information corresponding to the client device; based on the determination that the computing system does not have stored demographic information corresponding to the client device, transmitting, via the network interface and to the client device, a response to the first request ……. at the client device” are not enabled in the specification. It has not been described how such limitations are taken place in the specification. Therefore, one skilled in the art would not how to make and/or use the invention. Paragraph [0073] of the specification recites “In this manner, the user ID comparators 238 and 242 can be used to determine whether users of the panelist computer 202 have registered accounts with the partners 206 and 208. If so, the partners 206 and 208 can log impressions attributed to those users and associate those impressions with the demographics of the identified user (e.g., demographics stored in the database proprietor database 142 of FIG. 1).”
The Examiner is kindly requested to the Applicant to show where exactly in the specification such limitations are been recited.
Claims 2 – 8, 10 – 14, and 16 – 20 are necessarily rejected as being dependent upon the rejection of claims 1, 9, and 15.
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 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 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 conflicting 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.
Claims 1 – 20 of US Application No. 18/914,528 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 - 60 of U.S. Patent No. 8,370,489. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1 - 60 of the U.S. Patent mentioned above, contain every element of claims 1 – 20 of the instant application with minor modifications in the claimed language; and thus anticipate the claim of the instant application. Claims 1 – 20 of the instant application are therefore not patently distinct from claims 1 - 60 of the U.S. Patent No. 8,370,489 and as such are unpatentable over obvious-type double patenting.
Claims 1 – 20 of US Application No. 18/914,528 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 - 34 of U.S. Patent No. 9,215,288. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1 - 34 of the U.S. Patent mentioned above, contain every element of claims 1 – 20 of the instant application with minor modifications in the claimed language; and thus anticipate the claim of the instant application. Claims 1 – 20 of the instant application are therefore not patently distinct from claims 1 - 34 of the U.S. Patent No. 9,215,288 and as such are unpatentable over obvious-type double patenting.
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
US Application No. 18/914,528
US Patent No. 8,370,489
1. An audience measurement computing system to monitor access to media, the audience measurement computing system located at a first Internet domain and comprising:
a network interface;
a processor; and
memory storing instructions that, upon execution by the processor, cause the processor to perform operations comprising:
receiving, via the network interface and from a client device, a first request indicating access to media at the client device;
determining that the audience measurement computing system does not have stored demographic information corresponding to the client device;
based on the determination that the computing system does not have stored demographic information corresponding to the client device,
transmitting, via the network interface and to the client device, a response to the first request comprising instructions to cause the client device to transmit, to a server located at a second Internet domain different from the first Internet domain, a second request indicating access to the media at the client device; and
based on transmitting the response, receiving, via the network interface and from the server, the demographic information corresponding to the client device.
1. A method to monitor media exposure, the method comprising:
receiving, at a first internet domain, a first request from a client computer, the first request indicative of access to the media at the client computer;
determining if the client computer is known; if the client computer is not known, sending, from the first internet domain, a response to the client computer, the response to instruct the client computer to send a second request to a second internet domain, the second request to be indicative of the access to the media at the client computer; if the client computer is known, logging an impression of the media; receiving, at the first internet domain, a third request from a second client computer, the third request indicative of access to second media at the second client computer, the client computer being a panelist computer and the second client computer being a non-panelist computer; storing first demographic information associated with the panelist computer in association with the logged impression of the media based on the first request, the first demographic information corresponding to a panelist member associated with the panelist computer; and receiving, from the second internet domain, second demographic information associated with the second client computer, the second demographic information received in association with a second impression logged at the second internet domain based on the presentation of the second media at the second client computer.
Claims 2 – 20 of the US Application and 2 – 60 of the Patent are obvious variations with minor modifications in the claimed language.
Claims 1 – 20 have not been rejected with art based on the 112 first paragraph rejection. The limitations recited above are not clearly defined in the specification to warrant a reasonable.
Contact Information
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/YVES DALENCOURT/Primary Examiner, Art Unit 2457