Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Response to Amendment
This action is in response to the submission of 01/17/2025. The Specification as amended is directed to form and does not introduce any new matter, therefore, accepted.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-32 of U.S. Patent No. 12,155,909 in view of Freedman et al. USPGPUB 2004/ 0249650 (hereinafter “Freedman”) further in view of Chang et al., USPGPUB 2002/0129363 (hereinafter “Chang”).
Instant method claim 1 differs from the patented claim 1 of the issued patent in citing “popularity of a specific content associated with one or more rules” vs. “trending … based on user interactions”.
Freedman discloses a method and system for capturing, analyzing, displaying content based on popularity and trends and operations based on interactions with attributes of interest commensurate with pre-defined rules (¶ [84]).
Therefore, it would have been obvious to one of ordinary skills in the art, at the time of invention, to modify the instant claim with the teachings of Freedman in order to incorporate and select, as part of the rules for selection, content most popular as indicated by the trends (most interacted with).
The instant claim 1 further differ from the patented claim 1 in “increased frequency based on one or more rules”.
Chang discloses a method and system for advertising selection and presentation (Abstract) wherein said add is presented based on user profile/ interactions rules with increased frequency (¶ [44]).
Therefore, it would have been obvious to one of ordinary skills in the art, at the time of invention, to modify the system of instant claim 1 and Freedman with the teachings of Chang in order to incorporate and select, as part of the rules for selection, content most popular as indicated by the trends (most interacted with) with more repetitions/ frequencies to entice the user to act on the content.
Similar analysis applies to the independent system claims of instant application vs. the patented system claims.
Similar analysis applies to the independent computer program product claims of instant application vs. the patented computer program product claims.
The dependent claims fail to produce a patently distinct features and are further obvious as analyzed with respect to the independent claims.
It is further noted that similar rejections and analysis applies to the USPNs 11,477,539; 10,462,532; and 9357179 in the chain of continuity. All issued patents are subject to Terminal Disclaimers.
Allowable subject matter
The instant claims 1-20 would be allowable should the Double Patenting issues be resolved.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES R MARANDI whose telephone number is (571)270-1843. The examiner can normally be reached Monday-Friday 8-7 ET flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan J Flynn can be reached at 571-272-1915. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES R MARANDI/Primary Examiner, Art Unit 2421
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