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 .
Status of Claims
Amendment filed on 12/31/2025 is acknowledged.
Claims 2-21 are pending. Claims 2-21 has been examined.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Response to Amendment/Arguments
Double Patenting Rejection
Applicant elects not to file a terminal disclaimer at this time and requests that the nonstatutory double patenting rejection be held in abeyance.
Examiner notes, however, that applicant’s amendments have not overcome the previous rejection. Hence, the nonstatutory double patenting rejection is maintained. The double patenting rejection could be overcome if a terminal disclaimer is filed on the present application to overcome the double patenting rejections.
Claim Rejections under 35 U.S.C. §112
Applicant’s amendments to the claims have overcome the previous rejections under 35 U.S.C. §112(b). Accordingly, the previous rejections are withdrawn.
Claim Rejections under 35 U.S.C. §103
Applicant’s amendments to the claims have overcome the previous rejections under 35 U.S.C. §103. Accordingly, the previous rejections are withdrawn.
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.
Claim 1 is rejected are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,175,524B2 (“ ‘524 patent”).
Claim 1 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 1 of the ‘524 patent recites:
A computing platform comprising:
a mitigation analysis and output generation platform, in communication with an onboarding and policy management platform and in communication with a mobile device;
the onboarding and policy management platform in communication with the mitigation analysis and output generation platform and in communication with the mobile device;
wherein the onboarding and policy management platform is configured to:
determine that a predetermined period of time has elapsed since finalizing an onboarding process of a product; and
send, to the mobile device and in response to determining that the predetermined period of time has elapsed since finalizing the onboarding process, a spot check verification notification and one or more commands to display the spot check verification notification;
wherein the mitigation analysis and output generation platform is configured to:
receive, from the mobile device, a determination that a digital identity signature exceeds a predetermined correlation threshold;
cause the mobile device to display a prompt to obtain one or more spot check verification inputs;
receive, from the mobile device, the one or more spot check verification inputs indicative of a user identity;
analyze, by the mitigation analysis and output generation platform, the one or more spot check verification inputs; and
generate a spot check verification output indicating a degree of correlation between the one or more spot check verification inputs and expected spot check verification inputs;
wherein the onboarding and policy management platform is further configured to:
receive, from the mitigation analysis and output generation platform, the spot check verification output;
determine a mitigation threshold based on the product;
determine whether the spot check verification output exceeds the mitigation threshold;
in response to determining that the spot check verification output exceeds the mitigation threshold, send one or more commands directing a client management platform to display a mitigation notification interface, wherein the mitigation notification interface prompts for user input to void purchase of the product corresponding to the onboarding process or conduct an additional verification test; and
in response to determining that the additional verification test should be conducted, send mitigation interface information and one or more commands directing the mobile device to display a spot check mitigation interface based on the mitigation interface information, wherein the spot check mitigation interface prompts for one or more additional spot check verification inputs indicative of the user identity.
Claim 1 of the ‘524 patent differs since it recites additional claim limitations, “an onboarding and policy management platform,” “the onboarding and policy management platform in communication with the mitigation analysis and output generation platform and in communication with the mobile device; wherein the onboarding and policy management platform is configured to: determine that a predetermined period of time has elapsed since finalizing an onboarding process of a product; and send, to the mobile device and in response to determining that the predetermined period of time has elapsed since finalizing the onboarding process, a spot check verification notification and one or more commands to display the spot check verification notification,” and “ wherein the onboarding and policy management platform is further configured to: receive, from the mitigation analysis and output generation platform, the spot check verification output; determine a mitigation threshold based on the product; determine whether the spot check verification output exceeds the mitigation threshold…”
However, it would have been obvious to a person of ordinary skill in the art to modify claim 1 of the ‘524 patent by removing the limitations directed to the claimed structures of the functions performed by the onboarding and policy management platform since the claim of the present application and the claim recited in the ‘667 patent actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Claims 10 and 18 of the present application are also rejected on the same basis as each recites similar language as claim 2 of the present application.
Claims 3, 11 and 19 of the present application
The limitations of claim 3 of the present application are included in claim 2 of the ‘524 patent. Claims 13 and 19 of the present application are also rejected on the same basis as each recites similar language as claim 3 of the present application
Claims 4, 12, 20-21 of the present application
The limitations of claim 4 of the present application are included in claim 4 of the ‘524 patent. Claims 12, 20-21 of the present application are also rejected on the same basis as each recites similar language as claim 4 of the present application
Claims 5, 13 of the present application
The limitations of claim 5 of the present application are included in claim 5 of the ‘524 patent. Claim 13 of the present application is also rejected on the same basis as it recites similar language as claim 5 of the present application
Claims 6 and 14 of the present application
The limitations of claim 6 of the present application are included in claim 1 of the ‘524 patent. Claim 14 of the present application is also rejected on the same basis as it recites similar language as claim 6 of the present application
Claims 7 and 15 of the present application
The limitations of claim 7 of the present application are included in claim 6 of the ‘524 patent. Claim 15 of the present application is also rejected on the same basis as it recites similar language as claim 7 of the present application
Claims 8 and 16 of the present application
The limitations of claim 8 of the present application are included in claim 7 of the ‘524 patent. Claim 16 of the present application is also rejected on the same basis as it recites similar language as claim 8 of the present application.
Claims 9 and 17 of the present application
The limitations of claim 9 of the present application are included in claim 8 of the ‘524 patent. Claim 17 of the present application is also rejected on the same basis as it recites similar language as claim 9 of the present application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lehman (US 2013/0204645A1) teaches an onboarding and policy management platform, in communication with a mitigation analysis and output generation platform and a mobile device, sending to mobile device a spot check verification notification and one or more commands to display the spot check verification notification.
Kshirsagar (US 2013/0055367A1) teaches analyzing the one or more spot check verification inputs, generating a spot check verification output indicating a degree of correlation between the one or more received spot check verification inputs and expected spot check verification inputs.
Gilchrist (US 6,167,517) teaches trusted biometric client authentication.
Rao (US 2013/0090950A1) teaches a method and technique for policy event management.
Collopy (US 2010/0131304A1) teaches an on-board monitoring system in conjunction with a mobile device.
Tamura (US 20030055767A1) teaches insurance contract system.
Ikeda (US 2008/0016099A1) teaches display screen for insurance policy cancellation.
Chappell (US 2018/00315127) teaches expediting purchase of vehicular insurance.
Diana (PGPub 2013/0226623) teaches insurance claims processing.
Harkensee (PGPub US 2009/0182583) teaches methods for selling insurance using hybrid life.
Stoops (US 2019/0141039A1) teaches a method for re-authentication of asynchronous messaging.
Fitzgerald (US 2021/0056641A1) teaches a method for implementing an adaptive coverage policy.
Tamayo (US 10,432,892B1) teaches a method for integrating and conducting video sessions.
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 CHENYUH KUO whose telephone number is (571)272-5616. The examiner can normally be reached Monday-Friday 8-4 PM EST.
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/CHENYUH KUO/ Primary Examiner, Art Unit 3697