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 .
35 USC § 101
With respect to 35 U.S.C. § 101, the claims maintain state data with respect to incomplete transactions initiated from user devices and use such state data to assist in completing such transactions. The claims are therefore rooted in computer and Internet technology. See DDR Holdings V. Hotels.com, 113 USPQ2d 1097 (Fed. Cir. 2014). The claims are not directed to an abstract idea and accordingly are directed to statutory subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2015/0088739 A1 (hereinafter “Desai”) in view of U.S. Patent Application Publication 2014/0258007 A1 (hereinafter “Calman”).
With respect to claims 1, 13, and 17, Desai discloses
“A method, comprising”: Desai, abstract;
“receiving, by a device and from a user device, user response data associated with a … application, the user response data including application state data that indicates a state of the partially completed application”; Desai, paragraphs 0040, 0065, 0066, 0068-0075, 0196 (application can be e-commerce transaction or other transaction);
“identifying, by the device, information associated with the user device”; Desai, paragraphs 0040, 0065, 066, 0068-0075, 0196 (one skilled in the art would recognize that input in social data, for example is identified prior to use in method);
“determining, by the device and based at least in part on the information, that a triggering event has occurred”; Desai, paragraphs 0040, 0065, 066, 0068-0075, 0196 (triggering event is detected); and
“performing, by the device and based at least in part on determining that the triggering event has occurred, an action associated with the user response data and a mobile application associated with the user device”. Desai, paragraphs 0040, 0065, 066, 0068-0075, 0196 (e.g., widget can be deployed on user device in response to triggering event).
Desai does not explicitly disclose a partially completed transaction. Calman discloses "a partially completed transaction". Calman, paragraph 0037 (a partially completed transaction can be completed in response to a triggering event).
Desai and Calman both relate to automating transactions. Desai, abstract; Calman, abstract. It would have been obvious to one of ordinary skill in the art at the time of filing to include the partially completed transaction feature as taught by Calman in the method of Desai with the motivation of improving retail efficiency. Calman ¶¶ 0002, 0003.
With respect to claim 2, Calman discloses
“further comprising: generating a notification based on the action and sending the notification to the user device”. Calman ¶¶ 0037, 0045, 0052 (user is informed on state of transaction, such as by transmission of a receipt when transaction is completed).
With respect to claim 3, Calman discloses
“further comprising: storing the application state data and user response data in a memory associated with the device”. Calman ¶ 0037 (application state data are stored on server).
With respect to claim 4, Calman discloses
“wherein the action includes updating a user interface of the mobile application to reflect the state of the partially completed application”. Calman ¶¶ 0037, 0045, 0052 (user is informed of state of transaction).
With respect to claim 5, Desai discloses
“further comprising: determining a preference associated with the user based on the user response data, and wherein performing the action is further based on the determined preference”. Desai ¶ 0030 (pre-learned user preference is utilized).
With respect to claim 6, Desai discloses
“further comprising: generating a follow-up action based on a predefined schedule associated with the user device”. Desai ¶ 0075 (a single triggering event can trigger multiple events to occur, which events can be calendared).
With respect to claim 7, Desai discloses
“wherein the triggering event includes a behavioral-based triggering event based on user behavior patterns”. Desai ¶ 0075 (e.g., user pattern of mobile device use).
With respect to claim 8, Desai discloses
“wherein the triggering event includes a device state-based triggering event based on an operational state of the user device”. Desai ¶ 0075 (e.g., triggering event can be based on state of clock, namely time).
With respect to claim 9, Desai discloses
“wherein the triggering event includes a time-based triggering event”. Desai ¶ 0075.
With respect to claim 10, Desai discloses
“wherein the triggering event is based on a geographic location associated with the user device”. Desai ¶ 0075 (location determined by GPS).
With respect to claims 11 and 20, Desai discloses
“wherein the information associated with the user device includes at least one of: web browsing data, global positioning satellite (GPS) data, user activity data, or spending activity data”. Desai ¶ 0075 (e.g., GPS data).
With respect to claim 12, Desai discloses
“wherein the partially completed application is a business application”. Desai ¶¶ 0275, 0284, 0290 (e.g., transaction can be a healthcare or travel transaction).
With respect to claims 14 and 18, Desai discloses
“wherein the partially completed application includes at least one of: a loan application, an insurance application, or an automobile sales application”. Desai ¶ 0284 (insurance application).
With respect to claims 15 and 19, Desai discloses
“further comprising encrypting the user response data before receiving and decrypting the user response data before performing the action”. Desai ¶ 0192 (encryption and authentication are optionally utilized).
With respect to claim 16, Desai discloses
“wherein the one or more processors are further configured to authenticate the user device before performing the action”. Desai ¶ 0192 (encryption and authentication are optionally utilized).
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 claims 1-20 of U.S. Patent Number 12,165,186 B2 (hereinafter “Bodapati”). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 are broader than claims 1-20 of Bodapati and are anticipated by such claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN D CIVAN whose telephone number is (571)270-3402. The examiner can normally be reached Monday-Thursday 8-6:30.
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, Jeffrey A Smith can be reached at (571) 272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ETHAN D. CIVAN
Primary Examiner
Art Unit 3688
/ETHAN D CIVAN/Primary Examiner, Art Unit 3688