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 the Claims
Instant application is CON of: US Patent No. 12,236,415 B2; US Patent No. 11,790,343 B2; US Patent No. 11,100,488 B2; and US Patent No. 10,776,770 B2. Claims 2-3 an d 5-21 are presented for examination. Applicant filed a response to non-final Office action on 04/22/2026 amending claims 2, 5, 7, 10-13, 16, and 17-19. In light of Applicant’s amendments, Examiner has withdrawn the previous objections of claims 2, 10, 13, and 17. Examiner has, however, maintained objections for claims 5, 7, and 11; and double patenting rejection for claims 2-3 and 5-21 in the instant Office action. Since Examiner has maintained the previous double patenting rejection of claims 2-3 and 5-21, the instant rejection is FINAL rejection of the claims.
Examiner’s Remarks
Double Patenting: Applicant states in page 8 of Applicant’s Remarks: “Applicant has filed terminal disclaimers.” Examiner, however, cannot locate any filed terminal disclaimers.
Patent Eligibility under § 101: The following claim limitations found in independent claims 2, 10, and 16, integrate the recited abstract idea into a practical application:
invoking, using a host application, a child application executed on an electronic device, wherein the child application is configured to receive personal information provided by an end user, wherein the personal information is inaccessible by the host application, wherein the host application is associated with a host server distinct from a child application server associated with the child application, and wherein the child application is embedded in the host application;
transmitting, using the child application, the request for the user data associated with the child user interface component to the child application server, wherein the child application server processes the request for the user data, and wherein the user data associated with the child user interface component is inaccessible by the host application;
segmenting the user data to generate host user data and segmented user data, the segmented user data including the personal information; and
displaying the segmented user data such that segmentation prevents the segmented user data associated with the personal information from being exposed to the host application.
Prior Art under § 102 and § 103: The closest prior art reference located by Examiner – Lambert (US 2017/0061138 A1) – shows generally a method, a system, and a non-transitory computer-readable medium for integrating data from a remote server with a client application. The prior art fails to teach the following limitations present in independent claims 2, 10, and 16 – alone or in combination with other references – as an ordered combination of steps with other claim steps:
invoking, using a host application, a child application executed on an electronic device, wherein the child application is configured to receive personal information provided by an end user, wherein the personal information is inaccessible by the host application, wherein the host application is associated with a host server distinct from a child application server associated with the child application, and wherein the child application is embedded in the host application;
transmitting, using the child application, the request for the user data associated with the child user interface component to the child application server, wherein the child application server processes the request for the user data, and wherein the user data associated with the child user interface component is inaccessible by the host application;
segmenting the user data to generate host user data and segmented user data, the segmented user data including the personal information; and
displaying the segmented user data such that segmentation prevents the segmented user data associated with the personal information from being exposed to the host application.
Claim Objections
Claim 5 is objected to because of the following informality:
5. The computer-implemented method of claim 2, further comprising: encrypting the segmented user data with a security model of the child application and transmitting the encrypted segmented user data.
Claim 5 should recite where the encrypted user data is transmitted to. Applicant could amend claim 5 to recite:
5. The computer-implemented method of claim 2, further comprising: encrypting the segmented user data with a security model of the child application and transmitting the encrypted segmented user data to the child application server.
Claims 7 is objected to because of the following informality:
7. The computer-implemented method of claim 2, further comprising
initiating a checkout payment transaction or a credit application via an
interface element presented with displaying the segmented user data.
There should be a colon (“:”) after “further comprising.” Applicant could amend claim 7 to recite:
7. The computer-implemented method of claim 2, further comprising: initiating a checkout payment transaction or a credit application via an interface element presented with displaying the segmented user data.
Claim 11 is objected to because of the following informality:
transmitting the segmented user data, wherein the segmented user data is transmitted as encrypted according to a security model of the child application.
Claim 11 should recite where the encrypted user data is transmitted to. Applicant could amend claim 11 to recite:
transmitting the segmented user data to the child application server, wherein the segmented user data is transmitted as encrypted according to a security model of the child application.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 §§ 706.02(1)(1) - 706.02(1)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTTD- info-I.jsp.
Claims 2-3 and 5-21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-18 of US Patent No. 12,236,415 B2; over claims 1-21 of US Patent No. 11,790,343 B2; over claims 1-20 of US Patent No. 11,100,488 B2; and over claims 1-54 of US Patent No. 10,776,770 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are obvious over the reference claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Graef (US 7,980,462 B1) discloses: “ In the exemplary embodiment each user is associated with at least one market segment. The segment or segments associated with the user and stored in correlated relation with the user identifying data in the database is indicative of attributes of the user which can be used to define products such as goods or services that the user may be interested in purchasing. The user data for each user may also include other information including information which corresponds to marketing presentations which are not to be made to the user. This may include personal information about the user, historical information about the user's responses to prior promotions, requests by the user that they not receive certain types of promotional information, data which indicates that information about a user cannot be shared, or other information that is useful in making marketing presentations to a user.”
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 extension fee 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 VIRPI H. KANERVO whose telephone number is 571-272-9818. The examiner can normally be reached on Monday - Friday, 10 am - 6 pm, EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor Abhishek Vyas can be reached on 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VIRPI H KANERVO/
Primary Examiner, Art Unit 3691
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