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 .
Priority
Application 19/029,761 was filed on January 17, 2025. It is a continuation of U.S. Non-Provisional Patent Application No. 17/383,933, filed July 23, 2021, which claims priority to and the benefit of U.S. Provisional Patent Application No 63/055,790, filed July 23, 2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 17, 2025 was filed before the mailing date of this non-final action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
Nonstatutory:
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/patenits/appv/applying-online/eterminal-disclaimer.
Claims 1 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. 12,205,185 ('185 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 13 are anticipated by claims 1 and 11 of the '185 Patent
The following broader limitations in claims 1 and 13 of the current application are anticipated by the narrower limitations in claims 1 and 11 of the '185 Patent. Therefore, claims 1 and 13 are anticipated by claims 1 and 11 of the '185 Patent. Examiner notes that there are a few differences (emphasized with italics and underlined in the table below) in the wording of the claims in the current application and the '185 Patent. However, these differences are minor or addressed in the 35 U.S.C. 112(b) rejection and interpretation below, and do not render the claims patently distinct from each other.
Current Application Claim 1
U.S. Patent No. 12,205,185 claim 1
A system comprising:
A system comprising:
a computing device having a processor, an addressable memory, and a user interface including input device;
a user computing device having a processor, an addressable memory, and a user interface including input devices;
a server computing device having a processor and addressable memory, in communication with a user computing device;
a server computing device having a processor and an addressable memory, in communication with the user computing device;
--
wherein the user computing device is configured to:
--
enter, via the input devices, document data associated with a plurality of documents and a biometric signature of a user, wherein the biometric signature is at least one of a fingerprint, a face, a voice signature, and a keypad password;
--
create, via the processor, a plurality of contact lists and a plurality of access levels associated with the documents for each of the contact lists, respectively;
--
receive, via the user computing device, a set of barcodes transmitted from the server computing device of the system, wherein each barcode of the set of received barcodes is associated with each of the document data;
--
associate the received barcodes with the entered document data, respectively; and
--
scan, via the input devices, the attached barcodes to organize the document data according to designation of the access levels of the contact list; and
wherein the server processor is configured to:
wherein the server processor is configured to:
transmit a keep-alive signal to a user at a predefined interval;
transmit a keep-alive signal to the user computing device at a predefined interval;
receive a reply with the biometric signature from the user computing device in response to the transmitted keep-alive signal;
receive a reply with the biometric signature from the user computing device in response to the transmitted keep-alive signal;
authenticate the received reply to determine whether the reply is from the user by using at least one of a fingerprint recognition, a facial recognition, a voice recognition, and a password recognition, and determine whether the user is in an active state or a non-active status based on whether the reply to the keep-alive signal is received prior to an expiration of the predefined interval;
authenticate the received reply to determine whether the reply is from the user by using at least one of a fingerprint recognition, a facial recognition, a voice recognition, and a password recognition, and determine whether the user is in an active status or a non-active status based on whether the reply to the keep-alive signal is received prior to an expiration of the predefined interval;
transmit a first level transition notification including at least one of the entered documents in a first access level of a plurality of access levels to a first contact list of a plurality of contact lists of the user if the determined status of the user is non-active;
transmit a first level transition notification including at least one of the entered documents in a first access level of the plurality of access levels to a first contact list of the plurality of contact lists of the user if the determined status of the user is non-active;
transmit a second level transition notification including at least one of the entered documents in a second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive signal is not received; and
transmit a second level transition notification including at least one of the entered documents in a second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive signal is not received;
transmit a third level transition notification including at least one of the entered documents in a third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive signal is not received;
transmit a third level transition notification including at least one of the entered documents in a third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive signal is not received; and
wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level.
wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level.
Current Application Claim 13
U.S. Patent No. 12,205,185 claim 11
A method comprising:
A method comprising:
--
entering, via an input interface of a user computing device of a system, document data associated with a plurality of documents and a biometric signature of a user, wherein the biometric signature is at least one of a fingerprint, a face, a voice signature, and a keypad password;
--
creating, via a processor of the user computing device, a first contact list, a second contact list, and a third contact list each associated with a first access level, a second access level, and a third access level to the documents for each of the contact lists, respectively;
--
receiving, at least one of via the processor and physically, barcodes transmitted from a server computing device of the system, wherein each of the barcodes is associated with each of the entered documents, and the system is configured to allow the received barcodes to be attached on the entered documents, respectively;
--
scanning, via a user interface of the user computing device, the attached barcodes to organize the entered documents according to designation of the access levels of the entered documents;
receiving, by a server computing device having a processor and addressable memory, a reply including a biometric signature from a user in response to a keep-alive signal via an input interface of a user computing device;
receiving, by a server computing device having a processor and addressable memory, a reply including the biometric signature from the user in response to the keep-alive signal via the input interface of the user computing device,
authenticating, by a processor of the server computing device, to determine whether the reply is from the user by using at least one of fingerprint recognition, a facial recognition, a voice recognition, and a password recognition and determining an active status or a non-active status of the user based on whether the reply to the keep-alive signal is received prior to an expiration of a predefined interval;
authenticating, by the processor of the server computing device, to determine whether the reply is from the user by using at least one of fingerprint recognition, a facial recognition, a voice recognition, and a password recognition and determining an active status or a non-active status of the user based on whether the reply to the keep-alive signal is received prior to an expiration of the predefined interval;
transmitting, by the server computing device, a first level transition notification including at least one of the documents in the first access level of the plurality of access levels to a first contact list of the plurality of contact lists of the user if the determined status of the user is non-active;
transmitting, by the server computing device, a first level transition notification including at least one of the documents in the first access level of the plurality of access levels to a first contact list of the plurality of contact lists of the user if the determined status of the user is non-active;
transmitting, by the server computing device, a second level transition notification including at least one of the documents in the second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive signal is not received; and
transmitting, by the server computing device, a second level transition notification including at least one of the documents in the second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive signal is not received; and
transmitting, by the server computing device, a third level transition notification including at least one of the documents in the third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive signal is not received; and wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level.
transmitting, by the server computing device, a third level transition notification including at least one of the documents in the third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive signal is not received; and wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level.
Statutory:
A rejection based on double patenting of the "same invention" type finds its support in the language of 35 U.S.C. 101 which states that "whoever invents or discovers any new and useful process may obtain a patent therefor. (Emphasis added). Thus, the term "same invention," in this context, means an invention drawn to identical subject matter. See Miller V. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 2-12 and 14-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-18 of U.S. Patent No. 12,205,185. This is a statutory double patenting rejection.
Current Application Claim 2
U.S. Patent No. 12,205,185 claim 1
A system comprising:
(Inherited from claim 1)
A system comprising:
a computing device having a processor, an addressable memory, and a user interface including input device;
(Inherited from claim 1)
a user computing device having a processor, an addressable memory, and a user interface including input devices;
a server computing device having a processor and addressable memory, in communication with a user computing device;
(Inherited from claim 1)
a server computing device having a processor and an addressable memory, in communication with the user computing device;
wherein the user computing device is configured to:
wherein the user computing device is configured to:
center (sic), via the input devices, document data associated with a plurality of documents and a biometric signature of a user, wherein the biometric signature is at least one of a fingerprint, a face, a voice signature, and a keypad password;
enter, via the input devices, document data associated with a plurality of documents and a biometric signature of a user, wherein the biometric signature is at least one of a fingerprint, a face, a voice signature, and a keypad password;
create, via the processor, the plurality of contact lists and the plurality of access levels associated with the documents for each of the contact lists, respectively;
create, via the processor, a plurality of contact lists and a plurality of access levels associated with the documents for each of the contact lists, respectively;
receive, via the user computing device, a set of barcodes transmitted from the server computing device of the system, wherein each barcode of the set of received barcodes is associated with each of the document data;
receive, via the user computing device, a set of barcodes transmitted from the server computing device of the system, wherein each barcode of the set of received barcodes is associated with each of the document data;
associate the received barcodes with the entered document data, respectively; and
associate the received barcodes with the entered document data, respectively; and
scan, via the input devices, the attached barcodes to organize the document data according to designation of the access levels of the contact list
scan, via the input devices, the attached barcodes to organize the document data according to designation of the access levels of the contact list; and
wherein the server processor is configured to:
(Inherited from claim 1)
wherein the server processor is configured to:
transmit a keep-alive signal to a user at a predefined interval;
(Inherited from claim 1)
transmit a keep-alive signal to the user computing device at a predefined interval;
receive a reply with the biometric signature from the user computing device in response to the transmitted keep-alive signal;
(Inherited from claim 1)
receive a reply with the biometric signature from the user computing device in response to the transmitted keep-alive signal;
authenticate the received reply to determine whether the reply is from the user by using at least one of a fingerprint recognition, a facial recognition, a voice recognition, and a password recognition, and determine whether the user is in an active state or a non-active status based on whether the reply to the keep-alive signal is received prior to an expiration of the predefined interval;
(Inherited from claim 1)
authenticate the received reply to determine whether the reply is from the user by using at least one of a fingerprint recognition, a facial recognition, a voice recognition, and a password recognition, and determine whether the user is in an active status or a non-active status based on whether the reply to the keep-alive signal is received prior to an expiration of the predefined interval;
transmit a first level transition notification including at least one of the entered documents in a first access level of a plurality of access levels to a first contact list of a plurality of contact lists of the user if the determined status of the user is non-active;
(Inherited from claim 1)
transmit a first level transition notification including at least one of the entered documents in a first access level of the plurality of access levels to a first contact list of the plurality of contact lists of the user if the determined status of the user is non-active;
transmit a second level transition notification including at least one of the entered documents in a second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive signal is not received; and
(Inherited from claim 1)
transmit a second level transition notification including at least one of the entered documents in a second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive signal is not received;
transmit a third level transition notification including at least one of the entered documents in a third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive signal is not received;
(Inherited from claim 1)
transmit a third level transition notification including at least one of the entered documents in a third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive signal is not received; and
wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level.
(Inherited from claim 1)
wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level.
Current Application Claim 3
U.S. Patent No. 12,205,185 claim 2
wherein the first contact list has more access to the user information than the second contact list.
wherein the first contact list has more access to the user information than the second contact list.
Current Application Claim 4
U.S. Patent No. 12,205,185 claim 3
wherein the second contact list has more access to the user information than the third contact list.
wherein the second contact list has more access to the user information than the third contact list.
Current Application Claim 5
U.S. Patent No. 12,205,185 claim 4
wherein the first contact list comprises more members than the second contact list.
wherein the first contact list comprises more members than the second contact list.
Current Application Claim 6
U.S. Patent No. 12,205,185 claim 5
wherein the second contact list comprises more members than the third contact list.
wherein the second contact list comprises more members than the third contact list.
Current Application Claim 7
U.S. Patent No. 12,205,185 claim 6
wherein the first contact list comprises fewer members than the second contact list.
wherein the first contact list comprises fewer members than the second contact list.
Current Application Claim 8
U.S. Patent No. 12,205,185 claim 7
wherein the second contact list comprises fewer members than the third contact list.
wherein the second contact list comprises fewer members than the third contact list.
Current Application Claim 9
U.S. Patent No. 12,205,185 claim 8
wherein the first level transition notification further comprises: one or more copies of a will or trust; do not resuscitate forms; an asset list; and burial instructions and preferences.
wherein the first level transition notification further comprises: one or more copies of a will or trust; do not resuscitate forms; an asset list; and burial instructions and preferences.
Current Application Claim 10
U.S. Patent No. 12,205,185 claim 9
wherein the second level transition notification further comprises: a death certificate; a designated contact's identification (ID); and one or more notarized paperwork.
wherein the second level transition notification further comprises: a death certificate; a designated contact's identification (ID); and one or more notarized paperwork.
Current Application Claim 11
U.S. Patent No. 12,205,185 claim 10
wherein the third level transition notification further comprises: one or more digital account passwords; and banking information.
wherein the third level transition notification further comprises: one or more digital account passwords; and banking information.
Current Application Claim 12
U.S. Patent No. 12,205,185 claim 17
wherein the user computing device is further configured to: reply, via the input devices, to a keep-alive signal transmitted from the server computing device, with the biometric signature.
wherein the user computing device is further configured to: reply, via the input devices, to a keep-alive signal transmitted from the server computing device, with the biometric signature.
Current Application Claim 14
U.S. Patent No. 12,205,185 claim 11
Inherited from claim 13
A method comprising:
entering, via the input interface of the user computing device of the system, document data associated with a plurality of documents and the biometric signature of the user, wherein the biometric signature is at least one of a fingerprint, a face, a voice signature, and a keypad password;
entering, via an input interface of a user computing device of a system, document data associated with a plurality of documents and a biometric signature of a user, wherein the biometric signature is at least one of a fingerprint, a face, a voice signature, and a keypad password;
creating, via the processor of the user computing device, a first contact list, a second contact list, and a third contact list each associated with a first access level, a second access level, and a third access level to the documents for each of the contact lists, respectively;
creating, via a processor of the user computing device, a first contact list, a second contact list, and a third contact list each associated with a first access level, a second access level, and a third access level to the documents for each of the contact lists, respectively;
receiving, at least one of via the processor and physically, barcodes transmitted from a server computing device of the system, wherein each of the barcodes is associated with each of the entered documents, and the system is configured to allow the received barcodes to be attached on the entered documents, respectively; and
receiving, at least one of via the processor and physically, barcodes transmitted from a server computing device of the system, wherein each of the barcodes is associated with each of the entered documents, and the system is configured to allow the received barcodes to be attached on the entered documents, respectively;
scanning, via a user interface of the user computing device, the attached barcodes to organize the entered documents according to designation of the access levels of the entered documents.
scanning, via a user interface of the user computing device, the attached barcodes to organize the entered documents according to designation of the access levels of the entered documents;
receiving, by a server computing device having a processor and addressable memory, a reply including a biometric signature from a user in response to a keep-alive signal via an input interface of a user computing device;
(Inherited from claim 13)
receiving, by a server computing device having a processor and addressable memory, a reply including the biometric signature from the user in response to the keep-alive signal via the input interface of the user computing device,
authenticating, by a processor of the server computing device, to determine whether the reply is from the user by using at least one of fingerprint recognition, a facial recognition, a voice recognition, and a password recognition and determining an active status or a non-active status of the user based on whether the reply to the keep-alive signal is received prior to an expiration of a predefined interval;
(Inherited from claim 13)
authenticating, by the processor of the server computing device, to determine whether the reply is from the user by using at least one of fingerprint recognition, a facial recognition, a voice recognition, and a password recognition and determining an active status or a non-active status of the user based on whether the reply to the keep-alive signal is received prior to an expiration of the predefined interval;
transmitting, by the server computing device, a first level transition notification including at least one of the documents in the first access level of the plurality of access levels to a first contact list of the plurality of contact lists of the user if the determined status of the user is non-active;
(Inherited from claim 13)
transmitting, by the server computing device, a first level transition notification including at least one of the documents in the first access level of the plurality of access levels to a first contact list of the plurality of contact lists of the user if the determined status of the user is non-active;
transmitting, by the server computing device, a second level transition notification including at least one of the documents in the second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive signal is not received; and
(Inherited from claim 13)
transmitting, by the server computing device, a second level transition notification including at least one of the documents in the second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive signal is not received; and
transmitting, by the server computing device, a third level transition notification including at least one of the documents in the third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive signal is not received; and wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level.
(Inherited from claim 13)
transmitting, by the server computing device, a third level transition notification including at least one of the documents in the third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive signal is not received; and wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level.
Current Application Claim 15
U.S. Patent No. 12,205,185 claim 12
wherein the first level transition notification further comprises: one or more copies of a will or trust; do not resuscitate forms; an asset list; and one or more burial instructions and preferences.
wherein the first level transition notification further comprises: one or more copies of a will or trust; do not resuscitate forms; an asset list; and one or more burial instructions and preferences.
Current Application Claim 16
U.S. Patent No. 12,205,185 claim 13
wherein the second level transition notification further comprises: a death certificate; a designated contact's identification (ID); and one or more notarized paperwork.
wherein the second level transition notification further comprises: a death certificate; a designated contact's identification (ID); and one or more notarized paperwork
Current Application Claim 17
U.S. Patent No. 12,205,185 claim 14
wherein the third level transition notification further comprises: one or more digital account passwords; and banking information.
wherein the third level transition notification further comprises: one or more digital account passwords; and banking information.
Current Application Claim 18
U.S. Patent No. 12,205,185 claim 15
wherein the first contact list has more access to the user information than the second contact list.
wherein the first contact list has more access to the user information than the second contact list.
Current Application Claim 19
U.S. Patent No. 12,205,185 claim 16
wherein the second contact list has more access to the user information than the third contact list.
wherein the second contact list has more access to the user information than the third contact list.
Current Application Claim 20
U.S. Patent No. 12,205,185 claim 18
transmitting, by the server computing device, a keep-alive signal to a user at a predefined interval.
transmitting, by the server computing device, a keep-alive signal to a user at a predefined interval.
Claim Objections
Claim 1-13 are objected to because of the following informalities:
Claim 1 recites “receive a reply with the biometric signature from the user computing device in response to the transmitted keep-alive signal” (emphasis added). There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required. Examiner notes that it appears that the antecedent basis for these terms is in dependent claim 2. Because the antecedent basis appears in claim 2, claims 2-12 are not included in this objection.
Claim 1 further recites “transmit a first level transition notification including at least one of the entered documents in a first access level of a plurality of access levels to a first contact list of a plurality of contact lists of the user if the determined status of the user is non-active” (emphasis added). There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required. Examiner notes that it appears that the antecedent basis for these terms is in dependent claim 2. Because the antecedent basis appears in claim 2, claims 2-12 are not included in this objection.
Claim 2 recites “wherein the user computing device is configured to: center, via the input devices, document data associated with a plurality of documents and a biometric signature of a user,” (emphasis added). This limitation contains a typographical error where the word “center” should be the word “enter”. For the purposes of examination, the claim is interpreted to read, “wherein the user computing device is configured to: enter, via the input devices, document data associated with a plurality of documents and a biometric signature of a user,” (emphasis added). Appropriate correction is required.
Claim 2 further recites “center (sic), via the input devices, document data associated with a plurality of documents and a biometric signature of a user, wherein the biometric signature is at least one of a fingerprint, a face, a voice signature, and a keypad password” and “scan, via the input devices, the attached barcodes to organize the document data according to designation of the access levels of the contact list” (emphasis added). There is insufficient antecedent basis for this limitation in the claim. Claim 1, upon which claim 2 depends, recites “a computing device having a processor, an addressable memory, and a user interface including input device” (emphasis added). It appears that claim 2 contains a typographical error (i.e., the use of plural “devices” in claim 2 when claim 1 only includes a singular “device”) resulting in the lack of antecedent basis for the plural devices. For the purposes of examination, claim 2 is interpreted to read, “center (sic), via the input device, document data associated with a plurality of documents and a biometric signature of a user, wherein the biometric signature is at least one of a fingerprint, a face, a voice signature, and a keypad password” and “scan, via the input device, the attached barcodes to organize the document data according to designation of the access levels of the contact list” (emphasis added). Appropriate correction is required. Claim 12 contains a similar issue with respect to “the input devices” and is objected to for the same reasoning as claim 2.
Claims 3-12 are objected to by virtue of dependency on claim 2.
Claim 13 recites “transmitting, by the server computing device, a first level transition notification including at least one of the documents in the first access level of the plurality of access levels to a first contact list of the plurality of contact lists of the user if the determined status of the user is non-active” and “transmitting, by the server computing device, a second level transition notification including at least one of the documents in the second access level of the plurality of access levels” and “transmitting, by the server computing device, a third level transition notification including at least one of the documents in the third access level of the plurality of access levels” (emphasis added). There is insufficient antecedent basis for this limitation in the claim. Specifically, for “the documents”, “the first access level”, “the plurality of access levels”, “the plurality of contact lists”, “the second access level”, and “the third access level”. Appropriate correction is required. Examiner notes that it appears that the antecedent basis for these terms is in dependent claim 14. Because the antecedent basis appears in claim 14, claims 14-20 are not included in this objection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a computing device having a processor, an addressable memory, and a user interface including input device” and “a server computing device having a processor and addressable memory, in communication with a user computing device” (emphasis added). It is unclear whether the “computing device” is the same as the “user computing device” or they are two separate devices. Per Applicant’s specification (particularly Fig. 1 showing a single “computing device”), “a computing device” is interpreted to recite “a user computing device” in line 2 and therefore, line 5 is interpreted to recite “the user computing device”. Appropriate correction is required.
Claim 2 recites “and scan, via the input devices, the attached barcodes to organize the document data according to designation of the access levels of the contact list” (emphasis added). There is insufficient antecedent basis for this limitation in the claim. Claim 2 previously recites that the barcodes are “associated with each of the document data” and “the entered document data”. However, there is no limitation where the barcodes are “attached”. Under the broadest reasonable interpretation and per Applicant’s specification, claim 2 is interpreted to read, “and scan, via the input devices, attached barcodes to organize the document data according to designation of the access levels of the contact list” (emphasis added). Appropriate correction is required.
Claims 2-12 are also rejected by virtue of dependency.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
Independent Claims
MPEP 2106 Step 2A- Prong 1:
Independent claim 1 recites, transmit a keep-alive message to a user at a predefined interval;
receive a reply with a biometric signature from the user in response to the transmitted keep-alive message;
authenticate the received reply to determine whether the reply is from the user by using at least one of a fingerprint recognition, a facial recognition, a voice recognition, and a password recognition, and
determine whether the user is in an active state or a non-active status based on whether the reply to the keep-alive message is received prior to an expiration of the predefined interval;
transmit a first level transition notification including at least one of the entered documents in a first access level of a plurality of access levels to a first contact list of a plurality of contact lists of the user if the determined status of the user is non-active;
transmit a second level transition notification including at least one of the entered documents in a second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive message is not received; and
transmit a third level transition notification including at least one of the entered documents in a third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive message is not received;
wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level.
Independent claim 13 recites, receiving a reply including a biometric signature from a user in response to a keep-alive [message] via an input interface of a user computing device;
authenticating, by a processor of the server computing device, to determine whether the reply is from the user by using at least one of fingerprint recognition, a facial recognition, a voice recognition, and a password recognition and determining an active status or a non-active status of the user based on whether the reply to the keep-alive [message] is received prior to an expiration of a predefined interval;
transmitting a first level transition notification including at least one of the documents in the first access level of the plurality of access levels to a first contact list of the plurality of contact lists of the user if the determined status of the user is non-active;
transmitting a second level transition notification including at least one of the documents in the second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive [message] is not received; and
transmitting a third level transition notification including at least one of the documents in the third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive [message] is not received;
and wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level.
The limitations above are processes that under broadest reasonable interpretation cover “certain methods of organizing human activity”. Specifically, providing notifications to different groups of people to execute the decedent’s will (i.e. settle the estate) is legal interactions (see MPEP 2106.04(a)(2)(II)(B)) as well as managing personal behavior or relationships or interactions between people (see MPEP 2106.04(a)(2)(II)(C)).
MPEP 2106 Step 2A- Prong 2:
The judicial exceptions are not integrated into a practical application. Claims 1 and 13 as a whole amount to: merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or “apply it”; or generally linking the use of the judicial exception to a particular technological environment or field of use.
Independent claims 1 and 13 recite the following additional elements to perform the above recited steps: a computing device having a processor, an addressable memory, and a user interface including input device (claim 1), a server computing device having a processor and addressable memory, in communication with a user computing device (claim 1), a keep-alive message is a keep-alive signal (claims 1 and 13), a server computing device having a processor and addressable memory (claim 13), and a user computing device (claim 13). These additional elements are generic computer components performing generic computer functions at a high level of generality, and are recited at a high level of generality. As such, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Examiner notes that, under the broadest reasonable interpretation and per Applicant’s specification, the “keep-alive signal” appears to include signals, messages, and notifications sent from a generic computer (see, e.g., p.12 of Applicant’s specification “For example, the user may prefer an app on a mobile device with an alarm clock. That is, the keep-alive system may be executed locally on the user equipment of the user and where a timer is used to generate a keep-alive message be sent to the server computing device to inform the server the user is still active”). As such, “signal” includes generic computer functions described at a high level of generality, performed on a generic computer.
Individually and as a whole, these additional elements do not integrate the judicial exceptions into a practical application because the claims do not: improve the functioning of the computer itself or any other technology or technical field; apply the judicial exception with, or by use of, a particular machine; effect a transformation or reduction of a particular article to a different state or thing; add meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment to transform the judicial exception into patent-eligible subject matter; amount to more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer.
MPEP 2106 Step 2B:
Independent claims 1 and 13 do not include additional elements that are sufficient to amount to significantly more (also known as an “inventive concept”) than the judicial exception. As discussed above, the additional elements are generic computer components performing generic computer functions at a high level of generality and/or generally link the use of the judicial exception to a particular technological environment or field of use. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Alone or in combination, the additional elements do not contribute significantly more than the judicial exception and as a result, the claims are ineligible.
Dependent Claims
Dependent claims 3-12 and 15-20, recite additional details that merely narrow the previously recited abstract idea limitations, without adding any additional elements for analysis. Thus, claims 3-12 and 15-20 are also ineligible for the reasons stated above with respect to independent claim 1 and 13. The additional elements in claims 2 and 14 are discussed below.
MPEP 2106 Step 2A- Prong 2:
Dependent claims 2 and 14, recite additional details that merely narrow the previously recited abstract idea. Claims 2 and 14 also recite the additional elements of receiving a set of barcodes, associating the barcodes with document data, and scanning the barcodes. These additional elements are recited at a high level of generality such that when viewed as a whole, the additional element does no more than generally link the use of the judicial exception to a particular technological environment or field of use (i.e., identifying documents using barcodes) (see MPEP 2106.05(h)).
MPEP 2106 Step 2B:
With respect to claims 2 and 14, as discussed above with respect to Step 2A Prong Two, the additional element amounts to no more than: generally linking the use of a judicial exception to a particular technological environment or field of use, and is not a practical application of the abstract idea. The same analysis applies here in Step 2B, i.e., (i) generally linking the use of a judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)), does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
Therefore, the additional elements of receiving a set of barcodes, associating the barcodes with document data, and scanning the barcodes, do not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, claims 2 and 14 are also ineligible.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. 2018/0053273 to Beal (Beal) in view of U.S. Patent Publication No. 2017/0132736 to Switzer, Sr. (Switzer).
As to claim 1, Beal teaches a computing device having a processor, an addressable memory, and a user interface including input device (“The present invention relates to document storage and access, and more particularly, to a computer system and computer-implemented method for document storage and safekeeping” and “Referring to FIG. 1, an exemplary diagram of a web-based (“Cloud”) system 100 is shown …” [0001 and 0010-0013]);
a server computing device having a processor and addressable memory, in communication with a user computing device, wherein the server processor is configured to (“… Preferably, the illustrated entities (the server 120 and the clients 140) communicate via the Internet 150 which provides a path for data communication, and allows exchange of information signals …” [0010-0015]):
transmit a keep-alive signal to a user at a predefined interval (“As shown in FIG. 3, a first method for verifying if a person is presently alive is illustrated. At step 1A, email messages are periodically sent to the user to verify if the person is alive …” [0021]);
receive a reply with the biometric signature from the user computing device in response to the transmitted keep-alive signal (“… Alternatively or additionally, the authentication process may involve usage of biometric information (e.g., fingerprint or retina scan) …” and “As shown in FIG. 3, a first method for verifying if a person is presently alive is illustrated. At step 1A, email messages are periodically sent to the user to verify if the person is alive …” [0017 and 0021]);
authenticate the received reply to determine whether the reply is from the user by using at least one of a fingerprint recognition, a facial recognition, a voice recognition, and a password recognition, and determine whether the user is in an active state or a non-active status based on whether the reply to the keep-alive signal is received prior to an expiration of the predefined interval (“… The user will choose an appropriate user identifier (or have one assigned) and password. Alternatively or additionally, the authentication process may involve usage of biometric information (e.g., fingerprint or retina scan) …” and “As shown in FIG. 3, a first method for verifying if a person is presently alive is illustrated. At step 1A, email messages are periodically sent to the user to verify if the person is alive …” [0017-0019 and 0021-0023]);
transmit a first level transition notification including at least one of the entered documents in a first access level of a plurality of access levels to a first contact list of a plurality of contact lists of the user if the determined status of the user is non-active (“… Additionally, the user may also provide contact information for designated persons to contact. In the case of a will, the contact information could include contact information for the executor of the estate, for example” and “… At step 3A, upon verification of actual death, the stored documents are released to the designated individual(s) (e.g., the executor of a will, the person's spouse) …” [0017 and 0021-0023]);
transmit a second level transition notification including at least one of the entered documents in a second access level of the plurality of access levels to a second contact list of the plurality of contact lists of the user after a first time period has expired and the reply to the keep-alive signal is not received (“… Additionally, the user may also provide contact information for designated persons to contact. In the case of a will, the contact information could include contact information for the executor of the estate, for example” and “… At step 3A, upon verification of actual death, the stored documents are released to the designated individual(s) (e.g., the executor of a will, the person's spouse) …” [0017 and 0021-0023]);
and transmit a third level transition notification including at least one of the entered documents in a third access level of the plurality of access levels to a third contact list of the plurality of contact lists of the user after a second time period has expired and the reply to the keep-alive signal is not received (“… Additionally, the user may also provide contact information for designated persons to contact. In the case of a will, the contact information could include contact information for the executor of the estate, for example” and “… At step 3A, upon verification of actual death, the stored documents are released to the designated individual(s) (e.g., the executor of a will, the person's spouse) …” [0017 and 0021-0023]);
wherein a hierarchical access to documents is created thereby adding a contact list with a given level of access determines authentication criteria for each level (“As depicted, the application 125 includes various modules to maintain user accounts 126, determine if a specified condition has been met (e.g., verify “Proof of Life”) 127, and store and release documents 128 …” and “… At step 3B, upon verification of actual death, the stored documents are released to the designated individual(s) (e.g., the executor, the person's spouse)” [0015-0019 and 0021-0023]).
Regarding the limitations above of sending transition notifications to different lists after different time periods have expired, Examiner asserts that Beal teaches these limitations as explained above. Nevertheless, for the purpose of compact prosecution, Examiner asserts that even if Beal does not teach these features, analogous reference Switzer does teach contacting different contact lists in a temporal and hierarchical order to settle an estate when a person dies. Specifically, Switzer teaches a "hub and spoke" approach (see at least Abstract and [0005], [0018], and [0021]) that collects legal and other documents and then notifies everyone in the contact list (see also [0065] expressly teaching the notifications). Switzer teaches that such notification serves "as notice to these organizations being notified to potentially close the deceased individual's correlating accounts and stop billing of those correlating accounts, saving the estate expense" (see [0018]). Switzer is analogous to Beal and the instant application because it relates to providing death notifications (see Switzer [0002]).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of using such a hub and spoke notification process (as disclosed by Switzer) to the known method and system of storing legal documents until the appropriate time after the decedent's death (as disclosed by Beal). One of ordinary skill in the art would have been motivated to apply the known technique of using such a hub and spoke notification process because it would save time during the estate settlement process as well as "serve as notice to these organizations being notified to potentially close the deceased individual's correlating accounts and stop billing of those correlating accounts, saving the estate expense" (see Switzer [0002-0005] and [0018]).
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of using such a hub and spoke notification process (as disclosed by Switzer) to the known method and system of storing legal documents until the appropriate time after the decedent's death (as disclosed by Beal), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of using such a hub and spoke notification process to the known method and system of storing legal documents until the appropriate time after the decedent's death, because predictably a method of providing documents to the appropriate persons after the decedent's death can also include a feature of providing notifications to several different parties). See also MPEP § 2143(I)(D).
Regarding Claim 13, this claim is essentially coextensive with Claim 1 other than that it recites a method instead of a system. Because Beal teaches a method as well as a system (see at least Beal [0001]), Claim 13 can be rejected with the same rationale as Claim 1, relying on the same combination of Beal and Switzer to render the claim obvious.
Allowable over Prior Art
Available prior art, alone or in combination, fails to teach all of the limitations in claims 2-12 and 14-20. Specifically, the limitations:
“receive, via the user computing device, a set of barcodes transmitted from the server computing device of the system, wherein each barcode of the set of received barcodes is associated with each of the document data; associate the received barcodes with the entered document data, respectively; and scan, via the input devices, the attached barcodes to organize the document data according to designation of the access levels of the contact list” as recited in claim 2 (including claims 3-12 by virtue of dependency)
“receiving, at least one of via the processor and physically, barcodes transmitted from a server computing device of the system, wherein each of the barcodes is associated with each of the entered documents, and the system is configured to allow the received barcodes to be attached on the entered documents, respectively; and scanning, via the user interface, the attached barcodes to organize the entered documents according to designation of the access levels of the entered documents” as recited in claim 14 (including claims 15-20 by virtue of dependency).
The closest prior art of record consists of Beal and Switzer, and none of these references render obvious the claims as an ordered combination and in particular the use of barcodes associated with each document of the data that when scanned, organize the document data according to designation of the access levels of the contact list. Additional prior art is no better. For example, references such as Levin et al. (US 2015/0254794 A1), Barakat et al. (US 11,037,231 B1) and O'Brien (US 2017/0103230 A1) do teach similar triggering features as Beal and do generically recite the use of a barcode as a potential authentication factor, but none of these references help, along with the prior art of record, to render the as-amended claims obvious. Examiner notes that the NPL reference "MQTT Essentials: Last Will and Testament," included in the IDS dated January 17, 2025, is illustrative of the non-patent literature in describing how, e.g., a broker might be notified of a client's death, but this reference fails to teach the new limitations. Van Niekerk (WO 2016/162806 A2) is a foreign application and the closest of all foreign applications to the instant application.
Conclusion
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/S.S.W./Examiner, Art Unit 3628
/RUPANGINI SINGH/Primary Examiner, Art Unit 3628