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
2. This Office Action is in response to the initial filing of application #19/034,832 on 01/23/2025.
3. Claims 1-20 are currently pending and are considered below.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 01/23/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
5. 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.
6. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,211,063. Although the claims at issue are not identical, they are not patentably distinct from each other because these reference claims anticipate the claims under examination.
Claim Rejections - 35 USC § 101
7. 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.
8. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. Representative claim 1, recites a method (which is a statutory class), the method comprising:
receiving ad activity data for each of one or more account holders that was rendered on respective displays of an AR view of a corresponding product ad, wherein the ad activity data:
is derived from each said AR view of ad activity of the one or more account holders; and
includes a participant identifier of the corresponding account holder of the one or more account holders;
receiving information for a transaction associated with a merchant of the one or more merchants and a corresponding said participant identifier of the one or more account holders from the information for the transaction;
determining a length of elapsed time between the transaction and the AR view of the ad activity of the one or more account holders;
ascertaining, as a result of the transaction associated with the participant identifier, that the transaction is linked to any AR view of the ad activity of the one or more account holders with the participant identifier from:
the length of the elapsed time;
the data related to the AR view of the ad activity of the one or more account holders; and the information associated with the transaction; and
generating one or more incentives based on the determination and the data related to the AR view of the ad activity of the one or more account holders.
The steps of
receiving ad activity data for each of one or more account holders that was rendered on respective displays of an AR view of a corresponding product ad, wherein the ad activity data:
is derived from each said AR view of ad activity of the one or more account holders; and
includes a participant identifier of the corresponding account holder of the one or more account holders;
receiving information for a transaction associated with a merchant of the one or more merchants and a corresponding said participant identifier of the one or more account holders from the information for the transaction;
determining a length of elapsed time between the transaction and the AR view of the ad activity of the one or more account holders;
ascertaining, as a result of the transaction associated with the participant identifier, that the transaction is linked to any AR view of the ad activity of the one or more account holders with the participant identifier from:
the length of the elapsed time;
the data related to the AR view of the ad activity of the one or more account holders; and the information associated with the transaction; and
generating one or more incentives based on the determination and the data related to the AR view of the ad activity of the one or more account holders
as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity. Given the broadest reasonable interpretation, the claim recites a method for a marketing system by linking a merchant transaction. The above identified method steps recite commercial interactions such as sales activities and/or tailored personalized marketing relating to generating one or more incentives.
If a claim limitation, under its broadest reasonable interpretation, covers commercial interaction such as commercial interaction, then it falls within the “certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of at least one processor, memory, a network interface. The processor and the memory is recited at a high level of generality (i.e., as a generic processor performing a generic computer functions of receiving ad activity data; receiving information for a transaction; determining a length of elapsed time; ascertaining, that the transaction is linked to any AR view of the ad activity of the one or more account holders with the participant identifier; and generating one or more incentives) such that they amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a processor, memory and machine learning model amount to no more than mere instructions to apply the exception using generic computer components. The additional elements are similar to the additional elements found by courts to be mere instructions to apply an exception because they do no more than merely invoke computers or machinery to perform an existing process such as: a common business method or mathematical algorithm being applied on a general purpose computer (Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 US 208, 223; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334); generating a second menu from a first menu and sending the menu to the second location as performed by a generic computer components (Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1243-44). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Thus, considered as an ordered combination, the additional elements add nothing that is already present when the steps are considered separately. That is, a processors, a memory and a network interface, performing commercial interactions including:
receiving ad activity data; receiving information for a transaction; determining a length of elapsed time; ascertaining, that the transaction is linked to any AR view of the ad activity of the one or more account holders with the participant identifier; and generating one or more incentives, amount to mere instructions to apply the steps to a computer comprising of a processor.
Thus, independent claims 1, 9-10 and 19 are not eligible.
As for dependent claims 2-8, 11-18 and 20, these claims recite limitations that further define the same abstract idea in claims 1, 10 and 19. Therefore, they are considered patent ineligible for the reasons given above. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself.
Claims 1-20 are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Conclusion
9. The claims are not rejected under 35 U.S.C. 102/103(a) for the reasons set forth in the parent application 18/242055..
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARILYN G MACASIANO whose telephone number is (571)270-5205. The examiner can normally be reached Monday-Friday 12:00-9:00 pm.
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, llana Spar can be reached on 571)270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARILYN G MACASIANO/Primary Examiner, Art Unit 3622 06/25/2026
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