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 .
Specification
Applicant should indicate granted patent number for cited applications in paragraph [0001].
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 mental steps without significantly more. As per step 1 examiner recognizes the claims are directed towards methods or devices which perform the method steps. As per step 2A the claim(s) recite(s) “generating, by a first computing device and based on performance metrics determined for a plurality of time periods, a first activity design by dynamically assigning a value to each of a plurality of elements comprising the first activity design, wherein each element represents a time period of the plurality of time periods; and after sending, to a second computing device, data indicating the first activity design, validating an identity of a user based on an indication received from the second computing device.” which is directed towards generating an activity design based on a received performance metric over periods of times and then confirming the identify of a user based on an indication. Further dependent claims indicate further how to determine performance, the indication being a comparison between designs, and other features. Examiner recognizes that the claims read on mental steps regarding the generation of a design based on received performance metrics. Specifically a color value is used to represent the activity which can be done as a mental process of an individual matching an activity, such as by number or rate, with a specified color. Specifically no computing algorithm is indicated as being used to determine the design and instead a general limitation is directed towards generating the design from the data. Examiner recognizes that individuals are good at being able to design patterns from observed data which is both a creative and analytic ability associated with individuals. For example recognizing a design from a graph is a mental step. Additionally validation is based on the design without indication how this is done and therefore could be considered validation via matching. Therefore this is a mental step since pattern recognition and matching is a mental process commonly associated with individuals. As per using designs to identify a user this is a mental step that is old and well-known with various designs used to identify someone or something. This includes broad identification such as flags to individual matching such as the face which is an image, or design, that individuals can use to identify a person. Therefore the use of designs to identify a person is also directed towards a mental step without any algorithms indicated as being unique to a computer. This judicial exception is not integrated into a practical application because it remains directed towards mental steps of recognizing designs in data and matching designs for identification. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims are not directed towards a practical application in computing but instead is directed towards mental steps. The broad limitations are directed towards activity which are performable by the mind and use conventional computer hardware. Additionally it is a known mental activity to use designs to identify someone or something. Therefore the practical application step is not met.
As per step 2B examiner recognizes that additional elements are directed to conventional activities or extra solution activity. See below.
As per the limitations directed towards a computing device or second computing device examiner recognizes that using computing elements to determine information for authentication is conventional. See at least Liang (US Pat. No. 7,780,081 B1) at col. 11, lines 35-46 regarding using various means by software to recognize an individual. This include means which rely on patterns such as biometric such as fingerprints which is well-known to use the pattern of a fingerprint for recognition. Therefore using patterns for recognition by a computing element is a conventional activity and therefore does not provide a practical application.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12246220. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed towards similar inventions regarding creating designs from performance metrics over periods of time and confirming identity via a second device indication. See below.
Current application claim
12246220 claim
Reasoning
1. method comprising: generating, by a first computing device and based on performance metrics determined for a plurality of time periods, a first activity design by dynamically assigning a value to each of a plurality of elements comprising the first activity design, wherein each element represents a time period of the plurality of time periods;
1. method comprising: receiving, by a first computing device, data indicating activity performed by a user for a plurality of time periods; determining, for each time period of the plurality of time periods, a performance metric associated with activity performed by the user during the time period; based on the determined performance metrics, generating, by the first computing device, a first activity design by dynamically assigning a color value to each of a plurality of elements comprising the first activity design, wherein each element represents a time period of the plurality of time periods;
Similar. Current application is broader.
and after sending, to a second computing device, data indicating the first activity design, validating an identity of a user based on an indication received from the second computing device.
and after sending, to a second computing device, data indicating the first activity design, validating an identity of the user based on an indication received from the second computing device.
Similar
Further dependent claims read on similar limitations such as how the design is created and what is involved in confirming identity. Therefore the claims are not patentably distinct.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN L MYHR whose telephone number is (571)270-7847. The examiner can normally be reached 10AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN L MYHR/Primary Examiner, Art Unit 3715 8/24/2026
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