DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
The following is a non-final, first office action on the merits, in response to application filed 2/13/2025. Claims 1-20 have been examined and are currently pending.
Priority
This application discloses and claims only subject matter disclosed in prior application 18/487915 (now Patent 12,243,055), filed 10/16/2023, which is in turn a continuation of 16/949589 (now Patent 11,790,359), filed 11/5/2020, which is in turn a continuation of 16/840476 (now abandoned), filed 4/6/2020, which is in turn a continuation of 13/104253 (now Patent 10,614,459), filed 5/10/2011, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation of 18/487915. Furthermore, acknowledgment is made of applicant's claim for a provisional application filed on 5/10/2010.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over current allowed co-pending independent claims 1, 17, 20 of U.S. Application 18/487915 (now Patent 12,243,055). Although the conflicting claims are not identical, they are not patentably distinct from each other of claims 1, 18, 20, respectively of the instant application.
Although the conflicting claims are not identical, they are not patentably distinct from each other of claim 1 respectively of the instant application because all the elements of the instant application claim are to be found in patent claims 1 (method). The difference between the instant application claims and the patent claims lies in the fact that the patent claim includes more elements and is thus more specific. Thus, the invention of the claims 1, 17, 20 of the patent is in effect a “species” of the “generic” invention of the instant application claims 1, 18, 20. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant application claim 1 is anticipated by the claim 1 of the patent, it is not patentably distinct from the claims of the patent.
For reference, the following table matches the primary limitations of claim 1 of application 18/487915 (now patent 12,243,055) with the similar limitations of claim 1 of the instant application (differences highlighted in bold type).
Allowed Claim 1 in patent Application 18/487915, (now Patent 12,243,055)
Current Application 19052579 which is Continuation of patent 18/487915, (now Patent 12,243,055)
Allowed Claim 1 (method)
A method of delivering a targeted information to an interface of a computing device, comprising:
receiving financial transaction data and a unique consumer identification code (UCIC) from an export system of a financial institution, wherein the financial transaction data is associated with the UCIC, and wherein the UCIC and the financial transaction data do not contain information that is traceable to the identity of a consumer;
creating, by one or more processors, an information delivery identification code (ADIC), wherein the UCIC and the ADIC are anonymous codings, and wherein the ADIC is linked to the UCIC for the consumer by the one or more processors;
associating, by one or more processors, the ADIC with the UCIC received from the financial institution and the financial transaction data associated with the UCIC, wherein the ADIC and UCIC are associated in an information delivery provider database;
associating, by the one or more processors, the ADIC with a unique identifier associated with a computing device used by the consumer as a result of the computing device logging into to the financial institution's computer system;
receiving one or more target consumer criteria for identifying recipients of a targeted information;
identifying, by the one or more processors, a recipient of the targeted information by matching the financial transaction data with the one or more target consumer criteria, wherein the recipient is identified using at least one of the ADIC and the UCIC;
detecting, by the one or more processors, the unique identifier associated with the computing device; and
delivering the targeted information to an interface of the computing device upon detection of the unique identifier;
wherein the step of associating the ADIC with the unique identifier comprises receiving the unique identifier from the computing device and associating the ADIC with the unique identifier; and
wherein the ADIC is a hashed address of the computing device.
Claim 1 (method)
A method of delivering a targeted information to an interface of a computing device, comprising:
receiving financial transaction data and a unique consumer identification code (UCIC) from an export system of a financial institution, wherein the financial transaction data is associated with the UCIC, and wherein the UCIC and the financial transaction data do not contain information that is traceable to the identity of a consumer;
creating, by one or more processors, an information delivery identification code (ADIC), wherein the UCIC and the ADIC are anonymous codings, and wherein the ADIC is linked to the UCIC for the consumer by the one or more processors;
associating, by one or more processors, the ADIC with the UCIC received from the financial institution and the financial transaction data associated with the UCIC, wherein the ADIC and UCIC are associated in an information delivery provider database;
associating, by the one or more processors, the ADIC with a unique identifier associated with a computing device used by the consumer as a result of the computing device logging into to the financial institution's computer system;
receiving one or more target consumer criteria for identifying recipients of a targeted information;
identifying, by the one or more processors, a recipient of the targeted information by matching the financial transaction data with the one or more target consumer criteria, wherein the recipient is identified using at least one of the ADIC and the UCIC;
detecting, by the one or more processors, the unique identifier associated with the computing device;
delivering the targeted information to an interface of the computing device upon detection of the unique identifier;
wherein the step of associating the ADIC with the unique identifier comprises receiving the unique identifier from the computing device and associating the ADIC with the unique identifier; and
wherein the unique identifier comprises a cookie.
Therefore, as discussed above, the scope of claims 1, 18, 20 of the present application and allowed claim 1, 17, 20, of U.S. Application No. 18/487915 (now Patent 12,243,055) are practically identical.
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/eTD-info-I.jsp.
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 NOT rejected under the Alice/Mayo styled 35 U.S.C. 101 because the claimed invention is NOT found to be directed to an abstract idea. The combination of elements, the claim as a whole, operates and integrates into a practical application of reciting a specific ordering of the steps as claimed.
After reviewing the Applicant’s disclosure as well as the amended claimed limitations that are included in the pending claim language, it is clear to the Examiner that the steps being performed go beyond the limitations and simple implementation of an abstract idea. The transformation of data into other data such as to provide the UCIC / ADIC with aspirational goal of providing anonymity through the use of an alternative persistent identifier that is equally linked or linkable to an individual just as any other persistent identifier and seek to associate it with preexisting profile and device identifiers as can be done with any persistent identifier which may be stored in an industry standard construct of a “hash IP address”, “a cookie”, and thus provides an integration into a practical application.
Therefore, based on these findings of fact, the Examiner understands the claimed subject matter to be patent eligible. The claimed subject matter satisfies the following improvements to the computer-related technology or to any other technology or technical field (see MPEP 2106.05(a)), and/or applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo). As such, the claim qualifies as eligible subject matter under 35 U.S.C. 101.
This statement is simply made to inform the record that the claims were considered under the Alice/Mayo analysis.
Allowable Subject Matter
As to the prior art rejections, the instant continuation application has the allowable features presented in 18/487915 (now Patent 12,243,055) filed 10/16/2023. In interpreting the claims, in light of the specification, upon further search and consideration, and for the reasons presented by the claims, the Examiner finds the claimed invention to be patentably distinct from the prior art of records. It is found that claims 1-20 are allowable subject to outstanding double patenting issues. An approved terminal disclaimer is required.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with, and pending remedy to outstanding issues cited above. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The prior art made of record cited or referenced relied upon is considered pertinent to applicant’s disclosure.
Lamsfuss et al. (US 2008/0140525),
Cunningham et al. (US 2004/0029566),
Spalink et al. (US 2006/0070117),
Hoerenz (US 2004/0267611),
Grimes, Scott, US 2010/0106569),
Coleman et al. (US 2008/0010206).
Axe at el. (US 2006/0004628).
Agarwal et al. (US 2006/0242013).
Ananian (US 2003/0028451).
Kublickis (US 2007/0067297).
Talegon (US 2003/0135460, [0034-0037]).
Goldhaber et al. (US Patent 5,794,210).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN M LI whose telephone number is (571)270-5489. The examiner can normally be reached on Mon-Thurs, 8:30am--5pm. Fax is 571-270-6489.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kambiz Abdi, can be reached on 571-272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUN M LI/
Primary Examiner, Art Unit 3685