DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
This action is in response to amendment filed on 23 February 2026. Claims 1-6 have been cancelled. Claims 7-26 have been added. Claims 7-26 are currently pending and have been examined.
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 7-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,254,485. The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: Although the claims at issue are not identical, they are not patentably distinct from each other because: though the wordings are different, the limitation carried are either inherently implied or would have been obvious to one of ordinary skill in the art. 19/064,113 recites “via a distributing network of servers:”; The instant claim is directed to essentially the same invention:
"generating a map comprising a history of a plurality of offers": Identical in scope to the reference claim's map generation [Reference].
"tracking a social networking influence of a plurality of offer recipients": Directly corresponds to the reference claim's tracking of user influence [Reference].
"inviting a particular offer recipient... to generate a new offer": Corresponds to "sending... an invitation to the first user to develop a first offer" in the reference claim [Reference].
The differences in the instant claim (fewer specific steps, broader language) are patentably indistinct from the reference claim's detailed steps. The instant claim constitutes an obvious variation of the reference claim, effectively attempting to extend the patent right to exclude for the same method. The instant claims is border but is not patently district as the reference claims disclose the same invention with narrower, specific limitations. Therefore, obviousness-type double patenting is present.
Claims 7-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,810,141. The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: Although the claims at issue are not identical, they are not patentably distinct from each other because: though the wordings are different, the limitation carried are either inherently implied or would have been obvious to one of ordinary skill in the art.
Reference Claim (Broader/Base): "A method, comprising: via a distributed network of servers: generating a map comprising a history of a plurality of offers; tracking a social networking influence of a plurality of offer recipients; and inviting a particular offer recipient... to generate a new offer."
Patented Claim (Detailed): "A method for distributing customized offers, wherein the method comprises: generating, via a distributed network... a map comprising offer distribution histories and a plurality of users... connected... according to a tracked social networking influence... selecting... a first user... according to a purchasing history... location... popularity... sending... an invitation... to develop a first offer... updating a first user profile... presenting a graphical user interface... distributing the first offer
The additional steps in the instant claim (e.g., selecting based on purchasing history/location, updating profiles, GUI presentation) constitute conventional computer-implemented steps (data processing, UI display, database updates) that would have been obvious to a person of ordinary skill in the art at the time of filing, given the foundational method in the reference claim. Specifically, once the "map comprising a history of a plurality of offers" and "tracked social networking influence" are generated (as claimed in the reference), it would be an obvious next step to use that data for targeting specific users based on their history (purchasing/location) and to provide a UI (GUI) to facilitate the creation of the offer. These added elements are functional variations that do not create a patentably distinct invention. T
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,719,840. The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: Although the claims at issue are not identical, they are not patentably distinct from each other because: though the wordings are different, the limitation carried are either inherently implied or would have been obvious to one of ordinary skill in the art. recites “via a distributing network of servers:”; The instant claim is directed to essentially the same invention:
Generating a Map comprising a history..." vs. "Storing records mapping connections...": The reference already discloses "storing records mapping connections" and "offer distribution histories." Using a "map" (e.g., a hash map, a graph database, or mapping records) is a known data structure technique for organizing relational or historical data.
"Tracking a social networking influence..." vs. "Tracking influence of the first user...": The reference expressly states, "...the system... configured to track an influence of the first user on the at least one additional user" [Ref. Claim, Para 2]. This is identical in substance to tracking social networking influence.
"Inviting a particular offer recipient... to generate a new offer" vs. "Sending an invitation... to develop at least one additional offer...": The reference describes "sending an invitation... for the first user to develop at least one additional offer to send.
The instant claims, if allowed, would result in an unjustified timewise extension of the right to exclude granted by the reference patented.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
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.
Step 1: The claims 7-16 are a method and claims 17-26 are medium. Thus, each independent claim, on its face, is directed to one of the statuary categories of 35 U.S.C. § 101. However, the claims 7-27 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A-Proing 1: The independent claims (7 and 17) recite generating a map comprising a history of a plurlity of offers; tracking a social networking influence of a plurality of offer recipients and inviting particular offer recipient of the plurality of offer recipient to generate new offer. The claim being directed to an abstract idea without adding "significantly more" to that idea. Under the Alice/Mayo framework, such methods are frequently deemed ineligible as they resemble methods of organizing human activity, data manipulation, or commercial practices implemented on generic computer systems.
Organizing Human Activity: The tracking of "social networking influence" and identifying "particular recipients" to generate offers constitutes a commercial or social interaction method, which courts have consistently categorized as an abstract idea.
Data Manipulation/Mapping: "Generating a map" that tracks history and influences is considered collecting, analyzing, and displaying data—a classic mental process or abstract, non-technical concept.
Step 2A-Proing 2: The claims recite additional limitation of: network server for perform the generating, tracking and inviting steps. Generic Computer Implementation: The use of "a distributed network of servers" is often insufficient to overcome this, as it is merely using a computer to perform these tasks faster, rather than improving the computer technology itself. The claims do not recite a specific, technical improvement in how the networking or mapping technology works (e.g., a new data storage algorithm), they are likely just applying an abstract idea to a computer environment. Simply performing tracking and inviting—similar to traditional marketing or networking—without a unique technological solution is generally deemed "well-understood, routine, conventional" by the Federal Circuit. Thus, the claims are ineligible.
Step 2B: As discussed with respect to Step 2A Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claims are ineligible.
Dependent claims 8-16 and 18-26 , these claims recite limitation that futher defines the same abstract idea noted in claims 7 and 17, therefore, they are considering patent ineligible for the same reason as above.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
Claim 7-26 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Higgins et al (US Pub., No., 2009/0138384 A1) in view of Allen et al (US Pub., No 2008/0300937 A1)
With respect to claim 7, Higgins teaches a method, comprising:
via a distributed network of servers (Fig. 2 104 discloses distribution network, Fig. 7, 704, discloses commercial incent is distributed to consumer via network and Fig. 9, 908, discloses distribute commercial incentive to the user over a network):
generating a map comprising a history of a plurality of offers(paragraph [0084], discloses CI manager configured to received business information from advertiser, such business information include transactions loge that inducive with a commercial incentive has been redeemed [history of plurality of offers].., determining an amount of payment due to the operator of CI engine 102 as well as other distribution (s) of the commercial incentive upon redemption of the commercial inventive and paragraph [0093], discloses assigning each commercial incentive a unique CI identifier (ID) upon distribution to a consumer, and mapping the unique CI ID to a unique consumer system/device); and
tracking a social networking influence of a plurality of offer recipients (paragraph [0083], discloses CI manager 204 may also be configured to provide tracking and/or analytics tools by which an advertiser may track the history of one or more commercial incentives or marketing campaigns and paragraph [0093], discloses distribution manager 206 is also configured to track commercial incentives after they have been distributed from CI engine to a consumer system/device.., tracking is facilitated by assign each commercial inventive a unique CI identifier (ID) upon distribution to consumer ).
Higgins teaches the above elements including generate a new offer(paragraph [0092], discloses valid commercial incentive created by an advertiser through interion with CI manager and to prepare such commercial incent for distribution to consumer). Higgins failed to teach inviting a particular offer recipient of the plurality of offer recipients to generate new offer.
However, Allen teaches inviting a particular offer recipient of the plurality of offer recipients to generate new offer (Fig. 5, 94 discloses invite certain attendees, paragraph [0053], discloses user propose a dinner gathering for certain event attendees [generating new offer] and paragraph [0054], discloses invite particular event attendees or potential event attendee to participate and paragraph [0060], discloses the invention permit the participant to interactively create event content [to generate a new offer] virtually and to pass the virtual event content into actual event content … ). Therefore, it would have been obvious to the one ordinary skill in the art at the time of the invention was made to modify the distribution and redemption of commercial incentive distribution to consumer device of a social networking of Higgins with inviting a certain attendee with a similar interest to join in their self-generated function of Allen in order to increase a user interaction (see, abstract).
With respect to claim 8, Higgins in view Allen teaches elements of claim 7, furthermore, Higgins teaches the method comprising presenting a graphical user interface (GUI) that is configured to enable the particular offer recipient (paragraph [0135, discloses present a user interface (such as a graphical user interface) to a user of first consumer device, the user interface allows the user to manage received commercial incentive , ..wherein managing the received commercial incentives may include performing a variety of functions, such as viewing, organizing, locking-in, deleting, printing, redistributing or redeeming received commercial incentives. CI redistributor 1016 is configured to redistribute a commercial incentive stored). Higgins failed to teach particular recipients to develop the new offer
However, Allen teaches particular recipients to develop the new offer (paragraph [0060], discloses the invention permit the participants to interactively create event content virtually and to pass the virtual event content). Therefore, it would have been obvious to the one ordinary skill in the art at the time of the invention was made to modify the distribution and redemption of commercial incentive distribution to consumer device of a social networking of Higgins with inviting a certain attendee with a similar interest to join in their self-generated function of Allen in order to increase a user interaction (see, abstract).
With respect to claim 9, Higgins in view Allen teaches elements of claim 7, furthermore, Higgins teaches the method wherein the new offer is generated according to a plurality of offer parameters (paragraph [0052], discloses creating commercial incentive for distribution to consumer [offer parameter]).
With respect to claim 10, Higgins in view Allen teaches elements of claim 7, furthermore, Higgins teaches the method wherein the new offer is generated according to according to a personalized message(paragraph [0063], discloses interpersonal commination data may include data assocted with an incoming or outgoing SMS message, email message..).
With respect to claim 11, Higgins in view Allen teaches elements of claim 7, furthermore, Higgins teaches the method comprising distributing the new offer (paragraph [0052], discloses creating commercial incentive for distribution to consumer [offer parameter]).
With respect to claim 12, Higgins in view Allen teaches elements of claim 7, furthermore, Higgins teaches the method comprising tracking a social networking influence of the particular offer recipient according to an action with respect to the new offer(paragraph [0144], discloses distribution manager a track the newly-created ).
With respect to claim 13, Higgins in view Allen teaches elements of claim 7, furthermore, Higgins teaches the method , wherein: the social networking influence is strong if a user redeems an offer, the social networking influence is moderate if the user accesses the offer, and the social networking influence is weak if the user has no interaction with the offer (paragraph [0191], discloses tracking information stored along with the redeemed copy of the commercial incentive may be used , such tracking information may identify each entity that has distributed or redistributed the commercial incentive).
With respect to claim 14, Higgins in view Allen teaches elements of claim 7, furthermore, Higgins teaches the method comprising distributing an offer via a profile in a database (paragraph [0060], discloses user identify data such as gender, age, race name, etc.).
With respect to claim 15, Higgins in view Allen teaches elements of claim 7, furthermore, Higgins teaches the method , comprising distributing an offer via a post on a social networking site (paragraph [0094], discloses publishing new commercial invent into active CI..).
With respect to claim 16, Higgins in view Allen teaches elements of claim 7, furthermore, Higgins teaches the method comprising distributing an offer via a mobile device(paragraph [0054], discloses consumer system/device).
With respect to claim 17, Higgins teaches a non-transitory computer-readable medium having stored thereon instructions executable by a distributed network of processing device to cause at least one processing device to perform, (Fig. 2 104 discloses distribution network, Fig. 7, 704, discloses commercial incent is distributed to consumer via network and Fig. 9, 908, discloses distribute commercial incentive to the user over a network) a method, comprising:
generating a map comprising a history of a plurality of offers(paragraph [0084], discloses CI manager configured to received business information from advertiser, such business information include transactions loge that inducive with a commercial incentive has been redeemed [history of plurality of offers].., determining an amount of payment due to the operator of CI engine 102 as well as other distribution (s) of the commercial incentive upon redemption of the commercial inventive and paragraph [0093], discloses assigning each commercial incentive a unique CI identifier (ID) upon distribution to a consumer, and mapping the unique CI ID to a unique consumer system/device); and
tracking a social networking influence of a plurality of offer recipients (paragraph [0083], discloses CI manager 204 may also be configured to provide tracking and/or analytics tools by which an advertiser may track the history of one or more commercial incentives or marketing campaigns and paragraph [0093], discloses distribution manager 206 is also configured to track commercial incentives after they have been distributed from CI engine to a consumer system/device.., tracking is facilitated by assign each commercial inventive a unique CI identifier (ID) upon distribution to consumer ).
Higgins teaches the above elements including generate a new offer(paragraph [0092], dislcies valid commercial incentive created by an advertiser through interion with CI manager and to prepare such commercial incent for distribution to consumer). Higgins failed to teach inviting a particular offer recipient of the plurality of offer recipients to generate new offer.
However, Allen teaches inviting a particular offer recipient of the plurality of offer recipients to generate new offer (Fig. 5, 94 discloses invite certain attendees, paragraph [0053], discloses user propose a dinner gathering for certain event attendees [generating new offer] and paragraph [0054], discloses invite particular event attendees or potential event attend to participate and paragraph [0060], discloses the invention permit the participant to interactively create event content [to generate a new offer] virtually and to pass the virtual event content into actual event content … ). Therefore, it would have been obvious to the one ordinary skill in the art at the time of the invention was made to modify the distribution and redemption of commercial incentive distribution to consumer device of a social networking of Higgins with inviting a certain attendee with a similar interest to join in their self-generated function of Allen in order to increase a user interaction (see, abstract).
With respect to claim 18, Higgins in view Allen teaches elements of claim 17, furthermore, Higgins teaches the non-transitory computer-readable medium comprising presenting a graphical user interface (GUI) that is configured to enable the particular offer recipient (paragraph [0135, discloses present a user interface (such as a graphical user interface) to a user of first consumer device, the user interface allows the user to manage received commercial incentive , ..wherein managing the received commercial incentives may include performing a variety of functions, such as viewing, organizing, locking-in, deleting, printing, redistributing or redeeming received commercial incentives. CI redistributor 1016 is configured to redistribute a commercial incentive stored). Higgins failed to teach particular recipients to develop the new offer
However, Allen teaches particular recipients to develop the new offer (paragraph [0060], discloses the invention permit the participants to interactively create event content virtually and to pass the virtual event content). Therefore, it would have been obvious to the one ordinary skill in the art at the time of the invention was made to modify the distribution and redemption of commercial incentive distribution to consumer device of a social networking of Higgins with inviting a certain attendee with a similar interest to join in their self-generated function of Allen in order to increase a user interaction (see, abstract).
With respect to claim 19, Higgins in view Allen teaches elements of claim 17, furthermore, Higgins teaches the non-transitory computer-readable medium wherein the new offer is generated according to a plurality of offer parameters (paragraph [0052], discloses creating commercial incentive for distribution to consumer [offer parameter]).
With respect to claim 20, Higgins in view Allen teaches elements of claim 17, furthermore, Higgins teaches the non-transitory computer-readable medium wherein the new offer is generated according to according to a personalized message(paragraph [0063], discloses interpersonal commination data may include data assocted with an incoming or outgoing SMS message, email message..).
With respect to claim 21, Higgins in view Allen teaches elements of claim 17, furthermore, Higgins teaches the non-transitory computer-readable medium comprising distributing the new offer (paragraph [0052], discloses creating commercial incentive for distribution to consumer [offer parameter]).
With respect to claim 22, Higgins in view Allen teaches elements of claim 17, furthermore, Higgins teaches the non-transitory computer-readable medium comprising tracking a social networking influence of the particular offer recipient according to an action with respect to the new offer(paragraph [0144], discloses distribution manager a track the newly-created ).
With respect to claim 23, Higgins in view Allen teaches elements of claim 17, furthermore, Higgins teaches the non-transitory computer-readable medium, wherein: the social networking influence is strong if a user redeems an offer, the social networking influence is moderate if the user accesses the offer, and the social networking influence is weak if the user has no interaction with the offer (paragraph [0191], discloses tracking information stored along with the redeemed copy of the commercial incentive may be used , such tracking information may identify each entity that has distributed or redistributed the commercial incentive).
With respect to claim 24, Higgins in view Allen teaches elements of claim 17, furthermore, Higgins teaches the non-transitory computer-readable medium comprising distributing an offer via a profile in a database (paragraph [0060], discloses user identify data such as gender, age, race name, etc.).
With respect to claim 25, Higgins in view Allen teaches elements of claim 17, furthermore, Higgins teaches the non-transitory computer-readable medium, comprising distributing an offer via a post on a social networking site (paragraph [0094], discloses publishing new commercial invent into active CI..).
With respect to claim 26, Higgins in view Allen teaches elements of claim 17, furthermore, Higgins teaches the non-transitory computer-readable medium comprising distributing an offer via a mobile device(paragraph [0054], discloses consumer system/device).
Prior arts:
Higgins et al (US Pub., No., 2009/0138384 A1) discloses systems and methods are described for permitting commercial incentives received by a consumer device to be distributed to other consumer devices, thereby facilitating the sharing and/or transport of commercial incentives between and among consumers
Allen et al (US Pub., No 2008/0300937 A1) discloses embodiments of the invention provide increased user-to-user interaction and increase the sphere of influence event attendees have on one another by sharing what event functions and other features are being attended by persons having similar interests
Conclusion
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/SABA DAGNEW/Primary Examiner, Art Unit 3621