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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “means for” in claim 17.
Claim 17 – “…means for receiving debtor data …; means for mapping the debtor to a first essentia …; means for determining first essentia specific dunning decisions …; means for dunning the debtor …: means for scheduling dunning messages to be transmitted to the debtor …; means for generating a dunning message …; means for transmitting the dunning message to the debtor; and means for causing the computer system to automatically repeat the steps of generating and transmitting …; means for generating a dunning history for the debtor …; means for modifying … one of (a) the first essentia data indicating the essentia specific dunning decisions, …, (b) the first essentia data indicating the essentia characteristic variables, …, and (c) the plurality of essentias based on the dunning history, ...” See MPEP 2181. Underlined is the generic placeholder used by the claim and bolded is the functional language. The generic placeholder is not modified by sufficient structure, material or acts for performing the claim. Therefore, 112(f) is invoked.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Whether a Claim is to a Statutory Category
In the instant case, claims 1-8 recite a method/ process, claims 9-16 recite a system/ machine and claim 17 recites a system/ machine that are performing a series of functions. Therefore, these claims fall within the four statutory categories of invention of a machine and a process. Step 1 is satisfied.
Step2A – Prong 1: Does the Claim Recite a Judicial Exception
Exemplary claim 1 (and similarly claims 9 and 17) recites the following abstract concepts that are found to include an enumerated “abstract idea”:
A computer-based method comprising:
receiving by a computer system debtor data of a debtor;
mapping by the computer system the debtor to a first essentia selected from a plurality of essentias to create a first essentia instance for the debtor based on debtor characteristic variables identified from the debtor data and essentia characteristic variables identified by first essentia data associated with the first essentia;
determining by the computer system first essentia specific dunning decisions corresponding to the first essentia to apply when dunning the debtor;
dunning the debtor by the computer system according to the first essentia specific dunning decisions, wherein dunning the debtor according to the first essentia specific dunning decisions further comprises:
scheduling by the computer system dunning messages to be transmitted to the debtor at a frequency according to the first essentia specific dunning decisions;
generating by the computer system a dunning message according to the first essentia specific dunning decisions;
transmitting by the computer system the dunning message to the debtor; and
causing the computer system to automatically repeat the steps of generating and transmitting to enable the computer system to transmit the dunning messages at the frequency;
generating by the computer system a dunning history for the debtor based on the dunning; and
modifying by the computer system based on the dunning history one of (a) the first essentia data indicating the essentia specific dunning decisions, such that dunning of a debtor is carried out according to modified essentia specific dunning decisions indicated by the modified first essentia data, (b) the first essentia data indicating the essentia characteristic variables, such that future mapping of the debtor is carried out according to modified essentia characteristic variables identified by the modified first essentia data, and (c) the plurality of essentias based on the dunning history, such that a future mapping of the debtor may cause the debtor to be mapped to a different essentia selected from the plurality of essentias, such that dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia.
[Emphasis added to show the bolded abstract idea being executed by unbolded additional elements that do not meaningfully limit the abstract idea]
This method claim is grouped within the "certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test because the claims involve a series of steps for following rules or instructions such that dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia which is a process that is encompassed by the abstract idea of managing personal behavior. See e.g., MPEP 2106.04(a)(2)(II)(C); 2106.05(h). Accordingly, claim 1 (and similarly claims 9 and 17) recite an abstract idea.
Step2A – Prong 2: Does the Claim Recite Additional Elements that Integrate the Judicial Exception into a Practical Application
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional elements of the claims such as computer system merely use a computer as a tool to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, the computer system perform the steps or functions of following rules or instructions such that dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer (or technical elements disclosed at a high level of generality such as computer system) performing functions of receiving, mapping, determining, dunning, scheduling, generating, transmitting, repeating and modifying that correspond to acts required to carry out the abstract idea (MPEP 2106.05(f) and (h)). Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Step2B: Does the Claim Amount to Significantly More
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional element analysis of Step 2A Prong 2 is equally applied to Step 2B. “Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis.” MPEP 2106.05(d). The courts have recognized the following computer functions as well‐understood, routine, and conventional (“WURC”) functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. Exemplary claim 1 recites the following limitations that the courts have found to be WURC:
Claim 1 includes limitations relating to receiving or transmitting data over a network (receiving by a computer system debtor data of a debtor; transmitting by the computer system the dunning message to the debtor; causing the computer system to automatically repeat the steps of … and transmitting as claimed) data. See MPEP 2106.05(d)(II) where courts found to be WURC - i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
Claim 1 includes several limitations relating to performing repetitive calculations (mapping by the computer system the debtor to a first essentia selected from a plurality of essentias to create a first essentia instance …; determining by the computer system first essentia specific dunning decisions …; dunning the debtor by the computer system according to the first essentia specific dunning decisions…; scheduling by the computer system dunning messages to be transmitted to the debtor at a frequency…; generating by the computer system a dunning message…; generating by the computer system a dunning history for the debtor based on the dunning…; modifying by the computer system based on the dunning history…; as claimed). See MPEP 2106.05(d)(II) where courts found to be WURC - ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.’);
Accordingly, when viewed alone and in ordered combination, these additional elements are not found to recite significantly more than the underlying abstract idea.
Independent claim 9 describes a method performing the functions of receiving, mapping, determining, dunning, scheduling, generating, transmitting, repeating and modifying also relating to following rules or instructions without additional elements beyond technical elements disclosed at a high level of generality such as a computer system, creditor interface, debtor essentia mapping engine, dunning engine, dunning history management engine and essentia adaption engine that provide significantly more than the abstract idea of following rules or instructions such that dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia as noted above regarding claim 1. Therefore, this independent claim is also not patent eligible.
Independent claim 17 describes a method performing the functions of receiving, mapping, determining, dunning, scheduling, generating, transmitting, repeating and modifying also relating to following rules or instructions without additional elements beyond technical elements disclosed at a high level of generality such as a computer system that provide significantly more than the abstract idea of following rules or instructions such that dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia as noted above regarding claim 1. Therefore, this independent claim is also not patent eligible.
Dependent claims 2-8 and 10-16 further describe the abstract idea of following rules or instructions such that dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia. These claims do not include additional elements to perform their respective functions of determining, modifying, collecting, associating, establishing, dunning, mapping, receiving, matching and relating beyond the technical elements disclosed at a high level of generality such as dunning history management engine, essentia adaption engine, creditor interface, essentia specific dunning decisions improvement engine, debtor essentia mapping engine and as disclosed in independent claims 1 and 9 that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, these dependent claims are also not patent eligible. Further, the dependency of these claims on ineligible independent claims 1 and 9 also renders dependent claims 2-8 and 10-16 as not patent eligible.
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.
Claims 1-2, 4-10 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Imrey et al. (US 8,321,339 B2) in view of Kennedy et al. (US 2014/0172659 A1).
Regarding claim 1, modified Imrey teaches:
A computer-based method comprising (See Imrey Col. 5 lines 40-43 - The offers and information are typically provided via a computer network, Such as over the Internet, typically via an encrypted connection):
receiving by a computer system debtor data of a debtor (See Imrey Col. 7 lines 5-9 - Debtors may log into or connect to the system and settle accounts from the privacy of their home or office without the inconvenience of calling the collections department or a collection agency and talking to a collector);
mapping by the computer system the debtor to a first essentia selected from a plurality of essentias to create a first essentia instance for the debtor based on debtor characteristic variables identified from the debtor data and essentia characteristic variables identified by first essentia data associated with the first essentia (See Imrey Col. 9 lines 1-7 - …credit score is computed and provided. Typically the report includes the person or entity's name [first essentia by example], and other identifying characteristics, such as an address, telephone number, birth date, birth place, social security number, or other personal information. For persons or entities having significant activity, such a credit report can include hundreds or even thousands of individual pieces of information [debtor data and essentia characteristic variables identified by first essentia data associated with the first essentia by example]);
determining by the computer system first essentia specific dunning decisions corresponding to the first essentia to apply when dunning the debtor (See Imrey Col. 10 lines 54-63 - …parser module may extract and calculate user or creditor/credit agency defined credit report items and current account data, and then submit both the calculated bureau and account data to decision engine for decision making processing. Decision engine may compute, calculate and generate multiple settlement offers for the debtor based on information received [first essentia to apply] from the individual’s credit report, including, for example, the debtor's ability to pay and the debtor's bank and credit card account history);
dunning the debtor by the computer system according to the first essentia specific dunning decisions (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute a set of offers to present to the user/debtor [dunning the debtor by example], such as by presenting a set of options on screen to the debtor), wherein dunning the debtor according to the first essentia specific dunning decisions further comprises:
… dunning messages to be transmitted to the debtor … according to the first essentia specific dunning decisions (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute a set of offers to present to the user/debtor [dunning the debtor by example], such as by presenting [transmitting] a set of options on screen to the debtor);
generating by the computer system a dunning message according to the first essentia specific dunning decisions (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute a set of offers to present to the user/debtor [dunning message by example], such as by presenting a set of options on screen to the debtor and Col. 12 lines 28-34 - “If the debtor/user has a credit score over 650 [dunning decision], the debtor/ user will be offered three options initially, including (1) an offer to settle immediately for 100% of the outstanding debt, (2) an offer to finance 100% of the debt over 12 monthly installments at 8% interest per annum, and (3) an offer to finance 100% of the debt over 24 monthly installments at 10% interest per annum [dunning message by several examples]);
transmitting by the computer system the dunning message to the debtor (See Imrey Col. 12 lines 1-3 - a message may be transmitted to the debtor/user that at least one settlement offer is being prepared and the debtor/user should log back on after 4:00 p.m. EST); and
… the steps of generating and transmitting to enable the computer system to transmit the dunning messages (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute [generating] a set of offers to present to the user/debtor [dunning messages by example], such as by presenting [transmitting] a set of options on screen to the debtor) …;
generating by the computer system a dunning history for the debtor based on the dunning (See Imrey Col. 11 lines 8-16 - In the event certain information is unavailable at a later date, any information about debtor stored on the account database may be used where appropriate. Further, if a debtor logs onto the system and selects or refuses to select certain options presented, that information can be maintained for, at the very least, access times and accessing URLs by the debtor where appropriate. Debtor interface may also assist in providing this history data [dunning history by example] to decision engine by accessing account/transaction database); and
modifying by the computer system based on the dunning history one of (a) the first essentia data indicating the essentia specific dunning decisions, such that dunning of a debtor is carried out according to modified essentia specific dunning decisions indicated by the modified first essentia data (See Imrey Col. 19 lines 26-37 - If rules are established to operate on the negotiation offer presented by the user/debtor, then the decision engine may evaluate the negotiation offer with the assistance of the modules of FIG. 2 to determine a response. For example, if 20% now, 80% over 3 years at 8% is received, the decision engine may obtain rules and/or schemas that indicate the creditor has specified on a “first round” of negotiation, no offer of under 50% immediate payment is acceptable, but if an offer of less than 50% immediate payment is received, the decision engine and other modules are to offer 50% immediate payment and 50% financed at either a 12 or 24 month term at 10%. These counteroffers may be made to the user [modified essentia specific dunning decisions indicated by the modified first essentia data by example]), (b) the first essentia data indicating the essentia characteristic variables, such that future mapping of the debtor is carried out according to modified essentia characteristic variables identified by the modified first essentia data (See Imrey Col. 25 lines 55-66 - a user/debtor interacting with server may improve his credit score substantially in real-time while online with server. For example, the user/debtor may make a payment on a debt using the system. The payment is received and acted upon as shown in FIG. 7, and thus server has approval of the funds being available and transferred. From FIG. 1, server may report the satisfaction of payment to creditor server and/or credit bureau server. Upon receiving a report that a debt has been satisfied, the credit bureau server may take payment of that debt into account and may recalculate the credit score based on the user/debtor's current score [future mapping of the debtor is carried out according to modified essentia characteristic variables identified by the modified first essentia data by example]), and (c) the plurality of essentias based on the dunning history, such that a future mapping of the debtor may cause the debtor to be mapped to a different essentia selected from the plurality of essentias, such that dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia (See Imrey Col. 12 lines 28-57 - “If the debtor/user has a credit score [essentia] over 650, the debtor/ user will be offered three options initially, including (1) an offer to settle immediately for 100% of the outstanding debt, (2) an offer to finance 100% of the debt over 12 monthly installments at 8% interest per annum, and (3) an offer to finance 100% of the debt over 24 monthly installments at 10% interest per annum… “If the debtor/user has a credit score over 675 [essentia], and has a ratio of this debt to money available in all accounts of less than 5 percent, and the ratio of all other outstanding debt to money available in all accounts is less than 25 percent, then make four offers to the debtor user: (1) an offer to settle for 90 percent of the outstanding debt, with no report made to credit bureaus; (2) an offer to settle for 85 percent of the debt for 12 payments at 10 percent annually, with a delinquency report to credit bureaus; (3) an offer to settle for 80 percent of the debt for 24 payments at 12.5 percent annually, with a delinquency report to credit bureaus; and (4) an offer to settle for 50 percent of the debt paid immediately, and the remaining 50 percent financed over 12 months at 5 percent per annum, with no report made to credit bureaus.” [dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia by example]).
While Imrey teaches a system for generating and transmitting dunning messages to a debtor user based on debtor specific dunning decisions (Imrey Col. 11 lines 58-63, Col. 12 lines 1-3 and Col. 12 lines 28-34), Imrey does not explicitly teach that said messages are transmitted by scheduling by the computer system or through causing the computer system to automatically repeat the message transmission at a frequency. This is taught by Kennedy (See Kennedy ¶ [0049] - analyzing the history and effectiveness of collection strategies. Such analysis can include allowing the debt collector to run reports on a near-real time basis to demonstrate the effectiveness of the strategies being employed for a group of accounts and [0051] – A time-based cycle may be, for example, sending letters to the debtor's home twice a month for six months. Each action may be executed conditionally. For example, an action may be repeated because a precondition has not been satisfied, such as there being no response from the debtor in view of phone calls to debtor's phone. The actions may also be grouped together into programs to effortlessly utilize the same pattern of actions in multiple phases in the strategy. For example, the programs may include repeated calling or multiple letters or emails). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the dunning message generation and transmission system of Imrey the use of repeated message transmissions at a frequency as taught by Kennedy to improve collection strategies and collection efforts of collection managers may benefit by knowing which strategies are effective for particular accounts (Kennedy ¶ [0049]), thereby increasing the accuracy and efficiency of Imrey’s dunning message generation and transmission system.
Regarding claim 2 and 10, modified Imrey teaches:
The method/ system of claim 1 and 9, further comprising/ wherein the dunning history management engine is further configured to:
determining occurrences of events during the dunning;
modifying the dunning history for the debtor based on the occurrences of events (See Imrey Col. 25 lines 55-66 - a user/debtor interacting with server may improve his credit score substantially in real-time while online with server. For example, the user/debtor may make a payment on a debt using the system [occurrences of events during the dunning]. The payment is received and acted upon as shown in FIG. 7, and thus server has approval of the funds being available and transferred. From FIG. 1, server may report the satisfaction of payment to creditor server and/or credit bureau server. Upon receiving a report that a debt has been satisfied, the credit bureau server may take payment of that debt into account and may recalculate the credit score based on the user/debtor's current score [modifying the dunning history for the debtor based on the occurrences of events]).
Regarding claim 4 and 12, modified Imrey teaches:
The method/ system of claim 1 and 9, wherein modifying/ an essentia adaption engine configured to modify the plurality of essentias [characteristic variable of individuals that define and segment individuals into categories] to which debtors can be mapped includes modifying characteristic variables that define at least one essentia of the plurality of essentias (See Imrey Col. 8 lines 12-35 - Information regarding debtors, for example associated with debts held by the creditor operating creditor server, may be stored in account/transaction database accessible by server. Other information may be obtained by the server either from internal or external sources to facilitate the transaction and to enable application of the rules described below with respect to software to the data received in order to present the user with an offer set … For example, if a creditor in a debt transaction wishes to extend a time period for settling a debt when a user/debtor lives in a geographic area suffering from a natural disaster, the system may obtain the conditions of the area where the debtor lives).
Regarding claim 5 and 13, modified Imrey teaches:
The method/ system of claim 1 and 9, further comprising:
receiving input from the creditor;
modifying the first essentia specific dunning decisions according to the input from the creditor (See Imrey Col. 20 lines 23-64 - Once the data has been parsed and the user/ debtor is available, point causes the decision engine to obtain the appropriate rules for the debt selected, optionally based on the parsed information, and may also obtain schemas and dictionary terms as well as creditor decision criteria [input from the creditor] if any exists separate from the foregoing. Based on the schemas, rules, parsed credit information, and other appropriate information available from parts of the system, the decision engine prepares a set of offers including at least one offer [modifying the first essentia specific dunning decisions according to the input from the creditor by example]).
Regarding claim 6 and 14, modified Imrey teaches:
The method/ system of claim 1 and 9, wherein the debtor is mapped to the first essentia based on whether a threshold number of the debtor characteristic variables match the essentia characteristic variables (See Imrey Col. 9 lines 52-64 - the parser module takes the information received in the form of a credit report and parses the information into useful information to the system, and discards any unnecessary information. The information extracted depends on the situation, but may be appreciated and understood beforehand, such as retaining the individual’s first and last names but discarding current street address [threshold number of the debtor characteristic variables match the essentia characteristic variables by example]. The result of information parsing may be a set of information in a desired format that can be operated upon by other modules in the system).
Regarding claim 7 and 15, modified Imrey teaches:
The method/ system of claim 1 and 9, wherein the debtor is mapped to the first essentia based on whether a threshold number of the debtor characteristic variables are related to the essentia characteristic variables. (See Imrey Col. 9 lines 52-64 - the parser module takes the information received in the form of a credit report and parses the information into useful information to the system, and discards any unnecessary information. The information extracted depends on the situation, but may be appreciated and understood beforehand, such as retaining the individual’s first and last names but discarding current street address [threshold number of the debtor characteristic variables are related to the essentia characteristic variables by example]. The result of information parsing may be a set of information in a desired format that can be operated upon by other modules in the system).
Regarding claim 8 and 16, modified Imrey teaches:
The method/ system of claim 1 and 9, wherein modifying the plurality of essentias comprises:
determining whether the generated dunning history includes a favorable dunning history or an unfavorable dunning history;
upon determining that the generated dunning history includes a favorable dunning history, modifying the plurality of essentias so as to motivate generation and sending of a dunning message that led to the favorable dunning history;
upon determining that the generated dunning history includes an unfavorable dunning history, modifying the plurality of essentias so as to restrict generation and sending of a dunning message that led to the unfavorable dunning history. Imrey does not specifically disclose “whether dunning history is favorable or unfavorable” per se however; Imrey in at least Column 19 discloses "saving data which may be used for further negotiations or to determine the likelihood that the transaction can be resolved successfully.” Therefore, Imrey can determine if the dunning history is favorable or unfavorable.
Regarding claim 9, modified Imrey teaches:
A computer system comprising (See Imrey Col. 5 lines 40-43 - The offers and information are typically provided via a computer network, Such as over the Internet, typically via an encrypted connection):
a creditor interface configured to receive debtor data of a debtor (See Imrey Col. 7 lines 5-9 - Debtors may log into or connect to the system and settle accounts from the privacy of their home or office without the inconvenience of calling the collections department or a collection agency and talking to a collector);
a debtor essentia mapping engine configured to map the debtor to a first essentia selected from a plurality of essentias to create a first essentia instance for the debtor based on debtor characteristic variables identified from the debtor data and essentia characteristic variables identified by first essentia data associated with the first essentia (See Imrey Col. 9 lines 1-7 - …credit score is computed and provided. Typically the report includes the person or entity's name [first essentia by example], and other identifying characteristics, such as an address, telephone number, birth date, birth place, social security number, or other personal information. For persons or entities having significant activity, such a credit report can include hundreds or even thousands of individual pieces of information [debtor data and essentia characteristic variables identified by first essentia data associated with the first essentia by example]);
a dunning engine configured to determine first essentia specific dunning decisions corresponding to the first essentia to apply when dunning the debtor (See Imrey Col. 10 lines 54-63 - …parser module may extract and calculate user or creditor/credit agency defined credit report items and current account data, and then submit both the calculated bureau and account data to decision engine for decision making processing. Decision engine may compute, calculate and generate multiple settlement offers for the debtor based on information received [first essentia to apply] from the individual’s credit report, including, for example, the debtor's ability to pay and the debtor's bank and credit card account history);
dun the debtor according to the first essentia specific dunning decisions (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute a set of offers to present to the user/debtor [dunning the debtor by example], such as by presenting a set of options on screen to the debtor), wherein to dun the debtor according to the first essentia specific dunning decisions further comprises:
… dunning messages to be transmitted to the debtor … according to the first essential specific dunning decisions (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute a set of offers to present to the user/debtor [dunning the debtor by example], such as by presenting [transmitting] a set of options on screen to the debtor);
generate a dunning message according to the first essentia specific dunning decisions (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute a set of offers to present to the user/debtor [dunning message by example], such as by presenting a set of options on screen to the debtor and Col. 12 lines 28-34 - “If the debtor/user has a credit score over 650 [dunning decision], the debtor/ user will be offered three options initially, including (1) an offer to settle immediately for 100% of the outstanding debt, (2) an offer to finance 100% of the debt over 12 monthly installments at 8% interest per annum, and (3) an offer to finance 100% of the debt over 24 monthly installments at 10% interest per annum [dunning message by several examples]);
transmit the dunning message to the debtor (See Imrey Col. 12 lines 1-3 - a message may be transmitted to the debtor/user that at least one settlement offer is being prepared and the debtor/user should log back on after 4:00 p.m. EST); and
… the steps of generate and transmit to cause the computer system to transmit the dunning messages (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute [generating] a set of offers to present to the user/debtor [dunning messages by example], such as by presenting [transmitting] a set of options on screen to the debtor)…;
a dunning history management engine configured to generate a dunning history for the debtor based on the dunning (See Imrey Col. 11 lines 8-16 - In the event certain information is unavailable at a later date, any information about debtor stored on the account database may be used where appropriate. Further, if a debtor logs onto the system and selects or refuses to select certain options presented, that information can be maintained for, at the very least, access times and accessing URLs by the debtor where appropriate. Debtor interface may also assist in providing this history data [dunning history by example] to decision engine by accessing account/transaction database);
an essentia adaption engine configured to modify based on the dunning history one of (a) the first essentia data indicating the essentia specific dunning decisions, such that dunning of a debtor is carried out according to modified essentia specific dunning decisions indicated by the modified first essentia data (See Imrey Col. 19 lines 26-37 - If rules are established to operate on the negotiation offer presented by the user/debtor, then the decision engine may evaluate the negotiation offer with the assistance of the modules of FIG. 2 to determine a response. For example, if 20% now, 80% over 3 years at 8% is received, the decision engine may obtain rules and/or schemas that indicate the creditor has specified on a “first round” of negotiation, no offer of under 50% immediate payment is acceptable, but if an offer of less than 50% immediate payment is received, the decision engine and other modules are to offer 50% immediate payment and 50% financed at either a 12 or 24 month term at 10%. These counteroffers may be made to the user [modified essentia specific dunning decisions indicated by the modified first essentia data by example]), (b) the first essentia data indicating the essentia characteristic variables, such that future mapping of the debtor is carried out according to modified essentia characteristic variables identified by the modified first essentia data (See Imrey Col. 25 lines 55-66 - a user/debtor interacting with server may improve his credit score substantially in real-time while online with server. For example, the user/debtor may make a payment on a debt using the system. The payment is received and acted upon as shown in FIG. 7, and thus server has approval of the funds being available and transferred. From FIG. 1, server may report the satisfaction of payment to creditor server and/or credit bureau server. Upon receiving a report that a debt has been satisfied, the credit bureau server may take payment of that debt into account and may recalculate the credit score based on the user/debtor's current score [future mapping of the debtor is carried out according to modified essentia characteristic variables identified by the modified first essentia data by example]), and (c) the plurality of essentias based on the dunning history, such that a future mapping of the debtor may cause the debtor to be mapped to a different essentia selected from the plurality of essentias, such that dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia (See Imrey Col. 12 lines 28-57 - “If the debtor/user has a credit score [essentia] over 650, the debtor/ user will be offered three options initially, including (1) an offer to settle immediately for 100% of the outstanding debt, (2) an offer to finance 100% of the debt over 12 monthly installments at 8% interest per annum, and (3) an offer to finance 100% of the debt over 24 monthly installments at 10% interest per annum… “If the debtor/user has a credit score over 675 [essentia], and has a ratio of this debt to money available in all accounts of less than 5 percent, and the ratio of all other outstanding debt to money available in all accounts is less than 25 percent, then make four offers to the debtor user: (1) an offer to settle for 90 percent of the outstanding debt, with no report made to credit bureaus; (2) an offer to settle for 85 percent of the debt for 12 payments at 10 percent annually, with a delinquency report to credit bureaus; (3) an offer to settle for 80 percent of the debt for 24 payments at 12.5 percent annually, with a delinquency report to credit bureaus; and (4) an offer to settle for 50 percent of the debt paid immediately, and the remaining 50 percent financed over 12 months at 5 percent per annum, with no report made to credit bureaus.” [dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia by example]).
While Imrey teaches a system for generating and transmitting dunning messages to a debtor user based on debtor specific dunning decisions (Imrey Col. 11 lines 58-63, Col. 12 lines 1-3 and Col. 12 lines 28-34), Imrey does not explicitly teach that said messages are transmitted by scheduling by the computer system or through causing the computer system to automatically repeat the message transmission at a frequency. This is taught by Kennedy (See Kennedy ¶ [0049] - analyzing the history and effectiveness of collection strategies. Such analysis can include allowing the debt collector to run reports on a near-real time basis to demonstrate the effectiveness of the strategies being employed for a group of accounts and [0051] – A time-based cycle may be, for example, sending letters to the debtor's home twice a month for six months. Each action may be executed conditionally. For example, an action may be repeated because a precondition has not been satisfied, such as there being no response from the debtor in view of phone calls to debtor's phone. The actions may also be grouped together into programs to effortlessly utilize the same pattern of actions in multiple phases in the strategy. For example, the programs may include repeated calling or multiple letters or emails). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the dunning message generation and transmission system of Imrey the use of repeated message transmissions at a frequency as taught by Kennedy to improve collection strategies and collection efforts of collection managers may benefit by knowing which strategies are effective for particular accounts (Kennedy ¶ [0049]), thereby increasing the accuracy and efficiency of Imrey’s dunning message generation and transmission system.
Regarding claim 17, modified Imrey teaches:
A computer system comprising (See Imrey Col. 5 lines 40-43 - The offers and information are typically provided via a computer network, Such as over the Internet, typically via an encrypted connection):
means for receiving debtor data of a debtor (See Imrey Col. 7 lines 5-9 - Debtors may log into or connect to the system and settle accounts from the privacy of their home or office without the inconvenience of calling the collections department or a collection agency and talking to a collector);
means for mapping the debtor to a first essentia selected from a plurality of essentias to create a first essentia instance for the debtor based on debtor characteristic variables identified from the debtor data and essentia characteristic variables identified by first essentia data associated with the first essentia (See Imrey Col. 9 lines 1-7 - …credit score is computed and provided. Typically the report includes the person or entity's name [first essentia by example], and other identifying characteristics, such as an address, telephone number, birth date, birth place, social security number, or other personal information. For persons or entities having significant activity, such a credit report can include hundreds or even thousands of individual pieces of information [debtor data and essentia characteristic variables identified by first essentia data associated with the first essentia by example]) ;
means for determining first essentia specific dunning decisions corresponding to the first essentia to apply when dunning the debtor (See Imrey Col. 10 lines 54-63 - …parser module may extract and calculate user or creditor/credit agency defined credit report items and current account data, and then submit both the calculated bureau and account data to decision engine for decision making processing. Decision engine may compute, calculate and generate multiple settlement offers for the debtor based on information received [first essentia to apply] from the individual’s credit report, including, for example, the debtor's ability to pay and the debtor's bank and credit card account history);
means for dunning the debtor according to the first essentia specific dunning decisions (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute a set of offers to present to the user/debtor [dunning the debtor by example], such as by presenting a set of options on screen to the debtor), wherein the means for dunning comprises:
means for … dunning messages to be transmitted to the debtor … according to the first essentia specific dunning decisions (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute a set of offers to present to the user/debtor [dunning the debtor by example], such as by presenting [transmitting] a set of options on screen to the debtor);
means for generating a dunning message according to the first essentia specific dunning decisions (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute a set of offers to present to the user/debtor [dunning message by example], such as by presenting a set of options on screen to the debtor and Col. 12 lines 28-34 - “If the debtor/user has a credit score over 650 [dunning decision], the debtor/ user will be offered three options initially, including (1) an offer to settle immediately for 100% of the outstanding debt, (2) an offer to finance 100% of the debt over 12 monthly installments at 8% interest per annum, and (3) an offer to finance 100% of the debt over 24 monthly installments at 10% interest per annum [dunning message by several examples]);
means for transmitting the dunning message to the debtor (See Imrey Col. 12 lines 1-3 - a message may be transmitted to the debtor/user that at least one settlement offer is being prepared and the debtor/user should log back on after 4:00 p.m. EST); and
… the steps of generating and transmitting to enable the computer system to transmit the dunning messages … according to the first essential specific dunning decisions (See Imrey Col. 11 lines 58-63 - the decision engine may recognize the debt as being associated with a creditor and may obtain the applicable creditor rules and decision criteria and compute [generating] a set of offers to present to the user/debtor [dunning messages by example], such as by presenting [transmitting] a set of options on screen to the debtor);
means for generating a dunning history for the debtor based on the dunning (See Imrey Col. 11 lines 8-16 - In the event certain information is unavailable at a later date, any information about debtor stored on the account database may be used where appropriate. Further, if a debtor logs onto the system and selects or refuses to select certain options presented, that information can be maintained for, at the very least, access times and accessing URLs by the debtor where appropriate. Debtor interface may also assist in providing this history data [dunning history by example] to decision engine by accessing account/transaction database);
means for modifying based on the dunning history one of (a) the first essentia data indicating the essentia specific dunning decisions, such that dunning of a debtor is carried out according to modified essentia specific dunning decisions indicated by the modified first essentia data (See Imrey Col. 19 lines 26-37 - If rules are established to operate on the negotiation offer presented by the user/debtor, then the decision engine may evaluate the negotiation offer with the assistance of the modules of FIG. 2 to determine a response. For example, if 20% now, 80% over 3 years at 8% is received, the decision engine may obtain rules and/or schemas that indicate the creditor has specified on a “first round” of negotiation, no offer of under 50% immediate payment is acceptable, but if an offer of less than 50% immediate payment is received, the decision engine and other modules are to offer 50% immediate payment and 50% financed at either a 12 or 24 month term at 10%. These counteroffers may be made to the user [modified essentia specific dunning decisions indicated by the modified first essentia data by example]), (b) the first essentia data indicating the essentia characteristic variables, such that future mapping of the debtor is carried out according to modified essentia characteristic variables identified by the modified first essentia data (See Imrey Col. 25 lines 55-66 - a user/debtor interacting with server may improve his credit score substantially in real-time while online with server. For example, the user/debtor may make a payment on a debt using the system. The payment is received and acted upon as shown in FIG. 7, and thus server has approval of the funds being available and transferred. From FIG. 1, server may report the satisfaction of payment to creditor server and/or credit bureau server. Upon receiving a report that a debt has been satisfied, the credit bureau server may take payment of that debt into account and may recalculate the credit score based on the user/debtor's current score [future mapping of the debtor is carried out according to modified essentia characteristic variables identified by the modified first essentia data by example]), and (c) the plurality of essentias based on the dunning history, such that a future mapping of the debtor may cause the debtor to be mapped to a different essentia selected from the plurality of essentias, such that dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia (See Imrey Col. 12 lines 28-57 - “If the debtor/user has a credit score [essentia] over 650, the debtor/ user will be offered three options initially, including (1) an offer to settle immediately for 100% of the outstanding debt, (2) an offer to finance 100% of the debt over 12 monthly installments at 8% interest per annum, and (3) an offer to finance 100% of the debt over 24 monthly installments at 10% interest per annum… “If the debtor/user has a credit score over 675 [essentia], and has a ratio of this debt to money available in all accounts of less than 5 percent, and the ratio of all other outstanding debt to money available in all accounts is less than 25 percent, then make four offers to the debtor user: (1) an offer to settle for 90 percent of the outstanding debt, with no report made to credit bureaus; (2) an offer to settle for 85 percent of the debt for 12 payments at 10 percent annually, with a delinquency report to credit bureaus; (3) an offer to settle for 80 percent of the debt for 24 payments at 12.5 percent annually, with a delinquency report to credit bureaus; and (4) an offer to settle for 50 percent of the debt paid immediately, and the remaining 50 percent financed over 12 months at 5 percent per annum, with no report made to credit bureaus.” [dunning of the debtor is carried out according to different essentia specific dunning decisions indicated by the different essentia by example]).
While Imrey teaches a system for generating and transmitting dunning messages to a debtor user based on debtor specific dunning decisions (Imrey Col. 11 lines 58-63, Col. 12 lines 1-3 and Col. 12 lines 28-34), Imrey does not explicitly teach that said messages are transmitted by scheduling by the computer system or through causing the computer system to automatically repeat the message transmission at a frequency. This is taught by Kennedy (See Kennedy ¶ [0049] - analyzing the history and effectiveness of collection strategies. Such analysis can include allowing the debt collector to run reports on a near-real time basis to demonstrate the effectiveness of the strategies being employed for a group of accounts and [0051] – A time-based cycle may be, for example, sending letters to the debtor's home twice a month for six months. Each action may be executed conditionally. For example, an action may be repeated because a precondition has not been satisfied, such as there being no response from the debtor in view of phone calls to debtor's phone. The actions may also be grouped together into programs to effortlessly utilize the same pattern of actions in multiple phases in the strategy. For example, the programs may include repeated calling or multiple letters or emails). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the dunning message generation and transmission system of Imrey the use of repeated message transmissions at a frequency as taught by Kennedy to improve collection strategies and collection efforts of collection managers may benefit by knowing which strategies are effective for particular accounts (Kennedy ¶ [0049]), thereby increasing the accuracy and efficiency of Imrey’s dunning message generation and transmission system.
Claims 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Imrey et al. (US 8,321,339 B2) in view of Kennedy et al. (US 2014/0172659 A1) and further in view of Evans (US 2012/0191595 A1).
Regarding claim 3 and 11, modified Imrey teaches:
The method/ system of claim 1 and 9, further comprising:
collecting … regulations data indicating … regulations (See Imrey Col. 12 line 58- Col. 13 line 10 - the entity maintaining the server may dictate that due to certain regulations in specific jurisdictions, under no circumstances may a debtor in a particular jurisdiction be offered a settlement that includes a financing percentage rate of over 25 percent);
associating at least portions of the … regulations data with specific geographical regions to create geographic … regulations data (See Imrey Col. 12 line 58- Col. 13 line 10 - the entity maintaining the server may dictate that due to certain regulations in specific jurisdictions [regulations data with specific geographical regions], under no circumstances may a debtor in a particular jurisdiction be offered a settlement that includes a financing percentage rate of over 25 percent);
determining a geographical region associated with the debtor from the debtor data (See Imrey Col. 12 line 58- Col. 13 line 10 - the entity maintaining the server may dictate that due to certain regulations in specific jurisdictions, under no circumstances may a debtor in a particular jurisdiction [geographical region associated with the debtor] be offered a settlement that includes a financing percentage rate of over 25 percent);
establishing applicable … regulations for the debtor based on the geographical region associated with the debtor from the geographic … regulations data (See Imrey Col. 12 line 58- Col. 13 line 10 - the entity maintaining the server may dictate that due to certain regulations in specific jurisdictions, under no circumstances may a debtor in a particular jurisdiction [geographical region associated with the debtor] be offered a settlement that includes a financing percentage rate of over 25 percent. Certain creditors may only offer general guidelines for settlement offers, and the entity maintaining the server may implement the guidelines and establish the rules and schemas);
dunning the debtor according to, at least in part, the applicable … regulations for the debtor (See Imrey Col. 12 line 58- Col. 13 line 10 - the entity maintaining the server may dictate that due to certain regulations in specific jurisdictions, under no circumstances may a debtor in a particular jurisdiction [geographical region associated with the debtor] be offered a settlement that includes a financing percentage rate of over 25 percent. Certain creditors may only offer general guidelines for settlement offers, and the entity maintaining the server may implement the guidelines and establish the rules and schemas. For example, a creditor may simply indicate a desire to make exactly three offers to every debtor/user [dunning the debtor by example] and Col. 24 line 48 – Col. 25 line 2 - rules may be implemented by the entity maintaining the server separate from the creditor, credit agency, or payment partner, such as governmental regulations, usury requirements, and other appropriate data).
While Imrey teaches a system for generating and transmitting dunning messages to a debtor user based on debtor specific dunning decisions and compliance with applicable regulations (Imrey Col. 11 lines 58-63, Col. 12 lines 1-3, Col. 12 lines 28-34 and Col. 12 line 58- Col. 13 line 10), Imrey does not explicitly teach that said regulations are dunning regulations. This is taught by Evans (See Evans ¶ [0101], [0118], [0143-0144] and [0145] – disclosing the Fair Debt Collection Practices Act that debt collectors must comply with). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the dunning message generation and transmission system of Imrey that complies with applicable regulations, the use of compliance with debt collection regulations for dunning a debtor as taught by Evans to allow credit or collection organizations to offer competitive customer service while also increasing yield and decreasing expenses by providing a method that gives customers the ability to resolve debt through a web-based “transaction community” (Evans ¶ [0012]), thereby increasing the efficiency of Imrey’s dunning message generation and transmission system.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,266,012 B2 in view of U.S. Patent No. 11,738,413 B2, U.S. Patent No. 11,257,150 B2 and U.S. Patent No. 10,453,127. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim is directed to a method of “receiving debtor data”, “mapping the debtor to a first essentia”, “determining first essentia specific dunning decisions”, “dunning the debtor”, “generating and transmitting/ sending the dunning message”, “generating a dunning history”, “modifying the first essentia data based on the dunning history” and etc.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,266,012 B2 in view of U.S. Patent No. 11,738,413 B2, U.S. Patent No. 11,257,150 B2 and U.S. Patent No. 10,453,127. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim is directed to a method of “determining occurrences of events during the dunning”, “modifying the dunning history for the debtor based on the occurrences of events”.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,266,012 B2 in view of U.S. Patent No. 11,738,413 B2, U.S. Patent No. 11,257,150 B2 and U.S. Patent No. 10,453,127. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim is directed to a method of “collecting dunning regulations”, “associating at least portions of the dunning regulations data with specific geographical regions”, “determining a geographical region associated with the debtor from the debtor data”, “establishing applicable dunning regulations for the debtor”, “dunning the debtor according to, at least in part, the applicable dunning regulations for the debtor”.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,266,012 B2 in view of U.S. Patent No. 11,738,413 B2, U.S. Patent No. 11,257,150 B2 and U.S. Patent No. 10,453,127. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim is directed to a method of “modifying the plurality of essentias to which debtors can be mapped includes modifying characteristic variables that define at least one essentia of the plurality of essentias”.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,266,012 B2 in view of U.S. Patent No. 11,738,413 B2, U.S. Patent No. 11,257,150 B2 and U.S. Patent No. 10,453,127. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim is directed to a method of “receiving input from the creditor”, “modifying the first essentia specific dunning decisions according to the input from the creditor”.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,266,012 B2 in view of U.S. Patent No. 11,738,413 B2, U.S. Patent No. 11,257,150 B2 and U.S. Patent No. 10,453,127. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim is directed to a method of “wherein the debtor is mapped to the first essentia based on whether a threshold number of the debtor characteristic variables match the essentia characteristic variables”.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,266,012 B2 in view of U.S. Patent No. 11,738,413 B2, U.S. Patent No. 11,257,150 B2 and U.S. Patent No. 10,453,127. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim is directed to a method of “wherein the debtor is mapped to the first essentia based on whether a threshold number of the debtor characteristic variables are related to the essentia characteristic variables”.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,266,012 B2 in view of U.S. Patent No. 11,738,413 B2, U.S. Patent No. 11,257,150 B2 and U.S. Patent No. 10,453,127. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim is directed to a method of “determining whether the generated dunning history includes a favorable dunning history or an unfavorable dunning history”, and based on the determining, either sending or not sending a dunning message.
Claims 9-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10-18 of U.S. Patent No. 12,266,012 B2 in view of U.S. Patent No. 11,738,413 B2, U.S. Patent No. 11,257,150 B2 and U.S. Patent No. 10,453,127. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite similar limitations.
Conclusion
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/MATTHEW S WERONSKI/Examiner, Art Unit 3627
/MICHAEL JARED WALKER/Primary Examiner, Art Unit 3627
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