DETAILED ACTION
This Office action is in reply to application no. 19/068,680, filed 3 March 2025. Claims 1-20 are pending and are considered below.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,243,081. Although the claims at issue are not identical, they are not patentably distinct from each other because, first, comparing claim 1 of the present application to claim 1 of the issued patent, they are identical except that the present claim is slightly broader, lacking the scanning step of the corresponding claim in the issued patent.
The other independent claims correspond in the same manner. The dependent claims are either identical or patentably indistinct or obvious variations.
Conclusion
No rejection is made herein under 35 U.S.C. § 101. The claims lie within statutory categories of invention, as each is directed to a method (process), system (machine) or non-transitory computer readable medium (manufacture). Though the claims arguably recite an abstract idea, e.g. marketing activity, they each include the use of a virtual assistant which engages in a dialog with a user, the use of artificial intelligence to interpret natural language input, and transferring a user to a provider based on a determined level of intent or urgency. Taken in combination with the other claimed elements, this presents a particular, rather than general, link between the technology and the abstraction, referring to MPEP § 2106.05(e).
The claims therefore integrate the abstract idea into a practical application, as that term is used in MPEP § 2106.05, and are therefore not directed to an abstract idea, so no rejection is made.
No rejection is made herein under § 102 or 103, so a brief review of the state of the art at the relevant time (the present claims have priority to August 2019) is in order.
Tran et al. (U.S. Publication No. 2020/0020165, filed 12 July 2018) disclose a virtual shopping assistant [0295] that uses machine learning to have an audio conversation with a customer. [0046; “machine learning”; 0385; audio is processed digitally and, 0298, “audio output” is “presented” to the customer]
Batrouni et al. (U.S. Publication No. 2016/0246966) disclose a risk assessment system [abstract] in which a system may “provide” information about a user to an “insurance company”, but this is not exactly the same as transferring a customer to a provider.
Kuruvilla et al. (U.S. Publication No. 2020/0111201, filed 5 October 2018) disclose a system for verifying image data of a vehicle. [title] It may include a "policy identifier" and may "prompt a user to provide identifying information". [0092] The policy which is identified appears to be a policy for automobile insurance coverage. [e.g. 0023] But Kuruvilla lacks nearly all of the details of the present claims.
Ross et al. (U.S. Publication No. 2016/0334230) disclose a system for providing remote assistance to an autonomous vehicle. [title] It may "transfer" certain data in order for a "human operator" to provide a "rapid and appropriate input" to a system. [0086] Alerts may be provided which may "specify urgency levels" based on vehicle conditions such as the "proximity of an obje[c]t" to a vehicle. [0086] But the urgency of Ross, unlike in the present claims, is the output of an alert rather than an input used to determine whether to transfer a customer to a human operator, and the human operator of Ross, unlike in the present claims, is simply providing input to a system and is not connected to a customer who has called an automated system, a feature neither taught nor suggested by the prior art herein made of record, alone or if combined.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SCOTT C ANDERSON/ Primary Examiner, Art Unit 3694
Prosecution Insights