DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This communication is in response to the RCE filed on July 28, 2026, in which claims 1, 3, 4, 6, 7, 10, 11, 13, 14, 16-18 and 20 have been amended. Claims 5 and 15 have been canceled. Claim 21 has been newly added. Accordingly, claims 1-4, 6-14 and 16-21 are now pending for examination
Status of Claims
3. Claims 1-4, 6-14 and 16-21 are pending, of which claims 1 and 11 are subject to a Double Patenting rejection.
Terminal Disclaimer
4. The terminal disclaimer filed on July 28, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 12,255,786 has been reviewed and is NOT accepted.
5. The terminal disclaimer does not comply with 37 CFR 1.321 because:This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
6. It should be noted that applicant is not required to pay another disclaimer fee as set forth in 37 CFR 1.20(d) when submitting a replacement or supplemental terminal disclaimer.
7. The following is a statement of 37 CFR 3.73 as applicable to applications filed on or after September 16, 2012:
37 CFR 3.73 Establishing right of assignee to take action.
(a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
(2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(c)(1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(2) If the submission is by an assignee of less than the entire right, title and interest (e.g., more than one assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:
(i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or
(ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties owns the entire right, title and interest.
(3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine while, if any, purported assignees will be permitted to control prosecution of the application.
(d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(1) Including a statement that the person is authorized to act on behalf of the assignee;
(2) Being signed by a person having apparent authority to sign on behalf of the assignee; or
(3) For patent matters only, being signed by a practitioner of record.
Double Patenting
8. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
9. Claims 1 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. US 12,255,786 B2, hereinafter “786”. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 11 of the instant Application are an obvious variant of claims 1 and 10 of 786.
Regarding claim 1 of the instant Application, claim 1 recites, “An apparatus for identifying a common acquisition signal, wherein the apparatus comprises: at least a processor; and a memory communicatively connected to the at least a processor, wherein the memory contains instructions configuring the at least a processor to: receive an entity profile, wherein the entity profile comprises transmission configuration data; identify a plurality of signal destinations as a function of the transmission configuration data by; sending an outgoing signal to one or more of the plurality of signal destinations, wherein the one or more of the plurality of signal destinations comprise: a control group; and a test group, wherein the test group comprises a target group for a product associated with the entity profile; receive a plurality of return signals from the plurality of signal destinations; compare the plurality of return signals of the control group and the plurality of return signals of the test group; generate optimized transmission configuration data as a function of the plurality of return signals and the comparison; generate, using a strategy simulation, updated optimized transmission configuration data, wherein the strategy simulation: posits several parameters comprising at least a marketing plan; and compares an effect of the several parameters on the plurality of signal destinations by comparing the test group to the control group, wherein the test group has been exposed to the optimized transmission configuration data; determine a common acquisition signal associated with the plurality of signal destinations as a function of the updated optimized transmission configuration data; and present the common acquisition signal using a display device”.
Claim 1 of 786 recites “An apparatus for identifying a common acquisition signal, wherein the apparatus comprises: at least a processor; and a memory communicatively connected to the at least a processor, wherein the memory contains instructions configuring the at least a processor to: receive an entity profile from a user, wherein the entity profile comprises a plurality of transmission configuration data, wherein receiving the entity profile comprises: generating a questionnaire; transmitting the questionnaire to a user though a chatbot; and generating the entity profile based on a received answer through the chatbot; identify a plurality of signal destinations as a function of the transmission configuration data; receive a plurality of return signals from the plurality of signal destinations; generate optimized transmission configuration data as a function of the plurality of return signals, wherein the optimized transmission configuration data comprises a notification procedure, wherein the notification procedure comprises an identification of a preferred method for communicating with the plurality of signal destinations; generate, using a strategy simulation, updated optimized transmission configuration data, wherein the strategy simulation; posits several parameters, including at least a marketing plan; simulates aspects of a business including economic interest and economic activity; and compares the effect of the several parameters on a plurality of signal destinations by measuring a difference in at least economic activity between the plurality of signal destinations that has been exposed to the optimized transmission configuration data and a control group which has not been exposed to the optimized transmission configuration data; determine a common acquisition signal associated with the plurality of signal destinations as a function of the updated optimized transmission configuration data; and present the common acquisition signal using a display device”.
Clearly from the plain text, apart from the newly added limitations of “identify a plurality of signal destinations as a function of the transmission configuration data by; sending an outgoing signal to one or more of the plurality of signal destinations, wherein the one or more of the plurality of signal destinations comprise: a control group; and a test group, wherein the test group comprises a target group for a product associated with the entity profile; receive a plurality of return signals from the plurality of signal destinations; compare the plurality of return signals of the control group and the plurality of return signals of the test group; generate optimized transmission configuration data as a function of the plurality of return signals and the comparison,” each and every limitation of independent claim 1 of the instant Application is within claim 1 of 786. However, while not explicitly worded in exactly the same way, claim 1 of 786 recites substantially similar subject matter as claim 1 of the instant Application. In particular, claim 1 of 786 recites that the recited “strategy simulation” generates updated optimized transmission configuration data, and in particular, “posits several parameters, including at least a marketing plan; simulates aspects of a business including economic interest and economic activity; and compares the effect of the several parameters on a plurality of signal destinations by measuring a difference in at least economic activity between the plurality of signal destinations that has been exposed to the optimized transmission configuration data and a control group which has not been exposed to the optimized transmission configuration data”. Here, the “plurality of signal destinations that has been exposed to the optimized transmission configuration data” are substantially similar or analogous to the recited “test group” of the instant Application, while the recited “control group which has not been exposed to the optimized transmission configuration data” is substantially similar or analogous to the recited “control group” of the instant Application. Importantly, Examiner points out that 1) in each of the instant Application and 786, the recited “signal destinations” make up a “control group” and a “test group” - in 786, the “test group” is a “plurality of signal destinations that has been exposed to the optimized transmission configuration data,” while in the instant Application, the “test group” is also “target group for a product associated with the entity profile,” 2) both the instant Application and 786 compare an effect of the several parameters on the plurality of signal destinations by comparing the test group to the control group, and 3) both the instant Application and 786 achieve the same predictable result of generating updated optimized transmission configuration data. It would therefore have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the language of 786 with that of the instant Application, to arrive at the same invention having the same outcome. Therefore, Claim 1 is unpatentable under Non-statutory Obviousness-type Double Patenting. Similar reasoning applies to claim 11.
Allowable Subject Matter
10. Claims 1-4, 6-14 and 16-21 are allowable over the prior art.
Conclusion
11. All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KOSTAS J. KATSIKIS whose telephone number is (571)270-5434. The examiner can normally be reached Monday-Friday, 9:00am-5:00pm. 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, Kamal B. Divecha can be reached at 571-272-5863. 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.
/KOSTAS J KATSIKIS/Primary Examiner, Art Unit 2453
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