DETAILED ACTION
This action is responsive to the Applicant’s amendment filed on April 14, 2025. As set forth in the Applicant’s response, claims 1-20 are canceled and claims 21-34 are newly added.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 7,860,811 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 14, 2025 and June 30, 2025 are compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Reissue Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The Examiner finds that the Applicant has submitted a copy of a reissue declaration from the parent reissue application. In addition, the stated error has already been corrected in a previous reissue. Therefore, the reissue declaration does not identify an error being corrected by the instant continuation reissue application.
Claims 21-34 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Priority
As set forth in the Filing Receipt filed on April 18, 2025 and the Application Data Sheet filed on April 14, 2025, the instant reissue application is a continuation reissue of US Patent Application 17/886,426 which is a divisional reissue of U.S. Patent Application 14/887,195, which is a continuation reissue of 13/727,380 which is an application for reissue of U.S. Patent Application 12/139,486 (US Patent 7,860,811) which is continuation-in-part of U.S. Patent Application No. 11/419,554 which is a continuation of PCT International Application No. PCT/US2004/037176 which was filed on November 4, 2004.
The Examiner acknowledges that the underlying ‘811 patent has a patent term extension for 349 days.
In accordance with MPEP 2701, a patent granted on a continuation, divisional, or continuation-in-part application that was filed on or after June 8, 1995, will have a term which ends twenty years from the filing date of earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
In accordance with 35 U.S.C. 251, “[w]henever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.” (emphasis added).
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 22-24, 26-31, 33 and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 26-31 of U.S. Patent No. RE50381. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than the claims of RE50381 in most aspects.
19/178,408
RE50381
21. An apparatus including a processor and a computer-readable memory having instructions stored thereon that, in response to execution by the processor, cause the processor to perform operations comprising:
26. An apparatus including a processor and a computer-readable memory having instructions stored thereon that, in response to execution by the processor, cause the processor to perform operations comprising:
storing user behavior information representing a plurality of user behaviors in a content network comprising content objects and relationships between the content objects, the content objects associated with vectors, respectively, the vectors represented in an n-dimensional space and associated with meta information of the user behavior information and relationship information representing the relationships between the content objects;
wherein the relationship information represents a degree to which the corresponding content object is related to another content object of the content objects,
identifying a frequency distribution of a plurality of candidate phrases to assemble a natural language communication applying a syntactical structure, wherein the frequency distribution of the plurality of candidate phrases is selected based, at least in part, on a plurality of user behaviors,
*corresponding limitation is set forth below**
the plurality of user behaviors based on member-to-member affinity vectors;
wherein identifying the frequency distribution further includes
deriving a distance in n- dimensional space between different vectors of
the member-to-member affinity vectors;
wherein the relationship information is based, at least in part, on
deriving a distance in the n-dimensional space between a first vector of the vectors and a second vector of the vectors,
the first vector associated with a first content object of the content objects and the second vector associated with a second different content object of the content objects;
**corresponding limitation is set forth above**
identifying a frequency distribution of a plurality of candidate phrases used to assemble a natural language communication applying a syntactical structure, wherein the frequency distribution of the plurality of candidate phrases is selected based, at least in part, on the plurality of user behaviors; and
and generating the natural language communication applying the syntactical structure for delivery to a user, the natural language communication applying the syntactical structure based, at least in part, on the generated frequency distribution.
generating the natural language communication applying the syntactical structure for delivery to the user, the natural language communication applying the syntactical structure based, at least in part, on the generated frequency distribution.
27. The apparatus of claim 26, wherein the user comprises a first user of a computer-based system and the operations further comprise: generating an affinity vector between the first user and a plurality of computer-based objects based, at least in part, on the first user's behaviors; and generating a similarity metric between the first user and a second user of the computer-based system based, at least in part, on the affinity vector; wherein the natural language communication is generated based at least in part on the affinity vector and the similarity metric.
As set forth in the above claim chart which compares claim 21 of the instant application and claim 26 of RE50381, reissue claim 21 is broader than claim 26 of RE50381 since it does not require “storing user behavior information representing a plurality of user behaviors in a content network comprising content objects and relationships between the content objects, the content objects associated with vectors, respectively, the vectors represented in an n-dimensional space and associated with meta information of the user behavior information and relationship information representing the relationships between the content objects; wherein the relationship information represents a degree to which the corresponding content object is related to another content object of the content objects” or “the first vector associated with a first content object of the content objects and the second vector associated with a second different content object of the content objects”.
In addition, the Examiner finds that reissue claim 21 recites, “the plurality of user behaviors based on member-to-member affinity vectors”. The Examiner notes that claim 26 of RE50381 recites “a plurality of user behaviors”. In addition, claim 27 of RE50381 recites “generating an affinity vector between the first user and a plurality of computer-based objects based, at least in part, on the first user's behaviors; and generating a similarity metric between the first user and a second user of the computer-based system based, at least in part, on the affinity vector; wherein the natural language communication is generated based at least in part on the affinity vector and the similarity metric”. Thus, RE50381 recites a plurality of users (i.e. members) as well as the generation of an affinity vector based on the first and second user. A person of ordinary skill in the art would have understood that affinity vectors for a first and second user (members) is a member-to-member affinity vector since apparatus generates a metric between the first and second user. Therefore, having a plurality of user behaviors based on member-to-member affinity vectors would have been obvious to a person of ordinary skill in the art based on the teachings of generating an affinity vector for a first and second user. Therefore the claimed member-to-member affinity vector is not a patentable distinction.
In addition, claims 23-24, 26, 27 correspond to claims 27-31 of RE50381 respectively. Further, claim 28-31, 33 and 34 of the instant reissue application corresponds to claims 21-25 of RE50381.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ovidio Escalante whose telephone number is (571)272-7537. The examiner can normally be reached on Monday to Friday - 6:00 AM to 2:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling, can be reached at telephone number (571)272-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ovidio Escalante/
Primary Examiner
Central Reexamination Unit - Art Unit 3992
(571) 272-7537
Conferee:
/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992 /M.F/