DETAILED ACTION
This non final office action is in response to applicant’s filing of application number 19/203,027 on May 8, 2025. Claim 47 is pending and under examination.
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 .
Information Disclosure Statement
The Information Disclosure Statements filed on 10/13/2025 has been considered. Initialed copies of the Form 1449 are enclosed herewith.
Double Patenting
4. The non-statutory 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 claims at issue 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); and /n 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http:/Awww.uspto.gov/forms/. The filing date of the application will determine what form 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 e-Terminal Disclaimers, refer to
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
5. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
6. Claim 47 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 10/044,668. Although the conflicting claim is not identical, it is not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963).
Claim Rejections - 35 USC§ 101
7. 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.
8. Claim 47 are rejected under 35 U.S.C. 101 because the claimed invention is
directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Subject Matter Eligibility Standard
Under the 35 U.S.C. §101 subject matter eligibility two-part analysis, Step 1 addresses whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP §2106.03. If the claim does fall within one of the statutory categories, it must then be determined in Step 2A [prong 1] whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). See MPEP §2106.04. If the claim is directed toward a judicial exception, it must then be determined in Step 2A [prong 2] whether the judicial exception is integrated into a practical application. See MPEP §2106.04(d). Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in Step 2B whether the claim recites "significantly more" than the abstract idea. See MPEP §2106.05.
Examiner’s note: The Office's 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) is currently found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), specifically incorporated in MPEP §2106.03 through MPEP §2106.07(c).
Under Step One: Claim 47 is directed to a system (i.e., a machine). Claim 47 falls under one of the four statutory classes of invention.
If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). Thus, the claims fall under one of the four statutory classes of invention under step One.
The claims recite the limitations in the abstract idea highlighted in non-bold and the additional elements in bold.
Claim 47 recites:
(a) a server;
(b) one or more information monitoring devices operatively connected to the server;
(c) one or more databases operatively connected to (i) the server, (ii) at least one of the one or more information monitoring devices, or (iii) both; and
(d) a plurality of modules implemented by the server, wherein
(i) the plurality of modules are selected from the group consisting of demographic intelligence modules, traffic modules, object identification modules, engagement modules, review summary modules, client side content management and presentation system modules, virtual loyalty program modules, automated customer assistance at shelf modules, purchase at shelf modules, reporting modules, API modules, advertising broker rules engine modules, relevance rating modules, and combinations thereof,
(ii) at least one of the modules in the plurality of modules is a demographic intelligence module,
(iii) at least one of the modules in the plurality of modules is a tracking module, and
(iv) the system is operable to analyze information gathered by the information monitoring devices using the plurality of modules.
Regarding claim 47, applicant is to be noted that the steps or function of “determining” , involve mental processes and/or generic computer functions.
Claim 47 is found to include at least one judicial exception, that the resent claim recites steps that can be performed using the human mind, pen, and paper. According to the 2019 Revised Guidance, concepts performed in the human mind (including an observation, evaluation, judgement, or opinion) fall into the category of mental processes. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
The claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55. In particular, the claims recite the following bolded limitations understood to be additional limitations:
Claim 47 recites “one or more monitoring devices, a server, one or more databases”. In particular, the claimed "processing unit" is recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claimed "processor" is also seen as generic computer components for identifying, retrieving, generating and transmitting data as the processor performs generic functions without an inventive concept as such do not amount to significantly more than the abstract idea.
The claimed processing unit or as claimed elements is interpreted as being recited at a high level of generality and even if the claims recited in the affirmative. The type of data being manipulated does not impose meaningful limitations or render the idea less abstract. Looking at the elements as a combination does not add anything more than the elements analyzed individually.
Therefore, the claims do not amount to significantly more than the abstract idea itself. Applicant is reminded that a statutory claim would recite an automated machine implemented method or system with specific structures for performing the claimed invention so as to provide an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Each claim as a whole, does not amount to significantly more than the abstract idea itself. This is because each claim does not effect an improvement to another technology or technical field; the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, claim 47 is directed to an abstract idea.
Claim Rejections - 35 USC§ 103
9. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
10. 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.
11. Claim 47 is rejected under 35 U.S.C. 103 as being obvious over Chen et al (US Publication No. 20180150874 hereinafter Chen) in view of Corner et al
(U.S. Publication No. 2013/0198011 hereinafter Corner).
Regarding claim 47 Chen does not explicitly teach but Corner teaches wherein the conversion behavior comprises a download behavior on the first object. Note (Paragraph [0033 and 0047] of Chen. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the disclosure of Chen to incorporate the teachings of Corner, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. As per attached PTO 892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROMAIN JEANTY whose telephone number is (571) 272-6732. The examiner can normally be reached M-F 9:00AM to 5:30PM.
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//ROMAIN JEANTY/ Primary Examiner, Art Unit 3624
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