DETAILED ACTION
This Office action is in reply to application no. 19/206,517, filed 13 May 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 1-20 of U.S. Patent No. 12,333,555. Although the claims at issue are not identical, they are not patentably distinct from each other because: comparing claim 1 of the present application to claim 1 of the reference patent:
The first step of the claim in the reference patent is to store a file which is then accessed; in the present application the corresponding step is to retrieve it; this is not patentably distinct because data must inherently have been stored in order to be retrieved or accessed.
The “determine”, “compare” and second “identify” steps in the claim of the present application are broader than those of the reference patent.
The claims are otherwise identical with slightly different wording (e.g. “determine” vs. “determining”)
The other independent claims, in each case, are simply different embodiments but are each directed to a computer performing the same process. Many of the dependent claims in the present application are identical to those in the reference patent except for, e.g., verb form; the others are patentably indistinct or obvious variations.
Conclusion
As no rejection is made herein under 35 U.S.C. § 101, 102 or 103, an analysis of these is in order. In regard to § 101, each claim is directed to a statutory category of invention, as each is directed to a system (machine), non-transitory computer readable medium (manufacture) or method (process). Though the claims recite an abstract idea – management of a professional license, which is a fundamental business practice – the detailed and technical sequence of steps 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 and so are not directed to the abstract idea, so no rejection is made.
In regard to the state of the art at the relevant time – the present claims have priority to December 2019 – O’Malley (U.S. Patent No. 9,710,836) teaches a computer system which manages user profiles and includes the use of rules which must be followed to obtain and maintain certain businesses. [Col. 1, lines 39-45; Col. 24, lines 64-65; Col. 5, lines 26-29] However, O’Malley’s essential purpose – tracking weapons – is dissimilar from the purpose of the current invention, and lacks many of the details of the present claims, including any use of machine learning.
Rogynskyy et al. (U.S. Publication No. 2019/0361861) teach a system for tracking a user’s electronic interactions using machine learning, including characteristics of a user such as roles and a location. It provides a probability score indicating a likelihood that a profile belongs to a particular category. [abstract; 0004, 0058].
Hirsch et al. (U.S. Publication No. 2019/0096526) teaches a system for making health recommendations [title] that keeps track of providers’ locations and medical licenses. [Table 3]
Dobson (U.S. Publication No. 2020/0234825, filed 21 June 2019) discloses a social health network [title] that makes use of "machine learning", [0048] and may keep track of "licensure requirements" for medical professionals; [0050] however, there is no clear nexus between the machine learning and the licensure requirements. In any case none of these, alone or if combined (assuming it would somehow be obvious to combine them), teach and suggest every limitation of the claims of the present invention, in particular the specific use of machine learning and the identification of a licensure discrepancy based on the particular criteria, combined with the other limitations of the present claims.
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.
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/SCOTT C ANDERSON/Primary Examiner, Art Unit 3694
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