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 .
DETAILED ACTION
Status of the Application
This action is in response to the Amendment filed on 8/26/2026, and is a Final Office Action.
Claims 1-18 are pending in the application.
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 1/7/13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1/8/15 of US patent No. 12026740. Although the claims at issue are not identical, they are not patentably distinct from each other because , in view of the apparent changes between the two sets of claims, it would have been obvious to one having ordinary skill in the art to make the changes, in order to cover slightly broader limitations. Furthermore, the claimed elements perform the same function as before.
Claims 1/7/13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1/7/13 of US patent No. 12340391. Although the claims at issue are not identical, they are not patentably distinct from each other because , in view of the apparent changes between the two sets of claims, it would have been obvious to one having ordinary skill in the art to make the changes, in order to cover slightly broader limitations. Furthermore, the claimed elements perform the same function as before.
35 USC 101- Analysis
Claims 1-18 are eligible under 35 USC 101. Under Step 1 of the analysis, the pending independent claims are directed to a method, CRM and system , thus meeting the Step 1 eligibility criterion. Under Prong One of Revised Step 2A of the 2019 PEG, the pending independent claims do recite a judicial exception – i.e. commercial interaction, which represents a method of organizing human activity. Under Prong Two, the pending independent claims as a whole integrate the recited judicial exception into a practical application of the exception; thus, the pending independent claims as well as the respective dependent claims are not directed to a judicial exception.
Therefore, based on these findings of fact, the Examiner understands the claimed subject matter to be patent-eligible.
Relevant prior art
The prior art of record does not teach neither singly nor in combination the limitations of claims 1-18.
The most relevant prior art identified by the Examiner is Begeja (20210334846). It teaches
identifying content distribution opportunities based on advertising performance, including: facilitate performance of operations, the operations comprising: distributing a first content item with a first plurality of advertisements via a first outlet; monitoring a performance of the first plurality of advertisements; determining, in accordance with the monitoring, that the performance of the first plurality of advertisements exceeds a threshold; identifying a second outlet to distribute the first content item responsive to the determining that the performance of the first plurality of advertisements exceeds the threshold; selecting a second plurality of advertisements in accordance with the identifying of the second outlet, wherein the second plurality of advertisements is at least partially differentiated from the first plurality of advertisements; distributing the first content item with the second plurality of advertisements via the second outlet; identifying a second content item responsive to the determining that the performance of the first plurality of advertisements exceeds the threshold and based on a determination that the second content item shares at least one characteristic in common with the first content item; and distributing the second content item via the second outlet; however, it lacks the combination of claimed elements of the pending independent claims.
The second most relevant prior art identified by the Examiner is Collins (20060026063). It teaches tracking content performance data from disparate sources, in order to optimize advertising campaign strategies, including :utilizing tags to track the content performance, including: one or more ad campaigns facilitation servers, of an ad campaigns facilitator, obtaining ad campaign information, relating to the ad campaigns, from one or more advertisers; the one or more ad campaigns facilitation servers obtaining ad campaign performance information, relating to the ad campaigns, from the one or more advertisers and from each of a plurality of affiliates of the ad campaign facilitator; The one or more ad campaigns facilitation servers storing the ad campaign information and the ad campaign performance information in one or more ad campaigns databases; and using the one or more ad campaigns facilitation servers, and based at least in part on at least a portion of the ad campaign information and at least a portion of the ad campaign performance information, determining an optimal ad campaign strategy for at least a first ad campaign of the ad campaigns; however, it lacks the combination of claimed elements of the pending independent claims.
When taken as a whole, the claims are not rendered obvious as the available prior art does not suggest or otherwise render obvious the noted features nor does the available prior art suggest or otherwise render obvious further modification of the evidence at hand. Such modifications would require substantial reconstruction relying solely on improper hindsight bias, and thus would not be obvious.
Response to Arguments
Applicant’s arguments have been fully considered; Applicant argues with substance:
II. Even if the Office classifies claim 1 as reciting a judicial exception, claim 1 as a whole integrates the alleged judicial exception into a practical application of that exception.
Examiners evaluate integration into a practical application by: (a) identifying whether there are any additional elements recited in the claims beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application....
January 2019 Guidance at pp. 54-55. "[I]n revised Step 2A examiners should ensure to give weight to all additional elements, whether or not they are conventional, when evaluating whether a judicial exception has been integrated into a practical application." Id. at p. 55 (emphasis added).
A claim integrates an exception into a practical application when "an additional element recites an improvement in the functioning of a computer, or an improvement to other technology or technical field." Id. A claim is integrated into a practical application if the claim reflects an improvement to the functioning of a computer, to another technology, or to another technological field. (See Memorandum to the Patent Examining Corps, "Advance notice of change to the MPEP in light of Ex Parte Desjardins, December 5, 2025). In Ex Parte Desjardins, Appeal 2024-000567, September 26, 2025, the Appellate Review Panel (ARP) vacated the Appellate panel's decision new ground of rejection under 35 U.S.C. 101. The ARP determined the specification described improvements to the functioning of a computer ("effectively learn new tasks in succession whilst protecting knowledge about previous tasks," Desjardins, p. 9) and the improvements were reflected in the claims. Based on the improvement reflected in the claims, the ARP held that the improvement to the training of the machine learning model constitutes an improvement to how the model operates, and not merely to a mathematical calculation. (Desjardins, p. 9). The ARP in Ex Parte Desjardins explained (citing Enfish) "that '[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.' 822 F.3d at 1339. Moreover, because '[s]oftware can make non- abstract improvements to computer technology, just as hardware improvements can,' the Federal Circuit held that the eligibility determinations should turn on whether 'the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.' Id. at 1336." Desjardins at page 8.
Examiner considers the Applicant’s argument persuasive; the 35 USC 101 rejection has been overcome and has been withdrawn. Claims 1-18 are eligible under 35 USC 101. Under Step 1 of the analysis, the pending independent claims are directed to a method, CRM and system , thus meeting the Step 1 eligibility criterion. Under Prong One of Revised Step 2A of the 2019 PEG, the pending independent claims do recite a judicial exception – i.e. commercial interaction, which represents a method of organizing human activity. Under Prong Two, the pending independent claims as a whole integrate the recited judicial exception into a practical application of the exception; thus, the pending independent claims as well as the respective dependent claims are not directed to a judicial exception.
Therefore, based on these findings of fact, the Examiner understands the claimed subject matter to be patent-eligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRU CIRNU whose telephone number is (571)272-7775. The examiner can normally be reached on M-F 9:00am-5pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Ilana Spar can be reached on (571) 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571- 273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Sincerely,
/Alexandru Cirnu/
Primary Patent Examiner, Art Unit 3622
10/2/2026
Prosecution Insights