DETAILED ACTION
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 .
This application is a CON of 18/186,020 03/17/2023 PAT 12354169
18/186,020 is a CON of 16/692,910 11/22/2019 PAT 11636547
16/692,910 is a CON of 15/234,892 08/11/2016 PAT 10521864
15/234,892 has PRO 62/339,646 05/20/2016
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 and 3 and 4 of U.S. Patent No. 12,354,169 and claim 2 and 3 and 4 of U.S. Patent No.: 11,636,547 and claim 2 and 3 and 4 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,354,169 and claim 7 of U.S. Patent No.: 11,636,547 and claim 5 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim and the parent claim describe the same process.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 14 of U.S. Patent No. 12,354,169 and claim 1 and 14 of U.S. Patent No.: 11,636,547 and claim 1 and 13 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 and 3 and 4 of U.S. Patent No. 12,354,169 and claim 2 and 3 and 4 of U.S. Patent No.: 11,636,547 and claim 2 and 3 and 4 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,354,169 and claim 7 of U.S. Patent No.: 11,636,547 and claim 5 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim and the parent claim describe the same process.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 19 of U.S. Patent No. 12,354,169 and claim 1 and 19 of U.S. Patent No.: 11,636,547 and claim 1 and 18 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 and 3 and 4 of U.S. Patent No. 12,354,169 and claim 2 and 3 and 4 of U.S. Patent No.: 11,636,547 and claim 2 and 3 and 4 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,354,169 and claim 1 of U.S. Patent No.: 11,636,547 and claim 1 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope than the parent claim, but the process steps are near identical. The parent claim is directed to providing a quote for insurance policy but the current claim is directed to providing a quote for service.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,354,169 and claim 7 of U.S. Patent No.: 11,636,547 and claim 5 of U.S. Patent 10,521,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim and the parent claim describe the same process.
Claim Rejection – 35 U.S.C. 103
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.
Claim 1-4, 6-11, 13-18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Strange (Pub. No.: US 2013/0290036), in view of Peterson IV et al. (Pub. No.: US 2016/0203561).
As per claim 1, Strange teaches a computing device for creating an association between a tokenized icon and a graphical object displayed on a user interface that is used to provide a quote for a service, the computing device comprising:
at least one processor; and a memory in communication with the at least one processor, wherein the at least one processor is configured to (see paragraph 0011-0012, 0073, and 0076 for server; see paragraph 0390-0391 for processor and memory):
receive an electronic image of an item from a user application executing on a user device in connection with a request for the quote for providing the service with respect to the item (see abstract, “A user captures images of one or more documents containing information needed to complete an insurance application, after which the information on the documents is extracted and sent to the insurance company where a quote for the insurance policy can be developed” and “Applications on the mobile device are configured to capture images of the documents needed for an insurance application, such as a driver’s license, insurance information card or a vehicle identification number (VIN)”; also see paragraph 0010-0012, 0072-0073, and 0083-0092; prior art teaches receiving an image of a VIN, which represents a vehicle to be insured; Examiner notes that requesting a quote for insuring an item is requesting a quote for providing a service with respect to the item);
cause (i) a first graphical object representing the item to be displayed on the user device using the user application and (ii) a second graphical object representing a user to be displayed on the user device using the user application, the second graphical object including user data associated with the user (see FIG. 4B, FIG. 4C, and FIG. 7A; claim language does not specify what second graphical object is; prior art teaches displaying captured image of driver license);
generate the quote for providing the service with respect to the item based on the updated metadata of the tokenized icon (see abstract, “A user captures images of one or more documents containing information needed to complete an insurance application, after which the information on the documents is extracted and sent to the insurance company where a quote for the insurance policy can be developed”); and
transmit the quote to the user application for display to the user (see abstract, “The quote can then be transmitted back to the user”).
Examiner notes Strange does not teach create the tokenized icon that includes the electronic image and other data that is converted into metadata that at least partially describes the item; in response to the first graphical object being electronically associated with the second graphical object, update the metadata of the tokenized icon based upon the user data associated with the second graphical object.
Peterson teaches create the tokenized icon that includes the electronic image and other data that is converted into metadata that at least partially describes the item (see paragraph 0027, “the current subject matter can obtain image information from the user. The user and/or an appraiser associated with the insurance provider can upload an image, a photograph, a video, etc. to be used as one of the graphical elements for generating the visual representation and/or profile information associated with the policy information such that the visual representation closely resembles the insured items”; the visual representation is the tokenized icon);
in response to the first graphical object being electronically associated with the second graphical object, update the metadata of the tokenized icon based upon the user data associated with the second graphical object (see paragraph 0027, “to modify the visual representation with additional context (e.g., certain landscape backgrounds, etc.) based on the geo-location information”).
It would have been obvious to one of ordinary skill in the art to modify Strange with teaching from Peterson to include create the tokenized icon that includes the electronic image and other data that is converted into metadata that at least partially describes the item; in response to the first graphical object being electronically associated with the second graphical object, update the metadata of the tokenized icon based upon the user data associated with the second graphical object. The modification would have been obvious, because it is merely applying a known technique (i.e. uploading an image to be used as visual representation and profile information associated with an insurance policy; and allowing modification of such visual representation) to a known system (i.e. insurance application server) ready to perform predictable result (i.e. provide visual representation of insurance policy for easy recognition).
As per claim 2, Strange teaches wherein the at least one processor is further configured to obtain the other data, wherein the other data is associated with the item (see abstract, “A user captures images of one or more documents containing information needed to complete an insurance application, after which the information on the documents is extracted and sent to the insurance company where a quote for the insurance policy can be developed”; also see paragraph 0010-0012, 0073, and 0080-0081; prior art teaches extracting data from an image of a VIN, which represents a vehicle to be insured).
As per claim 3, Strange teaches wherein the at least one processor is further configured to obtain the other data at least partially by at least one of (i) extracting the other data from the electronic image, (ii) retrieving internal data from an insurer database, or (iii) retrieving external data from a third-party database (see abstract, “A user captures images of one or more documents containing information needed to complete an insurance application, after which the information on the documents is extracted and sent to the insurance company where a quote for the insurance policy can be developed”; see paragraph 0007, “comparing the inputted information to information about the consumer that the insurance company obtains from third party databases such as state accident and vehicle ownership databases”; see paragraph 0073, “the remote server 104 may be connected with a driver’s license database 106”; also see paragraph 0010-0012, 0080-0081, and 0090).
As per claim 4, Strange does not explicitly teach wherein the at least one processor is further configured to create the tokenized icon.
Peterson teaches wherein the at least one processor is further configured to create the tokenized icon (see paragraph 0027, “the current subject matter can obtain image information from the user. The user and/or an appraiser associated with the insurance provider can upload an image, a photograph, a video, etc. to be used as one of the graphical elements for generating the visual representation and/or profile information associated with the policy information such that the visual representation closely resembles the insured items”).
It would have been obvious to one of ordinary skill in the art to modify Strange with teaching from Peterson to include wherein the at least one processor is further configured to create the tokenized icon. The modification would have been obvious, because it is merely applying a known technique (i.e. creating tokenized icon of an item) to a known system (i.e. insurance application server) ready to perform predictable result (i.e. provide visual representation of insurance policy for easy recognition).
As per claim 6, Strange teaches wherein the at least one processor is further configured to select a personal photograph extracted from an image of a driver's license of the user as the second graphical object (see paragraph 0010, 0072, and 0083-0085), but does not explicitly teach wherein the at least one processor is further programmed to select a personal photograph extracted from the image of an driver’s license of the user as the second graphic object.
Peterson teaches select a personal photograph extracted from the image of a driver’s license of the user as the second graphic object (see paragraph 0027, “The user and/or appraiser associated with the insurance provider can upload an image, a photograph, a video, etc., to be used as one of the graphical elements generating the visual representation and/or profile information associated with the policy information such that the visual representation closely resembles the insured items”).
It would have been obvious to one of ordinary skill in the art to modify Strange with teaching from Peterson to include select a personal photograph extracted from a driver’s license of the user as the second graphic object. The modification would have been obvious, because it is merely applying a known technique (i.e. uploading an image to be used as visual representation and profile information associated with an insurance policy; and allowing modification of such visual representation) to a known system (i.e. insurance application server) ready to perform predictable result (i.e. provide visual representation of insurance policy for easy recognition).
As per claim 7, Strange teaches wherein the service provided includes an insurance policy, and wherein the item is to be insured see abstract, “A user captures images of one or more documents containing information needed to complete an insurance application, after which the information on the documents is extracted and sent to the insurance company where a quote for the insurance policy can be developed” and “Applications on the mobile device are configured to capture images of the documents needed for an insurance application, such as a driver’s license, insurance information card or a vehicle identification number (VIN)”; also see paragraph 0010-0012, 0072-0073, and 0083-0092; prior art teaches receiving an image of a VIN, which represents a vehicle to be insured).
Claim 8 is rejected for the same reason as claim 1.
Claim 9 is rejected for the same reason as claim 2.
Claim 10 is rejected for the same reason as claim 3.
Claim 11 is rejected for the same reason as claim 4.
Claim 13 is rejected for the same reason as claim 6.
Claim 14 is rejected for the same reason as claim 7.
Claim 15 is rejected for the same reason as claim 1.
Claim 16 is rejected for the same reason as claim 2.
Claim 17 is rejected for the same reason as claim 3.
Claim 18 is rejected for the same reason as claim 4.
Claim 20 is rejected for the same reason as claim 7.
Claim 5, 12, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Strange (Pub. No.: US 2013/0290036), in view of Peterson IV et al. (Pub. No.: US 2016/0203561) and Nowak et al. (Patent No.: US 8,095,394).
As per claim 5, Strange does not show wherein the at least one processor is further configured to prompt the user, via the user device and the user application, to indicate an association between the item represented by the first graphical object and the user represented by the second graphical object by moving one of the first graphical object and the second graphical object relative to the other graphical object such that the first and second graphical objects show the association between the item and the user.
Nowak teaches prompt the user, via the user device and the user application, to indicate an association between the item represented by the first graphical object and the user represented by the second graphical object by moving one of the first graphical object and the second graphical object relative to the other graphical object such that the first and second graphical objects show the association between the item and the user (see FIG. 2B and column 5 line 1-14, prior art display a first graphical object to represent insured vehicle and a second graphical object to represent another vehicle involved in an incident; user is able to drag-and-drop the second graphical object relative to the first graphical object to indicate the relation between the two graphical objects in the incident).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify Strange with teaching from Nowak to include prompt the user, via the user device and the user application, to indicate an association between the item represented by the first graphical object and the user represented by the second graphical object by moving one of the first graphical object and the second graphical object relative to the other graphical object such that the first and second graphical objects show the association between the item and the user. The modification would have been obvious, because it is merely applying a known technique (i.e. using graphical objects to represent real life items and allowing the objects to be manipulated to represent relationship) to a known system (i.e. insurance application server) ready to perform predictable result (i.e. provide a more convenient GUI for user to enter information).
Claim 12 is rejected for the same reason as claim 5.
Claim 19 is rejected for the same reason as claim 5.
Conclusion
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/HAO FU/Primary Examiner, Art Unit 3695
JULY-2026
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