DETAILED ACTION
This Office action is in reply to application no. 19/289,827, filed 4 August 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. 12,380,504 (“reference patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the only differences are in the “deconflict” step, as follows, using claim 1 of each as representative.
The “presentation issue” substep is conditional in the claim of the present application but not in the reference patent, so the present claim is broader in that regard.
The claim of the reference patent includes the limitation that changes differ “due to an authority issue”, but this language is missing in the claim of the present application, so the present claim is broader in that regard.
Other than that the claims are identical. The other independent claims are simply different embodiments but are similarly directed to one or more computers performing an identical or patentably indistinct process. The dependent claims of the present application are identical to, or patentably indistinct from, those of the reference patent.
Conclusion
As no rejection is made herein under 35 U.S.C. § 102 or 103, a brief review of the state of the art at the relevant time is in order. The present claims may have priority to October 2017. Ruiz Velasquez et al. (U.S. Publication No. 2016/0292206) disclose a system for validating coherency between multiple data sets. [title] It creates information about a company, [0043] and authenticates the identities of those who attempt to access data. [0101]
Hamano et al. (U.S. Patent No. 8,943,539) disclose a system for allowing a friend to remotely modify data [title] in which changes can be made “in response to the friend authorizing the user’s changes to be implemented”, [Col. 15, lines 56-57] and which resolves “one or more conflicts” in “updated data”. [Claim 10]
Vargas et al. (U.S. Publication No. 2017/0132892) disclose a smart product labeling system. [title] It "generates a unique identifier" for a piece of merchandise, [0011] which is then "attached to a product" and accessed via an "application" or "API". [0052]
Fox et al. (U.S. Publication No. 2018/0013565, filed 5 July 2017) disclose a system for secure remote identity verification. [title] It performs a "multi-factor authentication" in order that a user does not have to exchange "personally identifiable information" with "another system", [0044] but does not explicitly teach using two systems to perform the actual authentication.
None of these, alone or combined, teach or suggest every limitation of the claims of the present invention, in particular the multi-computer multi-factor authentication and the determination of data changes being different from previous changes based on a presentation issue related to updated information, 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SCOTT C ANDERSON/ Primary Examiner, Art Unit 3694
Prosecution Insights