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 communication is in response to Application filed on August 20, 2025. Claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/20/2025 is being considered by the examiner.
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 of Patent # 12430321 contain(s) every element of claims 1-20 of the instant application and as such anticipate(s) claims 1-20 of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claim Rejections - 35 USC § 101
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.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 8 and 15 recite:
identify a pool of individuals for potential communications with one or more entities;
determine, based on one or more characteristics associated with individuals, of the pool of individuals, or the one or more entities, a predicted outcome for at least a portion of the individuals with respect to at least a portion of the one or more entities;
allocate communications to at least a subset of the individuals based on the predicted outcome;
transmit, to an entity device associated with an entity, of the one or more entities, information indicating the communication allocation, wherein transmitting the information causes the information to be presented in a user interface displayed on the entity device, and wherein the user interface includes an input element for accepting the communication allocation; and
update, in response to the communication allocation being accepted via the user interface presented on the entity device, the communication allocation.
Step 1: The claims as a whole fall within one or more statutory categories.
Step 2A prong 1: At least claims 1, 8, 15 recite limitations that are abstract ideas.
The limitations ““identify a pool of individuals for potential communications with one or more entities” and “determine, based on one or more characteristics associated with individuals, of the pool of individuals, or the one or more entities, a predicted outcome for at least a portion of the individuals with respect to at least a portion of the one or more entities” are mental steps. One can mentally determine which individuals are on a mailing list and determine based on specific criteria which ones are likely to respond to communications sent to them. Thus, the claimed limitations can be performed by the human mind.
The limitations ““allocate communications to at least a subset of the individuals based on the predicted outcome” and “accepting the communication allocation” and “update, in response to the communication allocation being accepted, the communication allocation” are mental steps. One can send written or telephone communications to selected individuals, in response to the receiver responding, a sender could decide a frequency with which to keep sending the receiver communications- as in mailing lists. Thus, the claimed limitations can be performed by the human mind.
Step 2A prong 2:
Claims 1, 8, 15 recite the limitation “transmit, to an entity device associated with an entity, of the one or more entities, information indicating the communication allocation, wherein transmitting the information causes the information to be presented in a user interface displayed on the entity device” is an additional element and is insignificant extra-solution activity as selecting information for analysis and display such as 'selecting information' as identified in MPEP 2106.05(g) and does not provide integration into a practical application.
Furthermore, Claims 1, 8 and 16 recite the following additional elements “system”, “one or more memories”, “one or more processors”, “entity device”, “user interface”, “computer storage medium storing instructions”, note that these recited additional elements are a high-level recitation of generic computer components to perform the mental process and applied on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Step 2B: the conclusions for the additional elements representing mere implementation using a computer are carried over and do not provide significantly more.
With respect to the "transmit” and “display” limitations identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);" and thus remains insignificant extra-solution activity that does not provide significantly more.
Therefore, the claims as a whole do not change this conclusion and the claims are ineligible.
Claims 2-5, 9-12 and 16-19 depend from claims 1, 8 and 15 and thus include all the limitations of claims 1, 8 and 15, therefore claims 2-5, 9-12 and 16-19 recite the same abstract ideas of "mental processes".
Claims 2-5, 9-12 and 16-19 furthermore recite:
(claims 2,9,16): wherein the predicted outcome is based on a responsiveness association, a probability of transaction, or a historical interaction between individuals and the entity.
(claims 3,10,17): wherein updating the communication allocation comprises removing individuals from the pool based on association with the accepted communication allocation.
(Claims 4,11, 18): wherein allocating the communications is performed over multiple iterations, and wherein each iteration, of the multiple iterations, is initiated by a change to the pool of individuals or acceptance of an allocation by an entity, of the one or more entities.
(Claims 5,12,19): wherein determining the predicted outcome is further based on a responsiveness association between an individual and an entity, of the one or more entities.
Step 1: Claims 2-5, 9-12 and 16-19 as a whole fall within one or more statutory categories.
Step 2A prong 1: Claims 2-5, 9-12 and 16-19 recite limitations that are abstract ideas.
In claims 2,9,16, the limitation “wherein the predicted outcome is based on a responsiveness association, a probability of transaction, or a historical interaction between individuals and the entity” is a mental step that further defines the ”determining” step in claims 1, 8 and 15. Thus, the claimed limitation can be performed by the human mind.
In claims 3,10,17, the limitation “wherein updating the communication allocation comprises removing individuals from the pool based on association with the accepted communication allocation” is a mental step. One can manually remove individuals from consideration with respect to a mailing list once they respond. Thus, the claimed limitation can be performed by the human mind.
In claims 4,11, 18, the limitation “wherein allocating the communications is performed over multiple iterations, and wherein each iteration, of the multiple iterations, is initiated by a change to the pool of individuals or acceptance of an allocation by an entity, of the one or more entities” is a mental step that further defines the ”allocating” step in claims 1, 8 and 15. Thus, the claimed limitation can be performed by the human mind.
In claims 5,12,19, the limitation “wherein determining the predicted outcome is further based on a responsiveness association between an individual and an entity, of the one or more entities” is a mental step that further defines the ”determining” step in claims 1, 8 and 15. Thus, the claimed limitation can be performed by the human mind.
Step 2A prong 2: Claims 2-5, 9-12 and 16-19 do not recite any additional elements that would integrate the judicial exception into a practical application.
Step 2B: Claims 2-5, 9-12 and 16-19 do not recite any additional elements that would provide significantly more than the judicial exception.
Therefore, claims 2-5, 9-12 and 16-19 as a whole do not change this conclusion and the claims are ineligible.
Claims 6, 7, 13, 14 and 20 depend from claims 1, 8 and 15 and thus include all the limitations of claims 1, 8 and 15, therefore claims 6, 7, 13, 14 and 20 recite the same abstract ideas of "mental processes".
Claims 6, 7, 13, 14 and 20 furthermore recite:
(Claims 6,13,20): wherein the one or more processors are further configured to: cause, based on the communication allocation being accepted, transmission of the communications in accordance with the communication allocation.
(Claims 7,14): wherein the one or more processors, to cause the transmission of the communications, are configured to: generate a link for a user interface for an individual, or generate a communication session between the individual and the entity.
Step 1: Claims 6, 7, 13, 14 and 20 as a whole fall within one or more statutory categories.
Step 2A prong 1: Claims 6, 7, 13, 14 and 20 recite limitations that are abstract ideas because they depend from claims 1, 8 and 15 that recite mental steps.
Step 2A prong 2:
The limitations “cause, based on the communication allocation being accepted, transmission of the communications in accordance with the communication allocation” and “generate a link for an individual, or generate a communication session between the individual and the entity” are additional elements and is considered insignificant extra-solution activity as ‘presenting offers’ as an outputting step as identified in MPEP 2106.05(g) and does not provide integration into a practical application.
Furthermore, Claims 7 and 14 recite the following additional element “user interface”, note that these recited additional elements are a high-level recitation of generic computer components to perform the mental process and applied on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Step 2B: the conclusions for the additional elements representing mere implementation using a computer are carried over and do not provide significantly more.
With respect to the " transmission” and “generating” limitations identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);" and thus remains insignificant extra-solution activity that does not provide significantly more.
Therefore, claims 6, 7, 13, 14 and 20 as a whole are ineligible.
To expedite a complete examination of the instant application, the claims rejected under 35 U.S.C. 101 (nonstatutory} above are further rejected as set forth below in anticipation of applicant amending these claims to place them within the four statutory categories of the invention.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by US 2020/0273050 by Doherty.
Referring to claim 1, Doherty discloses a system [computing device, para 76, Fig 5], comprising:
one or more memories [memories, para 76]; and
one or more processors, coupled to the one or more memories [CPU 500, para 76, Fig 5], configured to:
identify a pool of individuals for potential communications with one or more entities [set of customers in customer data 112, para 24, 27, Fig 1A];
determine, based on one or more characteristics associated with individuals, of the pool of individuals [customer attributes 114 regarding present customers of the subject provider, para 27, Fig 1A], or the one or more entities, a predicted outcome for at least a portion of the individuals with respect to at least a portion of the one or more entities [wherein customer attributes 114 are obtained and analyzed by churn risk analysis engine 106 to determine set of customer risk weightings 122 representing relative propensity for each customer to churn away from the subject provider and classifies the customer risk weightings 122 into at least a set of likely to churn customers 126a and a set of unlikely to churn customers 126b, para 30-31, Fig 1A-B];
allocate communications to at least a subset of the individuals based on the predicted outcome [ wherein the set of customers likely to churn 126a are obtained by response recommendation engine 132 for generating one or more recommended actions 134 to mitigate the risk of churn among the customer set 126a, para 34, Fig 1B];
transmit, to an entity device associated with an entity, of the one or more entities, information indicating the communication allocation [recommended actions 134 are presented to user via GUI engine 136 at a remote computing device display 138, para 35, Fig 1B],
wherein transmitting the information causes the information to be presented in a user interface displayed on the entity device [GUI display on remote device, para 35], and
wherein the user interface includes an input element for accepting the communication allocation [user interface has a control configured to, upon selection, automate implementation of the recommended action or select different actions on a per customer/customer grouping basis, para 35]; and
update, in response to the communication allocation being accepted via the user interface presented on the entity device, the communication allocation [selection of the control results in implementation of recommended action e.g. automating the implementation of the recommended action, para 35].
Claim 8 recites similar limitations to claim 1 in the form of a method [Abstract]. As such, claim 8 is rejected for the same reasons as claim 1.
Claim 15 recites similar limitations to claim 1 in the form of a computer readable medium storing instructions [storage medium comprising instructions, para 76, Fig 5]. As such, claim 15 is rejected for the same reasons as claim 1.
Referring to claims 2,9,16, Doherty discloses wherein the predicted outcome is based on a responsiveness association, a probability of transaction [subscriber churn predictions calculated as percentage likelihood or value representing relative propensity for each customer to churn away from the subject provider, para 30-31], or a historical interaction between individuals and the entity [process 100 may be performed during a calendar period recognized to historically suffer from “seasonal flux” where churn is more likely to occur, para 24; subscriber churn may occur when subscribers elect to churn to a different provider for a variety of reasons such as disappointment in customer service, para 24].
Referring to claims 3,10,17, Doherty discloses wherein updating the communication allocation comprises removing individuals from the pool based on association with the accepted communication allocation [subject provider may choose to focus on a set of likely to churn customers 126a as opposed to the set of unlikely to churn customers 126b, para 31, Fig 1B].
Referring to claims 4,11, 18, Doherty discloses wherein allocating the communications is performed over multiple iterations, and wherein each iteration, of the multiple iterations, is initiated by a change to the pool of individuals or acceptance of an allocation by an entity, of the one or more entities [user-specified likelihood thresholds are dynamically adjusted based on changing attributes of customers and likelihood of churn, para 31].
Referring to claims 5,12,19, Doherty discloses wherein determining the predicted outcome is further based on a responsiveness association between an individual and an entity, of the one or more entities [subscriber churn predictions calculated as percentage likelihood or value representing relative propensity for each customer to churn away from the subject provider, para 30-31].
Referring to claims 6,13,20, Doherty discloses cause, based on the communication allocation being accepted, transmission of the communications in accordance with the communication allocation [wherein interventions pertaining to the recommended actions are sent to the subscriber such as telephone or email contact, from a subscription provider representative, a promotional offer or introduction of a promotional campaign for subscription renewal, a gift such as an item provided in the mail, and/or a promotional offer or introduction of a promotion campaign for subscription expansion to supply greater options, benefits, or services to the subscriber or automatically launching a promotional campaign intervention to entice those subscribers most likely to churn to stay, para 6; promotional offers, para 43].
Referring to claims 7,14, Doherty discloses wherein the one or more processors, to cause the transmission of the communications, are configured to: generate a link for a user interface for an individual, or generate a communication session between the individual and the entity [intervention includes personal contact (e.g., telephone contact, video chat session, real time text messaging session, etc.) with one or more customers, para 43].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hoerenz (US 2004/0267611) directed to: targeting an offer to users based on user metrics [entire document];
Day (US Pat 5857175) directed to: offering target discounts to customers [Fig 7, 9, 10 and related portions of specification];
Lane (US 20230351515) directed to: operation of wealth management platform that includes client engagement [Fig 11, 12 and related portions of specification].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHERYL M SHECHTMAN whose telephone number is (571)272-4018. The examiner can normally be reached on Mon-Fri: 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Ng can be reached on 571-270-1698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHERYL M SHECHTMANPatent Examiner
Art Unit 2164
/C.M.S/
/AMY NG/Supervisory Patent Examiner, Art Unit 2164
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