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
Claims 2-21 have been examined in this application. This communication is the first action on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/21/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Notes - 35 USC § 101
Amending pending independent claims 2/12 with the claimed subject matter of pending dependent claims 9/19 would result in the independent claims overcoming the 35 USC § 101rejection. The resulting amended claimed limitations of the independent claims would integrate the recited judicial exception into a practical application of the exception, under Prong Two of the 35 USC 101 analysis.
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 2-8, 10-18, 20-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 2 is directed towards a system, thus meeting the Step 1 eligibility criterion. Claim 2 does recite the abstract concept of a commercial interaction, including advertising or sales activities or behaviors, business relations/activities , and fundamental economic practice, which has been identified as an abstract idea by the MPEP. The relevant claimed limitations include:
receive event data for an email campaign including multiple email messages, the event data received by a mail transfer agent (MTA) in communication with one or more nodes hosted by one or more internet service providers (ISPs) / determine corrected event data for the email campaign, the corrected event data including one or more true email open events that were obfuscated in the received event data / determine an open probability for each user receiving an email message of the email campaign using the user model / determine one or more predicted true open events based on the open probabilities for each user, each predicted true open event identifying a user predicted to have generated one of the true email open events.
This judicial exception is not integrated into a practical application. Claim 1 includes the additional elements of encoding and using encoded data (“ generate a set of encoded vectors for a training sample of email campaigns, each encoded vector in the set of encoded vectors representative of one or more pieces of event data, one or more campaign configurations, and one or more user attributes associated with an email campaign in the training sample, the one or more pieces of event data identified from one or more event messages received from the one or more ISPs in response to email messages sent to the one or more ISPs by the MTA”; “aggregate the encoded vectors generated for the training sample into one or more training datasets”) / training data and using the trained data (“train a user model using the one or more training datasets”) / one processor/ a memory storing instructions that, when executed by at least one processor in the one or more processors, cause the at least one processor to perform at least the following operations. The processor/memory represent generic computing elements. Encoding data and using encoded data / training data and using trained data do no more than apply or link the use of the recited judicial exception to a particular technological environment/field of use. The additional elements do not, alone or in combination, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. The claim is directed to an abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because as noted above, the claimed computing elements represent generic computing elements; they are recited at a high level of generality. Encoding data and using encoded data / training data and using trained data do no more than apply or link the use of the recited judicial exception to a particular technological environment/field of use. The additional elements do not , alone or in combination, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. Therefore, Claim 1 does not amount to significantly more than the abstract idea itself. The claim is not patent eligible.
Independent claim 12 is directed to a method performing similar claimed limitations to those of claim 2; the claim recites the same abstract idea(s) as Claim 2. Claim 12 performs the claimed limitations using only generic components of a networked computer system. Therefore, claim 12 is directed to an abstract idea without significantly more for the reasons given in the discussion of claim 2.
Remaining dependent claims 2-8, 10-18, 20-21 further recite and narrow the
abstract idea(s) of Claims 2/12. The claims further recite the additional element of using a neural network / demand side platform / training and using trained data (claim 11/21). The platform represents a generic computing element that is recited at a high level of generality. Using a neural network / training and using trained data do no more than apply or link the use of the recited judicial exception to a particular technological environment/field of use. The additional elements do not, alone or in combination with the other additional elements, improve the functioning of the computing device or another technology/technical field, or apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. Therefore, the claims above do not amount to significantly more than the abstract idea itself. The claims are not patent eligible.
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 12-18, 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-17, 19, 20, 22 of Application No. 18 384 853. Although the claims at issue are not identical, they are not patentably distinct from each other because of the apparent changes below:
Limitations in Instant Application:
receiving event data for an email campaign including multiple email messages, the event data received by a mail transfer agent (MTA) in communication with one or more nodes hosted by one or more internet service providers (ISPs);determining corrected event data for the email campaign, the corrected event data including one or more true email open events that were obfuscated in the received event data ;generating a set of encoded vectors for a training sample of email campaigns, each encoded vector in the set of encoded vectors representative of one or more pieces of event data, one or more campaign configurations, and one or more user attributes associated with an email campaign in the training sample, the one or more pieces of event data identified from one or more event messages received from the one or more ISPs in response to email messages sent to the one or more ISPs by the MTA; aggregating the encoded vectors generated for the training sample into one or more training datasets; training a user model using the one or more training datasets; determining an open probability for each user receiving an email message of the email campaign using the user model; and determining one or more predicted true open events based on the open probabilities for each user, each predicted true open event identifying a user predicted to have generated one of the true email open events.
Limitations in Application No. 18 384 853:
transmitting multiple email messages of an email campaign to multiple internet service providers (ISPs), each email message transmitted by a mail transfer agent (MTA) in communication with one or more nodes hosted by one of the multiple ISPs;determining a batch of email messages having obfuscated open events; determining a predicted open rate for the email campaign including the batch of emails using an open rate model; determining one or more true email open events for the batch of email messages based on the predicted open rate for the campaign; transmitting corrected event data for the campaign to an application server in communication with the email server, the corrected event data including the one or more true email open events; resolving a unique identifier associated with each user that received at least one of the email messages in the batch of email messages; generating a set of encoded vectors for a training sample of email campaigns, each encoded vector in the set of encoded vectors representative of one or more pieces of event data, one or more campaign configurations, and one or more user attributes associated with an email campaign in the training sample, the one or more pieces of event data identified from one or more event messages received from an ISP in response to email messages sent to the ISP by an MTA;aggregating the encoded vectors generated for the training sample into one or more training datasets; training a user model using the one or more training datasets; determining an open probability for each of the users using the user model; determining a predicted true open event based on the open probabilities for each user, the predicted true open event identifying a user predicted to have generated one of the true email open events; and validating the predicted true open event based on a confirmation event recorded in an engagement history of the user.
However, it would have been obvious to one having ordinary skill in the art make the apparent changes above, in order to cover slightly broader limitations. Furthermore, the claimed elements perform the same function as before.
Relevant prior art
The prior art of record does not teach neither singly nor in combination the limitations of
claims 2-21. The most relevant prior art identified by the Examiner, Toper (20210044554), describes
detecting spam filtering of email, including injecting a plurality of emails into the client email campaign,
for transmission to seed email addresses separate from non-injected emails of the campaign, and
predicting whether non-injected emails of client email campaign are categorized as spam by targeted
addresses. However, it lacks the combination of claimed elements of the pending independent claims.
The second most relevant identified prior art, Adams (20160098745), describes monitoring deliverability and engagement metrics of emails, including determining the deliverability and engagement metrics based upon a statistical combination of subscriber and seed data. 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.
Conclusion
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 8:00 AM - 5:00 PM. 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, 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.
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/Alexandru Cirnu/
Primary Patent Examiner, Art Unit 3622
7/13/2026
Prosecution Insights