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 .
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).
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,423,291. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Application
U.S. Patent No. 12,423,291
Claim 1:
A method comprising:
providing for display a user interface in which a user can access and modify a database, the database containing a plurality of entries each corresponding to an entity;
receiving a request from the user to retrospectively modify data of one or more entries associated with one or more entities within the database;
before modifying the data in the one or more entries of the database, modifying the user interface to include an interface element that displays a change in the one or more entries that will result from the data being modified and that allows a user to perform an action to enable the change in the one or more entries to take effect, and requesting the user explicitly confirm the requested modification to the data in the one or more entries of the database; and
in response to explicit confirmation from the user, modifying the data in the one or more entries of the database and propagating the modification throughout the database.
Claim 1:
A method comprising:
providing for display a user interface in which a user can access and modify a database, the database containing a plurality of entries each corresponding to an entity;
receiving a request from the user to retrospectively modify data associated with one or more demographic characteristics of an entity in an entry of the database corresponding to the entity;
before modifying the data in the entry of the database, modifying the user interface to include an interface element that displays the change in the one or more demographic characteristics that will result from the data being modified and that allows a user to perform an action to enable the change in the one or more demographic characteristics to take effect, and requesting the user explicitly confirm the requested modification to the data in the entry of the database; and
in response to explicit confirmation from the user, modifying the data in the entry of the database and propagating the modification throughout the database.
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are substantially similar in scope and they use the same limitations. It would have been obvious to a person of ordinary skill in the art at the time the invention was made to omit the additional elements "demographic characteristics" of claims 1-20 of U.S. Patent No. 12,423,291 to arrive at the claims 1-20 of the instant application because the person would have realized that the remaining element would perform the same functions as before. "Omission of element and its function in combination is obvious expedient if the remaining elements perform same functions as before." See In re Karlson (CCPA) 136 USPQ 184, decide Jan 16, 1963, Appl. No. 6857, U. S. Court of Customs and Patent Appeals.
Allowable Subject Matter
Claims 1-20 would be allowable once the Double Patenting rejection is overcome. The primary reason for the potential allowance of independent claims 1, 8, and 15 is the inclusion of limitation(s) “before modifying the data in the one or more entries of the database, modifying the user interface to include an interface element that displays a change in the one or more entries that will result from the data being modified and that allows a user to perform an action to enable the change in the one or more entries to take effect, and requesting the user explicitly confirm the requested modification to the data in the one or more entries of the database”, which is not found in the cited prior art. The closest possible prior art in this case is Cooperstone et al (US 2002/0022982 A1), which teaches human resource and employee benefit products for businesses, implemented on one or more computing devices connected to the Internet, are managed and administered. The combination of human resource and employee benefit products required by the businesses are determined, and are classified according to criteria including a number of employees, type of work performed, and similarity of needs of these businesses in the human resource and employee benefit management areas. A local set of the human resource and the employee benefit products is provided, as is a third party provider set of products located on the third party provider's computers. Both sets of products are then organized into integrated benefits packages, each of which packages may be modified by the customer by adding and subtracting products. The price of each integrated and modified benefits package is determined, which price will be binding on the third party provider for a defined period of time.
Claims 2-7, 9-14, and 16-20 depend from claims 1, 8, and 15 and would also be allowable once the Double Patenting rejection is overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARED M BIBBEE whose telephone number is (571)270-1054. The examiner can normally be reached Monday-Thursday 8AM-6PM.
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/JARED M BIBBEE/Primary Examiner, Art Unit 2161
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