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 .
Priority
CONTINUATION
This application is a continuation application of U.S. application no. 16/385,822 filed on October 31, 2023, now U.S. Patent 12,452,059 (“Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Applicant’s claim for the benefit of U.S. provisional patent application 63/425,629 filed November 15, 2022 under 35 U.S.C. 119(e) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on October 16, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement 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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,452,059.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims merely remove language such that any infringing device that reads on the issued patent claims would also necessarily infringe the instant claims as the issued claims anticipate the instant claims.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,500,763, claims 1-18 of U.S. Patent 12,425,214, claims 1-18 of U.S. Patent No. 12,531,737, claims 1-18 of U.S. Patent 12,407,509, claims 1-18 of U.S. Patent No. 12,519,642, claims 1-18 of U.S. Patent 12,574,239, claims 1-18 of U.S. Patent 12,413,408, claims 1-18 of U.S. Patent 12,512,988, claims 1-18 of U.S. Patent 12,425,215, claims 1-18 of U.S. Patent 12,425,216, claims 1-18 of U.S. Patent 12,659,155, claims 1-18 of U.S. Patent 12,519,643.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are so minor in nature such that they do patentably distinguish the issued claims from the instant claims.
Claim 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of copending Application No. 18/388,820 (reference application), claims 1-18 of copending Application No. 19/330,544 (reference application), claims 1-18 of copending Application No. 19/331,716 (reference application), claims 1-18 of copending Application No. 19/331,072 (reference application), claims 1-18 of copending Application No. 19/404,568 (reference application), claims 1-18 of copending Application No. 19/434,099 (reference application), claims 1-18 of copending Application No. 19/439,526 (reference application), claims 1-18 of copending Application No. 19/439,527(reference application), claims 1-18 of copending Application No. 19/452,253 (reference application) and claims 1-18 of copending Application No. 19/556,240(reference application),.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are so minor in nature such that they do patentably distinguish the claims cited from the other applications from the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Statement Regarding the Prior Art
Examiner found limited prior art that was directed towards the subject matter area. Cella et al. (U.S. Patent Publication 2022/0366494, hereinafter referred to as Cella) discloses a financial management circuit that may be structured to communicate interpreted assets and authenticated identifiers to a blockchain service circuit for storage as asset control features which are recorded as asset events (e.g., a transfer of title, death of an owner, disability of an owner, bankruptcy of an owner, foreclosure, placement of a lien, use of assets as collateral, designation of a beneficiary, undertaking a loan against assets, providing a notice with respect to assets, inspection of assets, assessment of assets, reporting on assets for taxation purposes, allocation of ownership of assets, disposal of assets, sale of assets, purchase of assets, a designation of an ownership status, and the like) (paragraph 1531). This data can then be used in conjunction with a smart contract and the asset events can be monitored (paragraph 1532). However Cella does not disclose any particular set of operations for processing a claim on a longevity contingent instrument such as those recited in the claim and Examiner does not see where any part of Cella can be viewed as reading on the contingency-action token as recited in the claim nor does Examiner see where Cella provides sufficient detail to fairly read on the elements of the contingency-action token that are further recited in the claim. Gutierrez-Sheris (U.S. Patent Publication 2020/0396065) also provides a tangential disclosure with regard a smart contract involving a will (0702-0713) but also provides only a general description of how the smart contract would operate a life insurance smart contract (0709) without providing much detail on how such a smart contract would operate and therefore must also be viewed as deficient. The closest non-patent literature Examiner was able to find was Gatteschi et al. “Blockchain and Smart Contracts for Insurance: Is the Technology Mature Enough?”, Future Internet 2018, Publication Date February 20, 2018, 16 pages which on pages 4 and 5 also describes a situation involving the use of a smart contract for executing a will that would utilize an oracle to obtain death records that would then cause the smart contract to transfer money to beneficiaries which may also contain further conditions as to when the money might be transferred. None of these references fairly teach or suggest each and every element of claims 1-18. Therefore Examiner deems that claims 1-18 are allowable over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES D NIGH whose telephone number is (571)270-5486. The examiner can normally be reached 5 AM to 2 PM Monday through Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached at (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES D NIGH/Senior Examiner, Art Unit 3699
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