DETAILED ACTION
This action is responsive to the following communication: the RCE filed on 09/22/2025. This action is made non-final.
Claims 1-4, 7-12, 15-21 are pending in the case. Claims 1, 9 and 17 are independent claims.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/22/25 has been entered.
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 1-4, 7-12, 15-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims as provided in the table below of U.S. Patent No. 11,669,674 (hereinafter ‘674).
Instant Application 17/974,354
U.S. Patent -674
Claim 1.
A method comprising:
Claim 1.
A method comprising:
- providing an electronic document for display in a graphical user interface (GUI) at a first user device associated with a first user;
- receiving, from a first client device associated with a first user, content of a first comment corresponding to an electronic document stored in a repository associated with an online document service and accessible by a plurality of user accounts for collaborative editing, the content of the first comment comprising i) a particular symbol followed by one or more characters that represent a second user and ii) a textual message corresponding to a first user's comment;
- receiving, from the first client device, an indication that the first comment has been completed;
- receiving a first input related to a portion of the electronic document from the first user device of the first user, wherein the first input comprises a particular symbol followed by one or more characters that represent a second user;
- receiving a second input related to the portion of the electronic document from the first user device of the first user, wherein the second input comprises textual input related to the portion of the electronic document;
- responsive to receiving, from the first client device, the indication that the first comment has been completed, analyzing, by a server of the online document service, the content of the completed first comment corresponding to the electronic document to determine one or more user electronic mail (email) addresses; and
- analyzing, by a processor, the first input related to the portion of the electronic document to determine one or more electronic mail (email) addresses to which an email message corresponding to the electronic document is to be sent, wherein the analyzing the first input comprises:
- providing one or more email addresses for presentation at the first user device based on the first input, and
- receiving a selection of an email address of the second user from the one or more email addresses presented at the first user device,
- wherein the first input and the second input are provided for display in the GUI at the first user device and a copy of the first input and the second input is included in the email message to be sent to a second user device associated with the selected email address;
[- receiving, from the first client device, an indication that the first comment has been completed;] {recited in the earlier step}
- receiving a user selection indicating a completion of inputs related to the portion of the electronic document;
- responsive to analyzing the content of the completed first comment, automatically sending a notification indicating the completed first comment has been received exclusively to the one or more user email addresses determined from analyzing the particular symbol followed by the one or more characters from within the content of the completed first comment rather than to all users associated with the electronic document hosted by the online document service, the notification to display a same content of the textual message corresponding to the first user's comment.
- responsive to receiving the user selection indicating the completion of inputs related to the portion of the electronic document, identifying the email address of the second user; and responsive to identifying the email address of the second user, causing the email message comprising the copy of the first input and the second input to be sent to the second user device using the email address selected from the one or more email addresses, wherein the email message notifies the second user that the textual input that is related to the portion of the electronic document has been received, and wherein the email message comprises a link to a page that causes a presentation of a comment thread comprising the textual input to be provided to the second user device
Claim 2
Claim 2
Claim 3
Claim 1
Claim 4
Claim 4
Claim 7
Claim 3
Claim 8
Claim 1
Independent Claim 9
Independent claim 7
Claim 10
Claim 8
Claim 11
Claim 7
Claim 12
Claim 10
Claim 15
Claim 9
Claim 16
Claim 7
Independent Claim 17
Independent claim 11
Claim 18
Claim 12
Claim 19
Claim 11
Claim 20
Claim 14
Claim 21
Claim 1
As seen in the above table, the claims of the ‘674 patent contain every element of claims 1-4, 7-12, 15-21 of the instant application and as such they render obvious claims 1-4, 7-12, 15-21 of the instant application; therefore are not patently distinct from the earlier patent claims and are unpatentable for obvious-type double patenting.
Allowable Subject Matter
Claims 1-4, 7-12, 15-21 are allowed if overcome the foregoing double patenting rejection.
Conclusion
The prior art made of record on form PTO-892 and not relied upon is considered pertinent to applicant's disclosure. Applicant is required under 37 C.F.R. § 1.111(c) to consider these references fully when responding to this action.
It is noted that any citation to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the references should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. In re Heck, 699 F.2d 1331, 1332-33,216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,1009, 158 USPQ 275,277 (CCPA 1968)).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TUYETLIEN T TRAN whose telephone number is (571)270-1033. The examiner can normally be reached M-F: 8:00 AM - 8:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Irete (Fred) Ehichioya can be reached on 571-272-4034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TUYETLIEN T TRAN/Primary Examiner, Art Unit 2179