Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This communication is a non-Final office action on merit. Claim 21 was canceled. Claims 1-20, after amendment, are presently pending and have been considered below.
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/9/2025 has been entered.
Priority
This application discloses and claims only subject matter disclosed in prior application no 14/464,902, filed 2/9/2010, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or division. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/5/2023 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.
Claim 1 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 8,843,164, filed 2/9/2010 (parent) in view of US 2008/00009300A1, Vuong et al. (hereinafter Vuong) and further in view of US 2006/0247915 A1, Bradford et al. (hereinafter Bradford). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 1, Parent discloses a portable terminal, comprising: a transceiver; memory storing a database including therein a plurality of text content (claim 12); a touch screen display (claim 12); and a processor (claim 12), configured to: receive a message from an external device using the transceiver (claim 12). Parent does not teach determine at least one predictive text, by analyzing a sentence included in the received message, wherein the at least one predictive text is generated based on at least the plurality of text contents stored in the database
Vuong, in the same or similar field of endeavor, further teaches receive a message from an external device using the transceiver (Figs 3, 8; pars 0008, 0030-0034, receiving messages from other phones or electronic devices);
determine at least one predictive text, by analyzing a sentence included in the received message, wherein the at least one predictive text is generated based on at least the plurality of text contents stored in the database (Fig 4; pars 0030, 0032-0033, 0039, 0041, 0043-0044, determine and generate one or more word lists including the identified words and displaying the word lists based on word category, length, grammatical classification, etc. being stored in a database),
display the determined at least one predictive text on the touch screen display (Figs 4, 8; pars 0030-0033, 0042-0044), and
receive a selection of the at least one predictive text so as to generate a reply message (Figs 4, 8; pars 0008, 0030-0033, 0040-0041, 0044, 0047, use a reply command and selection menu to reply the received message by selecting words from a word list) and transmit the generated reply message to the external device using the transceiver (Figs 1, 4; pars 0043, 0045, 0049, reply message being sent via a send command by the handheld electronic device or phone).
Vuong does not expressly disclose at least one text being predictive in nature. Bradford, in the same or similar field of endeavor, further teaches an electronic message with a predictive text editor coupled with a storage unit and generating predictive text when composing a text message (Figs 3-5; pars 0005, 0013, 0023-0029).
Therefore, consider parent, Vuong and Bradford’s teachings as a whole, it would have been obvious to one of skill in the art at the time of invention to incorporate Bradford’s teachings on predictive text generation technique in Vuong and Bradford’s teachings in parent’s device to generate a reply message more efficiently.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/00009300A1, Vuong et al. (hereinafter Vuong) in view of US 2006/0247915 A1, Bradford et al. (hereinafter Bradford) and further in view of US 2003/0073451, Kraft et al. (hereinafter Kraft).
As to claim 1, Vuong discloses a portable terminal, comprising: a transceiver; memory storing a word list database including a plurality of text content used for generating a reply message, wherein the word list database is updatable based on transmitted reply messages (Figs 1-2, a handheld electronic device with a transceiver and memory to store all necessary communication software protocol, application software, phone book, contacts and contents, etc.; Fig 8; pars 0005, 0033, 0046, 0049, the process maintains a database of word usage that can be updated based on word use frequencies, predetermined words, etc.);
a touch screen display (Figs 1, 19); and at least one processor (Fig 2), wherein the memory storing programming instructions executable by the at least one processor to cause the portable terminal to:
receive a message from an external device using the transceiver (Figs 3, 8; pars 0008, 0030-0034, receiving messages from other phones or electronic devices; Fig 4: 110, Fig 10, generate reply/forward message and display one or more word lists; pars 0008, 0030-0031, 0040);
determine at least one input expected text comprising at least one text is selected from the plurality of text contents previously stored in the word list database associated with the received message (Figs 4, 8; pars 0030, 0032-0033, 0039, 0041, 0043-0044, determine and generate one or more word lists including the identified words and displaying the word lists based on word category, length, grammatical classification, etc. being stored in a database; par 0046, the processor apparatus being adapted to generate, store and maintain/update a list of a predetermined number of words that have been determined by the user of the handheld device in creating email messages as most frequently used words (e.g. plurality of text contents previously stored in the database before the message being received),
display the determined at least one input expected text on the touch screen display (Figs 4, 8; pars 0030-0033, 0042-0044),
receive a selection of one of the at least one input expected text,
generate a reply message that includes the selected input expected text (Figs 4, 8; pars 0008, 0030-0033, 0040-0041, 0044, 0047, use a reply command and selection menu to reply the received message by selecting words from a word list) and
transmit the generated reply message to the external device using the transceiver (Figs 1, 4; pars 0043, 0045, 0049, reply message being sent via a send command by the handheld electronic device or phone).
Vuong does not expressly disclose at least one input text being expected in nature, and at least one of a phone book, schedule information, or a call log so determining.
Bradford, in the same or similar field of endeavor, further teaches an electronic message with a predictive or expected text editor coupled with a storage unit and generating predictive text when composing a text message (Figs 3-5; pars 0005, 0013, 0023-0029, input expected word or text).
Although Vuong or Bradford does not expressly indicate a user information database including a phone book and schedule information. However, phone book and calendar (can be used for scheduling user’s activities) is a well-known feature, and has been widely used in many cellular phones in the market place, prior to or at time of invention. Nevertheless, Kraft teaches a terminal device such as a mobile phone possessing phone book, calendar, phone/text records, etc. (Figs 3-5, table 2, pars 0025, 0028, 0031, 0061).
Consider Vuong, Bradford, and Kraft’s teachings together, it would also have been obvious to one of skill in the art at time of invention to incorporate Bradford’s teachings on predictive text generation technique and Kraft’s teachings on user information for the benefit of improving message creation/reply efficiency by utilizing available user related information.
As to claim 2, Vuong as modified discloses the portable terminal of claim 1, wherein the plurality of text content includes a plurality of words (Vuong: Fig 8; pars 0008, 0030, 0040), and wherein the word list database includes at least some of the text content corresponding to one or more words included in the received message, respectively (Bradford: Figs 2, 5; pars 0060, 0490, 0492, 0514-0515).
As to claim 3, Vuong as modified discloses the portable terminal of claim 2, wherein the memory storing programming instructions cause the portable terminal to:
Identify at least one word included in a sentence of the received message (par 0030, a plurality of words in the message thread), and retrieve at least one text content mapped to the identified at least one word from the word list database (Vuong: par 0049; Bradford: pars 0157, 0241, 0250, 0265), wherein the at least one input expected text is based on the retrieved at least one text content (Bradford: pars 0157, 0241, 0250, 0265, saved context data being used to return a prediction of words by quickly retrieving words that are correctly predicted based on text saved in a Context DataBase (CDB)).
As to claim 4, Vuong as modified discloses the portable terminal of claim 1, wherein the memory storing programming instructions cause the portable terminal to: display a reply virtual button with the at least one input expected text on the touch screen display (Vuong: Figs 4, 9-10, 12; pars 0008, 0030-0031, 0040, pushing a reply command executes the reply function), and in response to detecting a user input selecting the reply button, display a text input field and a predictive text field in separate regions on the touch screen display (Vuong: Figs 4, 9-10, 12).
As to claim 5, Vuong as modified discloses the portable terminal of claim 1, wherein the memory storing programming instructions cause the portable terminal to: based on detecting a user input corresponding to a complete reply message, transmit the complete reply message that includes the selected input expected text to the external device (Vuong: Figs 4, 9-10, 12; pars 0030-0031, 0033).
As to claim 6, Vuong as modified discloses the portable terminal of claim 1, wherein the at least one input expected text includes a phrase having multiple words (Vuong: pars 0030-0032; Bradford: Figs 3, 5; pars 0023-0029, generating a list of predicted words, and phrases).
As to claim 7, Vuong as modified discloses the portable terminal of claim 1, wherein the memory storing programming instructions cause the portable terminal to: display the determined at least one input expected text with the received message (Vuong: Figs 4, 8; pars 0030-0033, Bradford: pars 0010, 0028, displaying received messages including predictive text).
As to claim 8, it is a method claim necessitated by claim 1. Rejection of claim 1 is therefore incorporated herein.
As to claims 9-14, they are rejected with the same reason as set forth in claims 2-7, respectively.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Vuong in view of Bradford and further in view of Kraft and US 2007/0152978 A1, Kocienda et al. (hereinafter Kocienda).
As to claim 15, Vuong as modified (by Bradford and Kraft) discloses an electronic device, comprising: a transceiver; memory storing a word list database including a plurality of text content, at least one of a phone book, schedule information, or a call log (and programming instructions (see rejection in claim 1); a touch screen display (see rejection in claim 1); and at least one processor (see rejection in claim 1), wherein the programming instructions are executable by the at least one processor to cause the electronic device to:
receive, via the touch screen display, a user input request generation of a new message (Vuong: Figs 1, 4, 19; pars 0013, 0033-0036);
display, via the touch screen display, a message generation user interface (UI) (Vuong: Figs 4, 8, 19; pars 0030-0033, 0037, 0042),
generate one or more input expected texts comprising at least one text selected from the plurality of text content, previously stored in the word list database and at least one text related to the at least one of the phone book, the schedule information, or the call log (Kraft: Figs 3-5, table 2, pars 0025, 0028, 0031, 0061) before the user input request to generate the new message was received (Vuong: Figs 1, 4, 8-9, 19; pars 0013, 0030, 0032-0033, 0039, 0041, 0043-0044, 0046-0047; Bradford: pars 0010, 0065, 0067), and
display the generated one or more input expected text in the message generation UI, prior to entry of any text into the message generation UI (Vuong: Figs 1, 4, 8-9; Bradford: Figs 1-5; pars 0005, 0013, 0023-0029, 0058, input expected word or text);
detect selection of a first input expected text, and displaying a new message in the message generation UI including the selected first input expected text (Vuong: Figs 1, 4, 8; Bradford: Figs 1-5; pars 0023-0029, 0058).
Vuong as modified discloses limitations above except that it does not expressly teach display the generated one or more input expected text in the message generation UI and display a new message in the message generation UI including the selected first input expected text.
Kocienda, in the same or similar field of endeavor, further teaches display the generated one or more input expected text in the message generation UI (Fig 8: 810) and displaying the new message in the message generation UI including the selected first input expected text (Figs 1, 4, 7-9, 11, 13-14).
Therefore, consider Vuong as modified and Kocienda’s teachings as a whole, it would have been obvious to one of skill in the art at the time of invention to incorporate Kocienda’s teachings regarding displaying predictive texts in a separate field in Vuong as modified’s device to display both input and input expected text or words in a touch sensitive display interface.
As to claim 16, Vuong as modified discloses the electronic device of claim 15, wherein the message generation UI includes a text entry field for displaying entered text, and a predictive text field (Vuong: Figs 1, 4, 8; Kocienda: Figs 7-9).
As to claim 17, Vuong as modified discloses the electronic device of claim 16, wherein prior to the entry of any text into the message generation UI, the one or more input expected texts are displayed in the input expected text field, and the text entry field is empty of text (Vuong: Figs 1, 4, 8; Kocienda: Fig 8: 210, the predictive text field; 214 text entry field).
As to claim 18, Vuong as modified discloses the electronic device of claim 17, wherein the input expected text field is disposed adjacent to an on-screen keyboard that is selectable to enter text into the text entry field (Vuong: Figs 1, 4, 8; Kocienda: Figs 1-2, 8).
As to claim 19, Vuong as modified discloses the electronic device of claim 18, wherein the one or more input expected texts are updated such that at least one entry therein is changed to a new input expected text after detecting either of: selection of a input expected text from the input expected text field for insertion into the text entry field; and input of an entered text into the text entry field by operation of the on-screen keyboard (Vuong: Figs 1, 4, 8; pars 0033, 0046, 0049, word list being updated continuously; Kocienda: Fig 8; pars 0142-0143, 0146).
As to claim 20, Vuong as modified discloses the electronic device of claim 15, wherein the programming instructions are further executable to cause the electronic device to: based on detecting a user input indicating generation of the new message is complete, transmitting the generated new message including the selected input expected text to an external device via the transceiver (Vuong: Figs 1, 4; pars 0043, 0045, 0049, reply message being sent via a send command upon completion by the handheld electronic device or phone).
21. (Canceled)
Response to Arguments
Applicant’s arguments have been considered but they are moot in light of new ground of rejection.
Examiner’s Note
Examiner has cited particular column, line number, paragraphs and/or figure(s) in the reference(s) as applied to the claims for the convenience of the Applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the reference(s) in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Qun Shen whose telephone number is (571) 270-7927. The examiner can normally be reached on Mon-Friday from 9:00-5:00. If attempts to reach the examiner by telephone are unsuccessful, the examiner's Supervisor, Amandeep Saini can be reached on (571) 272-3382. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/QUN SHEN/
Primary Examiner, Art Unit 2662