DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to the Application filed on 11/07/2023, said application claims a priority date of 05/28/2021.
Claims 1-20 are pending in the case.
Claims 1, 8 and 15 are independent claims.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-20 of U.S. Patent No. 11.847.403. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons presented below.
Independent Claims 1, 8 and 15:
In regards to representative claim 8, patented claims 1 and 5 teach all of the limitations of instant claim 1.
18/503320 – Claim 1
US 11847403 B2 – Claims 1 and 5
Receive a first operation on a first document rendered in a client user interface, the first document rendered based on processing a document definition by a server
(claim 1) receive a request for a first change to a first document rendered in a client user interface, the first document rendered in a first format based at least on a first intermediate format representation comprising a second format that is different than the first format and generated by a server upon processing an initial document definition, the initial document definition defining, in a computer language, at least an arrangement of content to be rendered in the first document;
transmit information indicative of the first operation to the server;
(claim 1) transmit information indicative of the first change to the first document to the server;
render a modified first document in the client user interface based on an approximation of a first change corresponding the first operation;
(claim 1) selectively modify only a portion of the first intermediate format representation at the client to include an approximation of the first change; render a modified first document that includes the approximation of the first change in the client user interface based at least on the modified first intermediate format representation;
receive a second operation on the modified first document;
(claim 5) receive a request for a second change to the modified first document;
render a further modified first document in the client user interface based on an approximation of a second change corresponding the second operation;
(claim 5) selectively modify only a portion of the modified first intermediate format representation at the client based at least on the second change to generate a further modified first intermediate format representation; and
render a further modified first document in the client user interface based at least on the further modified first intermediate format representation prior to obtaining the second intermediate format representation from the server.
obtain a representation of a second document from the server, the representation generated through processing a first modified version of the document definition that has been updated to implement the first change corresponding to the first operation;
(claim 1) obtain a second intermediate format representation from the server, the second intermediate format representation comprising an intermediate format representation generated through processing a document definition that has been updated based at least on the information indicative of the first change to the first document;
render a second document in the client user interface that includes a representation of the first change based at least on the second intermediate format representation, the representation of the first change being different from the approximation of the first change.
modify the representation of the second document to implement the approximation of the second change corresponding to the second operation; and
render a modified second document in the client user interface based on the modified representation, the modified document including a representation of the first change and the approximation of the second change.
Implied by rendering the approximation of the second change and the representation of the first change
Both inventions provide a method of rendering document changes wherein an approximation of a change to the document is provided until the server processes the change. As can be seen in the mapping above, the second change (in patented claim 5) is rendered in a further modification to the first document and then the server updates the document with a representation of the first change. Patented claim 5 is silent as to what happens to the already rendered approximation of the second change. It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the client would reapply newer edits (reconcile the rendering to include the second approximation that is already displayed with the representation of the first change) or else the rendered document would be stale and the user would no longer have a visual indication of pending edits. Instant claim 1 is merely the implied logical conclusion of the cited patented claims. Claims 8 and 15 are rejected under the same rationale.
Claims 2, 9 and 16:
The limitations of instant claims 2, 9 and 16 are taught by patented claims 1, 8 and 15.
Claims 3, 10 and 17:
The limitations of instant claims 3, 10 and 17 are taught by patented claims 7, 14 and 20.
Claims 4, 11 and 18:
The limitations of instant claims 4, 11 and 18 are taught by patented claims 3, 10 and 17.
Claims 5, 12 and 19:
The limitations of instant claims 4, 11 and 18 are taught by patented claims 2, 9 and 16.
Claims 6, 13 and 20:
The limitations of instant claims 4, 11 and 18 are taught by patented claims 1, 5, 8, 12, 15 and 18. Representative claim 6 just repeats the same steps patented in claims 1 and 5: providing an approximation to a change in a document until the server processes the change, at which point the approximation is replaced with the representation of the server processed change. It is clear that the patented limitations of claim 1 does not stop working after one iteration. It would have been obvious to one of ordinary skill in the art that the patent claims are describing a method for handling any number of changes made to the document.
Claims 7, 14 and 20:
The limitations of instant claims 7, 14 and 20 are taught by patented claims 4 and 11.
In order to advance prosecution, Examiner suggested in an interview with Applicant’s representative.
NOTE: Examiner was not able to find any prior art that teaches all of the limitations of the independent claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL RODRIGUEZ whose telephone number is (571)272-3633. The examiner can normally be reached Monday-Friday 5:30 am - 2:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Hong can be reached at (571) 272-4124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL RODRIGUEZ/ Primary Examiner, Art Unit 2178