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 .
This is a Final Office Action responsive to Applicant’s reply filed 5/4/2026.
Claims 1-21 are pending.
Response to Amendment
Applicant has amended the claims to include new limitations necessitating a new search.
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11157298 (hereinafter ‘298). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘298 patent anticipate the claims of the instant application.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11656889 (hereinafter ‘889). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘889 patent anticipate the claims of the instant application.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12020049 (hereinafter ‘049). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘049 patent anticipate the claims of the instant application.
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, 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.
Claim(s) 1, 5-9, 11-14, 16, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Possing et al. (US 10007897) in view of Carpenter et al. (US 2014/0096081).
With respect to claim 1, Possing discloses: A method for automatically invoking a function of a second application while using a first application at a user system (Abstract, where calendaring service corresponds to Applicant’s “second application”, Fig. 1A, Email corresponds to Applicant’s “first application”), the method comprising:
processing input textual information as it is entered by a user into a user interface of the first application that receives input information (col. 4, lines 28-58, OCR obtain text from the screen and analyzes it to generate an event which the auto calendaring service detects); and
automatically invoking the function of the second application to generate an action for an entry that is associated with the second application (col. 3, lines 1-14).
Possing does not specifically disclose the action is generated detect a prefix included in the input textual information, wherein the prefix indicates the function of the second application to be invoked based on contextual information for a context of the first application and while the user continues interacting with the user interface.
However, Carpenter discloses detect a prefix included in the input textual information, wherein the prefix indicates the function of the second application to be invoked based on contextual information for a context of the first application and while the user continues interacting with the user interface ([0022], “web browser application” corresponds to “second application”, “web page” displayed in the web browser application is the “function”, [0023], Fig. 4, labels 406 and 414 where the user continues interacting with the user interface when selecting an entry).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate the teachings of Carpenter as Possing suggests utilizing any other command other than voice commands to invoke the second application (see e.g. col. 4, lines 47) and Carpenter’s multi prefix mechanism would quickly locate desired information with additional functionality that is tailored within the context of the user requests and state information ([0018], Carpenter).
With respect to claim 5, Possing discloses: the second application comprising a calendar application, wherein automatically invoking the function of the second application comprises automatically causing the calendar application to create a meeting invitation related to the textual information (Fig. 1C, Instance 7).
With respect to claim 6, Possing discloses: the second application comprises a customer-relationship management (CRM) application (this is an intended use of the claimed subject matter on a CRM and is not given patentable weight); and automatically invoking the function of the second application to generate the action for the entry that is associated with the second application comprises automatically invoking the function of the CRM application to generate the action for a record in a database associated with the CRM application (col. 5, lines 10-47, CRM is not given patentable weight as it is an intended use of the inventive concept).
With respect to claim 7, Possing discloses: wherein the first application comprises one of an email application and a messaging application and the user interface comprises a window to compose a message (col. 2, lines 40-43, Fig. 1A).
With respect to claim 8, Possing discloses: wherein processing the textual information to determine the function of the second application to be invoked based on the contextual information comprises predicting the action the user would likely take based on the textual information being input (col. 5, lines 10-47).
With respect to claim 9, Possing discloses: wherein predicting the action the user would likely take comprises predicting the action the user would likely take based on a set of past events (id.).
With respect to claim 11, Possing discloses: wherein automatically invoking the function of the second application comprises autopopulating an item within the user interface of the first application that corresponds to the action for the entry associated with the second application (col. 5, lines 10-47).
With respect to claim 12, Possing discloses: detecting a prefix entered into the user interface of the first application, wherein the textual information comprises a text string following the prefix (col. 4, lines 50-55, “zoo” corresponds to Applicant’s “prefix” and “tomorrow” corresponds to Applicant’s “text string”).
With respect to claim 13 and 17, they recite similar limitations as claim 1 and are therefore rejected under the same citations and rationale.
With respect to claim 16, it recites similar limitations as claim 2 and is therefore rejected under the same citations and rationale.
With respect to claim 14, Possing discloses: the second application comprises a virtual application based upon data from a database (Fig. 1B, Auto calendar corresponds to “second application…virtual application”, col. 5, lines 10-47, it uses a search engine or a user profile applied to search results. The entry by the auto calendaring service is therefore based on searching resources for data that have a high degree of certainty to match the context of the text); the entry comprises a record in the database (id. database is just a storehouse of data that is searchable. The auto calendaring service searches a user profile, search engine etc.); and automatically invoking the function of the second application comprises automatically populating an item within the window of the first application with information from the record in the database (col. 5, lines 10-47).
With respect to claim 19, Possing discloses: wherein the entry in a database associated with the second application and the executable instructions are configurable to cause the at least one processor to automatically populate an item within the user interface of the first application using information from the entry in the database (col. 5, lines 10-47).
With respect to claim 20, Possing discloses: the first application comprises an email application or a messaging application; the second application comprises a virtual application based upon data from a database; and the entry comprises a record in the database (col. 2, lines 40-43, col. 5, lines 10-47, a database is merely a storehouse of data that is searchable. The auto calendaring service searches a user profile and a search engine).
Claim(s) 2 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Possing et al. (US 10007897) in view of Carpenter et al. (US 2014/0096081) further in view of Pearse et al. (US 2004/0019611).
With respect to claim 2, Possing discloses: the first application comprises an email application and the user interface comprises a window to compose an email (col. 2, lines 40-43, Fig. 1A).
Possing does not specifically disclose: automatically invoking the function of the second application comprises automatically opening another window to attach a file to the email that is being written within the email application.
However, Pearse discloses: automatically invoking the function of the second application comprises automatically opening another window to attach a file to the email that is being written within the email application ([0033]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate the teachings of Possing to ensure people working in a group project lend themselves to automatically generating a common shared resource based on relevant information ([0005], Pearse).
With respect to claim 15, it recites similar limitations as claim 2 and is therefore rejected under the same citations and rationale.
Claim(s) 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Possing et al. (US 10007897) in view of Carpenter et al. (US 2014/0096081) further in view of Morris (US 2005/0278419).
With respect to claim 3, Possing discloses: the first application comprises an email application and the user interface comprises a window to compose an email (col. 2, lines 40-43, Fig. 1A).
Possing does not specifically disclose: automatically invoking the function of the second application comprises automatically attaching a file to the email that is being written within the email application without the user leaving the context of the email application.
However, Morris discloses: automatically invoking the function of the second application comprises automatically attaching a file to the email that is being written within the email application without the user leaving the context of the email application ([0025]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate the teachings of Morris to link resources with actions and expand the range of actions for a given resource category ([0008], Morris).
With respect to claim 4, Possing discloses: wherein automatically attaching the file comprises matching a prediction result for the context to the entry in a database (col. 5, lines 10-47, a database is merely a storehouse of data that is searchable. The auto calendaring service uses a search engine and a user profile to find data that is relevant).
Claim(s) 10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Possing et al. (US 10007897) further in view of Parker (US 2003/0028600).
With respect to claim 10, Possing does not specifically disclose: wherein automatically invoking the function of the second application comprises automatically invoking the function of the second application via an API call.
However, Parker discloses: wherein automatically invoking the function of the second application comprises automatically invoking the function of the second application via an API call ([0040]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate API calls as taught by Parker into Possing’s auto calendaring technique to enable different software or application systems to communicate.
With respect to claim 18, Parker discloses: wherein the entry comprises a file in a database associated with the second application and the executable instructions are configurable to cause the at least one processor to automatically attach the file via an API call without the user leaving the context of the first application ([0040]).
Allowable Subject Matter
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WISSAM RASHID whose telephone number is (571)270-3758. The examiner can normally be reached Monday-Friday 8:00 am-5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aimee Li can be reached at (571)272-4169. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WISSAM RASHID/Primary Examiner, Art Unit 2195
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