DETAILED ACTION
Response to Preliminary Amendment
The Applicants’ preliminary amendment, 01/02/2025, was received and entered. As the results, original independent claim 1 was cancelled. New claims 2-17 were added, wherein claims 2, 6, 10 and 14 are independent claims, and pending in this application at this time.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 2-3, 6-7, 10-11 and 14-15 are rejected under pre-AIA 35 U.S.C. 102(a)(2) as being anticipated by Sundaram (US 2009/0259722).
Regarding claim 2, Sundaram teaches a first transmission terminal (i.e., a second user 102, as shown in figure 1), comprising:
processing circuitry (i.e., a computer infrastructure 402, as shown in figure 4; para.[0023]) configured to
display a screen image from a second transmission terminal (i.e., when a first user 101 (performed as a second transmission terminal) transmit an electronic file to the second user 102 over the chat service 104 (para.[0017]) wherein the electronic file can be comprised of images, video, etc., para.[0005]), wherein the screen image from the second transmission terminal is caused to be shared with a third transmission terminal for viewing by the third transmission terminal after permission is received (i.e., the second user 102 received the accept or permit from a user associated with the second user (terminal) 102; the file is displayed on a display 107 and to immediately forward the received file to a third party 103 over the chat service 104); and
display the screen image after it is shared with the third transmission terminal (i.e., the electronic file is displayed at the user device 102 and at the third party after the electronic file is received for viewing by a user associated with the third party; para.[0017] and [0020]).
Regarding claim 3, Sundaram further teaches that many users 101, 102, 103 can be connected to the chat service, as a conference, and the users can communicate with more than one other user at the same time (para.[0017]). Sundaram further teaches the feature of previewing and forwarding the electronic file received during the chat session (para.[0009]), which means the electronic file is shared and received by the third terminal during a conference.
Regarding claim 6, Sundaram teaches a method for a first transmission terminal including processing circuitry, the method comprising: (i.e., a second user 102, as shown in figure 1, comprising a computer infrastructure 402, as shown in figure 4; para.[0023]), comprising:
Displaying, on a display, a screen image from a second transmission terminal (i.e., when a first user 101 (performed as a second transmission terminal) transmit an electronic file to the second user 102 over the chat service 104 (para.[0017]) wherein the electronic file can be comprised of images, video, etc., para.[0005]), wherein the screen image from the second transmission terminal is caused to be shared with a third transmission terminal for viewing by the third transmission terminal after permission is received (i.e., the second user 102 received the accept or permit from a user associated with the second user (terminal) 102; the file is displayed on a display 107 and to immediately forward the received file to a third party 103 over the chat service 104); and
displaying, on the display, the screen image after it is shared with the third transmission terminal (i.e., the electronic file is displayed at the user device 102 and at the third party after the electronic file is received for viewing by a user associated with the third party; para.[0017] and [0020]).
Regarding claim 7, Sundaram further teaches that many users 101, 102, 103 can be connected to the chat service, as a conference, and the users can communicate with more than one other user at the same time (para.[0017]). Sundaram further teaches the feature of previewing and forwarding the electronic file received during the chat session (para.[0009]), which means the electronic file is shared and received by the third terminal during a conference.
Regarding claim 10, Sundaram teaches a non-transitory computer-readable storage medium storing executable instructions (i.e., memory 405 and storage system 409, as shown in figure 4, storing computer program codes) which, when executed by processing circuitry (i.e., executing the computer program codes by the processor 404 of a computer infrastructure 402; para.[0023]) of a first transmission terminal, perform a method comprising:
displaying, on a display, a screen image from a second transmission terminal (i.e., when a first user 101 (performed as a second transmission terminal) transmit an electronic file to the second user 102 over the chat service 104 (para.[0017]) wherein the electronic file can be comprised of images, video, etc., para.[0005]), wherein the screen image from the second transmission terminal is caused to be shared with a third transmission terminal for viewing by the third transmission terminal after permission is received (i.e., the second user 102 received the accept or permit from a user associated with the second user (terminal) 102; the file is displayed on a display 107 and to immediately forward the received file to a third party 103 over the chat service 104); and
displaying, on the display, the screen image after it is shared with the third transmission terminal (i.e., the electronic file is displayed at the user device 102 and at the third party after the electronic file is received for viewing by a user associated with the third party; para.[0017] and [0020]).
Regarding claim 11, Sundaram further teaches that many users 101, 102, 103 can be connected to the chat service, as a conference, and the users can communicate with more than one other user at the same time (para.[0017]). Sundaram further teaches the feature of previewing and forwarding the electronic file received during the chat session (para.[0009]), which means the electronic file is shared and received by the third terminal during a conference.
Regarding claim 14, Sundaram teaches a system comprising:
a server (i.e., a chat service or instant messaging service provided by a server or provider; para.[0017]); and
first transmission terminal (i.e., a second user 102, as shown in figure 1) configured to communicate with the server, the first transmission terminal including:
processing circuitry (i.e., a computer infrastructure 402, as shown in figure 4; para.[0023]) configured to
display a screen image from a second transmission terminal (i.e., when a first user 101 (performed as a second transmission terminal) transmit an electronic file to the second user 102 over the chat service 104 (para.[0017]) wherein the electronic file can be comprised of images, video, etc., para.[0005]), wherein the screen image from the second transmission terminal is caused to be shared with a third transmission terminal for viewing by the third transmission terminal after permission is received (i.e., the second user 102 received the accept or permit from a user associated with the second user (terminal) 102; the file is displayed on a display 107 and to immediately forward the received file to a third party 103 over the chat service 104); and
display the screen image after it is shared with the third transmission terminal (i.e., the electronic file is displayed at the user device 102 and at the third party after the electronic file is received for viewing by a user associated with the third party; para.[0017] and [0020]).
Regarding claim 15, Sundaram further teaches that many users 101, 102, 103 can be connected to the chat service, as a conference, and the users can communicate with more than one other user at the same time (para.[0017]). Sundaram further teaches the feature of previewing and forwarding the electronic file received during the chat session (para.[0009]), which means the electronic file is shared and received by the third terminal during a conference.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 4-5, 8-9, 12-13 and 16-17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sundaram (US 2009/0259722) in view of Takeuchi (US 2011/0113097).
Regarding claims 4-5, 8-9, 12-13 and 16-17, Sundaram teaches the first user 101 sharing electronic file (i.e., image) to more one other users (i.e., a third user 103), as discussed above. Sundaram failed to clearly teach the third user 103 to capture electronic file or image a camera on the third user 103 and to share the captured image to first user 101. However, Takeuchi teaches a remote operation system 100, as shown in figure 5 (para.[0198]), comprising an operation target device 200, a first remote device 300a and a third remote device 300b. the remote operation system 100 operates to transmit and share data between the remote device 300a and 300b wherein the data is an image (para.[0200]). Takeuchi further teaches the images or photos being taken by digital cameras on both the remote operation devices 300a and 300b (para.[0307], [0342] and [0370]). Takeuchi further teaches a display screen of images on the remote operation device 300a are shared with the remote operation device 300b via the operation target device 200 (para.[0328] and [0343]-[0344]). Takeuchi further teaches the remote operation device 300b to transmit and share images with the remote operation device 300a via the operation target device 200 (para.[0345]-[0346], [0348], [0353]-[0354], [0377] and [0409]-[0410]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the features of a camera image captured by a camera in the third transmission terminal is shared with the first terminal, as taught by Takeuchi, into view of Sundaram in order to share captured images between users of the first terminal and third terminal.
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 2-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims as followings:
Each of pending independent claims 2, 6, 10 and 14, recited the terms “first terminal,” “second terminal,” “third terminal” and “permission” which make scope of the claims broad to read on and are corresponding to:
a/. the terms “first terminal,” “second terminal,” “external input apparatus” and “permission”, respectively, in the patented claims 1, 8, 18, 24, 28, 33 and 44 in the Patent No.: US 12,058,477;
b/. the terms “first terminal,” “second terminal,” “external input apparatus” and “permission”, respectively, in the patented claims 1, 4, 8, 11 and 15 in the Patent No.: US 10,931,917.
c/. the terms “first terminal,” “second terminal,” “external input apparatus” and “permission”, respectively, in the patented claims 1, 7, 9 and 13 in the Patent No: US 10,477,147.
d/. the terms “first terminal,” “second terminal,” “external input apparatus” and “permission”, respectively, in the patented claims 1, 2 and 8 in the Patent No.: US 10,178,349.
e/. the terms “first terminal,” “second terminal,” “external input apparatus” and “permission”, respectively, in the patented claims 1, 2 and 8 in the Patent No.: US 9,787,944.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than the claims of the patents and/or recited in different words (In re KARLSON (CCPA) 136 USPQ 184 (1963)).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH TIEU whose telephone number is (571)272-7510. The examiner can normally be reached on 9-5. The Examiner’s fax number is (571) 273-7510 and E-mail address: BINH.TIEU@USPTO.GOV.
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/Binh Kien Tieu/Primary Examiner, Art Unit 2694
Date: February 2026