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 action is in response to communications filed on 06/28/2024 and 08/22/2024. Claims 1-18 are pending and have been examined.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted was filed on 06/28/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) submitted was filed on 04/25/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
The use of a trade name or a mark used in commerce (e.g. WIFI, BLUETOOTH, etc.) has been noted in this application. It should be capitalized (each letter) wherever it appears and be accompanied by the generic terminology or, where appropriate, include a proper symbol indicating use in commerce, such as ™, SM, or ® following the word. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claim 18 is objected to because of the following informalities:
As per claim 18, the comma in “…first terminal,” in line 5 should be replaced with a semicolon and the word “and” should be inserted after.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “needs” in claim 1 is a relative term which renders the claim indefinite. The term “needs” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The scope of “needs” varies depending on context, person, etc. As such, the claim is indefinite. Independent claim 7 also recites the same limitations and therefore has the same problem. Due at least to their dependency upon claims 1 or 7, dependent claims 2-6 and 8-13 are also indefinite.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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 1-4, 6-10, 12, 14, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (US 20140325384 A1 as cited in IDS dated 06/28/2024) in view of Lee et al. (US 20080182628 A1 as cited in IDS dated 06/28/2024).
As per independent claim 1, Kobayashi teaches a method, comprising:
receiving, by a first terminal, a first operation of a user (e.g. in paragraphs 24 and 54-55, “long-tap operation… slide”);
receiving, by the first terminal, an operation of selecting at least one application interface element that needs to be shared (e.g. in paragraph 6, “display a plurality of screens comprising display objects related to applications, and a transmitting unit, accepts a touch input, stores screen information comprising icons related to at least the applications, disposition information of the icons on the screens, application names, and acquisition source information for the applications, and transmits screen information associated with the screens selected based on the touch input”);
determining, by the first terminal, a desktop drawing file according to the at least one application interface element on a desktop of the first terminal selected by the user (e.g. in paragraphs 50 and 55, “home screen [i.e. desktop] includes prescribed display objects (including icons and widgets)… the home screen information [i.e. desktop drawing file] corresponding to the selected thumbnail graphic is transmitted”); and
sharing, by the first terminal, the desktop drawing file, so that a second terminal updates a second desktop of the second terminal according to the desktop drawing file (e.g. in paragraphs 50 and 76-79, “overwrites the home screen information regarding the first home screen stored in the terminal received beforehand with the received home screen information”), wherein the desktop drawing file comprises location information of the at least one application interface element, a thumbnail and an instruction related the at least one application interface element and wherein the at least one application interface element comprises a desktop application (e.g. in paragraphs 50 and 55, “home screen includes prescribed display objects (including icons and widgets)… screen information includes, for example but without limitation, disposition information of display objects on the home screen (coordinate information), acquisition source information for applications corresponding to display objects (acquisition source URLs), thumbnail graphics… home screen information corresponding to the selected thumbnail graphic is transmitted to the destination corresponding to the selected address graphic 520”),
but does not specifically teach a thumbnail of the at least one application interface element.
However, Lee teaches a desktop drawing file comprising a thumbnail of at least one application interface element (e.g. in paragraphs 83, 89, 91, 94, and 111, “preview file 151 may be a thumbnail image of a representative home screen” and figure 12 showing at least one application interface element; note: enables activation of file when file is stored/received into memory). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Kobayashi to include the teachings of Lee because one of ordinary skill in the art would have recognized the benefit of allowing a user to preview relevant features before activation.
As per claim 2, the rejection of claim 1 is incorporated and the combination further teaches wherein the desktop drawing file further comprises a desktop preview image of the first terminal (e.g. Kobayashi, in paragraphs 50 and 55, “thumbnail graphics”; Lee, in paragraphs 91 and 94, “preview file 151 may be a thumbnail image of a representative home screen”, and figure 12).
As per claim 3, the rejection of claim 1 is incorporated and the combination further teaches wherein the sharing, by the first terminal, the desktop drawing file comprises: sharing, by the first terminal, the desktop drawing file directly to the second terminal by using a wireless connection; or sharing, by the first terminal, the desktop drawing file to a social network for the second terminal to download and use (e.g. Kobayashi, in paragraphs 38 and 55, “performs near-field communication by, for example but without limitation, Bluetooth.TM., infrared communication, or other communication protocol”).
As per claim 4, the rejection of claim 1 is incorporated and the combination further teaches wherein the first operation comprises tapping a desktop sharing button by the user (e.g. Kobayashi, in paragraph 54, “An operation to execute home screen transmission includes, for example but without limitation, a long-tap operation at the home key 122(b)”).
As per claim 6, the rejection of claim 1 is incorporated and the combination further teaches wherein the first operation comprises: a swipe operation of the user on a screen of the first terminal (e.g. Kobayashi, in paragraphs 24 and 55, “slide”, i.e. swipe).
Claims 7-10 and 12 are the method claims corresponding to method claim 1-4 and 6, and are rejected under the same reasons set forth and the combination further teaches an input apparatus, an output apparatus, at least one processor, and a memory storing instructions that, when executed by the at least one processor, cause the mobile terminal to perform (e.g. Kobayashi, in paragraphs 35 and 43-46, “The touch input unit 120 and the display unit 110… control unit 230 includes a Central processing unit… control unit 230 also executes a program stored in the storage unit”).
As per independent claim 14, Kobayashi teaches a mobile terminal, serving as a second terminal, comprising:
an input apparatus, an output apparatus, at least one processor, and a memory storing instructions that, when executed by the at least one processor (e.g. in paragraphs 35 and 43-46, “The touch input unit 120 and the display unit 110… control unit 230 includes a Central processing unit… control unit 230 also executes a program stored in the storage unit”), cause the mobile terminal to perform:
receiving a desktop drawing file shared by a first terminal (e.g. in paragraphs 54-55 and 87, “home screen transmitting… enables sharing of home screen information, including background images, with the other communication terminals”); and
updating a desktop of the second terminal according to the desktop drawing file (e.g. in paragraphs 50 and 76-79, “overwrites the home screen information regarding the first home screen stored in the terminal received beforehand with the received home screen information”), wherein the desktop drawing file comprises location information of at least one application interface element, a thumbnail and an instruction related the at least one application interface element and wherein the at least one application interface element comprises a desktop application (e.g. in paragraphs 50 and 55, “home screen includes prescribed display objects (including icons and widgets) [i.e. application interface elements]… screen information includes, for example but without limitation, disposition information of display objects on the home screen (coordinate information) [i.e. location information], acquisition source information for applications corresponding to display objects (acquisition source URLs) [i.e. instruction], thumbnail graphics…associated with display objects”),
but does not specifically teach a thumbnail of the at least one application interface element.
However, Lee teaches a desktop drawing file comprising a thumbnail of at least one application interface element (e.g. in paragraphs 83, 89, 91, 94, and 111, “preview file 151 may be a thumbnail image of a representative home screen” and figure 12 showing at least one application interface element; note: enables activation of file when file is stored/received into memory). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Kobayashi to include the teachings of Lee because one of ordinary skill in the art would have recognized the benefit of allowing a user to preview relevant features before activation.
As per claim 16, the rejection of claim 14 is incorporated and the combination further teaches wherein the updating the desktop of the second terminal according to the desktop drawing file comprises: replacing a desktop wallpaper of the second terminal; or arranging a desktop icon of the second terminal, according to the desktop drawing file, wherein the desktop icon comprises an icon of the desktop application, an icon of a desktop widget, or an icon of a folder on the desktop (e.g. Kobayashi, in paragraphs 50, 76-79, and 87, “overwrites… background image” and “prescribed display objects (including icons and widgets)”; Lee, in paragraphs 83 and 110-111, “theme background… icons…displayed in a column (or row) [and/or] along one side”).
As per claim 17, the rejection of claim 14 is incorporated and the combination further teaches wherein the desktop drawing file further comprises a desktop preview image of the first terminal (e.g. Kobayashi, in paragraphs 50 and 55, “thumbnail graphics”; Lee, in paragraphs 91 and 94, “preview file 151 may be a thumbnail image of a representative home screen”, and figure 12).
Claims 5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (US 20140325384 A1 as cited in IDS dated 06/28/2024) in view of Lee et al. (US 20080182628 A1 as cited in IDS dated 06/28/2024) and further in view of Yu et al. (CN103472974 published 12/25/2013, which is noted as corresponding to US 20160088035 A1 as cited in IDS dated 06/28/2024; as such, the US publication as used as the translation for CN103472974 and paragraph numbers cited below are for the US publication for simplicity; note a further translation is also provided previously in parent application 15/541974 which appears the same in terms of substance to the US publication).
As per claim 5, the rejection of claim 4 is incorporated and the combination further teaches the receiving, by the first terminal, the first operation comprising the tapping by the user (e.g. Kobayashi, in paragraph 54, “An operation to execute home screen transmission includes, for example but without limitation, a long-tap operation at the home key 122(b)”), but does not specifically teach before the receiving, by the first terminal, the first operation: receiving, by the first terminal, a second operation of the user; and entering, by the first terminal, a desktop editing mode and displaying on the desktop an editing interface. However, Yu teaches before receiving, by a first terminal, a first operation: receiving, by the first terminal, a second operation of the user and entering, by the first terminal, a desktop editing mode and displaying on the desktop an editing interface (e.g. in paragraphs 34-35, “When needing to share an application, the user may operate the terminal device so that the desktop of the terminal device is in the editable state… the user selects the share button after selecting an icon of the to-be-shared application”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the combination to include the teachings of Yu because one of ordinary skill in the art would have recognized the benefit of facilitating different modes and/or for the purpose of design (amounts a simple substitution that yields predictable results [e.g. see KSR Int'l Co v. Teleflex Inc., 550 US 398,82 USPQ2d 1385,1396 (U.S. 2007) and MPEP 2143(B)]).
Claim 11 is the terminal claim corresponding to method claim 5, and is rejected under the same reasons set forth.
Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (US 20140325384 A1 as cited in IDS dated 06/28/2024) in view of Lee et al. (US 20080182628 A1 as cited in IDS dated 06/28/2024) and further in view of Bells et al. (US 20050050474 A1 as cited in IDS dated 06/28/2024).
As per claim 13, the rejection of claim 7 is incorporated, but the combination does not specifically teach wherein the desktop drawing file is in an Extensible Markup Language (XML) format. However, Bells teaches a desktop drawing file is in an Extensible Markup Language (XML) format (e.g. in paragraphs 45-46, “XML theme file 136 includes instructions for creating the UI theme file 130 required by the mobile electronic device 10 to implement an associated user interface theme”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the combination to include the teachings of Bells because one of ordinary skill in the art would have recognized the benefit of representing desktop information (also amounts a simple substitution that yields predictable results [e.g. see KSR Int'l Co v. Teleflex Inc., 550 US 398,82 USPQ2d 1385,1396 (U.S. 2007) and MPEP 2143(B)]).
As per claim 15, the rejection of claim 14 is incorporated, but the combination does not specifically teach wherein the desktop drawing file is in an Extensible Markup Language (XML) format. However, Bells teaches a desktop drawing file is in an Extensible Markup Language (XML) format (e.g. in paragraphs 45-46, “XML theme file 136 includes instructions for creating the UI theme file 130 required by the mobile electronic device 10 to implement an associated user interface theme”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the combination to include the teachings of Bells because one of ordinary skill in the art would have recognized the benefit of representing desktop information (also amounts a simple substitution that yields predictable results [e.g. see KSR Int'l Co v. Teleflex Inc., 550 US 398,82 USPQ2d 1385,1396 (U.S. 2007) and MPEP 2143(B)]).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (US 20140325384 A1 as cited in IDS dated 06/28/2024) in view of Lee et al. (US 20080182628 A1 as cited in IDS dated 06/28/2024) and further in view of Malabuyo et al. (US 20060205517 A1 as cited in IDS dated 06/28/2024).
As per claim 18, the rejection of claim 17 is incorporated and the combination further teaches the receiving the desktop drawing file shared by the first terminal and updating the desktop of the second terminal according to the desktop drawing file (e.g. Kobayashi, in paragraphs 50 and 76-79), but does not specifically teach before the updating: displaying the desktop preview image of the first terminal; and when a third operation is received, triggering the updating the desktop of the second terminal according to the desktop drawing file , wherein the third operation is used to determine to use the desktop drawing file. However, Malabuyo teaches before updating a desktop of a terminal: displaying a desktop preview image of a received desktop drawing file and when a third operation is received, triggering the updating the desktop of the terminal according to the desktop drawing file, wherein the third operation is used to determine to use the desktop drawing file (e.g. in paragraphs 228 and 227, “finished download themes…, the user will return to the Theme menu with preserved focus. The newly downloaded theme thumbnail will appear in the preview window” and “Theme sub-menu of the options menu will allow the user to select a system theme (Dashboard skin with HUD background blade skin). Generally, the user will see a small thumbnail image showing the currently highlight theme (with HUD over Dash in thumbnail)… [receiving an operation] will immediately apply the theme”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the combination to include the teachings of Malabuyo because one of ordinary skill in the art would have recognized the benefit of giving an idea of the information to the second user and/or allowing the second user to choose between files.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10795633. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite similar subject matter which is obvious over one another. For example, the claims of ‘633 recite features of the present claims, but do not specifically recite wherein the desktop drawing file is in an Extensible Markup Language (XML) format. However, prior art (e.g. Bells, as noted above) teaches a desktop drawing file is in an Extensible Markup Language (XML) format (e.g. Bells, in paragraphs 45-46, “XML theme file 136 includes instructions for creating the UI theme file 130 required by the mobile electronic device 10 to implement an associated user interface theme”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the claims of ‘633 to include the teachings of the prior art (e.g. Bells) because one of ordinary skill in the art would have recognized the benefit of representing desktop information (also amounts a simple substitution that yields predictable results [e.g. see KSR Int'l Co v. Teleflex Inc., 550 US 398,82 USPQ2d 1385,1396 (U.S. 2007) and MPEP 2143(B)]).
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 12056415 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite similar subject matter which is obvious over one another. For example, the claims of ‘415 recite features of the present claims, but do not specifically recite wherein the desktop drawing file is in an Extensible Markup Language (XML) format. However, prior art (e.g. Bells, as noted above) teaches a desktop drawing file is in an Extensible Markup Language (XML) format (e.g. Bells in paragraphs 45-46, “XML theme file 136 includes instructions for creating the UI theme file 130 required by the mobile electronic device 10 to implement an associated user interface theme”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of the claims of ‘415 to include the teachings of the prior art (e.g. Bells) because one of ordinary skill in the art would have recognized the benefit of representing desktop information (also amounts a simple substitution that yields predictable results [e.g. see KSR Int'l Co v. Teleflex Inc., 550 US 398,82 USPQ2d 1385,1396 (U.S. 2007) and MPEP 2143(B)]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
For example,
Santoro et al. (US 20030020671 A1) teaches “Tiles from the tile library can be called and displayed on the screen by asking the registry to load tiles. The tile and grid store interfaces to an XML library 1906… Users are then able to share grids and tiles with other users” (e.g. in paragraphs 141-142 and 189).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM WONG whose telephone number is (571)270-1399. The examiner can normally be reached Monday-Friday 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TAMARA KYLE can be reached at (571)272-4241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.W/Examiner, Art Unit 2144 09/23/2026
/TAMARA T KYLE/Supervisory Patent Examiner, Art Unit 2144
