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 .
Response to Amendment
This Office Action is responsive to the amendment received 03 February 2026.
Claims 1-19 and 20 are currently amended, claims 2-4 remain as previously presented and claims 5-18 are as originally presented. In summary, claims 1-20 are pending in the application.
The information disclosure statement (IDS) submitted on 03 February 2026 is accompanied by an IDS size fee under 37 CFR 1.17(v)(1) as attested to by the Applicant. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 2-18 are objected to because of the following informalities: The status of claims 2-18 is incorrect; the correct status of claims 2-18 is that they are as Originally Presented. Appropriate correction is required.
Claims 2-18 are objected to because of the following informalities: The word “Claim” in the first line of each of the claims should not be capitalized. Appropriate correction is required.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,721,058. Although the claims at issue are not identical, they are not patentably distinct from each other as the table below shows that the like lettered elements of claim 1 of the instant application correspond across the column to the like lettered elements of claim 1 of patent 11,721,058.
It is clear to one of ordinary skill in the art prior to the effective filing date of the invention that all the elements of the application claim 1 are to be found in patent claim 1 as the application claim 1 fully encompasses patent claim 1. The difference between the application claim 1 and the patent claim 1 lies in the fact that the patent claim includes more elements and is thus more specific. Thus, the invention of claim 1 of the patent is in effect a “species” of the “generic" invention of the application claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct from claim 1 of the patent.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11,721,058. Although the claims at issue are not identical, they are not patentably distinct from each other as shown the table below that the like lettered elements of claim 19 of the instant application correspond across the column to the like lettered elements of claim 19 of patent 11,721,058.
It is clear to one of ordinary sill in the art prior to the effective filing date of the invention that all the elements of the application claim 19 are to be found in patent claim 19 as the application claim 19 fully encompasses patent claim 19. The difference between the application claim 19 and the patent claim 1 lies in the fact that the patent claim includes more elements and is thus more specific. Thus, the invention of claim 19 of the patent is in effect a “species” of the “generic" invention of the application claim 19. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 19 is anticipated by claim 19 of the patent, it is not patentably distinct from claim 19 of the patent.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 11,721,058. Although the claims at issue are not identical, they are not patentably distinct from each other as the table below shows that the like lettered elements of claim 20 of the instant application correspond across the column to the like lettered elements of claim 20 of patent 11,721,058.
It is clear to one of ordinary sill in the art prior to the effective filing date of the invention that all the elements of the application claim 20 are to be found in patent claim 20 as the application claim 20 fully encompasses patent claim 20. The difference between the application claim 20 and the patent claim 20 lies in the fact that the patent claim includes more elements and is thus more specific. Thus, the invention of claim 20 of the patent is in effect a “species” of the “generic" invention of the application claim 20. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 20 is anticipated by claim 20 of the patent, it is not patentably distinct from claim 20 of the patent.
Claims 1- 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,721,058 as the instant application has at least one examined application claim that is not patentably distinct from a reference claim of U.S. Patent No. 11,721,058.
Application 18/774,808
Patent 11,721,058 - Application 18/069,104
1. A system to animate and send a message, the system comprising one or more computing devices including one or more processors and memories containing program code for execution by the one or more processors, and a bus connecting the one or more processors to a user interface,
(a) the one or more computing devices configured to:
(b) receive the message via [[a]]the user interface,
(c) wherein the message includes a text or emoji character;
(d) receive a selection of a type of animation to apply to the message;
(e) generate an animation that applies the selected type of animation to the message;
(f) display the generated animation; and
(g) receive a selection to send the generated animation to a recipient over a communications network so that the recipient can see the selected type of animation applied to the message.
1. A system to animate an instant-messaging message, the system comprising one or more computing devices including one or more processors and memories containing program code for execution by the one or more processors,
(a) the one or more computing devices configured to:
(b) receive a message to animate and send,
(c) wherein the message to animate and send includes one or more text and/or emoji characters;
(d) receive a selected animation command to apply a type of animation to the message;
(e) generate an animation of the message by applying the commanded type of animation to the message;
(f) display the generated animation of the message; and
(g) receive a selection to send the message to a recipient over a communications network so that the recipient can see the message animated according to the selected animation command.
19. A non-transitory machine-readable medium having stored thereon instructions to animate and send a message that,
(a) when executed by one or more processors in one or more computing devices,
(b) configure the computing devices to:
(c) receive the message via a user interface,
(d) wherein the message includes a text or emoji character;
(e) receive a selection of a type of animation to apply to the message;
(f) generate an animation that applies the selected type of animation to the message;
(g) display the generated animation; and
(h) receive a selection to send the generated animation to a recipient over a communications network so that the recipient can see the selected type of animation applied to the message, wherein a bus connects the one or more processors to the user interface.
19. A non-transitory machine-readable medium having stored thereon instructions to animate an instant-messaging message that,
(a) when executed by one or more processors in one or more computing devices,
(b) configure the computing devices to:
(c) receive a message to animate and send,
(d) wherein the message to animate and send includes one or more text and/or emoji characters;
(e) receive a selected animation command to apply a type of animation to the message;
(f) generate an animation of the message by applying the commanded type of animation to the message;
(g) display the generated animation of the message; and
(h) receive a selection to send the message to a recipient over a communications network so that the recipient can see the message animated according to the selected animation command.
20. A method to allow a user to animate and send a message, comprising
(a) providing machine-readable instructions executable by a computing system having one or more processors and a bus connecting the one or more processors to a user interface, to:
(b) receive the message via [[a]]the user interface, in a memory,
(c) wherein the message includes a text or emoji character;
(d) receive a selection of a type of animation to apply to the message;
(e) generate, by a processor, an animation that applies the selected type of animation to the message;
(f) output the generated animation to a display; and
(g) receive a selection to send the generated animation to a recipient over a communications network so that the recipient can see the selected type of animation applied to the message.
20. A method to allow a user to animate an instant-messaging message, comprising
(a) providing machine-readable instructions executable by a computing system to:
(b) receive, from the user, in a memory, a message to animate and send,
(c) wherein the message to animate and send includes one or more text and/or emoji characters;
(d) receive a selected animation command to apply a type of animation to the message;
(e) generate, by a processor, an animation of the message by applying the commanded type of animation to the message;
(f) output the generated animation of the message to a display; and
(g) receive a selection to send the message to a recipient over a communications network connected to a network interface so that the recipient can see the message animated according to the selected animation command.
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, 19 and 20 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.
Claims 1, 19 and 20 contain a limitation of a bus connecting the one or more processors to a user interface. It is clear to one of ordinary skill in the art prior to the effective filing date of the invention that an electrically conductive hardware bus structure is used to connect the plural hardware elements of a computing device together as schematically exemplified by element 225 of fig. 2 of the instant application. Bus 225, however, shows a CPU connecting to an optional display element without any indication of a user interface. Paragraph [0021] of the specification of the instant application, as noted in the Applicant’s remarks, does describe the bus 225 and a few hardware elements that connect via this electrically conductive hardware bus to yield an operational device. --- [0021] Computing device 200 includes a bus 225 interconnecting several components including a network interface 205, a central processing unit 210, an optional display 215, and a memory 220.
Examples of user interface content displayed on the face of a display device are shown in figs. 6 and 7. Displaying user interface content on a display device of a computing or electronic device is well known in the art, and that central processing unit 210, using computer executable instructions stored in memory 220, generates the user interface content in memory 220 and directly or indirectly moves a representation of that content, usually electrical signals, to the (optional) display device via the bus 225. An electrically conductive hardware bus cannot be directly connected to a user interface as presently claimed.
Claims 2-18 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 as they directly or indirectly inherit from and provide no cure for the indefinite aspects of independent claim 1.
PNG
media_image1.png
200
400
media_image1.png
Greyscale
Response to Arguments
Applicant’s arguments with respect to claims 1-20 have been considered but are moot because the arguments apply to the amended claims and do not reflect the current new grounds of rejection necessitated by the Applicant’s amendment.
The Applicant’s arguments filed 03 February 2026 are primarily based upon the amended claim features incorporated into independent claims 1, 19 and 20.
The Examiner respectfully requests that Applicant look to the Office Action rejections provided above based on the current new grounds of rejection necessitated by the Applicant’s amendment.
Claims 1, 19 and 20 are rejected as shown in the claim rejection sections above and are argued as shown immediately above.
Dependent claims 2-18 are rejected for being dependent upon a rejected base claim as they fail to remedy the basis for the rejections of independent claim 1 from which they directly or indirectly depend.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD MARTELLO whose telephone number is (571) 270-1883. The Examiner can normally be reached on Monday-Friday 9AM-5PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao WU can be reached on (571) 272-7761. 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 Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/EDWARD MARTELLO/
Primary Examiner, Art Unit 2611
Prosecution Insights