DETAILED ACTION
This Office action is in response to an election by Applicant of claims 1–5 in response to a Restriction Requirement issued 11/18/2025.
Claims 1–5 are being examined and claims 6–10 are presently withdrawn.
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 .
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 obviousness-type 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); 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 conflicting 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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1–5 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1–6, of Foresti (US 10,719,541 A1, issued Jul. 21, 2020).
Specifically, the “selecting a first content”, “capturing an identity of an authenticated user”, “generating … a first URL corresponding to the first content”, “selecting a second content”, “in response to the selection of the first content modifying the second content … by adding the first URL to the second content”, and “enabling a computer … to server the first content corresponding to the first URL” as claimed in independent claim 1 are all elements found in claim 1 of the cited conflicting issued patent listed above.
Subject matter of claim 2 relates to claim 3 in the conflicting patent.
Independent claim 3 recites, “selecting a first content”, “capturing an identity of an authenticated user”, “generating … a first URL corresponding to the first content using a hash of the first content”, and “enabling a computer … to serve the first URL and the first content” as claimed in independent claim 5 of the cited conflicting issued patent listed above.
The subject matter of claims 4 and 5 relate also to the elements in claim 5 of the conflicting patent.
Claim Objections
Claim 1 objected to because of the following informalities: Claim 1 recites, “in response to the selection of the first content modifying the second content in the client computer not currently connected to the global information network by adding the first URL to the second content”, which likely requires a comma after “selection of the first content”, which would clarify what part of the limitation is the “response” and what the “response” is responding to. Appropriate correction is required.
Allowable Subject Matter
Claims 1–5 would be allowed conditioned upon Applicant overcoming the above double patenting rejection.
The following is the Examiner’s statement of reasons for allowance: The closest prior art of record is: Teague (US 2005/0216452 A1, published Sep. 29, 2005; previously cited during examination of conflicting patent US 10,719,541 A1, issued Jul. 21, 2020 in Office Action issued 8/10/2015), teaches user selects data to capture and catalogs selected data using identifiers; Desai (US 2007/0162459 A1, published Jul. 12, 2007), teaches a user selection process for publishing content on the web and creating an associated URL for the content; Ishizuka (US 2009/0271872 A1, published Oct. 29, 2009), teaches user-selected folder and creating a unique identifier to create a URL; Soroushian (US 2010/0250532 A1, published Sep. 30, 2010), teaches user adding content and generating a shortened URL that is embedded with a hash identifying the content; Damola (US 2011/0320572 A1, published Dec. 29, 2011), teaches creating a URL comprising reference data selected by the user; and Howes (US 2012/0136941 A1, published May 31, 2012), teaches user selects option to share content and transmits a created URL.
The Examiner’s examination of the present application identified no additional prior art that could reasonably serve as the basis for a rejection under either 35 U.S.C. 102 or 103.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANCE M LITTLE whose telephone number is (571) 270-0408. The examiner can normally be reached on Monday - Friday 9:30am - 5:30pm.
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/VANCE M LITTLE/Primary Examiner, Art Unit 2493