DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This action is responsive to the application filed August 21, 2024 and preliminary amendment filed December 03, 2024 in which claims 2-20 are newly added.
Thus, claims 1-20 are pending and are presenting for examination.
Examiner Notes
3. Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
4. 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 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.
Claim Objections
5. Claims 15-20 are objected to because of the following informalities:
As to claim 15 (line 4) recites to include the following limitation, “the device” should be changed to, for example --the client device – instead for consistency.
As to claim 16 (line 3) recites to include the following limitation, “the device” should be changed to, for example --the client device – instead for consistency.
As to claim 17 (lines 2 and 3) recites to include the following limitation, “the device” should be changed to, for example --the client device – instead for consistency.
As to claim 18 (line 2) recites to include the following limitation, “the device” should be changed to, for example --the client device – instead for consistency.
Appropriate correction is required.
Claims 19-20 are also objected to for being depended upon the objection of base claim 15.
Double Patenting
6. 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.
7. Claims 1-20 rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,101,983 B2.
Although the claims 1-20 at issue of the U. S. Patent No. ‘983 are not identical, they are not patentably distinct from claims 1-20 of the current examined application because both claimed inventions are directed toward providing a web-based editing tool that intelligently leverages certain functionality of a browser, web client, client, client application at the client side to provide seamless user experience when editing a file over a network in responsive to a user selecting a file for editing, the web client may send a passive content request to a web server embedded in the client application at a specific address on the client device. If no response, the web client prompts the user to start or install the client application on the client device. If a response is received, the web client sends a request to the client application with a user identifier and authorization to download the file from a server.
Thus, claims 1-20 of the current examined application are not patentably distinct from claims 1-12 of the U. S. Patent No. ‘983 and as such are unpatentable for obvious-type double patenting.
8. Claims 1-20 rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,540,161 B2.
Although the claims 1-20 at issue of the U. S. Patent No. ‘161 are not identical, they are not patentably distinct from claims 1-20 of the current examined application because both claimed inventions are directed toward providing a web-based editing tool that intelligently leverages certain functionality of a browser, web client, client, client application at the client side to provide seamless user experience when editing a file over a network in responsive to a user selecting a file for editing, the web client may send a passive content request to a web server embedded in the client application at a specific address on the client device. If no response, the web client prompts the user to start or install the client application on the client device. If a response is received, the web client sends a request to the client application with a user identifier and authorization to download the file from a server.
Thus, claims 1-20 of the current examined application are not patentably distinct from claims 1-12 of the U. S. Patent No. ‘161 and as such are unpatentable for obvious-type double patenting.
9. Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11, 106,445 B2
Although the claims 1-20 at issue of the U. S. Patent No. ‘445 are not identical, they are not patentably distinct from claims 1-20 of the current examined application because both claimed inventions are directed toward providing a web-based editing tool that intelligently leverages certain functionality of a browser, web client, client, client application at the client side to provide seamless user experience when editing a file over a network in responsive to a user selecting a file for editing, the web client may send a passive content request to a web server embedded in the client application at a specific address on the client device. If no response, the web client prompts the user to start or install the client application on the client device. If a response is received, the web client sends a request to the client application with a user identifier and authorization to download the file from a server.
Thus, claims 1-20 of the current examined application are not patentably distinct from claims 1-12 of the U. S. Patent No. ‘445 and as such are unpatentable for obvious-type double patenting.
10. Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11, 593,083 B2.
Although the claims 1-20 at issue of the U. S. Patent No. ‘083 are not identical, they are not patentably distinct from claims 1-20 of the current examined application because both claimed inventions are directed toward providing a web-based editing tool that intelligently leverages certain functionality of a browser, web client, client, client application at the client side to provide seamless user experience when editing a file over a network in responsive to a user selecting a file for editing, the web client may send a passive content request to a web server embedded in the client application at a specific address on the client device. If no response, the web client prompts the user to start or install the client application on the client device. If a response is received, the web client sends a request to the client application with a user identifier and authorization to download the file from a server.
Thus, claims 1-20 of the current examined application are not patentably distinct from claims 1-12 of the U. S. Patent No. ‘083 and as such are unpatentable for obvious-type double patenting.
11. Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,086,578 B2.
Although the claims 1-20 at issue of the U. S. Patent No. ‘578 are not identical, they are not patentably distinct from claims 1-20 of the current examined application because both claimed inventions are directed toward providing a web-based editing tool that intelligently leverages certain functionality of a browser, web client, client, client application at the client side to provide seamless user experience when editing a file over a network in responsive to a user selecting a file for editing, the web client may send a passive content request to a web server embedded in the client application at a specific address on the client device. If no response, the web client prompts the user to start or install the client application on the client device. If a response is received, the web client sends a request to the client application with a user identifier and authorization to download the file from a server.
Thus, claims 1-20 of the current examined application are not patentably distinct from claims 1-12 of the U. S. Patent No. ‘578 and as such are unpatentable for obvious-type double patenting.
Allowable Subject Matter
12. Claims 1-20 are allowed if further rewritten or amended to overcome the objects, and non-statutory type double patenting rejections set forth in this Office action.
13. The following is an Examiner’s statement of reasons for allowance:
The prior arts of record or made of record, taken alone or in combination do not disclose and/or suggest, and/or motivation to combine, “the client application having a local server embedded therein, the passive content request designating a port on the client device for the local server, the passive content request containing a content identifier for content and authorization to download the content; generating, by the client application based on the content identifier, a request for the content; communicating, by the client application, the request with the authorization to a content server to download the content from the content server; once the content is downloaded to the client device, starting, by the client application, a local editor on the client device for local editing the content on the client device; and sending, by the client application, an edited version of the content to the content server to update the content stored remotely on the content server” as limitations recited in as such manners as in independent claim 1 or variants thereof in other independent claims.
Conclusion
14. The prior art made of record and not relied upon (cited on 892 form) is considered pertinent to application disclosure.
Florian (US 20130254656 A1) disclosed local authoring and editing of cloud-based electronic content.
Lee et al. (US 20140114761 A1) disclosed providing previously viewed content with search results.
Malin et al. (US 20120278728 A1) disclosed monitoring the status of downloads of media programs by media devices in media distribution systems.
Chapweske et al. (US 20090063699 A1) disclosed distributing media player plug-in software.
Chow et al. (US-11106794-B2) disclosed designated as a well-known port for HTTP (i.e., layer-7) servers or services.
Edmiston et al. (US- 20120246114-A1) disclose locally editing remotely stored image.
Sneh et al. (US-7272782-B2) discloses providing offline web application, page, and form access in a networked or Internet environment.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARINA LEE whose telephone number is (571)270-1648. The examiner can normally be reached Monday to Friday (8 am to 4: 30 pm ET).
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, Hyung S. Sough can be reached on (571)-272-6799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARINA LEE/Primary Examiner, Art Unit 2192
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