DETAILED ACTION
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 responsive to the Application filed on 08/28/2024, said application claims a priority date of 07/17/2020.
Claims 1-20 are pending in the case.
Claims 1, 9 and 17 are independent claims.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 9-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Independent Claim 9:
During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 U.S.P.Q.2d 1827, 1834 (Fed. Cir. 2004). Independent claim 9 recites a “computer readable medium,” which is not comprehensively defined by the specification. The broadest reasonable interpretation of a claim drawn to a computer readable medium covers forms of transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. Transitory propagating signals are non-statutory subject matter. In re Nuijten, 500 F.3d 1346, 1356-57, 84 U.S.P.Q.2d 1495, 1502 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter). See also Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Examiner suggests adding the word “non-transitory.”
Claims 10-16:
The rejection of claims 10-16 are rejected for fully incorporating the deficiency of their respective base claims.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,893,340. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are merely a broader version of the patented claims. Accordingly, the patented claims fully anticipate the instant claims.
Claims 1, 9 and 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. 11,270,063. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are merely a broader version of the patented claims. Accordingly, the patented claims fully anticipate the instant claims.
Claims 1, 9 and 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. 12,079,567. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are merely a broader version of the patented claims. Accordingly, the patented claims fully anticipate the instant claims.
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 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.
Claim(s) 1, 4, 5, 7-9, 12, 13, 15-17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gaither et al. (US 2017/0192950 A1, published 07/06/2017, hereinafter “Gaither”) in view of Shekman Tang (“The cult of conversational design: why forms aren’t dead yet”, published 10/11/2017, hereinafter “Tang”).
Independent Claim 1, 9 and 16:
Gaither discloses a system comprising:
a server comprising at least one processor and a computer-readable medium comprising a set of instructions that when executed by the processor cause the server to perform operations [method] to (Gaither: Figs. 1 and 7, ¶ [0069], [0105]-[0106].):
present a first graphical element embedded within a page, the first graphical element comprising a first conversation bubble shape and a text string corresponding to a first prompt of a set of prompts of an electronic form, the first graphical element having a first visual attribute that matches at least one visual attribute of the page (A conversational bubble contained in the a UI page (embedded within a page) can present a first request for content associated with the field of the electronic form, Gaither: Figs. 2-4, ¶ [0047], [0049], [0060], [0075]. As illustrated in Figs. 2-4, the conversation bubbles can share a same style (e.g. color, font, etc.) with other conversation bubbles in the same page (visual attribute of a page).);
present a second graphical element embedded within the page and below the first graphical element and comprising a second conversation bubble shape, wherein the second graphical element has a second visual attribute that matches the at least one visual attribute of the page (A third conversational bubble corresponding to an additional request for content is presented to the user, Gaither: Fig. 3, ¶ [0062]-[0065]. As illustrated in Figs. 2-4, the conversation bubbles can share a same style (e.g. color, font, etc.) with other conversation bubbles in the same page (visual attribute of a page).);
aggregate any input received via an input element for compiling the electronic form (Gaither: Fig. 3, ¶ [0062]-[0065].); and
transmit the electronic form to a second server (The filled out form is saved and transmitted to a recipient server, Gaither: ¶ [0033], [0100].).
Gaither does not appear to expressly teach a system, medium and method wherein the second conversation bubble comprises the input element, wherein the input element is configured to receive an input from a user computing device outputting the page, the second conversation bubble further comprising a button for causing transmission of the input to the server.
However, Gaither teaches a system, medium and method wherein the second conversation bubble comprises the input element, wherein the input element is configured to receive an input from a user computing device outputting the page, the second conversation bubble further comprising a button for causing transmission of the input to the server (As can be seen in the figure of page 8, the second element provides an input element (e.g. the text field for entering the user’s job title) and a button (e.g. the white arrow in the purple box) to submit the text input, Tang: pages 7 and 8. Since the interface is provided via website, it is clear that the text input is being submitted to a server (e.g. a webserver) that is hosting the website.).
Accordingly, 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 system, medium and method of Gaither wherein the second conversation bubble comprises the input element, wherein the input element is configured to receive an input from a user computing device outputting the page, the second conversation bubble further comprising a button for causing transmission of the input to the server, as taught by Tang.
One would have been motivated to make such a combination in to provide a more effective conversational interface for filling out the electronic forms (Tang: pages 7-10.).
Claims 4, 12 and 20:
The rejection of claims 1, 9 and 17 are incorporated. Gaither in view of Tang further teaches a system, medium and method further comprising:
relocating, by the server, at least one of the first graphical element or the second graphical element (Tang: page 8).
Claims 5 and 13:
The rejection of claims 1 and 9 are incorporated. Gaither in view of Tang further teaches a medium and method further comprising:
obfuscating, by the server, an inputted value received from the user computing device (The user can input a social security number and only the last four digits are displayed, Gaither: Fig. 3, ¶ [0067]. Accordingly, the full social security number is “obfuscated.”).
Claims 7 and 15:
The rejection of claims 1 and 9 are incorporated. Gaither in view of Tang further teaches a medium and method further comprising:
generating, by the server, an electronic file comprising at least one input received from the user computing device; and transmitting, by the server, the electronic file to the second server (The filled out form is saved and transmitted to a recipient server, Gaither: ¶ [0033], [0100].).
Claims 8 and 16:
The rejection of claims 1 and 9 are incorporated. Gaither in view of Tang further teaches a system and method wherein the at least one visual attribute of at least one of the first graphical element or the second graphical element is determined by a user operating the user computing device (The position of the conversation bubbles (visual attribute) is changed (determined) based on the user inputs, Gaither: Fig. 2; Tang: page 8.).
Claim(s) 2, 3, 10, 11, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gaither in view of Tang and further in view of Cummins et al. (US 2019/0087707, published 03/21/2019, hereinafter “Cummins”).
Claims 2, 10 and 18:
The rejection of claims 1, 9 and 17 are incorporated. Gaither in view of Tang further teaches a system, medium and method wherein the page is hosted by a second server.
However, Cummins teaches a system, medium and method wherein the page is hosted by a second server (The Artificial Conversational Entity can be hosted by a web server (server), Cummins: ¶ [0070], [0071], [0101]. The webpages that the conversational interface is embedded into can be hosted by different webservers (hosted by a second server), Cummins: Figs. 8A-8E, ¶ [0052]-[0053], [0106], [0143].).
Accordingly, 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 system, medium and method of Gaither in view of Tang wherein the page is hosted by a second server, as taught by Cummins.
One would have been motivated to make such a combination in order to better integrate the conversational interface to various different web content (Cummins: Figs. 8A-8E, ¶ [0070], [0071], [0101]-[0106], [0143].).
Claims 3, 11 and 19:
The rejection of claims 1, 9 and 17 are incorporated. Gaither in view of Tang further teaches a system, medium and method further comprising:
directing, by the server, the user computing device to the page.
However, Cummins teaches a system, medium and method comprising:
directing, by the server, the user computing device to the page (The Artificial Conversational Entity can be hosted by a web server (server), Cummins: ¶ [0070], [0071], [0101]. The webpages that the conversational interface is embedded into can be hosted by different webservers (hosted by a second server), Cummins: Figs. 8A-8E, ¶ [0052]-[0053], [0106], [0143]. The web server directs the computing device to the web page, Cummins: ¶ [0101]-[0106], [0143].).
Accordingly, 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 system, medium and method of Gaither in view of Tang to comprise:
directing, by the server, the user computing device to the page, as taught by Cummins.
One would have been motivated to make such a combination in order to better integrate the conversational interface to various different web content (Cummins: Figs. 8A-8E, ¶ [0070], [0071], [0101]-[0106], [0143].).
Claim(s) 6 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gaither in view of Tang and further in view of Space10 (“Turn you content into conversations”, available 03/25/2020, hereinafter “Space10”).
Claims 6 and 14:
The rejection of claims 1 and 9 are incorporated. Gaither in view of Tang does not appear to teach a medium and method wherein the first graphical element or the second graphical element comprises an interactive element configured to allow editing an inputted value.
However, Space10 teaches a medium and method wherein the user responses further comprises an interactive element configured to allow editing the inputted values (Space10 provides a demo of a conversational form, Space10: page 2. Figures: 1-7 are screenshots of Examiner interacting with the demo. Figs. 2-7 illustrate that the user responses are displayed with an up arrow that the user can select to edit a previous response via a previously displayed input element, Space10: pages 3-6.).
Accordingly, 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 medium and method of Gaither in view of Tang wherein the user responses further comprises an interactive element configured to allow editing the inputted values, as taught by Space10.
One would have been motivated to make such a combination in order to improve the user’s experience by providing a more effective conversational interface for filling out an electronic form (Space10: pages 3-6).
In implementing the editing feature of Space10 into the invention of Gaither in view of Tang, the user response (as taught by Space10) would be displayed in a conversational bubble since the user responses are displayed within conversational bubbles in the invention on Gaither in view of Tang (as presented above). Accordingly, in combination Gaither in view of Tang and further in view of Space10 teaches a system and method wherein the first graphical element or the second graphical element comprises an interactive element configured to allow editing an inputted value.
Conclusion
Examiner has cited particular columns and line and/or paragraph numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to 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.
The examiner requests, in response to this Office action, support be shown for language added to any original claims on amendment and any new claims. That is, indicate support for newly added claim language by specifically pointing to page(s) and line number(s) in the specification and/or drawing figure(s). This will assist the examiner in prosecuting the application.
When responding to this office action, Applicant is advised to clearly point out the patentable novelty which he or she thinks the claims present, in view of the state of the art disclosed by the references cited or the objections made. He or she must also show how the amendments avoid such references or objections See 37 CFR 1.111(c).
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL RODRIGUEZ whose telephone number is (571)272-3633. The examiner can normally be reached Monday-Friday 5:30 am - 2:30 pm.
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, Stephen Hong can be reached at (571) 272-4124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL RODRIGUEZ/Primary Examiner, Art Unit 2178
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