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 8/30/2024. Claims 1-11 are pending in the case.
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.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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. Claim 2 recites the limitation “the adding the event to the calendar associated with the user profile” in line 3-4. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 13 of U.S. Patent No. 11182055 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the instant application is anticipated by claims 1,7, and 13 of the conflicting patent.
Instant Application 18/821794
US 11182055 B2
A method comprising:
causing display of a presentation of media at a client device, the presentation of the media including a display of an icon;
receiving an input that selects the icon from the client device;
determining a location of the client device responsive to the input that selects the icon;
selecting a set of menu options from among a plurality of menu options based on the location of the client device; and
causing display of a menu element that includes a display of the set of menu options.
A method comprising:
causing display of a presentation of media at a client device, the presentation of the media including a display of an icon that corresponds with a location of interest;
receiving an input that selects the icon from the client device, the input comprising an input attribute that includes an input duration;
accessing location data from the client device in response to the input that selects the icon, the location data identifying a location within a threshold distance of the location of interest that corresponds with the icon;
selecting one or more menu options from among a collection of menu options based on the input duration of the input and the location data from the client device;
generating a menu element based on the icon and the input attribute in response to the input that selects the icon, the menu element including the one or more menu options and a display of a map image that includes the location of interest and an indication of the location of the client device; and presenting the menu element at a position within the presentation of the media at the client device.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 5-11 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-11 of prior U.S. Patent No. 12105930 B2. This is a statutory double patenting rejection.
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.
Claims 1 and 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Allen et al. (US 2016/0085863 A1, hereinafter Allen) in view of Yokota (US 2010/0026526 A1).
As to independent claim 1, Allen teaches a method comprising:
causing display of a presentation of media at a client device, the presentation of the media including a display of an icon (“the media content 1806 (e.g., user 1816 takes a picture)” paragraph 0092), the presentation of the media including a display of an icon within the presentation of the media (Figs. 4D, 5F, 6B, 6D-6E, displaying a user-based media filter i.e. 440, 560 etc., applied to media content in a display of the mobile device 1802, paragraph 0080);
receiving an input that selects the icon from the client device (“the media filter application 122 provides an actionable media filter to the mobile device. For example, the actionable media filter can be a link to open a browser page in the mobile device to obtain a coupon. The actionable media filter can trigger other functions of the mobile device.” paragraph 0050).
Allen does not appear to expressly teach determining a location of the client device responsive to the input that selects the icon;
selecting a set of menu options from among a plurality of menu options based on the location of the client device; and
causing display of a menu element that includes a display of the set of menu options.
Yokota teaches determining a location of the client device responsive to the input that selects the icon (“message contents, a primary location, a secondary location, an effective time, and other information created in the reminder message data (FIG. 5) are evaluated in combination with a current time, a current location, a destination location, etc.” paragraph 0037. The user selects the location reminder message 31A in Fig 2A);
selecting a set of menu options from among a plurality of menu options based on the location of the client device (When the user activates the reminder message icon 29 indicating "Sam: Please buy milk", the navigation will show the list 33 of the suggested locations includes supermarkets and drug stores to buy milk indicated by the reminder message. Paragraph 0039-0044, Fig. 1-3); and
causing display of a menu element that includes a display of the set of menu options (Fig. 2b, list 33 displayed).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Allen to comprise determining a location of the client device responsive to the input that selects the icon; selecting a set of menu options from among a plurality of menu options based on the location of the client device; and causing display of a menu element that includes a display of the set of menu options. One would have been motivated to make such a combination to enhance user experience.
As to dependent claim 3, Allen teaches the method of claim 1, Allen further teaches wherein the media comprises image data (“the media content 1806 (e.g., user 1816 takes a picture)” paragraph 0092).
As to dependent claim 4, Allen teaches the method of claim 1, Allen further teaches wherein the causing display of the presentation of the media at the client device further comprises: receiving a message that includes the media at the client device; and causing display of the presentation of the media based on the message (“A data exchange platform, in an example, includes a messaging application 120 and a media filter application 122, and may provide server-side functionality via a network 104 (e.g., the Internet) to one or more clients. The one or more clients may include users that utilize the network system 100 and, more specifically, the messaging application 120 and the media filter application 122, to exchange data over the network 104.” Paragraph 0052).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Allen et al. in view of Yokota and Scott et al. (US 2010/0070877 A1, hereinafter Scott).
As to dependent claim 2, Allen teaches the method of claim 1, Allen does not appear to expressly teach wherein the menu element comprises a set of menu options, and wherein the selection of the menu element includes a selection of an option from among the set of menu options, and wherein the adding the event to the calendar associated with the user profile is based on the selection of the option.
Scott teaches wherein the menu element comprises a set of menu options, and wherein the selection of the menu element includes a selection of an option from among the set of menu options (“the electronic communication message is scanned and parsed to identify scheduling elements (e.g., time,, the menu element includes an indication of the location and the date” paragraph 0032), and wherein the adding the event to the calendar associated with the user profile is based on the selection of the option (“a context menu 403 which includes action buttons (e.g., "Add to calendar" button 405)” paragraph 0048).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Allen to comprise wherein the menu element comprises a set of menu options, and wherein the selection of the menu element includes a selection of an option from among the set of menu options, and wherein the adding the event to the calendar associated with the user profile is based on the selection of the option. One would have been motivated to make such a combination to provide “a completely automatic mode of operation, where the software is configured to convert all messages that contain scheduling information into a calendar event is provided” Scott paragraph 0013).
Allowable Subject Matter
Claims 5-11 are allowed over prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Dalonzo US 20190187880 A1 teaches systems and methods for augmenting content.
Cheng US 20160334972 A1 Content overlay or social network posts.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAHELET SHIBEROU whose telephone number is (571)270-7493. The examiner can normally be reached Monday-Friday 9:00 AM-5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kieu Vu can be reached at 571-272-4057. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAHELET SHIBEROU/Primary Examiner, Art Unit 2171
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