DETAILED ACTION
Claims 1-17 are presented for consideration.
Specification
2. Examiner requests Applicants to update status of related applications as mentioned in the specification, page 1.
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.
3. Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,192,414, claims 1-20 of U.S. Patent No. 11,825,035, claims 1-20 of U.S. Patent No. 11,665,287, and claims 1-19 of U.S. Patent No. 11,061,637. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patents claim subject matter of the claims of the current application, and thus, they are anticipated every limitation of the current application.
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 1 is 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.
Claim 1 recites the limitation "the frame" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Landry [ US Patent Application No 2012/0130834 ], in view of Ellsworth et al. [ US Patent Application No 2009/0204885 ].
As per claim 1, Landry discloses the invention as claimed including a method of initializing a photo display on a digital display device with a network connection module, the method comprising:
the mobile electronic device including a digital photo collection of the first user [ i.e. album ] [ paragraphs 0100, and 0101 ];
wirelessly adding the digital display device to the first interaction application at a first location of the first user [ i.e. enter unique identifier ] [ 62, Figure 6; and paragraphs 0089, 0090, and 0093-0095 ];
adding photos of interest for a second user to the frame, selected by the first user from the digital photo collection of the first user and/or selected by an invited community member from a digital photo collection of the invited community member [ i.e. content selection entry ] [ 70A-70C, Figure 6; and paragraphs 0098-0101 ];
delivering the digital display device to the second user at a second location of the second user [ i.e. giving the digital media frame gift to a recipient ] [ paragraphs 0088, 0089, and 0123 ]; and
the second user initiating start-up of the digital display device at the second location [ i.e. recipient receives the digital image display device, and plugs it into a wall outlet ] [ 310, Figure 5; and paragraph 0117 ], wherein the photos of interest added by the first user and/or the invited community member are automatically downloaded to the digital display device and displayed to the second user upon the start-up [ i.e. automatically display digital asset ] [ paragraphs 0120, and 0130 ].
Landry does not specifically disclose
downloading a first interaction application to a mobile electronic device of a first user.
Ellsworth discloses
downloading a first interaction application to a mobile electronic device of a first user [ i.e. the mobile client application may be distributed for installation on a plurality of wireless mobile clients ] [ 604, Figure 6; and paragraphs 0075, and 0080 ].
It would have been obvious to a person skill in the art before the effective filing date of the claimed invention to combine the teaching of Landry and Ellsworth because the teaching of Ellsworth would enable to organize content collected by multiple client devices and distributed for user access [ Ellsworth, paragraph 0012 ].
As per claim 2, Landry discloses the invited community members adding further photos of interest for the second user to the digital display device through a community member interaction application [ i.e. friends or family members ] [ paragraphs 0100, 0101, and 0124 ].
As per claim 3, Landry discloses wherein the downloading, adding, and inviting steps occur without removing the digital display device from a packaging and without powering on the digital display device [ i.e. without having to open the manufacturer’s original packages ] [ paragraph 0089 ].
As per claim 4, Landry discloses adding a start-up message from the first user to the second user through the first interaction application, wherein the start-up message added by the first user is automatically displayed to the second user upon the start-up [ i.e. display visual messages ] [ paragraph 0070 ].
As per claim 5, Landry discloses adding at least one additional message received from the first user; and forwarding the at least one additional message at a predetermined time duration after the start-up message [ paragraphs 0086, 0103 and 0112 ].
As per claim 6, Landry discloses wherein delivering the digital display device to the second user comprises gifting the second user the digital display device [ paragraphs 0088, and 0089 ].
As per claim 7, Landry discloses wherein adding the digital display device to the first interaction application comprises: establishing a first user account within the first interaction application [ i.e. account ] [ paragraphs 0096, and 0101 ]; and adding the digital display device as a gift display device for the second user within the first interaction application [ paragraphs 0107, and 0110 ].
As per claim 8, Landry discloses wherein an invited community member interaction application displays clusters of photos on the digital display device matching content of the photos of interest selected by the first user [ i.e. personalized pictures of the family ] [ paragraphs 0123, and 0124 ].
As per claim 9, Landry discloses the first interaction application automatically clustering digital photos of a first digital photo collection of the first mobile electronic device according to photo content, wherein the first user adds photos for the second user according to clusters of digital photos [ paragraphs 0123, and 0124 ].
As per claim 10, Landry discloses wherein the adding the digital display device to the first interaction application comprises: providing a packaged digital display device to the first user [ i.e. digital image display device that has been purchased ] [ paragraph 0088 ]; the first user removing an outer packaging to reveal a device gift set-up code; scanning the device gift set-up code, wherein the digital display device is not removed from an inner packaging [ i.e. outside of the package, and without having to open the manufacturer’s original packaging ] [ paragraph 0089 ].
As per claim 11, Landry discloses wherein the adding the digital display device to the first interaction application comprises:receiving an online purchase of the digital display device from the first user [ i.e. online retailer ]; and forwarding an electronic gift setup link to the first user [ i.e. the on-line retailer then sends an E-mail to the purchaser ] [ paragraph 0092 ], wherein the gift setup link is configured to add the digital display device to the first interaction application [ i.e. link ] [ paragraphs 0089, and 0095 ].
18. As per claim 12, Landry discloses wherein the digital display device is a digital picture frame [ Figures 2A and 2B ].
As per claim 13, Landry discloses storing data on device delivering activities at a server data processor, wherein the stored data includes connections between the first user, the second user, and any invited community members [ i.e. servers ] [ Figure 3; and paragraphs 0061, and 0073 ].
As per claim 14, Landry discloses the server computer forwarding user information updates to the first user, the second user, and/or any invited community members as a function of the stored data [ i.e. update and notification ] [ paragraphs 0086, and 0149 ].
21. As per claim 15, Ellsworth discloses the first user creating a group of photos; tagging the group of photos by an identifier; forwarding the identifier to the second user and community members; and displaying the group of photos on the digital display device of the second user and/or of any of the community members upon an acceptance of the identifier [ i.e. labeled such as “concert”, and metadata label or tag ] [ paragraphs 0088-0091, and 0108 ].
As per claim 16, Landry discloses receiving a return message to the first user from the second user through the digital display device, the return message received via tap or gesture of the second user; and delivering the return message to the first interaction application [ i.e. the message entry area that can be displayed on the display screen if the user of the digital image display device attempts to activate one of the user input interface that has been disabled ] [ paragraph 0141 ].
23. As per claim 17, Landry discloses automatically forwarding a message to the first interaction application indicating and upon the start-up of the digital display device [ i.e. the remote viewing interface section can display a message indicating that the digital image display device has not yet been connected to the network ] [ paragraph 0112 ].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cok et al. [ US Patent Application No 2012/0254709 ] discloses image collection text and audio annotation
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUSTIN NGUYEN whose telephone number is (571)272-3971. The examiner can normally be reached Monday-Friday 9-6 PST.
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/DUSTIN NGUYEN/Primary Examiner, Art Unit 2446