DETAILED ACTION
Claims 1 and 9-15 are pending in this application. The present application is being examined under the pre-AIA first to invent provisions.
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.
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Claims 1 and 9-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,118,594 and claims 1-13 of U.S Patent 10,817,917. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the claims in the present application.
Reasons for Eligibility
The claims are patent eligible because they constitute significantly more than that abstract idea and integrate the abstract idea into a practical application, and the claims represent an improvement to real-time user interface technology. The claims recite additional elements including a computer-implemented server module, a plurality of files, a server, a processor, a registration module, a portal, an upload module, a portal database, a collaboration authoring tool, a graphical user interface front end, digitally stored information, a web-based authoring tool, and a hands-free module. Together these additional elements integrate the abstract idea of managing book content (Specification ¶0002) into a practical application that utilizes the recited hardware and improves collaborative video technology. The claims add other meaningful limitations beyond generally linking the use of the judicial exception to a particular environment to transform the judicial exception into patent eligible subject matter. The claims are not the mere instructions to apply the abstract idea on a computer because the claims recite details as to how the solution is accomplished, do not merely invoke computers as a tool to perform an existing process, and the claims apply to a particular application in the specific field of GUIs. There is no evidence that the claim recitations are well-understood, routine, and conventional. The claims do not recite insignificant extra-solution activity because the limitations are core to the solution of the invention as described in the specification. In consideration of all the factors the claims recite patent eligible subject matter.
Reasons for Allowability over the Prior Art
The prior art includes Taub et al., US PG Pub 2008/0190271 A1, which teaches a collaborative creation device. Taub does not teach a web-based authoring tool that manages collaborative authoring including passing control of authorship from one group member to another and generate targeted content. In Taub, there is no teaching a collaboration authoring tool permitting at least two verified users to share digitally formatted information each from a user reading device via a portal having the graphical user interface front end, work together and interact in the portal of having the graphical user interface front end containing digitally stored information, use a web-based authoring tool that manages collaborative authoring and generate targeted content in the portal of the graphical user interface front end, while permitting data for the history and activities for each user while working together and interacting in the portal having a graphical user interface front end in the collaboration software module to be summarized and associated with each user's profile, creating a summary of user history and activities for access in the profile of each user. Troung, US PG Pub 2007/0255788 A1, teaches collaborative control of a remote software application but does not cure the deficiencies noted.
Non-patent literature Seet, Boon‐Chong, and Tiong‐Thye Goh teaches an e‐reader device as a collaborative learning system, but does not teach a web-based authoring tool that can manage collaborative authoring and generate targeted content, while permitting data for the history and activities for each user while working together and interacting in the portal having a graphical user interface front end in the collaboration module to be summarized and associated with each user's profile, creating a summary of user history and activities for access in the profile of each user. The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable over the prior art as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER B SEIBERT whose telephone number is (571)272-5549. The examiner can normally be reached Monday - Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Smith can be reached at 571-272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER B SEIBERT/Primary Examiner, Art Unit 3688