DETAILED ACTION
Introduction
1. This Office Action is in response to the application filed on 09/17/2024. Claims 2-21 are pending and are examined below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The Information Statement (IDS) filed on 10/26/2018 has been accepted and considered in this office action and is in compliance with the provisions of 37 CFR 1.97.
Priority
3. The Applicants priority to U.S. Provisional Application No. 61/994,022, filed May 15, 2014, has been accepted and considered in this office action.
Double Patenting
4. The non-statutory 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 time-wise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type 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 Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed e-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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 2-21 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-15 of U.S. Patent # 10147414. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than those of U.S. Patent # 10147414 and hence the claims of U.S. Patent # 10147414 can anticipate those of the present invention. That is, the claims of U.S. Patent # 10147414 contain every limitation of the claims of the present application or the claims of the present application are obvious variants thereof. It should be noted that this is in fact a non-provisional obviousness-type double patenting rejection because the conflicting claims have in fact been patented.
As an example; claim 1 of the instant application and claim 1 of U.S. Patent # 10147414 both teach a method, comprising receiving, by the processor, a list of participants from an administrator machine for an organizer-specified event; identifying, by the processor, which participants in the list of participants have not previously provided name pronunciation information; sending, by the processor, an invitation to the organizer-specified event, to each participant on the list of participants, the invitation including a request to each participant who has not previously provide name pronunciation information to provide a name pronunciation for the organizer-specified event; receiving, by the processor, in response to the request for each participant who has not previously provided name pronunciation information to provide name pronunciation information for the event, name pronunciation information and storing, by the processor, the received name pronunciation information. One of ordinary skill in the art would recognize that it would have been obvious at the time of the invention to drop narrower limitations in order to have a patent with wider applicability and freedom to operate. In other words, the narrower claim 1 of U.S. Patent # 10147414 anticipates the broader claim 33 of the instant application. Also removal of the additional steps is obvious: In re Karlson, 136 USPQ 184 (1963): "Omission of an element and its function is an obvious expedient if the remaining elements perform the same functions as before".
Claims 2-21 are also rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-19 of U.S. Patent # 11715455. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than those of U.S. Patent # 11715455 and hence the claims of U.S. Patent # 11715455 can anticipate those of the present invention. That is, the claims of U.S. Patent # 11715455 contain every limitation of the claims of the present application or the claims of the present application are obvious variants thereof. It should be noted that this is in fact a non-provisional obviousness-type double patenting rejection because the conflicting claims have in fact been patented.
As an example; claim 1 of the instant application and claim 1 of U.S. Patent # 11715455 both teach a method, comprising receiving, by the processor, a list of participants from an administrator machine for an organizer-specified event; identifying, by the processor, which participants in the list of participants have not previously provided name pronunciation information; sending, by the processor, an invitation to the organizer-specified event, to each participant on the list of participants, the invitation including a request to each participant who has not previously provide name pronunciation information to provide a name pronunciation for the organizer-specified event; receiving, by the processor, in response to the request for each participant who has not previously provided name pronunciation information to provide name pronunciation information for the event, name pronunciation information and storing, by the processor, the received name pronunciation information. One of ordinary skill in the art would recognize that it would have been obvious at the time of the invention to drop narrower limitations in order to have a patent with wider applicability and freedom to operate. In other words, the narrower claim 1 of U.S. Patent # 11715455 anticipates the broader claim 33 of the instant application. Also removal of the additional steps is obvious: In re Karlson, 136 USPQ 184 (1963): "Omission of an element and its function is an obvious expedient if the remaining elements perform the same functions as before".
Claims 2-21 are also rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent # 12094446. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the present application are broader in scope than those of U.S. Patent # 12094446 and hence the claims of U.S. Patent # 12094446 can anticipate those of the present invention. That is, the claims of U.S. Patent # 12094446 contain every limitation of the claims of the present application or the claims of the present application are obvious variants thereof. It should be noted that this is in fact a non-provisional obviousness-type double patenting rejection because the conflicting claims have in fact been patented.
As an example; claim 1 of the instant application and claim 1 of U.S. Patent # 12094446 both teach a method, comprising receiving, by the processor, a list of participants from an administrator machine for an organizer-specified event; identifying, by the processor, which participants in the list of participants have not previously provided name pronunciation information; sending, by the processor, an invitation to the organizer-specified event, to each participant on the list of participants, the invitation including a request to each participant who has not previously provide name pronunciation information to provide a name pronunciation for the organizer-specified event; receiving, by the processor, in response to the request for each participant who has not previously provided name pronunciation information to provide name pronunciation information for the event, name pronunciation information and storing, by the processor, the received name pronunciation information. One of ordinary skill in the art would recognize that it would have been obvious at the time of the invention to drop narrower limitations in order to have a patent with wider applicability and freedom to operate. In other words, the narrower claim 1 of U.S. Patent # 12094446 anticipates the broader claim 33 of the instant application. Also removal of the additional steps is obvious: In re Karlson, 136 USPQ 184 (1963): "Omission of an element and its function is an obvious expedient if the remaining elements perform the same functions as before".
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.
5. Claims 2, 4, 7, 9-13, 16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mack (U.S. Patent # 8827712 B2) in view of Padveen (U.S. Patent Application Publication # 2009/0106368 A1). Both Mack and Padveen are already of the record, having been disclosed by the Applicants in their submitted IDS.
With regards to claim 2, Mack teaches a method, comprising receiving, by the processor, a list of participants from an administrator machine for an organizer-specified event (Figures 1, 3B and col 2, lines 38-46, teach a client device and server that are connected to a communication network and operating a database that can be used for name page application. The database, or the administrator of it in the server will add a new entry and provide a webpage on the client device for a new user, or participant, is to register. Figures 3A-3H and col 8, teach that the “register" link in the home page is for updating the database for entering information of new participants, e.g., name, name pronunciation and contacts);
identifying, by the processor, which participants in the list of participants have not previously provided name pronunciation information (Figures 3B-3G, teach that the registered user can be identified by an ID, which is an index for this new entry added to the database, and can enter in audio form. Col 2, line 56 to col 3, line 16, teach that the audio pronunciation file is for the user in the database. According to Applicant’s own specification, the token is an index string generated by Python Hexdigest with an URL format given to reference the participant in the name page. Similarly, Mack in col. 5, lines 19-36, describes that the user's name and audio clip are indexed in the database, while col 9, lines 42-46, further indicate that a user in the database, whose name pronunciation is not yet there, will be provided by a personalized URL link to add the name pronunciation to the database);
sending, by the processor, an invitation to the organizer-specified event, to each participant on the list of participants, the invitation including a request to each participant who has not previously provide name pronunciation information to provide a name pronunciation for the organizer-specified event;
receiving, by the processor, in response to the request for each participant who has not previously provided name pronunciation information to provide name pronunciation information for the event, name pronunciation information (Figure 3G and col 8, lines 1-12, the link to the register page is provided for user to enter information, including record of name audio file, to the database);
and storing, by the processor, the received name pronunciation information (Figures 3D-3G and col 6, lines 13-23, teach that the user entered audio name information at the client devices are received by the server and indexed, stored in the database. Col 11, lines 28-37, teach that the information of user is stored in the database of the web page with personalized URL links);
However, Mack may not explicitly detail sending, by the processor, an invitation to the organizer-specified event, to each participant on the list of participants, the invitation including a request to each participant who has not previously provide name pronunciation information to provide a name pronunciation for the organizer-specified event. This is taught by Padveen (Para 37, teaches sending a registration link to the user and this link allows a user to be prompted to enter his/her information, e.g., name, address, etc.).
Mack and Padveen can be considered as analogous art as they belong to a similar field of endeavor in electronic messaging services. Therefore, it would have been obvious to one of ordinary skill in the art to use Padveen’s teaching as a modification to the disclosure of Mack in order to facilitate the user inputting information to the database in Mack by a unique identifier for the user (Padveen, para 37).
With regards to claim 4, Mack teaches the method of claim 2, wherein the invitation includes a unique recording link for each participant (Col. 5, lines 7-36, teach in detail how a user can input the pronunciation of their first, middle and/or last names. Col. 7, lines 58-67 and col. 8 lines 1-12, teaches that a user in the database, will be provided by a personalized URL link to add the name pronunciation to the database. Figures 3I, show in an example the URL link invite that is particular to each user for the event, i.e. the member registration event).
With regards to claim 7, Mack teaches the method of claim 2, further comprising updating a name page to indicate that name pronunciation information has been received for one of the identified participants (Figures 3A-3H and col 8, teach that the “register" link in the home page is for updating the database for entering information of new participants, e.g., name, name pronunciation and contacts).
With regards to claim 9, Mack teaches the method of claim 2, wherein the name pronunciation information is provided as audio information (Col. 2, lines 1-8, teach that the method may further include storing, in the database, at least one of a normal speed audio file and a slow speed audio file representing a particular pronunciation of at least some of the plurality of names. The method may further include storing, in the database, at least one of pronunciation advice information, an International Phonetic Alphabet transcription).
With regards to claim 10, Mack teaches the method of claim 2, wherein the name pronunciation information is provided as textual information (Col. 2, lines 1-8, teach that the method may further include storing, in the database, at least one of a normal speed audio file and a slow speed audio file representing a particular pronunciation of at least some of the plurality of names. The method may further include storing, in the database, at least one of pronunciation advice information, an International Phonetic Alphabet transcription).
With regards to claim 11, Mack teaches the method of claim 2, wherein the name pronunciation information includes an audio information component and a textual information component (Col. 2, lines 1-8, teach that the method may further include storing, in the database, at least one of a normal speed audio file and a slow speed audio file representing a particular pronunciation of at least some of the plurality of names. The method may further include storing, in the database, at least one of pronunciation advice information, an International Phonetic Alphabet transcription).
With regards to claims 12-13, 16, 18-20, these are device claims for the corresponding method claims 2, 4, 7, 9-11. These two sets of claims are related as method and apparatus of using the same, with each claimed system element's function corresponding to the claimed method step. Accordingly, claims 12-13, 16, 18-20 are similarly rejected under the same rationale as applied above with respect to method claims 2, 4, 7, 9-11.
6. Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Mack in view of Padveen and further in view of Etchegoyen (U.S. Patent Application Publication # 2013/0055357 A1). Etchegoyen is also of the record having been disclosed by the Examiner in the prosecution of one of the Parent Applications (now abandoned) # 16160533.
With regards to claim 8, Mack and Padveen may not explicitly detail the limitation further comprising, transmitting a message to one of the invited participants requesting that the one of the invited participants re-provide name pronunciation information. However, Etchegoyen teaches this (Para 58 and figure 8, teach that in order to prevent fraud if the social security number of the individual is already associated with another individual within personal information records, personal information server logic can request that the individual using customer device re-enter the social security number).
Mack, Padveen and Etchegoyen can be considered as analogous art as they belong to a similar field of endeavor in electronic messaging services. Therefore, it would have been obvious to one of ordinary skill in the art to use Etchegoyen’s teaching as a modification to the disclosure of Mack and Padveen in order to provide protection from fraud when users interact with the system (Etchegoyen, para 58).
With regards to claim 17, this is a device claim for the corresponding method claim 8. These two claims are related as method and apparatus of using the same, with each claimed system element's function corresponding to the claimed method step. Accordingly, claims 17 is similarly rejected under the same rationale as applied above with respect to method claim 8.
7. Claims 5-6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Mack in view of Padveen and further in view of O’Brien (U.S. Patent Application Publication # 2010/0120011 A1). O’Brien is also of the record having been disclosed by the Examiner in the prosecution of one of the Parent Applications (now abandoned) # 16160533.
With regards to claim 5, Mack and Padveen may not explicitly detail the limitation further comprising providing, by the processor via a graphical user interface, statistics representative of the total number of participants for the event who have not previously provided name pronunciation information. However, O’Brien teaches this (Paragraphs 118 and 186, teach that tools may allow the users to readily identify users with the "screening incomplete" status, and then display information regarding such individuals, such as the user profile, personal information, evaluation information, matching information, references, status and rating information. The invitees tab can display all users who were invited to participate with key statistics, such as name, member type, member, partner, started/pending/complete, and view link).
Mack, Padveen and O’ Brien can be considered as analogous art as they belong to a similar field of endeavor in electronic conferencing services. Therefore, it would have been obvious to one of ordinary skill in the art to use O’Brien’s teaching as a modification to the disclosure of Mack and Padveen in order to provide structure for the interactions between users of the conferencing system (O’Brien, para 8).
With regards to claim 6, Mack and Padveen may not explicitly detail the limitation further comprising updating, by the processor via the graphical user interface, the statistics representative of the total number of identified participants who have provided name pronunciation information (Paragraphs 119 and 120, further teach that statuses other than incomplete can be shown as well including "ready to be matched", “active”, “inactive rejected”, “inactive withdrawn” and/or “inactive deleted”);
Mack, Padveen and O’ Brien can be considered as analogous art as they belong to a similar field of endeavor in electronic conferencing services. Therefore, it would have been obvious to one of ordinary skill in the art to use O’Brien’s teaching as a modification to the disclosure of Mack and Padveen in order to provide structure for the interactions between users of the conferencing system (O’Brien, para 8).
With regards to claim 14, this is a device claim for the corresponding method claim 5. These two claims are related as method and apparatus of using the same, with each claimed system element's function corresponding to the claimed method step. Accordingly, claims 14 is similarly rejected under the same rationale as applied above with respect to method claim 5.
8. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Mack in view of Padveen and further in view of Tomkins (U.S. Patent # 9342597 B1).
With regards to claim 3, Mack and Padveen may not explicitly detail the limitation wherein the invitation includes a time and a date for the organizer-specified event. This is taught by Tomkins (Col. 3, lines 9-67, teach sending invitations to attendees for an event with attributes of the event listed, such a date, location and time);
Mack, Padveen and Tomkins can be considered as analogous art as they belong to a similar field of endeavor in electronic messaging services. Therefore, it would have been obvious to one of ordinary skill in the art to use Tomkins’ teaching as a modification to the disclosure of Mack and Padveen as this is a routine information which is part of any invitation as thus a straightforward implementation of the teachings of Tomkins to the disclosures of Mack and Padveen.
9. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Mack in view of Padveen and further in view of Lott (U.S. Patent Application Publication # 2004/0102973 A1).
With regards to claim 21, Mack and Padveen may not explicitly detail the limitation wherein the name pronunciation information includes video information. This is taught by Lott (Paragraphs 12 and 20, teach a method to communicate sample audio and video pronunciation representations for each of the phonemes designated by the IPA symbols. Additionally, the method serves to audibly dictate one or more sounds associated with specific IPA symbols).
Mack, Padveen and Lott can be considered as analogous art as they belong to a similar field of endeavor in pronunciation assistance services. Therefore, it would have been obvious to one of ordinary skill in the art to use Lott’s teaching as a modification to the disclosure of Mack and Padveen to allow users to acquire pronunciation knowledge without need of specialized or proprietary symbol schemes, keypad layouts, writing techniques, and other concepts and systems (Lott, para 10).
Allowable Subject Matter
10. Claim 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and further if the double patenting rejection outlined in this office action is overcome. The prior art of record, alone or in combination, does not currently suggest or teach the invention as outlined in these claims. More detailed reasons for allowance will be outlined as and when the Application proceeds to allowability.
Conclusion
11. The following prior art, made of record but not relied upon, is considered pertinent to applicant's disclosure: Portillo (U.S. Patent Application Publication # 2004/0019488 A1), Kalyanswamy (U.S. Patent # 5761640 A). These references are also included in the PTO-892 form attached with this office action.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEERAJ SHARMA whose contact information is given below. The examiner can normally be reached on Monday to Friday 8 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pierre Louis-Desir can be reached on 571-272-7799 (Direct Phone). The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
/NEERAJ SHARMA/
Primary Examiner, Art Unit 2659
571-270-5487 (Direct Phone)
571-270-6487 (Direct Fax)
neeraj.sharma@uspto.gov (Direct Email)
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