DETAILED ACTION
This Office Action is sent in response to Applicant's Communication received 09/30/2024 for 18902734. Claims 1-20 are presented.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/06/2026 was filed before the mailing date of a first action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
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.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
As per claim 20, the claim(s) is/are rejected because Applicant has provided evidence that Applicant intends the term "product" to include non-statutory matter. Applicant describes a product comprising a computer-readable storage device as including open ended language and thus it is reasonable to interpret it to include all possible media, including non-statutory media ["storage device may be, for example, an electronic, magnetic, optical, electromagnetic, infrared, or semiconductor system, apparatus, or device, or any suitable combination of the foregoing", Specification, para 0055]. The words "storage" and/or "device" are insufficient to convey only statutory embodiments to one of ordinary skill in the art absent an explicit and deliberate limiting definition or clear differentiation between storage media and transitory media in the disclosure.
As such, the claim(s) is/are drawn to a form of energy. Energy is not one of the four categories of invention and therefore this/these claim(s) is/are not statutory. Energy is not a series of steps or acts and thus is not a process. Energy is not a physical article or object and as such is not a machine or manufacture. Energy is not a combination of substances and therefore not a composition of matter. Applicants are advised to insert the phrase "non-transitory" prior to "computer-readable storage device" to overcome rejection of claims 20 under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 7, 10-14, 17, and 20 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yeung (US 20230305730 A1).
As to claim 1, Yeung discloses a method, the method comprising:
receiving, at a clipboard interface system, an indication to access a clipboard storing a copy history of a user [Fig. 4A, para 0061-0062, 0066, clipboard system receives copy request interaction (read: indication) onto clipboard element maintaining clipboard history of user copy requests];
presenting, responsive to the receiving the indication, a graphical user interface for the clipboard [Figs. 4A-4B, para 0047, 0066-0067, display clipboard element in form of user interface widget in response to copy request] and
displaying a recent copy history of the user within the graphical user interface [Fig. 4B, para 0060, 0066-0067, clipboard element presents history of copied content items in chronological order];
receiving, at the clipboard interface system, a second indication to view an expanded graphical user interface [para 0059, receive device interaction (read: second indication) to expand clipboard]; and
expanding, responsive to the receiving the second indication, the graphical user interface for the clipboard into an expanded graphical user interface [Fig. 5, para 0059, 0061, expand clipboard element into expanded version of clipboard element based on receiving device interaction] and
displaying additional copy history in addition to the recent copy history within the expanded graphical user interface [Fig. 5, para 0059, 0061-0062, expanded version of clipboard user interface widget displays older copied items (read: additional copy history) and copied items].
As to claim 2, Yeung discloses the method of claim 1, wherein the receiving the indication comprises receiving input at an icon associated with the clipboard [Fig. 4A, para 0066, receive copy request interaction of input dropping selected content item onto clipboard element (read: icon)].
As to claim 3, Yeung discloses the method of claim 2, wherein the presenting comprises changing an appearance of the icon into the graphical user interface [Figs. 4A-4B, para 0047, 0066-0067, system generates and presents clipboard element in form of user interface widget in response to copy request].
As to claim 4, Yeung discloses the method of claim 2, wherein the receiving the second indication comprises receiving a second input at the icon being of a different type than the input received at the icon [Figs. 4A-5, para 0059, 0066, receive device interaction of input selecting to expand clipboard element, note separate device interaction of copy request input on clipboard element].
As to claim 7, Yeung discloses the method of claim 1, wherein the receiving a second indication comprises receiving a predetermined input within the graphical user interface [para 0059, determine received device interaction selecting clipboard element to expand clipboard].
As to claim 10, Yeung discloses the method of claim 1, wherein the receiving an indication and the receiving a second indication comprises receiving input at an input device selected from the group consisting of: a touch screen [para 0055, 0059, receive copy request interaction and interaction to expand via touchscreen, note strikethrough indicates non-selected alternatives],
As to claim 11, Yeung discloses a system, the system comprising: a processor; a memory device that stores instructions that, when executed by the processor, causes the system to [Figs. 1, 11, para 0104, 0131-0132, clipboard system includes processor executing instructions stored on medium]: perform limitations substantially similar to those recited in claim 1 and is rejected under similar rationale.
As to claims 12-14, 17, Yeung discloses the system of claim 11 comprising limitations substantially similar to those recited in claim 2-4 and 7, respectively, and are rejected under similar rationale.
As to claim 20, Yeung discloses a product, the product comprising: a computer-readable storage device that stores executable code that, when executed by a processor, causes the product to [Figs. 1, 11, para 0104, 0131-0132, storage device stores instructions executed by clipboard system processor]: to perform limitations substantially similar to those recited in claim 1 and is rejected under similar rationale.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5-6, 8-9, 15-16, and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yeung as applied to claims 1 and 11 above, and further in view of Kim et al. (US 20160139766 A1).
As to claim 5, Yeung discloses the method of claim 1, comprising
receiving a[n] input within the graphical user interface [Figs. 4B-4C, para 0047, 0067-0069, receive device interaction selecting filter options provided by clipboard user interface widget element] and
changing the recent copy history being displayed to different copy history [para 0067-0069, clipboard element displays copied items filtered by selected filter option].
However, Yeung does not specifically disclose wherein "a[n] input" is "a scrolling input".
Kim discloses a scrolling input [Figs. 7, para 0185-0186, apply drag input over first distance, note drag input falls under the broadest reasonable interpretation of scrolling input similar to drag input as consistent with Applicant's specification (para 0044)].
Yeung and Kim are analogous art to the claimed invention being from a similar field of endeavor of user input systems. Thus, 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 input as disclosed by Yeung with the scrolling input as disclosed by Kim with a reasonable expectation of success.
One of ordinary skill in the art would be motivated to modify Yeung as described above to facilitate calling clipboard content [Kim, para 0157].
As to claim 6, Yeung discloses the method of claim 1, wherein the receiving the second indication comprises receiving a[n] input within the graphical user interface … [Figs. 4A-5, para 0059, 0066, receive device interaction of input selecting to expand clipboard element].
However, Yeung does not specifically disclose a scrolling input within the graphical user interface that exceeds a predetermined distance in less than a predetermined length of time.
Kim discloses a scrolling input within the graphical user interface that exceeds a predetermined distance in less than a predetermined length of time [Fig. 7, para 0186-0187, apply drag input over second distance during touch hold duration, note drag input falls under the broadest reasonable interpretation of scrolling input similar to drag input as consistent with Applicant's specification (para 0044)].
Yeung and Kim are analogous art to the claimed invention being from a similar field of endeavor of user input systems. Thus, 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 input within the graphical user interface as disclosed by Yeung with the scrolling input exceeding a predetermined distance in less than a predetermined length of time as disclosed by Kim with a reasonable expectation of success.
One of ordinary skill in the art would be motivated to modify Yeung as described above to facilitate calling clipboard content [Kim, para 0157].
As to claim 8, Yeung discloses the method of claim 1, comprising
receiving a[n] input within the expanded graphical user interface [Figs. 5-6B, para 0084-0085, perform user action modifying items] and
changing the additional copy history and the recent copy history being displayed to different copy history [Figs. 5-6C, para 0061-0062, 0071, 0085, expanded version of clipboard user interface displays modified copied items (read: different copy history) by clearing selected items from older copied items and copied items maintained in clipboard history].
However, Yeung does not specifically disclose wherein "a[n] input" is "a scrolling input".
Kim discloses a scrolling input [Figs. 7, 11, para 0186-0187, 0207, apply drag input over second distance, note drag input falls under the broadest reasonable interpretation of scrolling input similar to drag input as consistent with Applicant's specification (para 0044)].
Yeung and Kim are analogous art to the claimed invention being from a similar field of endeavor of user input systems. Thus, 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 input as disclosed by Yeung with the scrolling input as disclosed by Kim with a reasonable expectation of success.
One of ordinary skill in the art would be motivated to modify Yeung as described above to facilitate calling clipboard content [Kim, para 0157].
As to claim 9, Yeung discloses the method of claim 1.
However, Yeung does not specifically disclose receiving a third indication to revert the graphical user interface and contracting the expanded graphical user interface back to the graphical user interface.
Kim discloses:
receiving a third indication to revert the graphical user interface [para 0175-0176, receive input, note the limitation "to revert the graphical user interface" is not being given patentable weight as the term "to" suggests or makes optional and does not require the step to be performed as the limitation is an intended result of the "third indication" as recited in the claim (see MPEP 2111.04); nevertheless, note input hides displayed clipboard icon] and
contracting the expanded graphical user interface back to the graphical user interface [para 0171-0172, 0175, hide output clipboard content (read: expanded graphical user interface) and output clipboard icon].
Yeung and Kim are analogous art to the claimed invention being from a similar field of endeavor of user input systems. Thus, 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 graphical user interface and expanded graphical user interface as disclosed by Yeung with an indication to revert the graphical user interface and contracting the expanded graphical user interface back to the graphical user interface as disclosed by Kim with a reasonable expectation of success.
One of ordinary skill in the art would be motivated to modify Yeung as described above to facilitate user content input [Kim, para 0175].
As to claims 15, 16, 18, and 19, Yeung and Kim, combined at least for the reasons above, disclose the system of claim 11 comprising limitations substantially similar to those recited in claim 5, 6, 8, and 9, respectively, and are rejected under similar rationale
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Peng (US 20250068318 A1) generally discloses expanding a graphical user interface into an expanded graphical user interface.
Kwon et al. (US 20150026620 A1) generally discloses expanding a clipboard user interface layer into an expanded clipboard user interface.
Antipa (US 20140324943 A1) generally discloses an expandable clipboard graphical user interface.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA HUYNH whose telephone number is (571)272-5240 and email is linda.huynh@uspto.gov. The examiner can normally be reached M-F between 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Queler can be reached at (571) 272-4140. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA HUYNH/Primary Examiner, Art Unit 2172
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