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 .
DETAILED ACTION
This action is responsive to application filed October 8, 2024.
This application is a Continuation of: application 18527253 (now Patent 12149592).
Status of Claims
Claims 1-20 were presented, and are pending examination.
Drawings
Drawings filed on 10/8/24 are acknowledged.
Information Disclosure Statement
MPEP Section 2004 “Aids to Compliance with Duty of Disclosure” recites:
“It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance.” MPEP Section 2004, #13
The information disclosure statements which are filed with this Application (and dated 10/8/24) fail to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. It is noted that the filed IDS’s comprise hundreds of references spanning thousands of pages of highly technical disclosure, which meets the test of a "long list". The Examiner objects to the large volume of submitted references. Since the MPEP states “Elimination of all clearly irrelevant and marginally pertinent cumulative information” then the Examiner requests the Applicant to provide guidance by pointing out which references the Examiner should focus on.
For example: In the IDS filed on 10/8/24:
Patent 6426995 is directed to a radiation inspection system, and which is clearly irrelevant to the instant claims and invention in general;
Patent 6317137 is directed to multi-threaded texture modulation for axis aligned volume rendering, and which is clearly irrelevant to the instant claims and invention in general;
Patent 6206564 is directed to a cooking utensil including a temperature sensor integrated into the bottom of the utensil, and which is clearly irrelevant to the instant claims and invention in general.
Accordingly the references cited in the IDS of 10/8/24 will not be considered until the most relevant documents in the IDS’s are specifically pointed out in some clear manner, per MPEP 2004, or until a new IDS is resubmitted with all the marginally pertinent references removed. Please do not delineate the relevant references using a highlighter (per MPEP 2004) since the documents will be scanned and the highlighted sections will not be visible. Circling or underlining is acceptable, or anything which makes the selected references clearly marked. A new IDS 1449 form containing only the relevant documents is also acceptable. All references will be entered upon Applicants guidance. Applicant's forthcoming assistance is gratefully anticipated.
“… applicants are encouraged to provide a concise explanation of why the … information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability.” MPEP Section 609.04(a) III.
Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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 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 Ornum, 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 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 §§ 706.02(l)(1) - 706.02(l)(3) 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).
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).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 rejected on the grounds of nonstatutory obviousness-type double patenting as being as being unpatentable over:
Claims 1-17 of US Patent 10749964 in view of claims 1-17 of US Patent 11870853;
Claims 1-17 of US Patent 11870853;
Claims 1-17 of US Patent 12149592.
Although the conflicting claims are not identical, they are not patentably distinct from each other because they contain overlapping and equivalent limitations which are obvious variations of each. All claim sets are drawn to contextual communication.
For I: as being unpatentable over 1-17 of US Patent 10749964 in view of claims 1-17 of US Patent 11870853:
As a representative example, claim 1 of the instant application along with claims 1 & 4 of Patent `964 contain overlapping and equivalent limitations which are obvious variations of each other. Each of the claim sets are drawn to a contextual state of an application in a first session; initiating a second session based on the contextual state; routing the second session to a second device/endpoint.
Patent `964 fails to explicitly teach a request via a first modality in the first session; and a response via a second modality in the second session. However, claim 1 of Patent `853 teaches a request via a first modality in the first session; and a response via a second modality in the second session. It would have been obvious for one of ordinary skill in the art to modify Patent `964 based on the teachings of Patent `853 for the purpose of facilitating cross-session communication utilizing diverse communication modalities.
The limitations of the dependent claims of the instant application are similarly found to have their equivalents in the dependent claims of Patent `964 and Patent `853, and are deemed to be obvious variations over them.
For II: as being unpatentable over 1-17 of US Patent 11870853:
As a representative example, claim 1 of the instant application along with claim 1 of Patent `853 contain overlapping and equivalent limitations which are obvious variations of each other. Each of the claim sets are drawn to a contextual state of an application in a first session; initiating a second session based on the contextual state; routing the second session to a second device; a request via a first modality in the first session; and a response via a second modality in the second session.
The limitations of the dependent claims of the instant application are similarly found to have their equivalents in the dependent claims of Patent `853, and are deemed to be obvious variations over them.
For III: as being unpatentable over claims 1-17 of US Patent 12149592:
As a representative example, claim 1 of the instant application along with claim 1 of Patent `592 contain overlapping and equivalent limitations which are obvious variations of each other. Each of the claim sets are drawn to a contextual state of an application in a first session; initiating a second session based on the contextual state; routing the second session to a second device; a request via a first modality in the first session; and a response via a second modality in the second session.
The limitations of the dependent claims of the instant application are similarly found to have their equivalents in the dependent claims of Patent `592, and are deemed to be obvious variations over them.
Without a terminal disclaimer, the patented claims will preclude issuance of the instant generic 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.
Claims 2,7,9,14,16 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.
Claims 2 & 7 recite the limitation “the destination endpoint”. There is insufficient antecedent basis for these limitations in the claim. It is unclear if this endpoint is the first or second device, or if it is another device. If it is another device then it is unclear how it relates to the first and second device.
Claims 9,14,16 are slight variations of claims 2 & 7 and are rejected based on the same rationale.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over O’Connor et al (US Publication 20160381091) in view of Oh et al (US Publication 20070136392).
In reference to claim 1, O’Connor teaches a method comprising:
detecting a state of an application that corresponds to a first communication session in which a first device communicates via a first modality of communication; (see at least ¶ 47 lines 13-17 and ¶ 56, which teach monitoring the modality of an application-based communication sessions for a customer device in multi-modal communication sessions, and see at least ¶s 57,61 which further teach monitoring the context state of the communication modality)
based on the state of the application, initiating a second communication session in which the first device communicates via a second modality of communication; (see at least ¶s 62,64, which teaches the customer device initiating a second communication session via a second modality and based on the context state of the customers application based communications)
rerouting the second communication session to a second device; (see at least ¶s 50,53, which teaches routing the communication sessions to a second device/resource)
detecting a request sent by the first device via the first modality of communication in the first communication session; and providing a response to the request to the second device via the second modality of communication in the second communication session. (see at least ¶s 69,71, which teaches receiving a request from a customer via a first modality in a first session, and providing a response to the customer via a second modality in the second session)
O’Connor fails to explicitly teach detecting a state of an application, and rerouting to a second device based on the state of the application. However, Oh teaches collecting context information of an application (see Oh, at least ¶s 47,48,52) and further teaches transmitting to a second device based on selected context of the application (see Oh, at least ¶s 49,55,56). It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify O’Connor based on the teachings of Oh for the purpose of integrating and facilitating the sharing of context information for applications between devices.
In reference to claim 2, this is taught by O’Connor, see at least ¶s 53,64,69, which teaches the first and second session overlapping in time, and also selecting the destination resource for the sessions that overlap in time.
In reference to claim 3, this is taught by O’Connor, see at least ¶s 64,69, which teaches the first and second sessions overlap in time, and initiating the second session to overlap in time with the first session in the first modality.
In reference to claim 4, this is taught by O’Connor, see at least ¶s 57,59, which teaches generating context information corresponding to the first session, and the detecting includes accessing the context information that indicates the context state of the session. Furthermore, Oh teaches collecting context information of an application (see Oh, at least ¶s 47,48,52). One of ordinary skill in the art would be motivated to modify O’Conner in view of the teachings of Oh based on the rationale given for claim 1 above.
In reference to claim 5, this is taught by O’Connor, see at least ¶s 57,58, which teaches the context state corresponding to user data determined by user action.
In reference to claim 6, this is taught by O’Connor, see at least ¶s 64,69, which teaches the second modality being distinct from the first modality. Furthermore, Oh teaches providing the application state to the second device (see Oh, at least ¶s 31,56). One of ordinary skill in the art would be motivated to modify O’Conner in view of the teachings of Oh based on the rationale given for claim 1 above.
In reference to claim 7, this is taught by Oh, see at least ¶s 49,56,59, which teaches the destination device of the session is configured to present a user interface based on the context state of the application. One of ordinary skill in the art would be motivated to modify O’Conner in view of the teachings of Oh based on the rationale given for claim 1 above.
Claims 8-20 correspond to claims 1-7 above and are slight variations thereof. Therefore claims 8-20 are rejected based upon the same rationale as given above.
Conclusion
For any subsequent response that contains new/amended claims, Applicant is required to cite its corresponding support in the specification. (See MPEP chapter 2163.03 section (I.) and chapter 2163.04 section (I.) and chapter 2163.06) Applicant may not introduce any new matter to the claims or to the specification.
In formulating a response/amendment, Applicant is encouraged to take into consideration the prior art made of record but not relied upon, as it is considered pertinent to applicant's disclosure. See attached Form 892.
Contact & Status
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMY M OSMAN whose telephone number is (571)272-4008. The examiner can normally be reached Mon-Fri, 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ario Etienne can be reached at 571-272-4001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMY M OSMAN/Primary Examiner, Art Unit 2457
March 2, 2026