Detailed Action
1. This Office Action is responsive to the Application 18/915,230 filed 10/14/2024. Claims 1-20 are presented for examination. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
3. The information disclosure statements (IDSes) submitted on 01/14/2025 and 07/18/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
4. The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
5. The disclosure is objected to because of the following informalities:
On page 1, paragraph [0001], the cited copending/parent applications (18/231,230) should be updated with current statuses such as U.S. Patent Application Serial No., the filing date, U.S. Patent No., and the issued date.
Appropriate correction is required.
Double Patenting
6. 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 §§ 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).
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.
7. Claims 1, 8 and 15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 12 of U.S. Patent No. 10,827,319.
For example:
Instant application 17/087,540
US Patent 10,827,319
Claim 15. A non-transitory machine-readable medium comprising instructions that, when executed by one or more processors, cause the one or more processors to perform operations comprising:
displaying, by a first application and on a device, a view of a user interface of a second application within a view of the first application, the user interface comprising content corresponding to the second application;
receiving, by the first application, a request to change the view of the user interface of the second application within the view of the first application; and responsive to receiving the request, changing, by the first application, the view of the user interface of the second application.
Claim 1. A non-transitory machine readable medium storing executable program instructions which when executed by a data processing system cause the data processing system to perform a method comprising:
receiving, by a first messaging application (app) on a first device, a message and metadata from a second device, the message including content created by a second extension app that operated with a second messaging app on the second device;
launching a first extension app, when the first extension app is installed on the first device, in response to receiving the content, the first extension app being identified for launching by an app identifier in the metadata; and
displaying, after the launching, a user interface of the first extension app within a message container within a message transcript of the first messaging app, wherein the user interface is configured to provide output, which is dynamic, from the first extension app in the message container.
Claim 12. The non-transitory machine readable medium of claim 11, wherein the live dynamic output changes in response to user input received in the message bubble, a compact view of the first extension app, or in an expanded view of the first extension app.
8. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1 and 12 of U.S. Patent No. 10,827,319 substantially contain every element of claim 15 of the instant application and thus anticipate the claims of the instant application. Claims of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later application claim is not patently distinct from an earlier claim if the later claim is anticipated by the earlier claim.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus)”. ELI LILLY AND COMPANY vs. BARR LABORATORIES INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
9. Claims 1 and 8 are corresponding method and device claims that recite similar limitations as of non-transitory machine-readable medium claim 15, therefore, they are rejected under the same rationale.
Claim Rejections - 35 USC § 103
10. 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.
11. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 2015/0312176 A1), in view of Wang et al. (US 2015/0301729 A1) hereinafter “Jones” and “Wang” correspondingly.
12. As to claim 1, Jones teaches a method comprising:
displaying, by a first application and on a device, a view of a user interface of a second application within a view of the first application, the user interface comprising content corresponding to the second application (“capability to extend a user interface 112 for an instant message application on a client device dynamically, meaning, while the user is using the IM service, by dynamically delivering plugins to extend a user interface even while the user is using the instant message application”, see paragraphs [0146-0147]; A custom user interface generated by the plugin renderer as well as a standard user interface generated by the UI renderer are displayed on the client device, see paragraphs [0235-0238] and Fig.8).
Jones does not explicitly teach “receiving, by the first application, a request to change the view of the user interface of the second application within the view of the first application; and responsive to receiving the request, changing, by the first application, the view of the user interface of the second application”.
In an analogous art, Wang teaches that in response to a detected action performed by a user, the system 100 may allow a user to browse, navigate, open, expand, zoom, or otherwise interact with content displayed in the current view. Additionally, or alternatively, in response to a detected action performed by a user, the system 100 may change the graphical user interface from a first view to a second view (see paragraphs [0031], [0033] and [0063]).
It would have been obvious to one of ordinary sill in the art before the effective filing date of the claimed invention in incorporate the teachings of Wang into Jones to achieve “receiving, by the first application, a request to change the view of the user interface of the second application within the view of the first application; and responsive to receiving the request, changing, by the first application, the view of the user interface of the second application” to allow the system to change the content presented within the graphical user interface, open one or more menus of content, expand a current content, or otherwise change the view of the graphical user interface in response to the user’s performed action/request (Wang, see paragraph [0033]).
13. As to claim 2, Jones-Wang teaches the method of claim 1, wherein the request is received via user input with respect to the view of the user interface of the second application (“in response to a detected action performed by a user, the system 100 may allow a user to browse, navigate, open, expand, zoom, or otherwise interact with content displayed in the current view”, see Wang, paragraph [0033]). The same motivation as of claim 1 is applied here.
14. As to claim 3, Jones-Wang teaches the method of claim 1, wherein the request to change the view comprises a request to change from a compact view to an expanded view, a request to change from the expanded view to the compact view, or a request to close the view (“the user can provide an action to access a second view of the graphical user interface. To illustrate, the user may select to view a particular content item for viewing in an expanded view”, see Wang, paragraph [0031]; “the user 202 may utilize the user interface to cause the computing device 204 to open, close, expand, minimize, browse, or otherwise modify and/or interact with content displayed in the user interface”, see Wang, paragraph [0063]). The same motivation as of claim 1 is applied here.
15. As to claim 4, Jones-Wang teaches the method of claim 3, wherein the request comprises the request to change from the compact view to the expanded view and the expanded view of the user interface overlaps at least a portion of the view of the first application (“when the user performs an action to open or expand a selected content item 420 to a full screen view, the user may not be able to interact with other content items that are no longer visible in the updated current view 402”, see Wang, Figs. 4A-4D and paragraphs [0071] and [0091]). The same motivation as of claim 1 is applied here.
16. As to claim 5, Jones-Wang teaches the method of claim 1, wherein the content corresponding to the second application is received by the first application via an inter-process communication (“At step 801, IM backend system transmits the message to messaging core 131 using a communications protocol associated with the IM backend system … At step 814, after UI renderer 115 receives the modified message, UI renderer 115 generates a user interface file including the modified message based on a standard rendering protocol … At step 815, after UI renderer 115 generates the stander user interface file, UI renderer 115 sends the standard user interface file to user interface 112 for display on client device 118, see Jones, paragraphs [0218-0238] and Fig. 8).
17. As to claim 6, Jones-Wang teaches the method of claim 1, wherein the second application comprises an extension application (“a plugin is an extension to code (e.g., JavaScript user interface code) used by an application (e.g., user interface 112) to display a user interface on a client device, see Jones, paragraphs [0057], [0218-0238] and Fig. 8).
18. As to claim 7, Jones-Wang teaches the method of claim 1, wherein the view of the user interface of the second application is configured to provide output from the second application (“the user may expand a content item from the list of content items 406 by tapping and holding on the selected item and dragging upward to expand the content item to fill in the user interface 400”, see Wang, paragraph [0071], Figs. 4A-4D and 6A-6C). The same motivation as of claim 1 is applied here.
19. Claims 8-20 are corresponding device and non-transitory machine-readable medium claims that recite similar limitations as of method claims 1-7 and do not contain any additional limitations with respect to novelty and/or inventive steps; therefore, they are rejected under the same rationale.
20. Further references of interest are cited on Form PTO-892, which is an attachment to this Office Action.
21. A shortened statutory period for reply to this action is set to expire THREE (3) months from the mailing date of this communication. See 37 CFR 1.134.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUANG N NGUYEN whose telephone number is (571) 272-3886.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KAMAL B. DIVECHA, can be reached at (571) 272-5863. The fax phone number for the organization is (571) 273-8300.
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/QUANG N NGUYEN/
Primary Examiner, Art Unit 2441