DETAILED ACTION
Claims 1-20 are pending.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/8/2026 is being considered by the examiner.
Response to Arguments
Applicant's arguments filed 6/4/2026 have been fully considered but they are not persuasive.
A. Applicant states a Terminal Disclaimer to overcome the Double Patenting Rejection has been filed, however no Terminal Disclaimer has been filed.
B. Applicant argues the prior art does not teach receiving, by a client application, a selection of application content associated a conference application, the conference application installed through the client application
However, the examiner respectfully disagrees. Panattu teaches “ The dataflow begins when user-A 302 selects application 320 corresponding with a new application server and then depresses a PTT button on the UE to send. In some embodiments, user-A 302 may additionally select users from a contact or group list for inclusion with the application” (Paragraph 34). Here, the user selects application content (Application 320) which is associated with the conference application. The user can also select users from a group for inclusion with the application. The selection of users, also can represent application content (in addition to the selection of a specific application) associated with conference application. Therefore, applicant’s arguments are not persuasive.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 5, 7-8 of U.S. Patent No. 12,155,703. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to conferencing applications utilizing client applications.
Application 18/946,531
US Patent 12,155,703
Claims 1, 8, and 15:
A method comprising: receiving, by a client application, a selection of application content associated with a conference application, the conference application installed through the client application; generating an invitation to a network conference; attaching the application content to the invitation; and transmitting the invitation
Claim 1:
A method for… receiving a selection of a conference application from a plurality of conference applications installed through the client application including the installed at least one conference application… to generate a conference invitation configured to invite conference attendees to the network conference before the start of the network conference; and transmitting the conference invitation to a network server
Claims 2, 9, 16:
The method of claim 1, further comprising: receiving, by the client application, a selection of the conference application; and executing, from the client application, the conference application to generate the application content
Claim 1:
A method …receiving a selection of a conference application from a plurality of conference applications installed through the client application including the installed at least one conference application; executing the conference application from the client application to generate content…
Claims 3, 10, and 17:
The method of claim 1, wherein the conference application is configured as a web application that can be executed by a web browser
Claim 5:
The method of claim 1, wherein the conference application is configured as a web application that can be executed by a web browser
Claims 4, 11, 18:
The method of claim 1, wherein transmitting the invitation is to a remote server
Claim 1:
….attaching the content generated by the conference application to an instance of a network conference to generate a conference invitation configured to invite conference attendees to the network conference before the start of the network conference; and transmitting the conference invitation to a network server.
Claims 5, 12, 19:
The method of claim 1, wherein transmitting the invitation is to one or more conference attendees
Claim 8:
The method of claim 1, wherein transmitting the conference invitation to a network server causes the conference invitation to be transmitted to one or more conference attendees
Claims 6, 13, 20:
The method of claim 1, further comprising: joining the network conference; and executing, during the network conference, the conference application from the client application to access the application content
Claim 2:
The method of claim 1, further comprising joining the network conference to communicate with one or more attendees over at least one of a wired and wireless network
Claim 1:
…. the client application configured to install and execute conference applications that provide additional functionalities other than the conferencing features of the client application…executing the conference application from the client application to generate content before a start of the network conference
Claims 7, 14:
The method of claim 1, wherein attaching the application content from the conference application to an instance of a network conference to generate the invitation is performed within the client application
Claim 7:
The method of claim 1, wherein attaching the content from the conference application to an instance of a network conference to generate the conference invitation is performed within the client application
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.
Claims 1-2, 4-9, 11-16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Panattu (US 2007/0276947 A1).
With regards to Claim 1, Panattu teaches method comprising: receiving, by a client application, a selection of application content associated with a conference application, the conference application installed through the client application (i.e., an illustrative dataflow diagram 300 illustrating how a new application is integrated with a UE utilizing an S-URI in accordance with embodiments of the present invention. The dataflow begins when user-A 302 selects application 320 corresponding with a new application server and then depresses a PTT button on the UE to send, Paragraph 34; Paragraph 14; Figure 3); generating an invitation to a network conference; attaching the application content to the invitation; and transmitting the invitation (i.e., sending an INVITE message containing the S-URI to the primary application server by the UE, the S-URI configured to provide access information corresponding with the secondary application server…, Paragraph 12).
With regards to Claim 2, Panattu teaches receiving, by the client application, a selection of the conference application (i.e., an illustrative dataflow diagram 300 illustrating how a new application is integrated with a UE utilizing an S-URI in accordance with embodiments of the present invention. The dataflow begins when user-A 302 selects application 320 corresponding with a new application server and then depresses a PTT button on the UE to send, Paragraph 34; Paragraph 14; Figure 3); and executing, from the client application, the conference application to generate the application content (i.e., … wherein the secondary application server is configured to provide the application…, Paragraph 12)
With regards to Claim 4, Panattu teaches wherein transmitting the invitation is to a remote server (i.e., locating the secondary application server by the communications network; establishing a session between the secondary application server and the UE, wherein the application is provided to the UE by the secondary application server. In some embodiments, the locating the secondary application server includes: determining, by the primary application server, whether the S-URI in the INVITE message matches a stored entry in a local configuration table on the primary application server wherein the stored entry includes a number of fields corresponding with the secondary application server…, Paragraph 12)
With regards to Claim 5, Panattu teaches wherein transmitting the invitation is to one or more conference attendees (i.e., Upon receiving HTTP request message 726, BCA server 710 (acting as the secondary application server) will subsequently send a multimedia message service (MMS) message 730 to PoC client-B 712 and to any other recipients with the business card of the originator (i.e. PoC client-A 704) attached. Once the secondary application has completed sending the business card to all intended recipients, PoC server 707 may send INVITE message 734 to SIP/IP core 708 to continue setting up a PoC session between PoC client-A 704 and PoC client-B 712 where SIP/IP core 708 sends invite message 738 to PoC client-B 712…, Paragraph 45)
With regards to Claim 6, Panattu teaches further comprising: joining the network conference (i.e., Once all acknowledgments are delivered, the DVM application then begins to provide the new application experience to an initiating user by, for example, playing out all new voice messages to PoC client-A 504. As may be appreciated, corresponding graphical representation 550 mirrors dataflow 500 and is provided solely for better clarifying embodiments of the present invention, Paragraph 42); and executing, during the network conference, the conference application from the client application to access the application content (i.e. establishing a session between the secondary application server and the UE, wherein the application is provided to the UE by the secondary application server…, Paragraph 12; Paragraph 69).
With regards to Claim 7, Panattu teaches wherein attaching the application content from the conference application to an instance of a network conference to generate the invitation is performed within the client application (i.e., sending an INVITE message containing the S-URI to the primary application server by the UE, the S-URI configured to provide access information corresponding with the secondary application server…, Paragraph 12)
The limitations of Claim 8 are rejected in the analysis of Claim 1 above, and the claim is rejected on that basis.
The limitations of Claim 9 are rejected in the analysis of Claim 2 above, and the claim is rejected on that basis.
The limitations of Claim 11 are rejected in the analysis of Claim 4 above, and the claim is rejected on that basis.
The limitations of Claim 12 are rejected in the analysis of Claim 5 above, and the claim is rejected on that basis.
The limitations of Claim 13 are rejected in the analysis of Claim 6 above, and the claim is rejected on that basis.
The limitations of Claim 14 are rejected in the analysis of Claim 7 above, and the claim is rejected on that basis.
The limitations of Claim 15 are rejected in the analysis of Claim 1 above, and the claim is rejected on that basis.
The limitations of Claim 16 are rejected in the analysis of Claim 2 above, and the claim is rejected on that basis.
The limitations of Claim 18 are rejected in the analysis of Claim 4 above, and the claim is rejected on that basis.
The limitations of Claim 19 are rejected in the analysis of Claim 5 above, and the claim is rejected on that basis.
The limitations of Claim 20 are rejected in the analysis of Claim 6 above, and the claim is rejected on that basis.
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.
Claims 3, 10, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Panattu (US 2007/0276947 A1) in view of Chhabra (US 2020/0112450 A1).
With regards to Claim 3, Panattu teaches the above disclosed subject matter. However, Panattu does not explicitly disclose wherein the conference application is configured as a web application that can be executed by a web browser. Chhabra does teach wherein the conference application is configured as a web application that can be executed by a web browser (i.e., For example, a remote system can be configured to deliver to a web browser application executing on the user's device as identified in the conference organization request a meeting invite…, Paragraph 39) in order to provide a number of conference tools presently available for enabling people to conduct live meetings (Paragraph 1). Therefore, based on Panattu in view of Chhabra, it would have been obvious to one having ordinary skill in the art before the effective filing date to utilize the teachings of Chhabra with the system of Panattu in order to provide a number of conference tools presently available for enabling people to conduct live meetings.
The limitations of Claim 10 are rejected in the analysis of Claim 3 above, and the claim is rejected on that basis.
The limitations of Claim 17 are rejected in the analysis of Claim 3 above, and the claim is rejected on that basis.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SURAJ M JOSHI whose telephone number is (571)270-7209. The examiner can normally be reached Monday - Friday 8-6 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joon Hwang can be reached at (571)272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SURAJ M JOSHI/Primary Examiner, Art Unit 2447 September 4, 2026
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