DETAILED ACTION
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 .
Response to Arguments
Applicant’s arguments, see page 10 of applicant’s response, filed 06/11/26, with respect to the rejections of claims 4-7, 16-19 under 35 U.S.C. 112 have been fully considered and are persuasive in view of applicant’s amendments. Therefore, the rejection has been withdrawn.
Applicant’s arguments, see pages 10-11 of applicant’s response, filed 06/11/26, with respect to the rejections of claims 1-20 under 35 U.S.C. 103 have been fully considered and are persuasive in view of applicant’s amendments. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new Double Patenting rejection is made in view of US 12,137,070.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-7, 9, 10, of U.S. Patent No. 12,137,070. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims fully disclose and encompass every limitation claimed within the instant application.
For example, claim 1 of the instant application appears to correspond to claims 1, 6 and 10 of U.S. Patent No. 12,137,070.
Claim 1. (Currently Amended) An electronic device comprising:
communication circuitry;
a display;
memory storing instructions, comprising one or more storage media; and
at least one processor comprising processing circuitry, wherein the instructions, when executed by the at least one processor individually or collectively, cause the electronic device to:
Claim 1. (Currently Amended) An electronic device comprising:
communication circuitry;
a display;
memory storing instructions, comprising one or more storage media; and
at least one processor comprising processing circuitry, wherein the instructions, when executed by the at least one processor individually or collectively, cause the electronic device to:
display, via the display, an execution screen of a messenger application;
while the execution screen is displayed, receive a first input for transmitting, to a first external electronic device, a first media content and a second media content using the messenger application;
display, through the display, a user interface (UI) of a messenger software application;
while the UI is displayed, receive, through the UI, a user input to transmit, through the communication circuitry, a plurality of media contents to an external electronic device using the messenger software application;
based on the first input:
in response to the user input:
transmit, to a second external electronic device via the communication circuitry, the first media content and the second media content to be transmitted to the first external electronic device, and
transmit, through the communication circuitry, the plurality of media contents to the external electronic device; and
concurrently display, via the display, a first thumbnail image of the first media content and a second thumbnail image of the second media content, wherein the first thumbnail image is in a first state indicating corresponding media content is not transferred to the first external electronic device;
display, through the display, in the UI, a bubble including a plurality of thumbnail images respectively representing the plurality of media contents, and
Claim 6. (Previously Presented) The electronic device of Claim 1, wherein the instructions, when executed by the at least one processor individually or collectively, cause the electronic device to: while transmitting the plurality of signals, identify a transmission status of each of the plurality of signals; and based on identifying that a transmission status associated with to a signal including the media content corresponds to a first preset status, display the thumbnail image to be visually highlighted with respect to the remaining thumbnail images.
while transmitting, to the second external electronic device, via the communication circuitry, the first media content and the second media content, receive a second input on the first thumbnail image among the first thumbnail image and the second thumbnail image, wherein the second input is received while the first thumbnail image is in the first state and the second thumbnail image is in the first state;
based on the second input, terminate transmission of the first media content from among the first media content and the second media content to the second external electronic device; and
Claim 10. (Previously Presented) The electronic device of Claim 1, wherein the instructions, when executed by the at least one processor individually or collectively, cause the electronic device to: terminate, in response to another user input with respect to one of the remaining thumbnail images, transmission of a media content to the external electronic device which is associated with the other user input.
based on identifying that transmission of the second media content is completed after the second input is received, change a state of the second thumbnail image from the first state to a second state indicating that the transmission of the second media content is completed.
while the plurality of media contents are transmitted to the external electronic device, display, in the bubble, a thumbnail image, representing a media content completely transmitted to the external electronic device among the plurality of media contents, visually highlighted with respect to remaining thumbnail images.
Similarly, Claims 2-4 correspond to claim 2 of U.S. Patent No. 12,137,070.
Claim 5 corresponds to claim 4 of U.S. Patent No. 12,137,070.
Claim 6 corresponds to claim 4 of U.S. Patent No. 12,137,070.
Claim 7 corresponds to claim 1 of U.S. Patent No. 12,137,070.
Claim 8 corresponds to claim 7 of U.S. Patent No. 12,137,070.
Claim 9 corresponds to claim 7 of U.S. Patent No. 12,137,070.
Claim 10 corresponds to claim 5 of U.S. Patent No. 12,137,070.
Claim 11 corresponds to claim 9 of U.S. Patent No. 12,137,070.
Claim 12 corresponds to claims 1, 6 of U.S. Patent No. 12,137,070.
Claim 13 corresponds to claim 1, 6, 10 of U.S. Patent No. 12,137,070.
Claim 14-16 correspond to claim 2 of U.S. Patent No. 12,137,070.
Claim 17 corresponds to claim 4 of U.S. Patent No. 12,137,070.
Claim 18 corresponds to claim 4 of U.S. Patent No. 12,137,070.
Claim 19 corresponds to claim 1 of U.S. Patent No. 12,137,070.
Claim 20 corresponds to claim 7 of U.S. Patent No. 12,137,070.
Allowable Subject Matter
Claims 1-20 would be allowable upon filing a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) accompanied by a reply requesting reconsideration of the prior Office action to overcome the rejection based on nonstatutory double patenting.
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 James R Sheleheda whose telephone number is (571)272-7357. The examiner can normally be reached M-F 8 am-5 pm CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Bruckart can be reached at (571) 272-3982. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James R Sheleheda/Primary Examiner, Art Unit 2424
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