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 .
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 1-19 of U.S. Patent No. 12,212,890. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations of the present claims are broader and similar in scope to that of the claims of U.S. Patent No. 12,212,890 with different in wording variations. For example:
Claim 1 of the present invention
Claim 1 of U.S. Patent No. 12,212,890
A computer-implemented method comprising:
receiving a pre-recording, through a conferencing platform, from an invitee prior to a virtual conference;
during the virtual conference, identifying, from an audio feed or video feed of a first participant, a request to perform an action on the pre-recording;
and in response to identifying the request, automatically performing the action, through the conferencing platform.
A computer-implemented method for creating recordings for virtual conferences, the method comprising:
requesting that an invitee of a virtual conference, through a conferencing platform, create a pre-recording to be played during the virtual conference;
receiving the pre-recording, through the conferencing platform, from the invitee prior to the virtual conference;
storing the pre-recording in a database associated with the conferencing platform;
identifying, through the conferencing platform, from an audio feed or video feed of a first participant, a first request to perform a first action on the pre-recording during the conference;
and in response to identifying the first request from the first participant, automatically performing the first action, through the conferencing platform, on the pre-recording during the conference.
From the above claim comparison, the limitations of claim 1 of the present invention are covered/anticipated by that of claim 1 of U.S. Patent No. 12,212,890. Independent claims 8 and 15 are counterpart of the method claim 1 and therefore rejected for the same reason addressed. The remainder dependent claims are either directly or indirectly taught by at least the dependent claims of U.S. Patent No. 12,212,890.
Allowable Subject Matter
Claims 1-20 would be allowable upon filing of an eTerminal or Terminal Disclaimer and/or overcoming the above double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any response to this action should be mailed to:
Mail Stop ____(explanation, e.g., Amendment or After-final, etc.) Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Facsimile responses should be faxed to:
(571) 273-8300
Hand-delivered responses should be brought to:
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUOC DUC TRAN whose telephone number is (571) 272-7511. The examiner can normally be reached Monday-Friday 8:30am - 5pm.
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, Duc Nguyen can be reached on (571) 272-7503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Quoc D Tran/
Primary Examiner, Art Unit 2691
September 15, 2026
