CTNF 18/991,867 CTNF 90785 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. This Office action is in response to communications filed on 12/23/2024. Claims 1-19 are pending. Priority Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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 (i.e., changing from AIA to pre-AIA) 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 8 is/are rejected under 35 U.S.C. 102 (A)(1) as being anticipated by Kim et al. (US 20150341481 A1, hereinafter Kim) . Regarding claim 8, Kim discloses a method implemented by one or more processors (Fig. 1), the method comprising: receiving an indication of a request from a first user to send a message to a second user (¶[0167], "the first device 1000 may activate the voice-message call function. When the first device 1000 sends a request to initiate the call to the second device 2000"); determining whether the system has access to a messaging application corresponding to the request (¶[0174], "first device 1000 may select a chat application among chat applications that are installed in the first device 1000, wherein the chat application is compatible with a chat application among the chat applications in the list that is received from the second device 2000", or, when the application is not installed, ¶[0179], "the first device 1000 may install a chat application that is compatible with a chat application included in the list of the chat applications received from the second device 2000"); in response to determining that the system has access to a messaging application corresponding to the request: sending, using the messaging application corresponding to the request, the message from the first user to the second user (¶[0169], "the first device 1000 may execute the determined chat application, and in operation S1325, the first device 1000 may input a text, which is converted from a voice, into the executed chat application"; ¶[0124], " the first device 1000 may transmit the text of the first user to the second device 2000"). The remaining limitations are in the alternate form and therefore, it is not necessary for Kim to meet those limitations . Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,250,193 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because all the subject matter from claims 1-19 can be directly derived from claim 7 of US Patent No. 12,250,193 B2 . Allowable Subject Matter Claims 1-7 and 15-20 would be allowable by overcoming all double patenting rejections set forth, above. In particular, claim 1 and similarly claim 15 recite “in response to determining that the system does not have access to a messaging application corresponding to the request: select an external device on which the messaging application corresponding to the request is available; and send a command to the external device that, when received by the external device, causes the external device to send, using the messaging application corresponding to the request, the message from the first user to the second user.” These limitations, in conjunction with other limitations in the independent claim, are not specifically disclosed or remotely suggested in the prior art of record. Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : US 20100174789 A1, which discloses "determining whether a predetermined collaboration client application is available locally at a local client, and using a proxy to integrate the predetermined collaboration client application into a web application of a web browser at the local client when it is determined that the predetermined collaboration client application is unavailable locally at the local client" (¶[0005]). US 20200236072 A1, which discloses "system that allows users on different chat messaging applications to send chat messages to one another using their respective, but different chat messaging applications. The system includes a cross-platform messaging tool that performs natural language processing on chat messages and then communicates those messages or responses to those messages to other chat messaging applications. In this manner, the tool is able to relay messages from one chat messaging application to other, different chat messaging applications" (¶[0017]). US 20220217553 A1, which discloses "If an application other than the phone call and message is executed by the user, the screen of the corresponding application may display a notification message, a pop-up message, or a guide message informing that the application is unavailable". US 20070067392 A1, which discloses "a determination is made as to whether messaging client 377 is detected to be running on client 370 at step 1205" US 10217152 B2, which discloses "In one embodiment, it is possible that the messaging graphical user interface 404b is part of a dedicated messaging application either separate from, or part of the social networking application 112. Accordingly, it is possible that the GUI manager 202 may require the potential buyer to install additional software before providing the messaging graphical user interface 404b. In that case, the social networking application 112 can prompt the potential buyer to install the needed software before continuing. After the potential buyer installs the software, the GUI manager 202 can provide the messaging graphical user interface 404b" (col. 26, lines 41-51). US 20160234366 A1, which discloses "Since the accessory device has not registered with the messaging server, the accessory device is unable to send or receive messages by itself" (¶[0058]), "the accessory device determines whether it has previously registered with the message service, e.g., as described in FIG. 5. If the accessory device has previously registered with the message service, then the accessory device may have the choice to send the message directly to the remote device over the Internet" (¶[0060]), and "if the remote device is reachable as determined in 646, the accessory device may convey the message to the proxy device. Because the accessory device is not registered with the service and may not directly communicate the message with the server over the Internet, it may use the proxy device to send the message" (¶[0063]). US 20080208978 A1, which discloses "it is possible to forward the electronic message to another data processing device. For this reason, the electronic message is converted into second information by the representative entity SI4, and for this conversion the electronic message is provided with the address information of the further data processing device [...] The electronic message is now transmitted via the network to the further data processing device, is received by the representative entity there, is buffer-stored and, if required, is converted into the data format of the application there. The electronic message can then be retrieved by the application there from the buffer store in the representative entity there" (¶[0029]), "If the interchange then takes place via the first representative entity, the latter then forms the central service for the first application" (¶[0010]), and "If the representative entity is designed to forward the electronic messages received from the application as first information to at least one of the further data processing devices, the received electronic message comprising an address for the at least one further data processing device, and the representative entity effecting the forwarding to the data processing device defined by this address, then the data processing devices in the ad-hoc network can use the familiar application, set up for a central server (central service), to interchange electronic messages with one another without first setting up a connection to a central service" (¶[0013]). Any inquiry concerning this communication or earlier communications from the examiner should be directed to BORIS D GRIJALVA LOBOS whose telephone number is (571)272-0767. The examiner can normally be reached M-F 10:30AM to 6:30PM EST. 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, Brian Gillis can be reached at 571-272-7952. 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. /BORIS D GRIJALVA LOBOS/ Primary Patent Examiner, Art Unit 2446 Application/Control Number: 18/991,867 Page 2 Art Unit: 2446 Application/Control Number: 18/991,867 Page 3 Art Unit: 2446 Application/Control Number: 18/991,867 Page 4 Art Unit: 2446 Application/Control Number: 18/991,867 Page 5 Art Unit: 2446
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